Jonathan Woodard

Jonathan Woodard

The term “swagger” is generally associated with style, confidence, sophistication, and togetherness.  In this regard, SWAGGER® Magazine (which owns a trademark in Canada for the mark “swagger”), brands itself as the premier modern men’s luxury and lifestyle publication, and is the “go to resource for the ambitious, successful and influential gentlemen of today.”  When editors at this magazine began noticing a new trend in social media searches for #swagger – apart from the typical results showing fast cars and expensive suits – they soon discovered that politics was a significant factor towards this shift.  And at the center of this movement was United States Secretary of State Mike Pompeo.

 In his first address to State department employees back in May 2018, Mr. Pompeo conveyed his desire of “getting back our swagger” in terms of the State’s affairs, policy-making decisions, and restoring diplomatic ties.  Mr. Pompeo also launched an Instagram account and throughout various posts, used “swagger” hashtags, phrases like the “department of swagger,” and photos of him “fist-bumping” State department employees.  In a recent post, Mr. Pompeo displayed four pictures – two of himself, as well as William Shakespeare and General George Patton – with the following message for his followers:  “Shakespeare was the first to use ‘swagger.’ Gen. Patton had his swagger stick. At @statedept, we’ve got some #swagger too.  It’s our confidence in America’s values.” 

 As a result of Mr. Pompeo’s attempt to penetrate pop culture by using “#swagger” when speaking in terms of diplomacy efforts advanced by the State, Swagger Magazine appears to be seizing the opportunity to expand its readership base.  In referencing some of Mr. Pompeo’s colleagues’ attire at the State department, Swagger editor-in-chief Steven Branco thought that “they all seem to have an oversize suit going on,” and that the magazine would be “working on a story that will provide more direction on what to wear in the office.”  In the meantime, Mr. Pompeo and his chief spokesperson, Heather Nauert, appear to be continuing their message of the United States Department of State being a “Department of Swagger [that] has hustle & heart,” as shown on a recent post on Twitter.

The film studio (STX) behind the raunchy comedy, “The Happytime Murders,” successfully fended off a trademark infringement suit by Sesame Workshop.  Specifically, Sesame Workshop contended that the R-rated movie depicting puppets joking about drugs, sex, and guns confused the public with “Sesame Street,” tarnished the kid-friendly show’s reputation, and exploited Sesame Street’s mark and related goodwill by implying an affiliation that did not otherwise exist.  United States District Judge Vernon Broderick disagreed, however, stating that the comedy’s slogan – “No sesame.  All street” – actually proved to distinguish the film from the children’s cartoon, and further noted that the “R” rating automatically served as a differentiating characteristic.  The Happytime Murders will begin showing in theatres in August of 2018.

On May 14, 2018, the Supreme Court issued a landmark 6-3 ruling in favor of striking down the Professional and Amateur Sports Protection Act (“PASPA”), which came into effect in 1992.  PASPA was a federal law that barred state-authorized sports gambling on baseball, basketball, football and several other sports; a few states, however, and particularly Nevada, were exempted from the law because they had approved some form of sports wagering prior to when the law was enacted. 

The decision in Murphy v. Ncaa, Nos. 16-476, 16-477, 2018 U.S. LEXIS 2805 (May 14, 2018) originated in a case from New Jersey, where the state argued that PASPA violated the Tenth Amendment because it was essentially compelling states to prohibit sports wagering.  Writing for the majority, Justice Alito held that “[j]ust as Congress lacks the power to order a state legislature not to enact a law authorizing sports gambling, it may not order a state legislature to refrain from enacting a law licensing sports gambling.”  Id. at 40-41.  With the federal ban on sports gambling lifted, states are now given the green-light to legalize sports betting if they choose.  In the months leading up to the high court’s decision – and assuming that PASPA would be struck down – various research firms estimated that at least 30 different states would likely offer sports betting within the next five years. 

Grumpy Cat Limited, owner of copyrights and trademarks pertaining to the cat named Tardar Sauce (which gained notoriety for its permanent scowl shown in popular memes), licensed certain limited rights to Grenade Beverage in relation to its "Grumppuccino" iced coffee.  After Grenade Beverage allegedly breached and exceeded the scope of the agreement by selling "Grumppuccino" t-shirts and other coffee products, Grumpy Cat Limited filed suit in the United States District Court for the Central District of California.

