Supreme Court IPR Decisions Present Strategic Challenges to Patent Owners and Accused Infringers

The Supreme Court issued two significant decisions on the same day, both of which concern Inter Partes Reviews (IPRs), the administrative procedure to challenge patent validity.  Since their creation, IPRs have been a potent tool for those accused of patent infringement to challenge patent validity while avoiding the expense and burden of district court litigation. 

 In Oil States Energy Services v. Greene’s Energy Group, the Court rejected a constitutional challenge to the IPR regime, finding that because patents are public rights, Congress may allow them to be reviewed and invalidated by a non-court proceeding. 

 In SAS Institute v. Iancu, the Court held that once an IPR is instituted, the PTO must issue a decision as to all patent claims that are challenged – it cannot decide to pass on some claims and avoid others. 

 Both cases will have an important impact on patent litigation practice.

 Oil States means that IPRs will continue to be a significant, and often effective, tool in patent disputes. 

 SAS Institute will impact how parties petitioning for IPRs should structure their petitions.  Before SAS Institute, a part could petition for review of all claims in a patent, and rely on the PTAB to initiate the procedure only on the most promising claims.  But the decision in SAS Institute requires careful strategic thinking to determine whether to challenge all or just some of the claims in a patent.

Trademark Use Enjoys Broad First Amendment Protection

A recent Second Circuit decision, Wandering Dago, Inc. v. Destito (2018) confirms that trademark owners enjoy broad First Amendment rights in their trademarks, and that government actors may not discriminate against them based on the message and viewpoint conveyed by the mark. 

This is a further extension of the Supreme Court’s decision last year in Matal v. Tam (2017), which held that the Lanham Act’s bar on registration of disparaging marks in unconstitutional.

Wandering Dago is an incorporated business operating a food truck in and near Albany, New York.  Its owners purposely chose as part of its brand what many regard as an ethnic slur, as they themselves are of Italian heritage and wish to weaken the derogatory force of the term, as well as convey a blue-collar image. 

The Defendants are the New York state authority (and its director) charged with administering certain spaces in and near state buildings in Albany and elsewhere.  Among other things, the defendants let certain space near state office buildings to various food vendors so that they can supply lunch to officer workers and tourists.  Defendants denied Wandering Dago’s application for a permit because of the ethnic slur nature of its brand.

But the Second Circuit held that under Matal, such a denial constitutes viewpoint discrimination and is barred by the First Amendment.  It also rejected the argument that the permission to provide food truck services would render Wandering Dago’s mark as “government speech,” subject to a more lenient standard. 

Wandering Dago affirms that corporate messages are entitled to strong First Amendment protection.While most companies do not choose trademarks that are offensive, many companies do adopt slogans and other promotional messages that are sometimes controversial.The Wandering Dago decision affirms that such commercial messages are still protected by the First Amendment and thus the government cannot discriminate against use of such messages

Lindsay Lohan Right of Publicity Decision Expands and Limits Celebrity Rights

A recent New York Court of Appeals decision, Lohan v.  Take-Two Interactive Software, Inc. (NY 2018) at the same time expands and limits the right of publicity, which protects the rights of individuals (often celebrities) in the use of their name, likeness, and persona to promote commercial goods. 

Celebrity Lindsay Lohan claimed that her right of publicity was infringed when video game maker Take-Two Interactive released an action-adventure video game name Grand Theft Auto V.  The game includes a scene where a fictional character named “Lacey Jonas” is encountered, a celebrity whom the player helps escape paparazzi who are pursuing her.

New York’s highest court held that an avatar (i.e., a graphical representation of a person) in a video game could constitute a “portrait” of the person and thus theoretically infringe on the person’s right of publicity.  But that court went on to uphold the dismissal of Lohan’s claim, because the video character was not recognizable as her – it was merely a representation of a “modern beach-going young woman” and thus did not infringe her rights.

Lohan provides valuable guidance for companies who use characters in their products or advertisements to avoid right-of-publicity claims.  That a character (or digital avatar) is not directly represented to be a celebrity will not by itself be a basis to avoid liability.  Rather, a company needs to be careful to ensure that the character is not identifiable as a particular person.  

Chanel Suit: When Can Another Marketer Use Chanel’s Brand?

On March 14, 2018, Chanel filed suit against What Goes Around Comes Around (WGACA), a group of related companies that sell pre-used “vintage” luxury-brand bags and other accessories on its website and in five bricks and mortar stores located in expensive shopping districts around the country. 

