Amster Rothstein & Ebenstein, LLP - Intellectual Property Law Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Sun, 05 Jul 2020 06:58:11 +0000 Floodlight Design CMS ARE Patent Law Alert:<br>U.S. Patent and Trademark Office Provides Additional Relief for Small Businesses Affected by COVID-19 Pandemic<br> <span style="color: rgb(51, 51, 51); font-size: 8.5pt;">In an effort to mitigate the continuing effects of the COVID-19 pandemic on individuals and small businesses, on June 29, the U.S. Patent and Trademark Office (USPTO) published a notice providing additional relief for certain fee payments by small and micro entities.</span><div style="line-height:10.5pt">&nbsp;</div> <div style="line-height:10.5pt"><span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;&#10;color:#333333;">Specifically, the USPTO will consider basic filing fees, search and examination fees, late filing surcharges, basic national fees, issue fees and maintenance fees that had been due between and including March 27 and September 29, 2020 timely paid if payment is made on or before September 30, provided the payment is accompanied by a statement that any delay in payment was due to the COVID-19 outbreak. This additional relief is only available to small and micro entities.</span></div> <div style="line-height:10.5pt">&nbsp;</div> <div style="line-height:10.5pt"><span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;&#10;color:#333333;">In addition to this relief, other extensions of time and other relief remain available on a case-by-case basis, such as extensions of time for office action replies, petitions to revive abandoned applications and petitions to accept delayed payment of maintenance fees. </span></div> <div style="line-height:10.5pt">&nbsp;</div> <div style="line-height:10.5pt"><span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;&#10;color:#333333;">Moreover, the fee for petitions to revive are waived for applicants and patent owners who were unable to submit a filing or payment on time due to the COVID-19 outbreak. The USPTO has clarified that a petition to revive must be filed by July 31 to be eligible for waiver of the petition fee. &nbsp;</span></div> <div style="line-height:10.5pt">&nbsp;</div> <div style="line-height:10.5pt"><span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;&#10;color:#333333;">Further, for proceedings before the PTAB, a party may still request an extension of time where the COVID-19 outbreak has prevented or interfered with a filing by contacting the PTAB directly by telephone or e-mail.</span></div> <div style="line-height:10.5pt">&nbsp;</div> <div style="line-height:10.5pt"><span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;&#10;color:#333333;">The full text of the USPTO's June 29 notice can be found </span><span style="font-size:&#10;8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;"><a href="">here</a></span><span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;color:#333333;">.</span></div> <div style="line-height:10.5pt">&nbsp;</div> <div style="line-height:10.5pt"><span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;&#10;color:#333333;">We will continue to monitor and report on developments in this area. In the meantime, feel free to contact us to learn more.</span></div> <div style="line-height:10.5pt">&nbsp;</div> <div style="line-height:10.5pt"><b><span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;&#10;color:#333333;">*About the Author(s)</span></b></div> <span style="font-size:8.5pt;Verdana&quot;,sans-serif;Times New Roman&quot;;Times New Roman&quot;;color:#333333;"><a href="" target="_blank">Benjamin Halpern</a> is a partner and <a href="" target="_blank">Albert J. Boardman</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice focuses on patent prosecution and other intellectual property matters.</span> Wed, 01 Jul 2020 00:00:00 +0000 ARE Trademark Law Alert:<br>In, the Supreme Court Holds that a “” Term can be Eligible for Federal Trademark Protection<br> (July 1, 2020) On Tuesday, June 30, 2020, the Supreme Court held in an 8-1 decision that, &ldquo;[a] term styled &lsquo;; is a generic name for a class of goods or series only if the term has that meaning to consumers.&rdquo; <em>U.S. Patent and Trademark Office et al. v. B.V.</em>, No. 19-46, Slip op. at 1 (U.S. Jun. 30, 2020). <br /><br />This decision upholds the Eastern District of Virginia&rsquo;s ruling, which was affirmed by the Fourth Circuit, that the primary significance of &ldquo;; to consumers was <strong><em>not </em></strong>as a generic term, but a term for a specific on line hotel reservation site, and that the addition of &ldquo;.com&rdquo; had the ability to evolve an otherwise generic term into something distinctive. The Court did, however, highlight that regardless of this ruling, it would not embrace a bright-line rule that automatically classifies all &ldquo;; terms as non-generic. Rather, the decision in any given case depends on whether consumers perceive that particular term as a source indicator. Slip op. at 11.<br /><br /><strong>Background</strong><br /><br />In 2011 and 2012,, an online travel and reservation company, filed federal trademark applications to register marks containing the term &ldquo;; However, both the examining attorney at the U.S. Patent and Trademark Office (&ldquo;PTO&rdquo;) and the Trademark Trial and Appeal Board (&ldquo;TTAB&rdquo;) refused registration, concluding that &ldquo;; was a generic term when applied to online hotel-reservation services and was not registrable. Slip op. at 4. The TTAB further noted that &ldquo;customers would understand the term BOOKING.COM primarily to refer to an online reservation service for travel.&rdquo; Slip op. at 5. The TTAB went further, stating that even if &ldquo;; were descriptive and not generic, it would still be unregistrable because it lacked the requisite distinctiveness. Slip op. at 5.<br /><br />Following this ruling, sought review in the U.S. District Court for the Eastern District of Virginia, which reversed the TTAB. Slip op. at 5. In the District Court, introduced new evidence in the form of a &ldquo;Teflon&rdquo; consumer survey, which concluded that roughly 75% of participants viewed &ldquo;; as a brand name, and not as a generic term for online hotel-reservation services. <br /><br />Based on this evidence, the District Court concluded that &ldquo;; was not a generic term for online hotel reservations to the relevant consumers. Slip op. at 5. Additionally, the District Court found that &ldquo;; had acquired secondary meaning regarding hotel-reservation services, and thus met the distinctiveness requirement for trademark registration. Slip op. at 5.<br /><br />The PTO appealed to the U.S. Court of Appeals for the Fourth Circuit (&ldquo;the Fourth Circuit&rdquo;) but disputed only the District Court&rsquo;s classification of &ldquo;; as not generic. Slip op. at 5. The Fourth Circuit affirmed, rejecting the PTO&rsquo;s argument that the combination of &ldquo;.com&rdquo; with a generic term like &ldquo;booking&rdquo; is necessarily generic. <em> B.V. v. United States Patent &amp; Trademark Office</em>, 915 F.3d 171 (4th Cir. 2019).