Posts in Circuit Courts of Appeal

On May 20, the U.S. Court of Appeals for the Ninth Circuit affirmed the decision of the United States District Court for the District of Nevada, holding that requests for information by the United States Patent and Trademark Office (USPTO) to an individual are exempt from the Paperwork Reduction Act (PRA). Gilbert P. Hyatt is the named inventor on hundreds of inter-related patent applications that encompass over 100,000 claims. See Generally Hyatt v. U.S. Pat. & Trademark Off., 797 F.3d 1377 (Fed Cir. 2015). Both Hyatt and the American Association for Equitable Treatment (AAET) contend that patent applicants should not have to comply with certain USPTO rules because, they allege, the USPTO is violating the PRA.

Last week, the U.S. Court of Appeals for the First Circuit affirmed a district court ruling denying a request for declaratory judgment by Covidien LP and Covidien Holding Inc. (collectively, “Covidien”) against appellee Brady Esch, a former employee who assigned a medical device patent to a company he founded. After a nine-day trial, the jury awarded Covidien nearly $800,000, finding Esch incurred in a breach of confidential information. Covidien subsequently moved for a declaratory judgment asking the court to require Esch to assign later inventions. The district court denied this request. The First Circuit was tasked with determining whether the district court abused its discretion. Finding it did not, they affirmed.

On Friday, April 2, the United States Court of Appeals for the Second Circuit issued a Summary Order affirming a district court’s finding that the Metropolitan Museum of Art’s use of a photographer’s photo on its website to illustrate a museum exhibit constituted a fair use. The photo was taken by Lawrence Marano in 1982 and depicted Eddie Van Halen playing his iconic “Frankenstein” guitar. The Metropolitan Museum featured the photograph on its website as part of an exhibit of rock n’ roll instruments. Marano initially brought his complaint against the museum in the United States District Court for the Southern District of New York in 2019, and the court dismissed it in 2020 for failure to state a claim, “finding that Marano had ‘failed to show why the Met’s use of [the Photo] is not protected by the fair use exception.’”

On March 26, the U.S. Court of Appeals for the Second Circuit reversed The United States District Court for the Southern District of New York’s decision that Andy Warhol’s Prince Series constituted fair use of Lynn Goldsmith’s photograph, holding that “the district court erred in its assessment and application of the fair-use factors and the works in question do not qualify as fair use.” The Court of Appeals further concluded that the Prince Series works were substantially similar to the Goldsmith Photograph “as a matter of law.” In 1981, Defendant-Appellant Lynn Goldsmith (Goldsmith) took several photographs of the then up-and-coming musical artist Prince Rogers Nelson (Prince). In 1984, Goldsmith’s agency, Defendant-Appellant Lynn Goldsmith, Ltd. (LGL) licensed one of the photographs from the 1981 photoshoot to Vanity Fair magazine “for use as an artist reference.” Unbeknownst to Goldsmith and LGL, the artist who used her photo as inspiration was Andy Warhol, and not only did he use her photo for inspiration for the image Vanity Fair commissioned, but he continued to create an additional 15 works, which are known as the “Prince Series.”

The Federal Trade Commission’s (FTC’s) March 26 deadline for filing a petition for writ of certiorari at the U.S. Supreme Court has come and gone, officially ending the FTC’s opportunity to appeal its loss at the Ninth Circuit in its antitrust enforcement action against semiconductor developer Qualcomm. As federal regulators move on from this final vestige of Obama-era antitrust enforcement activity against patent-related business activities, much of the intellectual property world continues to await key appointments under President Joe Biden that will reveal the tenor of the policy debate in patents and antitrust during the current administration.

On March 17, the U.S. Court of Appeals for the Fourth Circuit reversed and remanded a decision from the U.S. District Court for the Western District of North Carolina in a Lanham Act statutory interpretation case. The case involved plaintiffs Snyder’s-Lance, Inc. and Princeton Vanguard, LLC (collectively “Princeton Vanguard”) and defendant Frito-Lay North America, Inc. (“Frito-Lay”). The district court held that a party to a trademark dispute who appeals a decision of the Trademark Trial and Appeal Board (TTAB) to the U.S. Court of Appeals for the Federal Circuit (CAFC), resulting in the vacatur, remand and issuance of a new decision by the TTAB, may not then seek judicial review of that second decision in federal district court. The Fourth Circuit disagreed and ultimately reversed and remanded the case back to the district court.

With brick-and-mortar stores closing at rapid paces and online sales surging, marketers are developing new models to facilitate sales through innovative online platforms. One of those new business models is Redbubble’s hybrid “print-on-demand” service. Two recent Court of Appeals decisions – from the Sixth and Ninth Circuits – consider important questions about when these new approaches to online sales gives rise to liability for trademark infringement, trademark counterfeiting, and right of publicity violations.