What is unusual about the suit is that Chanel is not claiming that WGACA’s items are not authentic.  Rather, Chanel is asserting that WGACA uses the CHANEL brand, promotional materials, and promotional photos in a way that misleads consumers to believe that there is an association between it and WGACA, when in fact Chanel refused to enter into such an association.

Similar cases have been brought before. What makes this case notable is that many of the activities which Chanel complains of involve social media and other 21st century means of promotion.  The case could be a landmark in drawing the line between permissible and impermissible uses of a brand by third parties.

Disney Case Teaches Importance of Clear Contract-Forming Language to Create Contractual Restrictions

Many companies that market products or content protected by intellectual property rights rely on “shrink-wrap” or “box top” licenses to impose licensing restrictions on their customers.  But that strategy only works if the customer is indeed bound by the terms – meaning that he or she will be deemed to have accepted the terms as a matter of contract formation.  A recent decision of a California federal court highlights the need to use language in such licenses that clearly inform the user that they are agreeing to contractual terms when using the product (by opening a box or entering a website). 

Disney Enterprises, Inc. v. Redbox Automated Retail LLC (C.D.Cal. 2018) denied Disney’s motion for a preliminary injunction based on contract and copyright claims.  A key part of the decision was the court’s finding that no contract had been created between the parties when the defendant opened a Disney “combo pack” that included codes used to download Disney movies.  The box top language was not sufficiently clear that the user opening the box was agreeing to contractual terms and restrictions.

Unlike prior cases involving “box top” licenses, Disney’s combo pack did not make clear that by opening the box, the user was entering into a contract by which it accepted restrictions on use and resale of the contents.  The combo pack merely stated that “[c]odes are not for sale and transfer” in medium print.  In very small print, they stated “Terms and Conditions apply.”  That was not enough to alert the user that he or she was agreeing to contractual terms.

The lesson: if you want contractual terms to be binding, you must make clear that the user is entering into a contract

Photograph Case Decision Points Out Limits of Copyright Claims and to a Defense Strategy


There has been an explosion of copyright cases involving infringement of photographs, many involving small claims to one or a few photographs with little commercial value.  How does one defend against such a case?  A recent decision of a New York federal court points to an effective defense strategy.

Typically a case involves a professional photographer (or photograph licensing organization) alleging that it owns the copyright in a photograph that was then taken by a website or other user without paying a royalty fee.  Some attorneys have even turned this into a cottage industry, leveraging the burden of litigation to extract large settlements.  But the recent decision in Fameflynet, Inc. v. The Shoshana Collections, LLC (S.D.N.Y. 2018) may limit the effectiveness of such suits – and points to a strategy to defend them.

Fameflynet involved a typical claim − copying a celebrity photograph on the defendant’s website.  The court found the infringement to be willful.  But in awarding damages, it reasoned that the presumptive damages were only treble the license fee for the photograph − $75.  And since the Copyright Act requires a minimum of statutory damages of $750 for willful infringement, that is what plaintiff was awarded.

The court also awarded about $17,000 in attorney’s fees – much less than the $68,000 sought.  Apart from finding plaintiff’s hourly rates excessive, the court found many hours billed unnecessary, because the same firm had used form pleadings from prior similar cases.

The fairly nominal award points the way to an effective strategy in dealing with such cases:  ascertain the license fee and proffer an offer of judgment under Rule 68 for treble the fee or $750, whichever is greater.  Such an approach might have saved the defendant substantial fees, both its own and the plaintiff’s.

News-Indexing Site Case Limits Fair Use

Copyright protection has long been limited by the fair use doctrine, which allows unlicensed use of others’ content for certain “fair” purposes. 

Many recent decisions have focused on whether a use is “transformative” to determine whether it is fair – meaning it creates something new and different.  But a recent Second Circuit decision involving large quantities of video content rejected a fair use defense even though finding the use transformative.  Companies considering use of others’ content would be well advised to consider the ramifications of the decision.

In the digital world, often there are often huge quantities of copyrighted information that users may wish to sift through to find content they are interested in.  Secondary businesses have arisen that compile and index the content and then allow users to search and locate what they need or are interested in.  Three years ago, in Authors Guild v. Google, Inc., 804 F.3d 202 (2d Cir. 2015), the Second Circuit found such a commercial indexing scheme to constitute “fair use” of the underlying content. 

But recently, in Fox News Network, LLC v. TVEyes, Inc. (2d Cir. 2018), the Second Circuit found another such scheme as not being protected as fair use.  The contrast between the two cases informs users of copyrighted content as to where to draw the line between fair and not fair use.

