At issue in the case of Levi Strauss & Co. v. Yves Saint Laurent America, Inc., recently filed in the Northern District of California, is whether Levi’s trademark rights preclude jean manufacturers from stitching a label onto the vertical seam of the jean’s back pocket. Levi’s claims that its “Tab Trademark” does in fact prohibit such copying (and seemingly regardless of where the tab is placed). As shown in side-by-side comparison pictures displayed in the complaint, the Levi’s tab is sewn on the left side of the back-right jean pocket, whereas the Yves Saint Laurent (“YSL”) tab is stitched onto the right side of the back-right jean pocket. See p. 5 at https://www.scribd.com/document/393676941/Levi-Strauss-v-Yves-Saint-Laurent. Nevertheless, and despite the generally large disparity in price points between Levi’s and YSL denim, Levi’s alleges that the YSL tab is likely to confuse consumers about the sources of YSL’s products and/or a relationship between YSL and Levi’s.
In a constantly evolving market and with millions of dollars in play, Levi’s is no stranger to enforcing its intellectual property rights through litigation. In fact, Levi’s has consistently bumped heads with jeans manufacturers in the past (approximately 100 lawsuits since 2001), alleging infringement either based on the display of a “tag” stitched to a back pocket, or copying Levi’s signature design (two intersecting arcs stitched into the back pockets). As the denim giant attempts to prove that it owns a monopoly on tabs stitched onto jean back pockets, one of the ultimate questions will be whether the consuming public views the tag as a source identifier, such that it solely relates to Levi’s.
The Supreme Court is currently posed with the question: Does the confidential sale of an invention disqualify that invention from later patenting? Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 138 S.Ct. 2678 (2018).
The patent statute does not directly address this question, but does state that an invention is precluded from patenting if that invention was “on sale” or “in public use” prior to the filing date for that patent application. Years of case law have added to the meanings of these terms. But now there is an additional term, “or otherwise available to the public.” 35 U.S.C. § 102(a)(1). Under which circumstances does this new term preclude patenting? Circumstances that are applicable to the certified question for the Court?
The Supreme Court has previously ruled that public use of an invention will not preclude patenting if the public use is for experimentation. Pfaff v. Wells Elecs., 525 U.S. 55, (1998). That Court qualified the statutory language, reading in the experimentation use. But that Court did not rule on the “on sale” criteria except to identify a distinction between experimental use and “products sold commercially.” Is there a similar qualification of a commercial sale, supported by precedent and legislative history, that can exempt a confidential sale from being barred from patenting?
And where would “otherwise available to the public” fit in here? Does “otherwise” mean that the previous items in the list, such as “on sale,” are also to be understood as “available to the public?” Or is it a modern catch-all for new patentability conditions that were not contemplated when the provision was written in 1952?
Recent Study Suggests That Patent Holders Should Consider Filing Suit in the Middle and Southern District of FloridaWritten by Jonathan Woodard
Based upon certain criteria including win rate and the time involved to get to trial, a 2018 study by PricewaterhouseCoopers (“PWC”) suggests that patent owners seeking to enforce their rights should file suit either in the Middle District of Florida (encompassing Jacksonville, Ocala, Orlando, Tampa, and Fort Myers), or the Southern District of Florida (which includes the South Florida metropolitan areas of West Palm Beach, Fort Lauderdale, Miami, and the Florida Keys). Breaking down those factors using case studies and empirical data, PWC found that a patent owner who tried their case in the Middle District of Florida had a remarkable 50% statistical likelihood of prevailing (ranked 2nd in the United States), with the Southern District of Florida not too far behind (ranked 8th in the country). In terms of the amount of time it took to get to trial –a significant factor in terms of the overall costs and expenses involved for the patent holder – cases brought in the Middle District of Florida were tried in 1.9 years (3nd in the United States), whereas lawsuits filed in the Southern District were tried in 2.1 years (6th in the United States). Averaging all of the other underlying criteria involved, the PWC survey found that the Middle District of Florida had an “overall rank” of 6th in the entire United States, with the Southern District of Florida closing the gap at 11th in the country.