<br /><br />The PTO then filed a Petition for Certiorari to the U. S. Supreme Court to resolve the issue of whether combining a generic term with &ldquo;.com&rdquo; yields a generic term as well. Slip op. at 6.<br /><br /><strong>Majority Opinion of the Supreme Court</strong><br /><br />Justice Ginsberg delivered the opinion of the Court, in which Chief Justice Roberts and Justices Thomas, Alito, Sotomayor, Kagan, Gorsuch and Kavanaugh joined. Justice Breyer filed a dissenting opinion.<br /><br />The Court began by noting that whether &ldquo;; is generic turns on whether that term, taken as a whole, signifies to consumers a class of online hotel-reservation services. Slip op. at 7. It concluded that because consumers do not perceive &ldquo;; in that manner, &ldquo;; is not generic. Slip op. at 7.<br /><br />The Court also rejected the PTO&rsquo;s proposal of a nearly <em>per se</em> rule that when a generic term is combined with a generic top-level domain like &ldquo;.com&rdquo; the resulting combination is generic as well. Slip op. at 7. This rule, if accepted, would have rendered &ldquo;; ineligible for registration, regardless of any surveys or other evidence of consumer perception. Slip op. at 7. The Court additionally found the PTO&rsquo;s argument inconsistent with the PTO&rsquo;s own past practices, which registered both &ldquo;ART.COM&rdquo; and &ldquo;DATING.COM.&rdquo; Slip op. at 8.<br /><br />Although the PTO warned that a ruling in favor of would grant the company and others like it a monopoly, the Court stated that those fears were exaggerated, emphasizing that trademark law had its own inherent safeguards to address such concerns. Slip op. at 12.<br /><br />Further, in reaching its decision, the Court rejected the PTO&rsquo;s reliance on the hundred and thirty-year-old <em>Goodyear&rsquo;s India Rubber Glove Mfg. Co. v. Goodyear Rubber Co.</em>, 128 U. S. 598, 602 (1888) case. That decision held that adding a generic corporate designation like &ldquo;Company&rdquo; to a generic term does not confer trademark eligibility. The Court found the analogy faulty because only one entity can occupy a particular Internet domain name at a time, so a &ldquo;; term could convey to consumers an association with a particular website. Slip op. at 9. Moreover, &ldquo;an unyielding legal rule that entirely disregards consumer perception&rdquo; is incompatible with a bedrock principle of the Lanham Act. Slip op. at 10. It is questionable if <em>Goodyear </em>would be decided the same way today.<br /><br /><strong>Concurring Opinion</strong><br /><br />Justice Sotomayor filed a concurring opinion focusing on the nature of the evidence required to demonstrate that a term may be generic. <br /><br /><strong>Dissenting Opinion</strong><br /><br />Justice Breyer filed the only dissenting opinion which gave more credence to the PTO&rsquo;s concerns about monopolization. He concluded that although the Lanham Act altered the common law in certain respects, &ldquo;it did not disturb the basic principle that generic terms are ineligible for trademark protection.&rdquo; <em>U.S. Patent and Trademark Office et al. v. B.V.</em>, No. 19-46, slip op. at 4 (U.S. Jun. 30, 2020) (Breyer, J., dissenting).<br /><br />He also emphasized his fears that the majority &ldquo;decision will lead to a proliferation of &lsquo;; marks, granting their owners a monopoly,&rdquo; and that &ldquo;[t]his result would tend to inhibit, rather than to promote, free competition in online commerce.&rdquo; Slip op. at 13 (Breyer, J., dissenting). <br /><br /><strong>Practical Effect</strong><br /><br />In <em></em>, the Court&rsquo;s decision rejects a nearly <em>per</em> se rule against trademark protection for a &ldquo;; term. Under the &ldquo;mark as a whole&rdquo; test adopted by the Court, it is likely that there will start to be a lot more applications for &ldquo;;, &ldquo;; and the like trademarks. Once again, the Court&rsquo;s rejection of a <em>per se</em> rule in favor of a flexible approach will likely result in more disputes down the road to be resolved. <br /><br />We will continue to monitor and report on developments in U.S. Trademark law. In the meantime, please feel free to contact us to learn more. <br /><br />* <a href="" target="_blank">Anthony Lo Cicero</a> and <a href="" target="_blank">Charles Macedo</a> are partners, <a href="" target="_blank">Richard Mandaro</a> is a senior counsel and Herbert Blassengale is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practices focuses on all facets of intellectual property. <br /><br type="_moz" /> Wed, 01 Jul 2020 00:00:00 +0000 ARE Patent Law Alert:<br>Federal Circuit Upholds Decision Blocking Claims Against Amazon’s Customers In A Follow On Lawsuit Based on Claim Preclusion and Kessler Doctrine<br> In a precedential decision on June 17, 2020, the U.S. Court of Appeals for the Federal Circuit held that software developer PersonalWeb could not assert patent infringement claims against Amazon customers that use the Amazon S3 cloud storage system after its similar infringement claims against Amazon were dismissed in a prior lawsuit. <i>In re PersonalWeb Technologies LLC</i>, No. 19-1918 (Fed. Cir. 2020).<div>&nbsp;</div> <div>The decision by the three-judge panel upheld the district court ruling that claims regarding acts of infringement that occurred prior to the final judgment in the first district court action were barred by claim preclusion, and that the <i>Kessler </i>doctrine barred infringement claims relating to Amazon S3 after the final judgment.</div> <div>&nbsp;</div> <div><b><u>Background </u></b></div> <div>&nbsp;</div> <div>The patents in suit related to an invention in the field of computer networks referred to as &ldquo;True Names&rdquo; for data file items which created a unique identifier for a data item that related to the content of the data itself.</div> <div>&nbsp;</div> <div>In December 2011, PersonalWeb sued Amazon and Dropbox, Inc. in the Eastern District of Texas alleging that Amazon S3, Amazon&rsquo;s web-based storage system, infringed the &ldquo;True Name&rdquo; patents.</div> <div>&nbsp;</div> <div>After the district court issued its claim construction order, PersonalWeb stipulated to the dismissal of its claims against Amazon and the district court later issued an order dismissing the claims with prejudice.</div> <div>&nbsp;</div> <div>In January 2018, PersonalWeb filed a number of new lawsuits in various districts against web operators which were customers of Amazon. In the new lawsuits, PersonalWeb alleged that by using Amazon S3, Amazon&rsquo;s customers had infringed the same &ldquo;True Name&rdquo; patents. Amazon intervened in the actions and filed a declaratory judgment against PersonalWeb seeking an order barring PersonalWeb&rsquo;s infringement actions against Amazon and its customers based on the dismissal with prejudice in the prior action in the Eastern District of Texas.</div> <div>&nbsp;</div> <div>The customer cases and the declaratory judgment action were consolidated in a multi-district litigation proceeding and assigned to the Northern District of California. Amazon moved for summary judgment in light of the with-prejudice dismissal of PersonalWeb&rsquo;s action against Amazon in the Texas case, arguing that PersonalWeb was barred from suing Amazon or its customers for infringement based on the Amazon S3 system.