Last year, the Federal Circuit decided UltimatePointer, LLC v. Nintendo Co., Ltd. UltimatePointer brought a patent Infringment suit against Nintendo for its Wii console which uses indirect-pointing remote control devices. The district court ruled for Nintendo on summary judgment concluding that direct-pointing devices, and not indirect-pointing devices, were within the scope of the claims of UltimatePointer’s patent. The Federal Circuit affirmed the district court’s ruling, reasoning that the specification of the patent repeatedly emphasize that the invention is directed to a direct-pointing device and that there are disadvantages with indirect pointing devices. This decision underscores the importance of the specification on how claims are construed. As seen in UltimatePointer, LLC v. Nintendo Co., Ltd., a court may limit the scope of a claim based on the content of the specification.
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.
A federal judge in Texas has barred the newly named Houston College of Law from using its name. A U.S. District Court Judge sided with the University of Houston Law Center, granting their request for a temporary injunction in a trademark infringement suit filed against the newly renamed Houston College of Law.
The rival school, formerly known as South Texas College of Law, was sued for trademark infringement in June. The Plaintiff, University of Houston Law Center, claimed the name change and a switch to a similar red-and-white color scheme would confuse prospective students and future employers.
In his opinion, U.S. District Judge Keith Ellison, noted several instances of actual confusion, including a letter delivered to the wrong law school and an email from the Texas Board of Law Examiners sent to the wrong law school. "The appearance of the University of Houston Law Center and Houston College of Law marks are strikingly similar," Ellison wrote. "As an initial matter, two of the three words in defendant's mark appear in UH's mark ("Houston" and "Law"), which is a noteworthy fact in and of itself. Far more troubling, however, is the way in which defendant deploys its mark in the marketplace." Lawyers for the University of Houston call the ruling "a complete victory."
Last Thursday, the Supreme Court announced it will hear Lee v. Tam, an appeal from a Federal Circuit decision that held Section 2(a) of the Lanham Act violates the First Amendment. The case involves a band that was denied registration for the mark “THE SLANTS” under Section 2(a) because the name may disparage individuals of Asian ancestry. This case may also effectively resolve the ongoing dispute involving the Washington Redskins trademarks.
The justices will hear arguments in Lee v. Tam early next year.
Leonard v. Stemtech Int'l, Inc, No. 15-3198 (3d Cir. 2016)
These pictures are worth more than just 1,000 words. In August, the Third Circuit affirmed a jury’s return of a $1.6 million verdict for Andrew Leonard as a result of copyright infringement by Stemtech International. The infringement stemmed from photographs that Leonard took of stem cells using electron microscopes in a highly technical type of photography. The two photographs at issue were created in 1996, then registered with the U.S. Copyright Office in 2007, when he planned to bring the lawsuit.
Over 200 artists, including Hans Zimmer, Jennifer Hudson and members of Weezer, Linkin Park and Earth, Wind & Fire, filed an amicus brief with the 9th Circuit Court of Appeals in support of the bid by Pharrell Williams and Robin Thicke, to overturn the $5.3 million final judgment.
The amicus brief includes concerns over how some artists believe that the 9th Circuit Court's ruling, may have a chilling effect on artist's creativity going forward. The brief states that the case is "unique" because the two works in question "do not have similar melodies" and "do not even share a single melodic phrase," but rather a similar overall "feel" or "groove."
Separately, 10 musicologists have filed their own amicus brief, echoing that the verdict could curtail creativity in popular music, but focusing more on the 9th Circuit's decision to not reject the case early on in the summary judgment phase.
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.