Steve Madden Handbag Design Dispute Highlights Requirements and Limits of Different Forms of Intellectual Property

A recent lawsuit brought by Steve Madden against Cult Gaia concerning copying of a handbag design highlights the requirements and limits of different forms of intellectual property. 

While neither company is in the luxury goods space, the legal issues at the base of the suit are the same and important for luxury goods companies to consider.

The Dispute

Last summer, Cult Gaia introduced what became a hot item, a bamboo “Ark Bag,” which was heavily promoted on Instagram and other social media.  Shortly thereafter Steve Madden began marketing a very similar design bag.

Cult Gaia’s lawyers cried foul over the alleged copying, and threatened legal action.  Deciding to take matters in its own hands Steve Madden filed an action in federal court, seeking a declaration that Cult Gaia had no rights to infringe. 

Meanwhile, the United States Patent and Trademark Office denied Cult Gaia’s application to register the design as the company’s “trade dress.”  That rejection was in October; Cult Gaia has six months to respond.

A major argument raised by Steve Madden is that the Ark Bag itself closely resembles vintage Japanese bag designs that have been marketed for years. 

How then can Cult Gaia complain of copying when its own work is alleged to be a copy?  That seemingly simple moral argument, however, is not necessarily consistent with the law.

New York Federal Court Holds Embedding Photos May Infringe Copyright

A New York federal court in Goldman v. Breitbart News has held that the common internet practice of “embedding,” also referred to as “in-linking” infringes the copyright of content that is embedded. 

A very common practice for a website involves including a link to another site where content (articles, photographs) is stored, and then displayed on the website.  The content it is never stored on the linking site but rather on the linked-to website. 

In 2007, the Ninth Circuit Court of Appeals held in Perfect 10 v. Google that this practice does not infringe on the exclusive “display” right in the Copyright Act. But in February a federal court in New York rejected the Ninth Circuit’s view and held that embedding infringes on the right of display. 

Plaintiff Justin Goldman, a photographer, took a photo of quarterback Tom Brady and posted it to his Snapchat page.  The photo then spread around the internet, and was eventually posted to Twitter.  The defendants – who include Breitbart News, Time, Gannett and the Boston Globe – wrote articles about Brady (and his involvement in the Boston Celtics recruiting Kevin Durant), and then embedded the Twitter post, displaying the photograph of Brady with the articles.   Goldman sued for copyright infringement, asserting that this practice infringed on his exclusive right to “display” the photos.

            This decision has the potential for a major impact on many websites and blogs, which often link to content on other sites.  These sites now must consider whether they need a license to use linked-to content.  A further thing to consider is whether sites that allow uploading need to amend their Terms of Use to permit linking of some kind. 

California Case Sheds Light on Liability Issues from Use of Internet Bots to Gather Data

A recent California decision, Ticketmaster LLC v. Prestige Entmt Inc. (C.D.Cal 2018) pitted a website owner, Ticketmaster, against a company that used internet bots and other technical tricks to make massive purchases of tickets and then resell them for profit, something Ticketmaster strenuously wished to avoid.  On a motion to dismiss the complaint, the district court dismissed some claims by Ticketmaster but kept others. 

The decision teaches important lessons for companies whose websites contain large amounts of data or transactions to the public, but wish to keep competitors from extracting this data in mass amounts or engaging in mass transactions:

  • Adopt rigorous Terms of Use that prohibit bots, mass data extraction, or whatever other concerns one might have with competitors.
  • Include a license in the Terms of Use to all content and condition the license on adherence to the Terms of Use.
  •  Make rigorous use of technical measures (CAPTCHA, for example) to limit access to mass users, and prohibit circumvention in the Terms of Use.
  • Include liquidated damages provisions in the Terms of Use – but make sure they are reasonable both in the threshold where they kick in, and how they are calculated.
  • Most obviously, make sure that users must affirmatively agree to the Terms of Use – and record their assent to the Terms.

Fourth Circuit DMCA Case Teaches How to Ensure Immunity For Third Party Postings

A recent Fourth Circuit decision, BMG Rights Mgmt LLC v. Cox Communications Inc. (4th Cir. 2018) affirmed summary judgment that an internet service provider, an ISP, was not entitled to claim Digital Millenium Copyright Act (DMCA) immunity from copyright infringement for third-party postings through its service, opening up the company to massive copyright liability. 

A central part of the DMCA, a part of U.S. copyright law, is the exemption from direct and indirect liability of internet service providers and other intermediaries on the internet.

In Cox, the ISP had failed to implement a reasonable policy to remove repeat infringers, a condition of DMCA immunity, and so lost its immunity.