</div> <div>&nbsp;</div> <div>The district court granted the motion in part, holding that claim preclusion barred PersonalWeb&rsquo;s claims regarding acts of infringement that occurred prior to the final judgment in the Texas action, and that the <i>Kessler </i>doctrine barred infringement claims relating to Amazon S3 after the final judgment. <i>See Kessler v. Eldred</i>, 206 U.S. 285 (1907). The <i>Kessler </i>doctrine prevents previously defeated parties in an infringement suit from bringing litigation based on the same invention against the customers of the winning party of the previous suit.</div> <div>&nbsp;</div> <div>The district court found that the claim preclusion requirements under <i>Kessler</i> were met. The court held that (1) the with-prejudice dismissal in Texas was a final judgment on the merits; (2) Amazon&rsquo;s customers were in privity with Amazon; and (3) the causes of action in the Texas case and in the customer cases were the same. The district court rejected PersonalWeb&rsquo;s argument that the claims against Amazon in the Texas case were limited to the multipart upload features of S3 and did not extend to S3 in general. The district court dismissed the eight customer cases.</div> <div>&nbsp;</div> <div><b><u>Federal Circuit Holding </u></b></div> <div>&nbsp;</div> <div>On appeal, PersonalWeb first argued that claim preclusion was inapplicable to the actions against Amazon&rsquo;s customers because the Texas action involved a different feature of the S3 system.</div> <div>&nbsp;</div> <div>On this issue, the Federal Circuit held that factual differences in PersonalWeb&rsquo;s theories of infringement in each case were not great enough to avoid claim preclusion.</div> <div>&nbsp;</div> <div>Because the allegations were based on the &ldquo;same set of transactions&rdquo; regarding the S3 product generally, the Federal Circuit upheld the ruling that claim preclusion barred PersonalWeb from asserting infringement claims in the customer cases for actions pre-dating the judgment in the Texas case.</div> <div>&nbsp;</div> <div>PersonalWeb also argued that the with-prejudice dismissal of the action against Amazon in Texas did not constitute adjudication of non-infringement and therefore should not have triggered analysis under the <i>Kessler </i>doctrine.</div> <div>&nbsp;</div> <div>Because claim preclusion generally does not apply to acts of alleged infringement that occur after the final judgment of the earlier suit, PersonalWeb argued that the <i>Kessler </i>doctrine cannot be invoked unless the infringement or invalidity issue was &ldquo;actually litigated.&rdquo; PersonalWeb argued that the issues were not actually litigated in the Texas case because PersonalWeb dismissed its claims before there was an adjudication.</div> <div>&nbsp;</div> <div>However, the Federal Circuit held that the stipulated dismissal with prejudice in the Texas case operated as an adjudication on the merits for claim preclusion purposes and therefore resolved the dispute about liability for the patent infringement assertion. The stipulated dismissal conferred upon Amazon a limited trade right to continue producing, using, and selling Amazon S3 and the Federal Circuit therefore upheld the decision.</div> <div>&nbsp;</div> <div><b><u>Practical Significance</u></b></div> <div>&nbsp;</div> <div><i>PersonalWeb</i> offers some insights into how the Federal Circuit is handling issues of claim preclusion and the <i>Kessler</i> doctrine in follow on lawsuits involving the same products (albeit different parties) and the same patents as resolved in prior lawsuits.</div> <div>&nbsp;</div> <div>We will continue to monitor cases regarding this and similar patent issues. Please feel free to contact us if you have any questions about how this decision may impact your rights.</div><br /><div><em>*&nbsp;</em><em><a href="" target="_blank">Charles&nbsp;</a></em><em><a href="" target="_blank">R. Macedo</a> and <a href="" target="_blank">Douglas A. Miro</a> are partners, and Devin Garrity is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practices involve all aspects of intellectual property law, including patent litigation. They can be reached at <a href=""></a>, <a href=""></a>, and <a href=""></a>.&nbsp;</em></div><div>&nbsp;</div> Fri, 26 Jun 2020 00:00:00 +0000 Charles Macedo Authors Article on Pivotal Arthrex Patent Decision for Bloomberg Law<br> In <em>Arthrex Inc. v. Smith &amp; Nephew Inc.</em>, Judge Kimberly A. Moore, writing for the Federal Circuit in 2019, made a broad pronouncement that administrative patent judges of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office were &ldquo;principal officers&rdquo; of the U.S. and must be nominated by the president with the advice and consent of the Senate under the Appointments Clause of the U.S. Constitution.<br /> <br />In this article for Bloomberg Law, <a href="" target="_blank">Charles Macedo</a> explores the Arthrex ruling, which still offers lessons for patent attorneys.<br /> <br />Charley is a partner at Amster, Rothstein &amp; Ebenstein LLP, where he practices all facets of intellectual property law, including patent, trademark and copyright law. He has successfully represented petitioner and patent owners at the PTAB, and frequently represents parties and amicus at the Federal Circuit and Supreme Court on important issues related to intellectual property law.<br /> <br />Read more: <a href="" target="_blank"></a> <br /> Tue, 23 Jun 2020 00:00:00 +0000 Charles Macedo Featured in Thomson Reuters Practical Law Video on the Three Types of Post-Grant Patentability Challenges Available by the America Invents Act This Thomson Reuters Practical Law video of partner <a href="" target="_blank">Charley Macedo</a> discusses the three types of post-grant patentability challenges made available by the America Invents Act, exploring key differences between inter partes review, post-grant review and covered business method review, including how to determine which type of challenge is available, and typical fees and timelines.<br /><br /><br />Watch the video: <a href="" target="_blank"></a> (subscription required)<br /> Wed, 17 Jun 2020 00:00:00 +0000 ARE Privacy Law Alert:<br>The GDPR Is Two Years Old: What You Need to Know<br> (June 11, 2020) On May 25, 2020, the European Union&rsquo;s General Data Protection Regulation (&ldquo;GDPR&rdquo;) celebrated its second anniversary. This law sets out the ground rules for data protection and privacy for people and companies living, working, or doing business in European Union (&ldquo;EU&rdquo;) countries. Because its reach goes far beyond EU member state borders, it is important to understand how the GDPR is now being interpreted and enforced.<br /><br />Two years ago, many organizations were worried that the GDPR would fundamentally change the way they do business. There were early fears of crippling administrative costs and of large penalties for violations&mdash;especially because GDPR violations could lead to fines of 20 million euros or up to 4% of a company&rsquo;s annual revenue. However, following two years without significant punitive action for GDPR violations, especially in regard to American companies, the prevailing question now is whether these fears were warranted.