After three years of litigation, a jury ultimately found in favor of Grumpy Cat Limited -- with Tardar Sauce actually making an appearance at one point during the trial -- and awarded $710,000.00 in damages for trademark and copyright infringement.  David Jonelis, lawyer for Grumpy Cat Limited, was quoted saying that it was "the first verdict ever rendered in favor of a viral meme," and that "memes have rights too."

On January 8, 2018, the Federal Circuit ruled en banc that judicial review is available for a patent owner to challenge the Patent Trial and Appeal Board’s determination that a petitioner satisfied the timeliness requirement governing petitions for Inter Partes Review (“IPR”) codified in 35 U.S.C. § 315(b).  At its core, the opinion provides that if the Director of the PTO initiates an IPR ruling in contravention of the statute of limitations, an Article III court has the power to review that initiating decision.   

By way of background, Broadcom Corp. filed three separate petitions for IPR in 2013 pertaining to certain patents owned by Ericsson.  During the pendency of the IPR, Ericsson transferred ownership of the patents to Wi-Fi One, LLC ("Wi-Fi").  In opposition to Broadcom’s petitions, Wi-Fi contended that the Director lacked authority under Section 315(b) and was precluded from initiating review on any of the three petitions because Broadcom was in privity with certain defendants that were found to have infringed the asserted claims in a jury trial in the Eastern District of Texas.  Accordingly, Wi-Fi asserted that the petitions were time-barred under 315(b) because Ericsson (the prior patent owner) had already brought infringement claims against defendants that were in privity with Broadcom more than a year prior to its petitions.  Ultimately, the Board instituted IPR on the subject claims, and issued final decisions holding that the claims were unpatentable.  In those decisions, the Board held that Wi-Fi had not demonstrated privity between Broadcom on the one hand, and the defendants in the Eastern District of Texas litigation on the other hand, and as a result, the petitions were not time-barred under 315(b).  Wi-Fi appealed those final decisions, contending that the Federal Circuit should reverse the Board's time-bar determinations.  A panel of the Federal Circuit disagreed, holding that Section 315(b)’s time-bar rulings are non-appealable and unreviewable.

On Wi-Fi’s petition for rehearing en banc, the Federal Circuit granted Wi-Fi’s request and considered whether judicial review is available for a patent owner to challenge the Board’s determination that the petitioner satisfied the timeliness requirement of 35 U.S.C. 315(b).  Section

35 U.S.C. 315(b) provides that: "an inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”

After analyzing the Leahy-Smith America Invents Act (which created IPR proceedings), the Administrative Procedures Act (codifying the governing standards applicable to final decisions of the PTO), and the pertinent statutes, the Federal Circuit held that it will “abdicate judicial review only when Congress provides a ‘clear and convincing’ indication that it intends to prohibit review.”  In Wi-Fi One, however, the Court held that there was no clear and convincing indication of such congressional intent to overcome the presumption in favor of judicial review of agency actions.  Accordingly, the Federal Circuit remanded the case to the merits panel, affording Wi-Fi with an opportunity to have its arguments heard on the merits, to wit, whether Broadcom’s challenge to the subject patents were time-barred.  

On June 19, 2017, the Supreme Court issued a landmark opinion, holding that the First Amendment’s right to free speech extends to trademark protection of words and phrases that are purportedly offensive. 

For over half a century, trademark law prohibited registration of marks that were prejudicial to or could otherwise be deemed disparaging to certain groups or people.  Significantly, however, in Matal v. Tam, 137 S. Ct. 1744 (2017), an Asian-American band specifically chose the name “Slants,” believing “that by taking that slur as the name of their group, they [would] help to ‘reclaim’ the term and drain its denigrating force.”  Id. at 1751.  After the en banc Federal Circuit found that the disparagement clause under the Lanham Act was facially unconstitutional, the United States Patent and Trademark Office filed a petition for certiorari, which the Supreme Court granted in order to weigh in on the disparagement clause at issue, and whether the proposed trademark was official words endorsed by the government, or conversely, words of a private person. 

In its unanimous decision, the high court answered this question by declaring that “[t]rademarks are private, not government speech…[and] [t]he public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.”  Id. at 1760 (internal citation omitted).  The Court also expressed concern with broadening the government speech doctrine, and in affirming the Federal Circuit’s judgment, held that that “if private speech could be passed off as government speech by simply affixing a government seal of approval, government could silence or muffle the expression of disfavored viewpoints.”  Id. at 1748.

