On Friday, November 8, the Supreme Court granted the federal government's petition for review in U.S. Patent and Trademark Office v. Booking.com. The issue to be reviewed is whether the addition of the generic top-level domain ".com" to a generic term can create a protectable trademark.


The dispute first arose when Booking.com applied to register trademarks containing the term BOOKING.COM in connection with online hotel reservation services. The USPTO refused registration on the ground that the term "booking" is generic for the underlying services in the application and that the addition of the generic top-level domain ".com" did not create a protectable mark. The decision was reviewed by the United States District Court for the Eastern District of Virginia, which held that BOOKING.COM was non-generic and potentially protectable as a trademark. The Fourth Circuit affirmed.

The case of Romag Fasteners v. Fossil is scheduled for argument before the Supreme Court of the United States during the court's October 2019-2020 term.  At issue is whether, under the Lanham Act, willfulness is a prerequisite for an award of the infringer’s profits.  Under the current landscape, the Third, Fourth, Fifth, Sixth, Seventh, and Eleventh Circuits have held that willfulness is not an absolute requirement in order for the plaintiff to recover profits.  On the other hand, the Second, Ninth, Tenth, and District of Columbia Circuits have disagreed, stating that a willfulness finding is required in order to award the infringer’s profits to the plaintiff.  The Supreme Court’s ultimate ruling on the issue will potentially resolve the sharply divided circuit split, and provide trademark owners a clearer roadmap in terms of damages and financial recovery following a finding of infringement.

Wednesday, 30 October 2019 15:10

AI vs. IP

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The U.S. Patent and Trademark Office (“PTO”) recently issued a second request for public comments on the impact of artificial intelligence on intellectual property laws and policies, this time with a focus on copyright and trademark related issues.

Among the questions recently posed by the PTO:

Should a work produced by an AI algorithm or process, without the involvement of a natural person contributing expression to the resulting work, qualify as a work of authorship protectable under U.S. copyright law? Why or why not?;

Would the use of AI in trademark searching impact the registrablity of trademarks? If so, how?; and

Are there any other AI-related issues pertinent to intellectual property rights (other than those related to patent rights) that the USPTO should examine?

You may submit comments in writing through December 16, 2019. The full list of questions is presented in the Request for Comments on Intellectual Property Protection for Artificial Intelligence Innovation, available in the Federal Register here.

The PTO previously issued a Request for Comments on Patenting Artificial Intelligence Inventions, available here, and has extended the deadline to submit comments through November 8, 2019.

This past offseason, Lebron James began sharing videos on social media of his family’s “Taco Tuesday” dinner gatherings.  The videos went viral, with James inviting other celebrity guests and NBA players for the “Taco Tuesday” dinners, and even making apparel with the quote “Its Taco Tuesday.”  Lebron James’ company, LBJ Trademarks, subsequently filed a trademark application seeking to register the term, with the underlying goods and services involving "advertising and marketing services provided by means of indirect methods of marketing communications, namely, social media, search engine marketing, inquiry marketing, internet marketing, mobile marketing, blogging and other forms of passive, sharable or viral communications channels."

On Wednesday, September 11, 2019, the USPTO refused the trademark application filed by LBJ Trademarks, stating that TACO TUESDAY  "is a commonplace term, message, or expression widely used by a variety of sources that merely conveys an ordinary, familiar, well-recognized concept or sentiment.”  However, the USPTO’s decision was not treated as a loss for the James’ camp.  In fact, a spokesperson claimed that the rejection was the intended result:  “Finding 'Taco Tuesday' as commonplace achieves precisely what the intended outcome was, which was getting the U.S. government to recognize that someone cannot be sued for its use.”  Under that approach

Earlier this year, Anheuser-Busch launched an advertising campaing for its "BUD LIGHT" brand of beer which emphasized that the light beer is not brewed with corn syrup. Competitor Miller-Coors filed a lawsuit alleging that the campaign constitutes false advertising and unfair competition, not because it infers that "MILLER LIGHT" is brewed with corn syrp, which is true, but because consumers may mistakenly believe that the product contains high fructose corn syrup. A federal judge has agreed that Miller-Coors has made a preliminary showing of success, and has ordered that Bud Light must phase out this packaging and advertising campaign until the dispute is resolved. 