<br /><br /><strong>How the GDPR Is Being Enforced<br /></strong><br />Although the EU may not be home base to tech industry giants, it is one of the world&rsquo;s wealthiest markets. By stepping in early and decisively with the enactment in 2018 of the GDPR, the EU significantly boosted its regulatory presence in the high tech sphere, and effectively set the worldwide floor for data protection and privacy regulation.<br /><br />Though the GDPR sets some strict standards regarding what is expected of businesses operating in the digital space, it also has had salutary effects. For instance, under the GDPR, employers are required to provide their staff with training on data protection and basic cyber security. This requirement encourages a more data-conscious and socially informed culture, and helps protect the privacy of millions of people worldwide.<br /><br />Despite the generally smooth implementation of the GDPR, its enforcment has raised some unexpected issues. Under the GDPR, each EU member state has its own data regulation authority, which is charged with enforcing the GDPR within its borders. Because of this arrangement and a rule that directs complaints to the country where a company&rsquo;s European headquarters are based, Ireland&rsquo;s Data Protection Commission (&ldquo;DPC&rdquo;) has become responsible for handling many technology giants, which are drawn to Ireland for its attractive tax incentive initiatives. With eight investigations into Facebook, three into Twitter, two into Apple, two into Whatsapp and two into Google, the DPC, a releatively small organization with a limited budget of only 16.9 million euros, risks being overextended.<br /><br />On the other end of the spectrum, the United Kingdom has had roughly 22 thousand data breaches reported since the regulation was introduced. However, its Information Commission Office,the highest funded GDPR enforcement authority with a 61 million euro budget, has sought only one fine&mdash;a 275 pound fine against a London-based pharmacy for &ldquo;careless storage.&rdquo; This inequity of workload and allocation of resources among the EU&rsquo;s data protection authorities has led to a situation where there have been few significant punitive actions for GDPR violations. This fact is now gaining attention in the popular press, and we expect it may result in some adjustments in the future. We also expect that the DPC will be under increased pressure to complete its investigations, which may have significant results. Despite the challenges in GDPR enforcement, the potential for a consequential impact on business is still there.<br /><br />While many non-European states are content to rely on the GDPR&rsquo;s de facto worldwide data protection and privacy scheme, perhaps unsurprisingly, the GDPR has inspired other states outside the EU to draft their own data privacy legislation.<br /><br />For instance, India&rsquo;s Personal Data Protection Bill of 2019, which is similar to the GDPR but adds special governmental data access rights, regulates the sharing and processing of personal data in India. Brazil&rsquo;s Lei Geral de Prote&ccedil;&atilde;o de Dados (&ldquo;LGPD&rdquo;) harmonizes more than 40 different statutes currently governing personal data in that country. Like the GDPR, the LGPD applies to any business or organization that processes personal data of people in Brazil, regardless of where that business or organization itself may be located, broadening the scope of those entities which must comply. How stringently such laws will be enforced, especially controversial clauses requiring governmental access rights, is yet to be seen.<br /><br /><strong>Practical Effect</strong><br /><br />The imposition of fines may turn heads, but the requirement for companies to change their behavior may be the most effective outcome of the GDPR. And while there have only been two significant fines imposed on US companies under the GDPR thus far, the prospects for further action looms on the horizon.<br /><br />Even though the GDPR is European, any company conducting business that may involve EU consumers must become more conscious of their data protection efforts, while simultaneously finding ways to best adapt and comply with the ever-changing digital landscape. With global digital integration making our world a smaller place every day, businesses must be vigilant in order to remain compliant with the ever-growing requirements of the international data protection regimes.<br /><br />* <em><a href="" target="_blank">Douglas A. Miro</a> is a partner, <a href="" target="_blank">David P. Goldberg</a> is an associate, and Herbert Blassengale IV is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in all aspects of intellectual property law, including privacy law. They can be reached at <a href=""></a>, <a href=""></a>, and <a href=""></a>.</em><br /> Thu, 11 Jun 2020 00:00:00 +0000 Amster Rothstein & Ebenstein and Max Vern Ranked in the WTR 1000: World Trademark Review’s Analysis of the Leading Firms in the United States in New York Amster Rothstein &amp; Ebenstein was ranked for the first time in the WTR 1000: World Trademark Review&rsquo;s analysis of the leading firms in the United States in the New York category. The WTR noted that the firm is a &ldquo;a worthy addition to the WTR 1000&rsquo;s New York firm listings this year&rdquo; and is &ldquo;a nimble boutique with a gift for efficient and cost-effective problem solving.&rdquo; The firm was also noted as acting for a wide range of major brands in Europe, Latin America and Asia &ldquo;thanks in no small part to the fact that the side includes native speakers of 10 or so different languages, ensuring easy communication with clients around the world.&rdquo;<br /><br />Partner <a href="" target="_blank">Max Vern</a> was noted as a &ldquo;reliable and conscientious professional of the highest calibre; dealing with US filings, oppositions, cancellations and litigation, he achieves fantastic results.&rdquo; He and the team &ldquo;are extremely organised and provide a very personal service, creatively handling matters in a way that aligns with your needs.&rdquo;<br /><br /><a href=";utm_source=Lexology+Daily+Newsfeed&amp;utm_medium=HTML+email+-+Body+-+General+section&amp;utm_campaign=Lexology+subscriber+daily+feed&amp;utm_content=Lexology+Daily+Newsfeed+2020-06-05&amp;utm_term=" target="_blank">Learn more about the WTR 1000 rankings.</a> Wed, 10 Jun 2020 00:00:00 +0000 Charley Macedo to Present AUTM Webinar on IP Opportunities and Pitfalls in Protecting Blockchain Technology On June 10 from noon to 1:30pm EDT, partner Charles Macedo will be a featured speaker at the AUTM live webinar, &quot;IP Opportunities and Pitfalls in Protecting Blockchain Technology.&quot; Charley will co-present the webinar with Isabella Ortiz of Northwestern University's Office of New Ventures and Innovation.<br /><br />The speakers will explore aspects of blockchain innovations that can be patent protected, identifying and gathering information to include in disclosures, and tips and tricks to improve patent eligibility and avoid divided infringement.