Other Barks & Bites for Friday, November 25: Seventh Circuit Nixes Publicity Claim Against Subscriber List Sale, Copyright Office and USPTO Announce NFT Study, and Alia Moses Takes Over as Chief Judge of Western Texas

Bite (noun): more meaty news to sink your teeth into.

Bark (noun): peripheral noise worth your attention.

bitesThis week in Other Barks & Bites: U.S. District Judge Alia Moses officially takes over as the Chief Judge as the Western District of Texas; the U.S. Supreme Court takes up Jack Daniel’s appeal of the First Amendment ruling in favor of VIP Products’ whiskey bottle-shaped dog toys; the World Intellectual Property Organization announces that two-thirds of all patent applications were filed in Asian IP offices during 2021; Senators Cruz and Cantwell introduce a bill directing the FTC to create required disclosures on recording capabilities for smart devices; the U.S. Patent and Trademark Office and the U.S. Copyright Office announce a joint study on non-fungible tokens; IBM files a copyright infringement suit against Micro Focus for its unauthorized use of IBM’s mainframe software; and the Seventh Circuit nixes a right of publicity claim under Illinois state law after finding that the sale of a magazine subscriber list did not involve the use of the plaintiff’s identity to complete a commercial purpose.


CAFC Denies Mandamus to Sound View, Allowing Reexamination to Proceed – The U.S. Court of Appeals for the Federal Circuit (CAFC) on Tuesday denied a petition requesting mandamus relief to vacate the U.S. Patent and Trademark Office’s (USPTO’s) grant of a request for ex parte reexamination of Sound View Innovations’ U.S. Patent No. 6,708,213 by DISH Network LLC.   DISH originally petitioned the USPTO for inter partes review (IPR) of claim 16 of the ‘213 patent on the ground that it was anticipated and/or obvious based on two prior art references called Sen and Geagen. The Patent Trial and Appeal Board (PTAB) denied the petition, finding that DISH had not demonstrated a reasonable likelihood that Sen and Geagan taught the claimed step of “adjusting a data transfer rate.” DISH subsequently petitioned the USPTO for ex parte reexamination of claim 16, adding a new reference, and the PTAB granted the request, finding that the combination of the three references “raised a substantial new question of patentability.” The CAFC ultimately held that “mandamus relief is unavailable because a post-final decision appeal is an adequate remedy by which Sound View may seek to obtain relief based on its § 325(d) challenge.”

Seventh Circuit Finds No Publicity Violation by Sale of Magazine Subscriber List – On Tuesday, November 22, the U.S. Court of Appeals for the Seventh Circuit issued a ruling in Huston v. Hearst Communications, Inc. in which the appellate court affirmed a lower court’s ruling that Hearts Communications did not violate Huston’s right of publicity under Illinois state law by selling magazine subscriber lists containing her contact information. The Seventh Circuit held that Hearst did not hold out Huston’s identity as part of the company’s commercial purpose to sell Good Housekeeping subscriptions, thus Huston failed to state a claim under the state publicity statute. 

Copyright Office, USPTO Announce Public Roundtables and Joint Study on NFTs – On Tuesday, November 22, the U.S. Copyright Office and the U.S. Patent and Trademark Office announced that the agencies would collaborate on a joint study regarding various intellectual property matters relevant to non-fungible tokens (NFTs). The agencies also intend to host a series of public roundtables on the joint NFT study in January 2023. 

WIPO Says Two-Thirds of Patent Application Filings Received by Asian Offices in 2021 – On Monday, November 21, the World Intellectual Property Office (WIPO) issued its annual World Intellectual Property Indicators (WIPI) report showing that two-thirds of the record 3.4 million patent applications filed worldwide during 2021 were received by IP offices in Asia, a significant increase over the past decade from 54.6 percent of all patent application filings in 2011. 

SCOTUS to Review Scope of First Amendment Protection for Expressive Use of Mark – On Monday, November 21, the U.S. Supreme Court entered a miscellaneous order granting a petition for writ of certiorari filed by Jack Daniel’s Properties. The petition asks the nation’s highest court to review the Ninth Circuit’s ruling that whiskey bottle-shaped dog toys made by VIP Products and mimicking Jack Daniel’s trademarks were expressive works entitled to First Amendment protections against infringement and dilution claims.

Alia Moses Takes Over as Chief Judge of the Western District of Texas – On Friday, November 18, U.S. District Judge Alia Moses officially assumed her duties as the Chief Judge of the Western District of Texas. Many patent law industry insiders expect that the change, which was discussed during an IPWatchdog LIVE panel this September, could presage changes to the order on equitable distribution of patent cases within Western Texas that was issued this summer by Judge Moses’ predecessor, outgoing Chief Judge Orlando L. Garcia, which has been seen as unfairly targeting the patent docket of U.S. District Judge Alan D. Albright at Western Texas’ Waco Division.

Sens. Cruz, Cantwell Introduce Bill for Smart Device Recording Disclosures – On Friday, November 18, Senators Maria Cantwell (D-WA) and Ted Cruz (R-TX) introduced the Informing Consumers about Smart Devices Act into Congress. If enacted, the bill would direct the Federal Trade Commission (FTC) to develop guidelines for smart device manufacturers requiring them to disclose information related to audio and video recording components in refrigerators, laundry machines and other home appliances that have WiFi capability and recording capabilities.