The Cox decision teaches several important lessons to companies who wish to use the DMCA to avoid copyright liability. 

Court Allows Forever 21’s Second Amended Complaint Against Gucci to Proceed

In a prior post, we discussed Forever 21’s lawsuit against Gucci in federal court in Los Angeles, seeking to cancel Gucci’s registrations for its Blue-Red-Blue and Green-Red-Green striped marks, and for a declaration that its clothing and accessory products that incorporate similar striping are not infringing. 

As we noted there, the suit raises many issues of trademark law around Gucci’s rights in these designs. Among the issues of Gucci’s rights in the designs include whether the designs function as trademarks; whether they have achieved sufficient recognition and association with Gucci exclusively; and whether the designs are “aesthetically functional,” meaning that there is a competitive need to permit their use by others. 

The issues of infringement raised by the case include whether Gucci will be able to establish consumer confusion, either at the point of sale or in the post sale context, whether Forever 21’s house mark dispels confusion, and whether there is a claim for trademark dilution.  The complexity of the issues stems from the fact that trademark rights are not the right to exclude others from use of a word or symbol, but the right to prevent consumer confusion or deception. 

Second Circuit Decision Extends Non-Compete Law to IP Licensing Agreements

Licensing is a critical component in the economic exploitation of intellectual property —  allowing the IP owner to leverage a licensee’s resources to exploit the IP for mutual benefit. Intellectual property licenses often contain terms that restrict the licensee’s use of the protected technology or design outside the terms of the license.  These terms are usually not thought to present any special legal problems.

But a recent Second Circuit decision should change that thinking.  Crye Precision LLC v. Duro Textiles, 689 Fed.Appx. 104 (2d Cir. 2017), extends the common-law restrictions on non-compete provisions to a new area:  intellectual property licenses.  Crye appears to break new ground in applying this law to restrictions in an intellectual property license.  Counsel who draft licensing agreements need to consider whether restrictions often found in such agreements would be enforceable under the non-compete principles.     

Federal Court Broadly Applies Preclusion from TTAB Decision

Parties involved in trademark disputes should be aware of a federal district court opinion that broadly applies preclusive effect to a prior Trademark Office administrative proceeding.  In 2015, the Supreme Court ruled that decisions of the Trademark Trial and Appeal Board (TTAB) are to be given the same preclusive effect as a prior court decision under traditional rules of res judicata.  But because the issues decided before the TTAB are often different than those decided in district court, it remains unclear how such preclusion would be applied. 

A recent decision of a New York federal court, Cesari SRL v. Peju Province Winer LP, applies the doctrine of collateral estoppel broadly, and the defendant was precluded from re-visiting the issue of likelihood of confusion.

Parties involved in trademark disputes need to carefully consider whether to litigate in the TTAB or federal court, since a decision in one forum may well lead to unexpected results in later litigation.  If it is expected that infringement litigation will result, then it is often advisable to bring an action in federal court (either an infringement or declaratory judgment action) and stay the TTAB proceeding, so that all issues can be decided together.

Federal Circuit Interprets AIA “On-Sale” Bar to Include Confidential Sales, Leaves Open Issue of Completely Secret Sale

Companies who seek patent protection for their technology should be aware of a recent Federal Circuit decision that broadly construes the “on sale” bar to include confidential sales, and thus increasing the time pressure to file for a patent.  The Federal Circuit’s recent denial of en banc review in Helsinn Healthcare v. Teva Pharmaceuticals leaves standing a prior construction of the “on sale” bar under the America Invents Act. 

It often happens that parties enter into confidential agreements for commercial exploitation of technology they intend to patent.  These parties need to be aware that these agreements might well be deemed a “sale,” triggering the one-year clock for the on-sale bar.

The issue revolves around whether the American Invents Act of 2011 changed the scope of the patent “on sale” bar – by which protection is barred for inventions that are commercially offered for sale more than one year before filing of the patent application − to include confidential or secret sales.  The Federal Circuit opinion holds that “[i]f the existence of the sale is public, the details of the invention need not be publicly disclosed in the terms of sale.”  The Federal Circuit refused to address the broader question of completely secret transactions.

Counsel advising companies seeking patent protection should look out for any commercial exploitation – including by confidential agreement with other parties – of technology in the process of a patent application.  Where that has occurred, there may be a need to move quickly to file a patent within the one-year window.  

Celebrity Chef Disputes with Restaurants Highlight Importance of IP Protection

This is the age of the celebrity chef – and their names and personas are valuable commodities in promoting both restaurants and related food businesses.