<br /><br /><a href="" target="_blank">Learn more and register.</a> Mon, 08 Jun 2020 00:00:00 +0000 The Impact of COVID-19 on Law Firms: Disruption, Acceleration and Innovation Charley Macedo Authors Mid-Market Report Article on the Impact of COVID-19 on Law Firms: Disruption, Acceleration and Innovation <br /><br />As NYC opens back up 100 days after its first reported COVID-19 case, partner Charley Macedo shares his insights with the Mid-Market Report on &quot;The Impact of COVID-19 on Law Firms: Disruption, Acceleration and Innovation.&quot;<br /><br />Read the <a href="" target="_blank">full article </a>as well as below: <br /><br /><div>This article discusses some of the impacts that COVID-19 has had on business operations as a disruptor, accelerator, and spark for innovation both in the short-term and long-term.<br />&nbsp;</div> <div><b>Disruption<br /><br type="_moz" /></b></div> <div>As the number of those infected and killed due to COVID-19 continues to grow,[1] the disruption is real and is having a severe impact on our lives, economy and prospects for the future.<br />&nbsp;</div> <div>First, large gatherings and conferences were cancelled. I personally had just landed in California to participate in the annual meeting of the Association of University Technology Managers (AUTM) in early March when the Governor of California announced a ban on such gatherings. Thus, conferences like AUTM&rsquo;s annual meeting, sporting events, concerts, and other gatherings of more than 50 people started to adjourn, delay and eventually cancel in response to fears of spreading COVID-19.[2]</div> <div><br />Further, churches and other places of worship were told to stop all in-person services. Department stores and other non-essential shopping venues were shut down. Restaurants were told to halt in-store services. The travel industry, including airlines, hotels and amusement parks, were devastated or shuttered almost overnight. Hospitals and doctor offices were either overwhelmed (like in New York City), or virtually shuttered for fear of spreading the potentially lethal virus. Even internet deliveries of non-essential items were impeded as Amazon&rsquo;s warehouses made room for essential deliveries.<br />&nbsp;</div> <div>State and local leaders throughout the nation began providing regular reports to soothe our unconstrained fears, which resulted from combinations of disinformation, cabin fever, and anxiety over the unknown. Should I wear a mask? Does it matter if it is an N95? How do I properly wash my hands? Will garlic keep away the virus? These and a thousand other questions were racing through the internet and social media, and we needed our local leaders to provide us with trusted and reliable answers.<br />&nbsp;</div> <div>In New York, both Governor Cuomo and New York City Mayor DeBlasio spoke to us about the state of emergency and offered respective (and often differing) plans to address the pandemic as it continued to grow through March and April. Ohio Governor Mike DeWine and Kentucky Governor Andy Beshear also soothed their constituents with regular addresses, staking their claims as some the highest ranked leaders in addressing the crisis.<br />&nbsp;</div> <div>Notwithstanding the e􀃧orts of the federal Government to prop up the economy with helpful measures like the Paycheck Protection Program (PPP), mortgage forbearance, the reduction of interest rates and other stimulus e􀃧orts, we have still seen the Dow Jones Industrial Average drop from a high of close to $30,000 as 2020 began to a low of slightly over $18,000, with a current price of around $24,000.[3] Reported unemployment rates grew from virtual full employment (~3.6%) to nearly 15% in April 2020, while the effects of the PPP were still in full gear.[4]<br />&nbsp;</div> <div>Bankruptcies of household names have been 􀃖led at alarming rates, including J.C. Penney, Neiman Marcus, J.Crew, Gold&rsquo;s Gym and Hertz Rental. While hopefully these and many other businesses will merely be reorganized and come out stronger and survive, at a minimum, many more jobs will be cut, leases terminated and vendors hurt in the process.<br />&nbsp;</div> <div>Though this list of disruption is hardly complete and yet to be fully realized, what is clear is that COVID-19 has been, and will likely continue to be, a major disruptor in how we all live, work and continue to operate for at least the near future. But even in this time of uncertainty and grief, with the virus having injured many industries, it has helped others grow.<br />&nbsp;</div> <div><b>Acceleration<br /><br type="_moz" /></b></div> <div>Notwithstanding the doom and gloom detailed above, the silver-lining of COVID-19 has turned what were previously considered gimmick or quaint technologies into the new norm. Our prior reluctance to use remote technologies like video conferencing and online grocery delivery have now become not only accepted alternatives, but a preferred method of doing things in our new socially-distanced world.</div> <div>Our firm is fortunate to have already put in place remote working technologies in 2018. We had cloud computing for all our systems (document management, emails, docketing, etc.), except for our accounting system (which was scheduled to be converted this year). As a result, we had everything necessary to work remotely, with the last piece of the puzzle to be fully implemented in the summer of 2020. Of course, we were not expecting to need this technology in this way, but we have used it to adapt from conference rooms to video chat squares. We were privileged to have the infrastructure to continue operating remotely and efficiently through this new reality.<br />&nbsp;</div> <div>What COVID-19 did was cause us to accelerate&mdash;and in some cases upgrade&mdash;our use of the technology. We had Microsoft Teams (an enterprise version of Zoom) in place and available without any further costs to all our employees. We did not begin to use Teams, however, until we became trapped in our socially distant home environments. We now can regularly conduct team meetings on the 􀃗y with a <br />click of a button, share screens and collaboratively edit documents all within the safe confines of our home.</div> <div><br />Like everyone else, from schools, universities, churches and temples to webinars and marketers, we also have learned to use Zoom, Go-To-Meetings and Google Hangouts to communicate remotely with our clients, prospects, colleagues and others outside the firm. Thus, we see COVID-19 as a catalyst that accelerated the use of pre-existing technology and caused a commercial acceptance that without the adversity of the pandemic may have taken years to become so widely accepted.<br />&nbsp;</div> <div>There has also been some mixed success. The courts and agencies that our firm deals with have seamlessly continued to operate remotely. For our patent, trademark, and copyright 􀃖lings, which have been performed via the internet for a while, little changed from working from home.