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.
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.
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.
The Court of Appeals for the Ninth Circuit issued an opinion recently which advised the lower court of both its error in ignoring case law, and the appellate court's dissatisfaction with the final season of Game of Thrones. In chastising the the lower court for disregarding a later clarification to an earlier case, the appellate opinion stated "we will not render [the clarification] meaningless the way that Game of Thrones rendered the entire Night King storyline meaningless in its final season."
The Court of Appeals for the Ninth Circuit is well known for inserting pithy, pop-culture references into its opinions, having touched on Indiana Jones andThe Twilight Zone in recent years. Perhaps most famously, Judge Alex Kozinski's ruling in the Barbie Girl parody case opened by stating "[i]f this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong" and closed by advising the parties "to chill."
Gibson originally introduced its "Flying V" Guitar shape in 1958, but waitied until 2010 to file an application in the European Union Intellectual Property Office to protect the iconic shape as trade dress. A German guitar manufacturer challenged Gibson's exclusive right to the guitar shape. After nine years and two appeals, a panel of three judges sitting on the the European Union General Court has determined that, while the shape may have been very original when it was originally released, the current presence on the market of a number of similar shapes makes it unlikely that consumers will regard one particular shape as belonging to a specific manufacturer. The General Court made this finding despite Gibson's submission of survey evidence in eight European Union countries.
Under certain circumstances, colors can act as indicators for the source of certain goods and services in a similar fashion as their more typical trademark counterparts. One example is Tiffany & Co.'s Registration for a certain color blue as applied to jewelry packaging. The estate of Prince filed an application to register a certain color purple (specifically a shade produced by Pantone after Prince's death) in connection with Prince's entertainment services and musical recordings. The Patent and Trademark Office has initially refused the application, taking the position that Prince had not established the requisite "secondary meaning" between this shade of purple and his music. The estate has responded with an overwhelming 400 pages of evidence showing Prince's use and association with the color purple over his career in an attempt to persuade the Patent and Trademark Office to allow the application. If persuaded, the application will move on to the publication phase, where third parties will have the opportunity to object to the registration. Otherwise, the estate will have additional opportunities to request reconsideration or appeal the refusal.
In a 9-0 opinion issued by Justice Thomas, the Supreme Court held today that even where the buyer is obligated to maintain confidentiality of an invention, the inventor's "secret" sale of an invention may place the invention "on sale" for purposes of the America Invents Act, and confirmed that the America Invents Act did not change the definition of "prior art" with respect to the on-sale bar.
Cartier's "LOVE" bracelets, designed in the 1960's, have acheived some reknown due to the locking mechanism that can only be opened with a screwdriver. While Cartier has had success in certain countries protecting the overall look of the bracelet itself, the Intellectual Property Office of Singapore has determined that Cartier can not excercise trademark rights over the word "LOVE."
Last year, Cartier opposed a trademark application to register the slogan "LOVE GOLD" as a trademark in Singapore. While Cartier owns registrations for its stylized variation of "LOVE," which includes a horizontal line through the "O" to mimic the appearance of the screws adorning its bracelet, the Intellectual Property Office of Singapore has apparently determined that these rights do not extend to the word itself. The opinion states, "'[l]ove' is a word which is commonly used by jewelry traders and should not be monopolized by any trader....The word 'love,' however, should be free for traders to incorporate into their trademarks for jewelry."
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.
The United States Patent and Trademark Office celebrates a milestone today as it issues United States Patent No. 10,000,000 to the Raytheon Company for "Coherent LADAR Using Intra-Pixel Quadrature Detection." The patent is due to be signed by President Trump and will be the first patent to bear the USPTO's new patent cover design.
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.