Many restaurants are founded on the merging of up-and-coming talent with money backers seeking to exploit that talent and renown. In the early stages, both sides are excited to combine their resources to invest in what will hopefully become a successful project. Later, however, when something goes wrong in the relationship between the talent and the money, there can be bitter disputes over who can exploit the chef’s famous name.

We were recently quoted in an article, Why Restaurants Can’t Always Fire Chefs Accused of Sexual Misconduct, that discusses the legal entanglements that can surround disputes between celebrity chefs and restaurant owners.

Among other things, we are quoted as discussing how a chef can ensure that he retains control of his name and the reputation that goes with it, by structuring part of the deal as a trademark license.

To read the article click here

Are you a Trademark Bully? How to Avoid Being and Being Labelled As One

Trademark Bully.  A label often used to characterize a trademark owner by targets of enforcement efforts. 

Sounds bad – conjures up images of a powerful, large corporate entity trying to crush the little guy. Congress even asked the Trademark Office to research and prepare a report about it.  As a defense to enforcement efforts by trademark owners, some targets of enforcement efforts have taken to social media to attempt to generate negative publicity against trademark owners. 

A trademark bully is a trademark owner who uses its trademark right to harass and intimidate another business beyond what the law might be reasonably interpreted to allow.  It does not mean big vs. little – to the contrary, big trademark owners are often expected and even required to be the most aggressive in enforcing their rights.

In this post, we consider how to assess whether an enforcement action is reasonable, how to avoid being labelled a “bully,” and how to fight back against such a charge.

Vuitton Win Against LVL XIII Highlights Fashion Startup Challenges in Protecting Their Designs

Louis Vuitton scored a win against start-up sneaker manufacturer LVL XIII, when a federal appeals court affirmed dismissal of the latter’s trade dress suit against Vuitton.  The case illustrates the difficulty of protecting new designs, particularly for small fashion and luxury goods startups. 

LVL XIII asserted “trade dress” rights in its design of a metal plate at the sneakers’ toe-end – meaning that the design functions as its trademark by identifying the sneakers as it brand.  But such claims require a strong showing of consumer association – that the public identifies the design with a single brand owner.  That takes time and significant investment of resources to promote and market the design.  

As LVL XIII learned to its chagrin, until a high level of consumer association is reached, others are free to copy.  And, the very act of copying by others takes away from exclusivity in the design, which can destroy any chance of reaching the required consumer association.  This can be especially challenging to small design companies.

Design companies need a strategy for protection.  They should consider using additional forms of intellectual property to protect the designs.  These rights include design patents and copyright, neither of which require a showing of consumer recognition.  That then allows time for the company to build up consumer recognition in the design and gain trade dress rights.

Heads I Win, Tails You Pay: Challengers Pay PTO’s Legal Fees

Two recent decisions should strongly influence any decision as to how challenge Patent and Trademark Office decisions in court.  Parties have two options: bring a civil action in district court against the PTO (which has the advantage of a de novo trial, with new evidence allowed and no deference to the PTO), or appeal to the Federal Circuit (deferential review, limited to the record before the PTO).  

But recent decisions (one for trademarks, one for patents) now require challengers to pay the PTO’s legal fees for district court challenges – win or lose.  Fees awarded have been significant – in one case exceeding $75,000.  Appeals to the Federal Circuit, in contrast, do not require payment of the PTO’s fees.

Companies deciding how to appeal an adverse PTO decision must now balance the advantages of de novo review in district court against the prospect of paying out heavy fees to the PTO.  Unless there is a strong reason to take the district court option (and the IP involved is very valuable), the better option in most cases is an appeal to the Federal Circuit. 

Making “Terms of Use” Stick

A recent Second Circuit decision (Meyer v. Uber Technologies (2017)) provides important guidance on ensuring that Terms of Use contained in websites and apps bind their users as contractual agreements. Terms of Use that may be particularly important for companies may include arbitration and no-class-action clauses.

The decision is notable because it held the terms to be binding, even though they were not visible during the registration process, though they could be accessed by a hyperlink.

Companies are well advised to have legal counsel review the layout and registration process on their websites and apps that are intended to bind users to such terms, and ensure that best practices are followed to maximize enforceability. What is critical is that “the layout and language of the site give the user reasonable notice that a click will manifest assent to an agreement.”

Key lessons that can be gleaned from the decision include:

  • require affirmative assent to the terms of use;

  • there should be a clear, easily readable statement positioned next to the registration (or assent) button indicating agreement to the terms; and

  • if the terms are on a separate page connected with a hyperlink, the hyperlink label should be clearly demarcated by color and underline.

More pointers are outlined in our detailed discussion of the case