The Seventh Circuit Court of Appeals recently held that Gatorade’s use of the phrase, “Gatorade The Sports Fuel Company,” constitutes fair use under the Lanham Act, and therefore did not violate SportFuel, Inc.’s (“SFI”) rights.  Plaintiff SFI is the owner of two registered trademarks for “SPORTFUEL,” and brought an infringement suit in 2016 against Gatorade for its use of the aforementioned slogan.  While Gatorade had also obtained a registration for its trademark, it disclaimed “THE SPORTS FUEL COMPANY,” and defended the lawsuit based on fair use.  The district court entered summary judgment for Gatorade, finding that it did not use “SPORTS FUEL” as a trademark, that Gatorade’s use was descriptive of its sports drinks, and that Gatorade used the mark in good faith.  On appeal, the Seventh Circuit affirmed the lower court’s ruling.  Among other things, the appellate court noted that Gatorade had introduced substantial evidence indicating that “sports fuel” was a marketplace term in describing nutritional sports products, and that Gatorade did in fact hold itself as a manufacturer of sport fuels (which undermined SFI’s alleged “bad faith” argument).

Multiple patent applications have purportedly been filed in several countries by a law school professor on behalf of an artificial intelligence named DABUS. While the applications are not yet open for public inspection, a website devoted to the project details the subject matter of the inventions as an improved food container and a signal beacon, both of which were "created" by the artificial intelligence. The project appears to be an attempt to challenge the definition of "inventor" under the patent laws of various countries, which are generally restricted to individuals. Ostensibly, the purpose of the filings is to create a "case or controversy" by identifying a machine as the "inventor" in order to draw an objection to the applications. Once an application is refused on that basis, the case may be ripe to seek judicial review of the statutory definition of "inventor." Although, whether a machine has standing to appeal such an administrative determination is unclear, unless other interested parties are permitted to carry the suit. 

Identifying a machine as an inventor raises a host of other issues pertaining to the ownership of an invention, inlcuding the right to sue for infringement or collect royalties. Such issues would likely require a legislative amendment, rather than a favorable judicial interpretation of the existing defintion of "inventor," in order to avoid these kinds of ambiguities. 

This week a Los Angeles jury in the U.S. District Court in the Central District of California found that Katy Perry’s 2013 hit “Dark Horse” infringed the copyright of a 2008 Christian rap song “Joyful Noise.” At issue were not the words of “Dark Horse,” but rather the sounds of the beat and the instrumental line of “Joyful Noise.” Christian Rapper Marcus Gray, known as “Flame’s” along with the co-authors of the song “Joyful Noise” (Plaintiffs) brought the case against Katy Perry and her team, including Dr. Luke, Cirkut, Max Martin, Capitol Records, and others involved with the writing, production, and distribution of the song (Defendants).

To bring a lawsuit for copyright infringement, a plaintiff must have first obtained a U.S. Copyright registration. Copyright infringement requires that a plaintiff owned a valid copyright and a defendant copied constituent elements of the work that are original. In cases of no direct proof of copying, a plaintiff may establish copying by demonstrating that the defendant had access to plaintiff's work and that the plaintiff's and defendant's works are substantially similar. 

Even though the song was completed in 2007 and published in 2008, the joint authors of the Christian rap song “Joyful Noise” obtained a registration of a U.S. Copyright in 2014 for both the lyrics and the music of the song. Subsequent to obtaining the copyright registration, the Plaintiffs brought the lawsuit in federal court in 2014. To establish that the Defendants had access to their song “Joyful Noise,” the Plaintiffs offered evidence that their song was widely available on streaming services, and therefore could have been heard by the Defendants.

In response, Defendants put on testimonial evidence that they did not access the song “Joyful Noise” before producing the song. At trial, Katy Perry testified that though she began her career as a Christian artist, she does not listen to Christian music now, and had not listened to “Joyful Noise” before the lawsuit. During closing arguments, Perry’s Attorney argued that the Plaintiffs were “trying to own basic building blocks of music, the alphabet of music that should be available to everyone.”

At the end of closing arguments, the jury listened to both songs played back-to-back in their entirety to determine whether the works were substantially similar. On Monday, the nine-person jury found that there were substantial similarities between the original expression in the musical compositions of “Dark Horse” and “Joyful Noise,” and that “Dark Horse” copied “Joyful Noise.”

Now the case will proceed to the next stage to determine the monetary damages to be awarded to the Plaintiffs. At trial, evidence was submitted to show that the song “Dark Horse” spent four weeks on the Billboard Hot 100 in 2014, has millions of plays on YouTube and Spotify, and was included on Perry’s Grammy nominated album, “Prism.”

This case follows another high-profile copyright infringement case involving a top hit. In 2015, Robin Thicke and Pharrell Williams’s 2013 hit "Blurred Lines” was found to infringe the copyright of Marvin Gaye’s 1977 song, "Got to Give It Up.” In 2018, the Ninth Circuit affirmed the imposition of a permanent 50% royalty rate and the award of over five million dollars to Marvin Gaye’s estate.

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