<br />&nbsp;</div> <div>With respect to federal court work, which is where most of our intellectual property litigation occurs, the court&rsquo;s electronic 􀃖ling systems were already in place and readily available with the standard way of operating. We had used telephone interviews with government agencies, as well as telephonic status conferences occasionally with district courts in the past. COVID-19 merely made it the exclusively way in which we spoke to agency and court officials.<br />&nbsp;</div> <div>The biggest change in the federal courts was at the Court of Appeals and U.S. Supreme Court, where oral arguments became exclusively telephonic. We had one of the earliest telephonic oral arguments before the Second Circuit in New York, as my partners reported on in the New York Law Journal.[5] We have had settlement conferences over the telephone in our cases, and expect to have more status conferences, hearings and oral arguments in the foreseeable future. While not ideal, and certainly more challenging, we have nonetheless forged away remotely with these telephonic proceedings.</div> <div><br />However, the State courts, which often lack the same computer infrastructure as the federal courts and agencies, have been slower to adopt to the electronic 􀃖ling and telephonic hearings. In New York, Governor Cuomo also tolled all statute of limitations during the pandemic. Nonetheless, we expect them to slowly catch up with the accelerated implementation of distancing technology.<br />&nbsp;</div> <div>The acceleration of adoption was not merely in the use of cloud tools to get our work done from home. We have seen an acceleration in our adoption and desire to use long-available services like Seamless and Grubhub to receive deliveries from restaurants and what used to be Peapod, replaced by Amazon Fresh and Whole Foods or Instacart, to have &ldquo;shoppers&rdquo; pick out and deliver groceries to our homes. Here again, the pandemic and fears of interacting with other people in tightly packed grocery stores or eating in restaurants have accelerated the adoption of previously available options; the fear no doubt changed the way we will order and obtain supplies long beyond 2020. Once social distancing is eased and we are permitted to pick out fresh tomatoes and bananas ourselves, will we have been retrained to continue to order our produce, groceries and meals by a click of a button instead of a trip to the local market? How long will it take to obtain necessities as we used to, if we ever will?<br />&nbsp;</div> <div>While we have long had FaceTime on our iPhones, and the kids had social group chats using Google Hangouts, the pandemic forced the word &ldquo;Zoom&rdquo; into our vocabulary overnight. It accelerated the adoption of video chatting and the use of webinars instead of in-person meetings dramatically. As now our best (and often only) option, we are attending or hosting webinars in place of what had long been in-person events. My presentation for AUTM (discussed above) has been replaced with a webinar scheduled for early June 2020. My presentation for the Licensing Executive Society and Georgia Intellectual Property Association that was originally scheduled for May 12 in Atlanta was virtually presented to a larger and more geographically diverse audience. In the past, where webinars would have been at best a third choice, they have become the primary way to present thought-leadership to our peers and prospects.<br />&nbsp;</div> <div>Thus, we see an acceleration in the implementation of already existing technology addressing the voids caused by the disruption associated with COVID-19.<br />&nbsp;</div> <div><b>Innovation<br /><br type="_moz" /></b></div> <div>The best businesses learn how to make lemonade out of lemons. With barriers being created by COVID-19&rsquo;s disruption, we have had clients come to us with the innovations developed to allow business and life to continue. Little things, like new mask designs, technologies used to prolong the usefulness of precious N95 masks, and improved stations for pop-up medical facilities, are examples of the types of innovation this crisis has engendered.<br />&nbsp;</div> <div>We have witnessed significant investment in finding better approaches to testing and treatment, as well as (hopefully) vaccines for COVID-19. The world depends upon our best and brightest coming up with fast, effective, efficient and quickly deployable solutions to this pandemic, while still fostering and rewarding those who achieve it. This is critical for the world&rsquo;s health.<br />&nbsp;</div> <div>Yet innovation occurs not only in how we diagnose, treat, and avoid infection, but also in how we address the disruption that the pandemic has brought to our daily work and home life.</div> <div>For example, the timing of the pandemic was such that some of our favorite television shows did not get to complete the final episodes of their seasons before everyone was ordered to socially isolate. The approaches taken by these shows varied based on the unique circumstances they each faced. We saw NEW AMSTERDAM rewrite their episode with the unfortunate subject matter of a pandemic in New York City and showcase Zoom interviews with their casts. On the other hand, THE BLACKLIST had shot only some of the scenes when production shut down, resulting in a 􀃗ip between live shots, split shots, and animations to complete the episode. Other shows like ALL RISE created entire episodes through video conferencing technology) to show the effects of social distancing measures and stay-at-home orders on the daily lives of individuals.<br />&nbsp;</div> <div>We have also seen new approaches to video production. On YouTube, we can see a web series called QUARANTINED (REAL LIFE EDITION), in which a survivor-like scenario is played out satirically in a series covering a single Zoom call, in which only one player will survive to earn the $25 CVS gift card.[6]<br />&nbsp;</div> <div>When the time eventually comes for us to return to our offices, we will likely face new restrictions on how we interact at the office, whether it be restrictions on which door is used to enter or leave our offices, how many people can be in an elevator at a given time, times to wear a mask, whether we have plexiglass installed to separate us from our colleagues, or some other protection put in place to slow the risk of another round of infection.<br />&nbsp;</div> <div>As our businesses are forced to reinvent themselves&mdash;restaurants incorporating delivery services, car manufacturers becoming ventilator manufacturers, and classrooms being replaced or supplemented with online education&mdash;our ability to adapt and innovate in our new environments will no doubt create new opportunities and businesses.<br />&nbsp;</div> <div><b>Conclusion<br /><br type="_moz" /></b></div> <div>It is through adversity that we learn to overcome and prosper. While the disruption caused by COVID-19 is horrific and should not be understated, we should learn to take advantage of the technologies it has accelerated and the innovation it has, and will no doubt further, inspire. As we look for ways to re-invent our lives and businesses during these troubling times of social distancing and sheltering-in-place, let&rsquo;s continue to innovate and implement those innovations to make the American Dream come true.