W. John Eagan
Mr. Eagan earned his bachelor’s degree in Mechanical Engineering from Lehigh University and his law degree, with honors from the University of Miami. While at the University of Miami he served as the Inter-American Citator and an Articles and Comments Editor for the Inter-American Law Review. Mr. Eagan is admitted to practice law in the State of Florida and concentrates his practice in Intellectual Property litigation.
Public Domain Day, January 1 in the U.S., marks the end of term of copyright protection for all copyrights expiring within the year. For the last 20 years, however, Public Domain Day in the U.S. has been largely uneventful, as there has been an effective freeze on copyright expiration since 1998. January 1, 2019 will be the first Public Domain Day since then that copyrighted works see their expiration and transition into the public domain in the U.S.
David Zindel has filed a lawsuit in the Central District of California against Fox, director Guillermo Del Toro, and others, for copyright infringement of a play penned by his father in 1969 titled Let Me Hear You Whisper, regarding the recent movieThe Shape of Water . Spoilers follow the break.
While many federal agencies are currently furloughed, the U.S. Patent and Trademark Office (“USPTO”) has announced that it will be able to maintain regular operations for a few weeks due to excess revenue from last year’s fee collections. Should the USPTO exhaust its reserve funds, the agency will officially shut down but maintain a small staff to accept new applications and maintain information-technology (“IT”) infrastructure. There is no comment at this time on whether outstanding USPTO deadlines would be extended in the event of a closure, but the Firm will continue to monitor the USPTO’s status and advise clients accordingly.
One measure of damages for patent infringement is compensation for lost profits of the patent owner. Additionally, a patent owner may enjoin the export of parts of a patented invention from the United States, if the parts will be assembled or used for an infringing purpose. However, the Supreme Court is set to answer the question of whether lost profits may be awarded to the patent owner for service contracts, performed outside the U.S., making use of those parts exported from the U.S. in the case of WesternGeco LLC v. ION Geophysical Corp. If the answer is affirmative, then the scope of damages available to a patent owner may be drastically expanded -- up to USD $93 Million in WesternGeco's case.
In the case of TC Heartland LLC v. Kraft Foods Group Brands LLC, the United States Supreme Court issued an opinion that is likely to limit the universe of available venues in which a patent holder can bring an action for infringement. Under the particular patent venue statute, the appropriate venue for patent infringement is anywhere infringement has occured, as long as the accused infringer has a regular and established place of business, or where the accused infringer "resides." In the context of a corporation, the definition of residing had been open to interpretation, but the TC Heartland opinion made explicit that residence under the patent venue statute refers only to the state of incorporation.
The Supreme Court recently held in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that the defense of laches cannot be invoked against a claim for damages brought within the statutory six-year limit. The decision comes at little surprise given the Court's ruling in Petrella v. Metro-Goldwyn-Mayer, which considered a similar provision of the Copyright Act. The Court reasoned that Congress set forth an express limitations period in the patent laws, and giving effect to laches within the statutory period would amount to judicial overriding. In his lone dissent, Justice Breyer noted that the decision ignores the application of laches to reign in abusive pre-litigation conduct by a patent holder who unreasonably delays suit, knowing he can collect damages for the previous six years of infringement.
The latest chapter in the Apple v. Samsung litigation, previously blogged about here, involves a determination by the Supreme Court of the United States that damages for design patent infringement can be calculated based on only a component of a product, rather than the entire product, if only that component is found to infringe. This is significant because Apple's $400M damages award was based on Samsung's total profit for sales of the infringing phones. However, Apple's design patent only covered certain features of Samsung's phones, and according to the language of the patent statute, as Samsung argued, it should only have to pay damages on the infringing components, not the entire product.
The Copyright Office has issued final rules updating its practices for receiving the designation of agents under the Digital Millenium Copyright Act ("DMCA"). Until now it was paper based, but after December 1, 2016, the Copyright Office will switch to an electronic system. If you have previously appointed such an agent to receive notices of claimed infringement in order to take advantage of the Safe Harbor provisions for internet service providers, you must file a new designation before December 31, 2017 in order to ensure that your agent is listed in the new electronic directory.
The latest chapter in the Apple v. Samsung saga, previously blogged about here, is set to play out during oral arguments in front of the United States Supreme Court this fall. Samsung was found to infringe several of Apple's design patents related to specific design features of a smartphone, and not necessarily an entire phone. 35 U.S.C. § 289 authorizes courts to award the total profit from the article of manufacture bearing the design. Thus, the original damage award was based on Samsung's profits from the sales of the smartphone. The Supreme Court, however, will hear the question of whether, where a design patent is applied to only a component of a product, an award of infringer’s profits should be limited to those profits attributable to the component.
It is axiomatic that descriptive trademarks cannot be registered without a sufficient showing of acquired distinctivess. However, it has long been possible to register a stylized form of a descriptive trademark, if that stylization imparts a separate commercial impression apart from the descriptive word. For example, descriptive marks merely presented in a common or recognizable typeface will likely be rejected. However, the TTAB recently allowed a registration for the word "jiujiteiro" presented in a cursive, handwritten style of typeface. The TTAB found that the handwritten style of typeface imparted sufficient distinctiveness to create a separate commercial impression, apart from the word itsef. Of course, such findings will continue to be handled on a case-by-case basis, but this decision serves to clarify the threshold for the amount of stylization required for a finding of distinctiveness.