OpenSky, VLSI File Briefs on Director Vidal’s Order to Show Cause on Attorney’s Fees – On Thursday, November 17, patent owner VLSI Technology and patent validity challenger OpenSky Industries both filed briefs responsive to USPTO Director Kathi Vidal’s October order to show cause on possible sanctions for abuse of inter partes review (IPR) process by OpenSky, including any compensable attorney’s fees for VLSI. While VLSI argued that Director Vidal should hold OpenSky’s withdrawn counsel as jointly and severally liable for all attorney’s fees, OpenSky contended that Director Vidal identified no compensable harm from its February 2022 e-mail offering to manipulate IPR proceedings in exchange for payment from VLSI.

EUIPO Board of Appeal Overturns Invalidation of Banksy Trademark – On Monday, November 14, the European Union Intellectual Property Office’s (EUIPO) Fifth Board of Appeal publicized a ruling that reversed an EUIPO decision from May 2021 canceling a trademark registration owned by the anonymous UK artist Banksy. While the EUIPO’s Cancellation Division had invalidated Banksy’s registration as being filed in bad faith, the Board of Appeal found nothing in Banksy’s public statements against copyright law that suggested the artist intended to protect the mark as copyright without having to file a copyright registration, which would require Banksy to disclose their identity.


USPTO Issues Info Collections on PTAs, Reissue Applications, Biological Deposits – On Tuesday, November 22, the U.S. Patent and Trademark Office announced a trio of information collections in the Federal Register related to deposits of biological materials, legal processes surrounding employment actions and claims, and requests for certificates of correction and reissue applications. The previous day, the USPTO had announced an information collection related to patent term extensions and adjustments.

EPO to Make VICO the Default Format of Oral Proceedings in Opposition Next January – On Tuesday, November 22, the European Patent Office (EPO) announced that its President, António Campinos, had issued a decision to make oral proceedings by video conference (VICO) the default format for oral proceedings in opposition starting on January 1, 2023, after evaluating the findings of the EPO’s VICO pilot project.

Ninth Circuit Says Array Forfeited Challenge to Injunction Against Domain Name Derivatives – On Monday, November 21, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in ConsumerDirect, Inc. v. Array US, Inc. in which the appellate court affirmed a district court’s preliminary injunction preventing Array from using domain names infringing on ConsumerDirect’s trademarks, ruling that Array had forfeited its challenge against the injunction’s prohibition against using “derivatives” of a “smartcredit.com” domain name for failing to sufficiently raise the issue below.

IBM Files Copyright Infringement, Breach of Contract Suit Against Micro Focus – On Monday, November 21, information technology giant IBM filed a lawsuit in the Southern District of New York alleging claims of copyright infringement and breach of contract by Micro Focus over its unauthorized use of IBM’s mainframe software systems in violation of Micro Focus’ license agreements with IBM.

Fourth Circuit Finds No Hearsay Issue in Website Evidence Used in Infringement Ruling – On Monday, November 21, the U.S. Court of Appeals for the Fourth Circuit issued a ruling in True Homes LLC v. CMH Manufacturing, Inc. in which the appellate court affirmed a lower court’s trademark infringement ruling after finding no hearsay issue with website printout evidence submitted by CMH Manufacturing to show that many companies using versions of the mark “TRUE HOMES” indicated the weak nature of that mark.

USPTO Extends Law School Clinic Certification Program Deadline to January 2024 – On Monday, November 21, the USPTO announced that it would be extending until January 5, 2024, the submission deadline for law schools seeking entry into the agency’s Law School Clinic Certification Program, which offers patent and trademark applicants pro bono services for representation at the agency.

Copyright Office Extends Public Comment Period on Termination Rights Under the MMA – On Monday, November 21, the U.S. Copyright Office issued a notice in the Federal Register announcing that the agency had decided to extend until January 5, 2023, the public comment period for the rulemaking regarding the applicability of the derivative works exception to termination rights under the Copyright Act to blanket licenses established by the  Music Modernization Act (MMA).

Former Rep. Steve King Avoids Infringement Liability in Success Kid Copyright Case – On Thursday, November 17, a jury verdict entered in the Northern District of Iowa awarded only $750 in copyright damages and found no liability for former Representative Steve King in a copyright case filed by the family of the subject of the “Success Kid” meme over King’s use of the meme during King’s run for Congress in 2020.

This Week on Wall Street

HP Inc. Announces Plans to Layoff Up to 6,000 Employees Globally Through 2025 – On Tuesday, November 22, personal computing firm HP Inc. announced that it planned to trim its workforce by 4,000 to 6,000 employees over the next three years in order to achieve annual savings of $1.4 billion.

Merck’s $1.35B Acquisition of Imago Biosciences to Improve Blood Cancer Treatment Portfolio – On Monday, November 21, American pharmaceutical firm Merck announced that it had agreed to enter into a $1.35 billion deal to acquire blood disease treatment developer Imago Bioscences in a bid to improve Merck’s portfolio for treatments addressing bone marrow disorders and leukemia.

Quarterly Earnings – The following firms identified among the IPO’s Top 300 Patent Recipients for 2021 are announcing quarterly earnings next week (2021 rank in parentheses):

  • Monday: None
  • Tuesday: Hewlett Packard Enterprise Co. (79th); Intuit Inc. (233rd)
  • Wednesday: Marvell Technology Group (t-174th); Salesforce.com, Inc. (73rd); Splunk Inc. (t-186th)
  • Thursday: None
  • Friday: None


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