<br />&nbsp;</div> <div><b>Endnotes<br /><br type="_moz" /></b></div> <div>[1] See Coronavirus: All the Celebrities Who Have Tested Positive for COVID-19</div> <div>(, Glamour (Apr.</div> <div>19, 2020).</div> <div><br />[2] On May 23, 2020, The Washington Post reported that according to its tracker, 94,000 people died in the</div> <div>U.S. from COVID-19 and almost 1.6 million people were con􀃖rmed to have been diagnosed. See Miriam</div> <div>Berger et al., Coronavirus May Still be Spreading Uncontrolled in 24 States, Study Suggests</div> <div>(, Wash. Post (May 23, 2020).</div> <div>Many believe these numbers underestimate the true infection rate (and possibly the mortality rate) since not</div> <div>everyone infected gets tested and/or exhibits the full range of symptoms giving rise to most people&rsquo;s fears.</div> <div><br />[3] See MartketWatch, Big Charts (</div> <div>symb=DJIA&amp;insttype=Index&amp;freq=1&amp;show=&amp;time=19), (May 24, 2020).</div> <div><br />[4] See Erin Du􀃚n, U.S. Unemployment Rate: Seasonally Adjusted April 2020</div> <div>(,</div> <div>Statista (May 12, 2020).</div> <div><br />[5] See Douglas Miro &amp; Brian Comack, Practical Considerations for &lsquo;Virtual&rsquo; Oral Argument Before the Second</div> <div>Circuit During the Pandemic (</div> <div>virtual-oral-argument-before-the-second-circuit-during-the-pandemic/), N.Y.L.J. (May 20, 2020).</div> <div><br />[6] See McMurphy Productions, Quarantined: Real Life Edition Trailer</div> <div>(, YouTube (May 2, 2020).</div> <br /><a href="" target="_blank">Charles R. Macedo</a> is a partner at Amster, Rothstein &amp; Ebenstein.<br /><br /><em>* Reprinted with permission from the June 8, 2020 issue of the Mid-Market Report &copy; 2020 ALM Media Properties, LLC. Further duplication without permission is prohibited. All rights reserved.</em><br /><br type="_moz" /> Mon, 08 Jun 2020 00:00:00 +0000 Practical Law:<br>Appealing Patent Trial and Appeal Board Final Written Decisions This Practice Note discusses procedural and strategic considerations involved in appealing final written decisions of the Patent Trial and Appeal Board (PTAB) in <em>inter partes</em> review (IPR), post-grant review (PGR), and covered business method (CBM) patentability challenges under the Leahy-Smith America Invents Act (AIA). It discusses grounds, timelines, and practical considerations for requesting rehearing of a final written decision before the PTAB and appeal to the US Court of Appeals for the Federal Circuit.<br /><br /><a href="/images/file/20200602%20Appealing%20Patent%20Trial%20and%20Appeal%20Board%20Final%20Written%20Decisions%20(W-006-9741).pdf" target="_blank">Appealing Patent Trial and Appeal Board Final Written Decisions</a>&nbsp; Tue, 02 Jun 2020 00:00:00 +0000 ARE Trademark Alert:<br>The USPTO Issues New Examination Guide on “Geo-Significant” Trademarks for Cheeses and Processed Meats<br> (May 26, 2020) On May 15, 2020, the United States Patent and Trademark Office (USPTO) has issued a new Examination Guide, &ldquo;Marks Including Geographic Wording that Does Not Indicate Geographic Origin of Cheeses and Processed Meats,&rdquo; which sets out procedures for examination of trademark applications for cheeses and processed meats including a geographic term (also-called &ldquo;geo-significant&rdquo; wording), which is not a geographic origin indicator.<br /><br />These guidelines are not meant to interfere with protection of geographical indications (GI), used to identify products originating from certain loci, such as Prosciutto di Parma dry-cured ham or Parmigiano Reggiano cheese, a related yet separate and painful for the U.S. practice subject, but to prevent protection of geo-significant wording which is generic for these goods. <br /><br />As a general rule, when a mark consists of a geographic term, and the latter designates the geographic location, the mark will be considered geographically descriptive and refused registration unless the owner can show that the mark has acquired secondary meaning. The policy behind requiring secondary meaning for geographically descriptive marks makes sense, since otherwise the owner could prohibit competitors from truthfully indicating that their products originate in certain region.<br /><br />If only a portion of a mark is geographically descriptive, and the remaining portion of the mark is protectable, the owner will likely be able to register the mark, but will have to disclaim the geographically descriptive portion. A disclaimer would serve as an admission that the term is geographically descriptive, and the trademark owner isn&rsquo;t trying to prevent others from using the term, only the composite mark.<br /><br />Section 1210.02(b)(iii) of the Trademark Manual of Examining Procedure acknowledges that a geographic term may be recognized by consumers as designating a type or food rather than a geographic location where the food is sourced or made. For example, a consumer purchasing Swiss cheese will not think the cheese is from Switzerland, but rather, that it is a certain type of cheese. The same is true for Boston-baked beans and Italian spaghetti. <br /><br />The new Examination Guide provides further guidance on this issue, specific to cheese and processed meats. In particular, there are certain criteria (known as &ldquo;standards of identity&rdquo;), which companies must meet in order to label or market their products as a particular type of cheese or processed meat &ndash; for example, CHEDDAR, EDAM, for cheese and FRANKFURTER, WIENER and BOLOGNA for processed meat, even if many of these terms identify a cheese or processed meat that once came only from the location referred to in the name (e.g., CHEDDAR originated in Cheddar, England, WIENER originated in Vienna, Austria, and BOLOGNA originated in Bologna, Italy). <br /><br />Although these foods may have originally been named for the geographic loci where they were produced, standards of identity relate solely to production methods and ingredients and there is no requirement that the products come from a specific place. <br />In practical terms, consumers today associate them with a type of cheese or processed meat rather than a geographic location. <br /><br />The U.S. Food and Drug Administration (FDA) handles the standards of identity for cheeses and the U.S. Department of Agriculture (USDA), establishes standards of identity for processed meat. In addition to these two federal agencies, an international body, Codex Alimentarius operates within the U.N. Food and Agriculture Organization and the World Health Organization to establish international food standards for, among other things, cheese, including BRIE, CAMEMBERT, EDAM, GOUDA and HAVARTI. <br /><br />Under the new guidelines, in addition to searching for evidence using traditional sources, when a mark includes a geographic term relating to cheese or processed meat, the Examining Attorney should also conduct research using the FDA, USDA and Codex databases as appropriate to determine if the wording is used to designate a type of cheese or processed meat under the relevant standard of identity. <br /><br />When the marks include or consist of such terms, the Examining Attorney may refuse registration on the basis that the term is descriptive, and should also advise the applicant that the relevant wording appears to be the generic term for the goods, i.e. it identifies the genus of product rather than a brand (think, &ldquo;ASPIRIN&rdquo;), and is unregisterable. If the geographic term is only part of the mark, and the other part is inherently distinctive, the geographic term may need to be disclaimed.