Tam may very well have wide reaching effects.  While the Supreme Court made clear that a word or phrase in a trademark registration will not constitute government speech, the aftermath of this decision could give rise to various potentially “offensive” or “disparaging” trademark applications, which may ultimately rest with the consumer in determining whether to accept or reject the mark in its use in commerce. 

Because many issues can arise in applying for a trademark, Malloy and Malloy, P.L’s knowledgeable and experienced intellectual property attorneys are ready to advise and guide you along the way from an application through registration, and subsequent enforcement measures. 

On May 22, 2017, the United States Supreme Court in TC Heartland LLC v. Kraft Foods Group Brands LLC, 581 U.S. ___ (2017) narrowed the scope of where a corporate defendant “resides” for venue purposes under the patent venue statute (28 U.S.C. § 1400(b)).  Previously, patent plaintiffs could sue corporate defendants in any district court where the corporation was subject to personal jurisdiction, essentially where a defendant sold products.  However, and as a result of TC Heartland’s unanimous (8-0) decision reversing the Federal Circuit, 28 U.S.C. § 1400(b) remains the only applicable patent venue statute, and as applied to domestic corporations in patent cases, a “defendant resides only in the state of its incorporation.”

A number of results are likely in the wake of this dramatic shift in venue law.  First, TC Heartland presents a significant roadblock to patentees filing lawsuits in a particular forum – which critics label “forum shopping” -- simply because a corporate defendant placed a product into the stream of commerce.  The inevitable outcome will steer the filing of patent cases to Delaware, the state where many U.S. companies are incorporated.  Second, and where litigation is already pending, corporate defendants are likely to file motions to change venue (assuming the waivable defense of venue has been properly preserved). 

 Third, and as alternative to filing suit in the defendant’s state of incorporation, plaintiffs’ attorneys may file suit in a forum that instead satisfies the second prong of 28 U.S.C. § 1400(b), “where the defendant has committed acts of infringement and has a regular and established place of business.”  While the Federal Circuit has interpreted this phrase to mean doing business “through a permanent and continuous presence,” parties will surely battle over the confines of the pertinent statutory language, and litigate factors such as physical stores of the business, where key personnel are located, and the business’ online presence.  Fourth, situations may arise where there is no district court in which venue would be proper for all named defendants.  To avoid risking inconsistent rulings from litigating cases in separate districts, expect to see an increase in multi-jurisdiction litigation (“MDL”), which can serve as a useful vehicle in litigating overlapping issues in pretrial proceedings, with the individual cases referring back to the original court for trial.

 Many issues in the field of patent law will arise in the aftermath of TC Heartland.  Malloy and Malloy, P.L’s knowledgeable and experienced intellectual property lawyers are ready to advise you and guide your case as these issues come to the forefront. 

In a recent opinion narrowing the international reach of U.S. patent laws, the United States Supreme Court overturned the Federal Circuit’s determination that shipping a single part of a patented invention, to be joined with other components overseas, can constitute infringement.

In Life Techs. Corp. v. Promega Corp., No. 14-1538, Life Technologies manufactured an enzyme to be used in a DNA analysis kit, and shipped the enzyme to London where the company proceeded to manufacture the remaining components of the toolkit.  Promega Corp. filed suit, alleging patent infringement due to Life Technologies’ supplying the single component for genetic testing from the United States to the United Kingdom.  In reversing the district court’s order granting Life Technologies’ motion for judgment as a matter of law, the Federal Circuit held that certain circumstances can impose liability on a party under 35 §271(f)(1) for “supplying or causing to be supplied a single component for combination outside the United States.”

The Supreme Court reversed the Federal Circuit, and after engaging in a statutory construction of the plural term “components,” held that merely supplying a single component does not constitute infringement under Section 271(f)(1).  In the decision for the high court, Justice Sotomayor wrote that the governing statute does not apply to the quality of components, rather the quantity:  “We hold that the phrase ‘substantial portion’ in 35 U. S. C. §271(f )(1) has a quantitative, not a qualitative, meaning. We hold further that §271(f )(1) does not cover the supply of a single component of a multicomponent invention.”

While the scope of 35 §271(f)(1) remains subject to further litigation, specifically vis-à-vis how many components would constitute “a substantial portion,” Life Technologies makes clear that a party cannot be liable under 35 §271(f)(1) due to the extraterritorial supply of a single component.