The Supreme Court has granted cert on several new cases today including four relating to intellectual property issues, including a copyright case, a trademark case, as well as two patent cases. Lyle Denniston of the Scotus Blog reports that the new cases will probably be argued in April, the last sitting of the term.
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An original work of authorship is accorded copyright protection when the work is fixed in a tangible medium of expression (17 U.S.C. §102). However, a copyright owner cannot sue for infringement of the copyrighted work until either 1) “registration has been made” of the work to the Copyright Office, or 2) the work is refused registration by the Copyright Office and the required deposit, application, and fee have been delivered to the Copyright Office in proper form (17 U.S.C. §411).
The phrase “registration has been made” has been interpreted differently by different federal appeals courts. Some courts have ruled the phrase means that the application has been accepted and registered by the Copyright Office. Other courts have ruled the phrase means that a properly filed application for copyright has been received by the Copyright Office. These other courts find support in their interpretation from other statutes where the same phrase is understood to mean properly applying for registration. Supporters of both interpretations point to part 2) of the statute for support of their respective interpretation.
This conflict among federal appeals courts has been recognized in the highest courts, and now the Supreme Court has agreed to settle the dispute in the case, Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, et al. Does the phrase “copyright registration being made” require only a properly filed application to be received by the Copyright Office? Or does that phrase require an action to be taken by the Copyright Office—either acceptance or refusal—in response to receipt of a properly filed application? The Supreme Court will soon answer that question.
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.
One of a handful of patent cases accepted by the Supreme Court this term, Icon Fitness v. Octane Health and Fitness presents the question of whether Brooks Mfg. v. Dutailier, Inc., 393 F.3d 1378 (Fed. Cir. 2005) should be overturned to the extent that it “shoehorned” the rigid, two-part test for sham litigation into the Patent Act’s test for fee shifting. The petitioner, Octane Fitness, LLC, recently filed its brief arguing that the standard should be relaxed and raises several notable points.
The Supreme Court Rules that “BOOKING.COM” Is Not Generic and Is Entitled to Federal Trademark Registration
In an 8-1 opinion penned by Justice Ruth Bader Ginsburg, the United States Supreme Court rules that the mark “BOOKING.COM” is not generic and is entitled to federal trademark registration, in light of evidence that consumers perceive the mark as a source-identifier. Though the mark “BOOKING.COM” is composed of the generic combination of simply “booking” and “.com” for use in connection with providing online hotel reservation services, the Supreme Court ruled in United States Trademark Office Et Al. v. Booking.Com B.V. that because the evidence showed that consumers do not perceive the term “BOOKING.COM” as generic, it is therefore registerable.
A trademark is any word, slogan, or symbol which is used in commerce with goods and services to indicate their source of origin and to distinguish them from the goods and services of others. Marks are considered by strength and distinctiveness based on a scale from not distinctive at all, i.e., generic, to highly distinctive, such as an arbitrary mark. Under the federal trademark registration system established by the Lanham Act, the U.S. Patent & Trademark Office (“USPTO”) may not issue a federal trademark registration for weak, non-source identifiying marks, such as those that are deemed to be “generic.” Previously, applications for marks such as “LAWYERS.COM”, “HOTELS.COM”, “”MATTRESS.COM” were refused federal trademark registration on the basis that they were generic.
More distinctive than a generic mark is a mark that is considered “descriptive,” which also may be refused registration for not serving as a source-identifier. For weaker marks such as these, there is still a possibility to overcome the USPTO’s refusal and reach federal trademark registration upon a showing that the mark has acquired distinctiveness or reached “secondary meaning.” To establish acquired distinctiveness or secondary meaning, an Applicant my provide evidence that demonstrates that consumers are so familiar with this mark, that they perceive it to indicate the provider of the goods or services, and not a description thereof. If the applicant proves that a mark has acquired distinctiveness in the eyes of the consumers to the satisfaction of the USPTO’s Examining Attorney, then an application for a weaker mark may still be approved for federal registration on the Principal Register.
While the parties agreed that “booking” by itself would be a generic and an unregisterable mark, Booking.com contended that the combination of “booking” and “.com”, along with the evidence of consumer perception, edged the mark over to being descriptive, source-identifying, and therefore, registerable. The USPTO, on the other hand, took the position that where a generic term, such as “booking”, is combined with a generic top-level domain like “.com”, the resulting combination is generic and therefore unregisterable. The USPTO went so far as to urge the Supreme Court to adopt the position that every “generic.com” term is generic, absent an exceptional circumstance of being a play on words, such as “www.tennis.net.”
When the application for the “BOOKING.COM” mark was refused by the USPTO, Booking.com sought review in the U. S. District Court for the Eastern District of Virginia, where it introduced new additional evidence as to the perception consumers have upon encountering the mark. This evidence included a consumer survey where respondents strongly the mark “BOOKING.COM” with the online hotel services rendered by Booking.com, rather than a general type of genus of services. In concluding that the mark was not generic, the District Court found that the combination of “booking” and “.com”, along with the extensive evidence provided, established that the mark should be registerable as a federal trademark. The United States Fourth Circuit Court of Appeals affirmed the lower court’s decision, finding no error in the District Court’s assessment of how consumers perceive the mark, and also rejecting the USPTO’s rule that combining a generic term with a generic top-level domain such as “.com” makes the mark generic.
The Supreme Court affirmed the Fourth Circuit Court of Appeals, and held: “A term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” While rejecting the ruled proffered by the USPTO that all “generic.com” terms are generic terms, at the same time, the Highest Court clearly cautioned that the holding does not make a blanket rule in the reverse: “[W]e do not embrace a rule automatically classifying such terms as nongeneric.” Indeed, the opinion explains that the test for whether any given “generic.com” term is generic, “depends on whether consumers in fact perceive that term as the name of a class or, instead, as a term capable of distinguishing among members of the class.” Here, after considering consumer perception, the Supreme Court found the mark “BOOKING.COM” not to be generic but source-identifying, and therefore, eligible for federal trademark registration.
The Supreme Court today ruled unanimously that the burden of proving patent infringement rests with the patent holder, even in cases where the parties had agreed upon a licensing deal in the past.
The case at issue, Medtronic, Inc. v. Mirowski Family Ventures, involved implantable heart stimulation devices (pacemakers) which were licensed by Mirowski to Medtronic in 1991. In late 2007, Medtronic filed an action with the U.S. District Court of Delaware seeking declaratory relief that its new line of devices did not infringe upon the Mirowski patents. The trial court entered a judgment of non-infringement in Medtronic’s favor, which was reversed in 2012 by the Federal Circuit, based on a holding that the trial court did not properly allocate the burden of proof in the initial proceedings.
The standard for willful patent infringement will be reviewed this term by the Supreme Court of the United States, as reported by SCOTUSblog. The Court agreed to accept two cases that involve the issue of enchanced damages in patent infringement litigation, Halo Electronics v. Pulse Electronics, and Stryker Corp v. Zimmer. Under the Patent Act, the owner of a patent may seek triple damages where willful infringement has been proven. The Supreme Court is expected to consider the proper framework for determining whether infringement in a particular case is willful. A decision in these consolidated cases will be rendered by June 2016.