Having focused its practice exclusively on patent law and other intellectual property areas since 1959, Malloy & Malloy, P.L. can assist you in filing a patent application or otherwise enforcing your rights, if necessary, through the litigation process. Malloy & Malloy has an office in Jacksonville, Florida overseen by firm partner, Jennie S. Malloy, as well as offices in South Florida. Please click the following for full contact information: https://malloylaw.com/contact
The United States-Mexico-Canada Agreement, which will take effect after being passed into law and signed by each country, is intended to replace the North American Free Trade Agreement, and includes a wide range of provisions. With respect to intellectual property, two notable provisions are Canada's agreement to increase the term of protection for both copyrights and "biologics" -- new pharmaceuticals derived from biological sources.
Today the Supreme Court agreed to hear a case concerning how costs are awarded under the Copyright Act. The Copyright Act provides that a court “in its discretion may allow the recovery of full costs” to a prevailing party under 17 U.S.C. § 505. Currently, there is a circuit split over what costs are recoverable. The U.S. Courts of Appeals for the Eighth and Eleventh Circuits have held that the Copyright Act’s allowance of “full costs” is limited to taxable costs under 28 U.S.C. §§ 1920 and 1821. On the other hand, the U.S. Court of Appeals for the Ninth Circuit has held that the Copyright Act also authorizes non-taxable costs.
The case is Rimini Street Inc. v. Oracle USA Inc., 17-1625, out of the Ninth Circuit.
The European Parliament has approved some proposed amendments to EU copyright law. The proposals must now pass a final step before becoming law. The stated intention of the amendments is to bring Europe’s copyright protection in line with how content is being created and used in the internet age. The text of the law is not yet finalized, and the vote on the finalized text will not occur until January 2019. However, speculation has only just begun as to what effect the proposed laws will have on the freedom of the internet. Of the 24 Articles proposed in the new Directive, 2 have received attention as being especially controversial: Article 11 and Article 13.
Article 11 proposes to grant the same rights to news media publishers as is currently provided to authors, performers, film producers, and broadcasting organizations. Some commentators believe this amendment will discourage some aspects of the exchange of news articles, such as “link previews” that show a snippet of the linked article to a reader. These commentators believe this will, in turn, limit access to information and boost “fake news.”
Article 13 proposes to increase copyright liability for popular websites that host user-submitted content. The current law places most of the responsibility for avoiding copyright infringement on the user who submits the content; but the proposed amendment redirects much of this liability to the hosting website. Commentators who criticize this proposed amendment include internet luminaries who argue the new law will stifle the freedom of information on the internet. These commentators believe that if the big internet companies who post user-submitted content are also required to police that content more closely, then that policing will necessarily be overbroad; and the result will be the muffling of the freedom of speech and creativity on the internet.
It is difficult to predict what effect the laws will have on the free flow of information and creativity on the internet. This unpredictability is especially true because the laws themselves are not yet finalized. So, between now and January 2019, the proposals are ripe for debate; and maybe the proposed laws are ripe for revision.
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.
Online Retailer Accused of Using Bedding Corporation’s Trademarks to Promote and Sell “Inferior” ProductsWritten by Jessica Neer McDonald
The Comphy Co. ("Plaintiff"), a California corporation selling luxury bedding products, filed a complaint against Amazon.com, Inc. ("Defendant") in the Northern District of Illinois alleging trademark infringement, contributory trademark infringement, and false designation of origin under federal law. The complaint also alleges violation of Illinois Uniform Deceptive Trade Practices Act and Consumer Fraud under Illinois law.
The claims primarily involve (1) the Plaintiff's "COMPHY," stylized "C," "COMPHY COMPANY," and "COMPHY SHEETS" trademarks and (2) Plaintiff's insistance that it has no interest and has expressly refused to sell its products on Defendant's website, amazon.com. According to the complaint, the Defendant is making unauthorized and infringing use of Plaintiff's trademarks by using the trademarks to promote bedding and related products not made or authorized by the Plaintiff on Defendant's website. In particular, the Plaintiff states that the Defendant is posting results for "inferior" third-party sheets when consumers search for terms including Plaintiff's trademarks on Defendant's website. Moreover, the Defendant pays third-party search engines to direct consumers to Defendant's website when searching for "COMPHY" brand sheets. Such actions are said to drive sales to competing products and are likely to cause and have caused actual confusion.
The Plaintiff asks the court for an injunction as well as a variety of monetary damages, fees, and costs.
The case can be followed at The Comphy Co., v. Amazon.com, Inc., 18-cv-04584 (N.D. Ill.).