Two of the most important issues in trade secret cases involve the timing of when the plaintiff is required to identify its alleged trade secrets and the degree of specificity with which they must be identified. However, the Defend Trade Secrets Act (DTSA) fails to address either of these issues, and most state courts have not agreed on unform standards. In comparison, for example, under Section 2019.210 of the California Code of Civil Procedure, a plaintiff is required to identify its alleged trade secrets with reasonable particularity “to limit the permissible scope of discovery by distinguishing the trade secrets from matters of general knowledge in the trade or of special knowledge of those persons skilled in the trade.” Now the Ninth Circuit in InteliClear LLC v. ETC Global Holdings, Inc., 978 F. F. 3d. 653 (9th Cir. 2020) has held that the DTSA also includes the requirement that the plaintiff must identify, depending on the stage of the litigation, with sufficient particularity to provide the defendant with notice as to the identity of the trade secrets at  issue.

This year saw its fair share of high profile trademark cases: the Second Circuit vacated Tiffany & Co.’s $25 million summary judgment win against Costco Wholesale Corp. in a dispute over Costco’s use of the word “Tiffany” to identify a specific type of six-prong diamond ring setting in Tiffany and Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020);* the District Court for the Southern District of New York held that the First Amendment protects the use of Humvees in the acclaimed video game Call of Duty from claims of trademark infringement and dilution, and unfair competition in AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020).; and the District Court for the Western District of Texas refused to grant a “Brizzy” hard seltzer brand a preliminary injunction against Molson Coors over a competing “Vizzy” product because both names were based on the common descriptive term fizzy in Future Proof Brands, LLC v. Molson Coors Beverage, 2020 WL 3578327 (W.D. Tex. Mar. 24, 2020), aff’d, 2020 WL 7064607 (5th Cir. Dec. 3, 2020). But among all of the cases, a select few stand out as ones that have shaped trademark law and are already having an impact that may last for years to come.

In Van Buren v. United States, argued December 1, the Supreme Court has a chance to address how the Computer Fraud and Abuse Act applies when a defendant is authorized to access and obtain information from a computer but subsequently uses this information for a purpose that is not permitted. The outcome of this case is important to every company that has computer data and will provide guidance on how best to protect that data.

On October 30, Michael Skidmore, Trustee for the Randy Craig Wolfe Trust, filed a petition for rehearing of the denial of its August 6 petition for writ of certiorari to the Supreme Court. In the original petition, Skidmore requested that the Supreme Court review a March judgment of the U.S. Court of Appeals for the Ninth Circuit siding with Led Zeppelin in a long-running case examining whether the opening notes of the band’s legendary song “Stairway to Heaven” infringed the song “Taurus,” written by Robert Wolfe of the band Spirit, a contemporary of Led Zeppelin. Skidmore brought the original suit in 2014. In the petition for rehearing, Skidmore claims that the “Ninth Circuit’s en banc opinion herald[ed] the ‘death of music copyright,’ just as happened to literary copyright before it.”

Sometimes a dog toy is just a dog toy. Maybe that’s how Sigmund Freud would have put it; certainly, that’s the message from our client, the International Trademark Association (INTA), to the U.S. Supreme Court. At issue is a Ninth Circuit decision that extends First Amendment protection to ordinary commercial goods like dog toys, at the expense of trademark rights. INTA, Jack Daniel’s competitors, alcohol beverage industry associations, and other trademark advocates this week asked SCOTUS to step in and reverse.

The U.S. Department of Justice and Attorneys General from 11 U.S. states filed a complaint on Tuesday in the United States District Court for the District of Columbia against Google, alleging the company is “unlawfully maintaining monopolies in the markets for general search services, search advertising, and general search text advertising in the United States through anticompetitive and exclusionary practices.” The complaint maintains that Google has for years entered into exclusionary agreements and used anticompetitive practices to “lock up distribution channels and block rivals,” and comes after more than a year of investigation.

Last week, the United States Court of Appeals for the Third Circuit affirmed a decision of the district court that granted summary judgment to Lotte International America Corp. because Ezaki Glico’s cookie design was functional and not entitled to trade dress protection in Kaisha v. Lotte International America Corp. Noting that trade dress protection does not extend to functional or useful features, and there was no dispute that Pocky’s design was useful, the Third Circuit explained that the trade dress was invalid and “[t]hat’s the way the cookie crumbles.”

The Federal Trade Commission (FTC) just can’t take “no, you’re wrong” for an answer. Despite its embarrassing reversal by the Ninth Circuit Court of Appeals in August, the FTC has now appealed its Qualcomm case to the full Ninth Circuit. A three-judge appellate panel overturned the trial court’s errant ruling, giving the FTC a comeuppance in its antitrust suit against Qualcomm, the trailblazer in wireless technology with thousands and thousands of patented inventions. The sheer cliff the FTC seeks to climb features daunting crags. The appellate judges ruled unanimously. They also found fundamental problems in the trial court’s (and FTC’s) legal and factual analysis, and so they gave basic aspects of the case fresh eyes, or de novo, review. And several federal departments, including the Justice Department Antitrust Division, weighed in with the trial court in opposition to the FTC.