<br /><br />When there is evidence that consumers may buy the product thinking it is a particular type of cheese or processed meat, and it is not (for example, Swiss cheese that does not meet the industry standards to be called &ldquo;Swiss cheese&rdquo;), the mark will be considered deceptive and cannot be registered. <br />Thus, the new guidelines will aid the USPTO in determining whether a mark identifies a type of cheese or processed meat and should be refused registration on that basis.<br /><br />For more information please feel free to contact us. <br /><br />*<a href="" target="_blank">Holly Pekowsky</a> and <a href="" target="_blank">Max Vern</a> are partners at Amster, Rothstein &amp; Ebenstein LLP. Their practice involves all aspects of intellectual property law, including trademark law. They can be reached at <a href=" "></a> and <a href=""></a>.<br /> Tue, 26 May 2020 00:00:00 +0000 Douglas A. Miro and Brian Comack Publish New York Law Journal Article on “Practical Considerations for ‘Virtual’ Oral Argument Before the Second Circuit During the Pandemic" <a href="" target="_blank">Douglas A. Miro and Brian Comack Publish New York Law Journal Article on &ldquo;Practical Considerations for &lsquo;Virtual&rsquo; Oral Argument Before the Second Circuit During the Pandemic&quot;</a><br /><br />Partners <a href="" target="_blank">Douglas A. Miro</a> and <a href="" target="_blank">Brian Comack</a> recently published an article for the <a href="" target="_blank">New York Law Journal</a> titled, &ldquo;Practical Considerations for &lsquo;Virtual&rsquo; Oral Argument Before the Second Circuit During the Pandemic.&rdquo; In the <a href="" target="_blank">article</a>, the authors discuss their experiences arguing an appeal via teleconference (without video) before the U.S. Court of Appeals for the Second Circuit during the ongoing COVID-19 pandemic.<br /><br />Doug and Brian also provide some general observations and practical considerations for practitioners who have upcoming &ldquo;virtual&rdquo; oral arguments before the Second Circuit or any other court. Wed, 20 May 2020 00:00:00 +0000 ARE Trademark Law Alert:<br>Supreme Court Rejects Defense Preclusion Argument<br> (May 18, 2020) In a unanimous decision on May 14, 2020, the U.S. Supreme Court held that, in a later trademark action challenging different conduct and raising different claims from an earlier trademark action between the parties, Defendant Lucky Brand was not precluded from raising new defenses. <i>Lucky Brand Dungarees, Inc. v. Marcel Fashions Grp.</i>, No. 18&ndash;1086, slip op. at 1 (2020). The decision reverses a Second Circuit decision that barred Lucky Brand from raising a defense that it allegedly &ldquo;could have&rdquo; raised in an earlier phase of the almost twenty-year dispute between the parties under the doctrine of <i>res judicata</i>. The Court stressed the importance of the decision in the trademark context, &ldquo;where the enforceability of a mark and likelihood of confusion between marks often turns on extrinsic facts that change over time.&rdquo; <i>Id. </i>at 9.<div>&nbsp;</div> <div><b><u>Background</u></b></div> <div>&nbsp;</div> <div>Plaintiff Marcel and Defendant Lucky Brands both sell jeans and other apparel using the word &ldquo;Lucky&rdquo; in their trademarks on clothing. Marcel received a federal trademark registration for &ldquo;Get Lucky&rdquo; in 1986, while Lucky Brand began selling apparel using the trademark &ldquo;Lucky Brand&rdquo; (and other marks that include the word &ldquo;Lucky&rdquo;) in 1990. These trademarks led to nearly twenty years of litigation between the parties proceeding in three phases beginning in 2001.</div> <div>&nbsp;</div> <div>In the initial conflict between the parties, Marcel sued Lucky Brand alleging trademark infringement and unfair competition by Lucky Brand&rsquo;s use of the phrase &ldquo;Get Lucky.&rdquo; The parties settled in 2003 with Lucky Brand agreeing to &ldquo;desist henceforth from the use of &lsquo;Get Lucky&rsquo; as a trademark&rdquo; and to pay Marcel $650,000. In exchange, Marcel agreed to release any claims it had or might have arising out of or relating to Lucky&rsquo;s right to &ldquo;use, license and/or register&rdquo; the trademark &ldquo;Lucky Brand&rdquo; or any other marks that it &ldquo;owned, registered, and/or used&rdquo; at the time.</div> <div>&nbsp;</div> <div>The next round of litigation began in 2005.&nbsp; This time Lucky Brand was on the offensive, alleging that Marcel and its licensee infringed its trademarks by copying its designs in a new line of clothing. Marcel filed several counterclaims in response based on Lucky Brand&rsquo;s continued use of the &ldquo;Get Lucky&rdquo; phrase. Marcel also asserted counterclaims based on the Settlement Agreement&rsquo;s release of &ldquo;any and all claims arising out of or in any way related to [Lucky&rsquo;s] right to use, license and/or register the trademark &ldquo;Lucky Brand&rdquo; and/or any other trademarks, trade names, brands, advertising slogans or tag lines owned, registered and/or used by [Lucky] as of the date of this Agreement.&rdquo; On the face of Marcel&rsquo;s counterclaims, it appeared that some of Lucky Brand&rsquo;s allegedly infringing marks were not registered until after the Settlement Agreement. The district court accordingly denied Lucky&rsquo;s motion to dismiss. Lucky Brand did not renew its &ldquo;release&rdquo; defense in the 2005 action and the case proceeded to trial, which resulted in a final order and judgment under which Lucky Brand was permanently enjoined from using the &ldquo;Get Lucky&rdquo; mark. However, the final judgment did not address the question of whether the Settlement Agreement barred some or all of Marcel&rsquo;s counterclaims in the 2005 action.</div> <div>&nbsp;</div> <div>The third round of litigation began in 2011 with Marcel suing Lucky Brand again for trademark infringement.&nbsp; This time Marcel sought a new injunction prohibiting Lucky from &ldquo;using the Lucky Brand marks,&rdquo; which Marcel claimed Lucky Brand had continued to use after the final judgment in the 2011 action. Notably, the 2011 action did not involve any alleged use of the &ldquo;Get Lucky&rdquo; slogan. Lucky moved for summary judgment on the ground that the final judgment barred Marcel&rsquo;s new claims. The district court granted the motion, concluding that Marcel&rsquo;s claims in the 2011 action were essentially the same as its counterclaims in the 2005 action. However, the Second Circuit vacated and remanded the decision, holding that Marcel&rsquo;s counterclaims in the 2005 action were for &ldquo;infringements that occurred &lsquo;after May 2003&rsquo; but prior to&rdquo; the 2011 action, which meant that they could not have been raised in the 2005 action.</div> <div>&nbsp;</div> <div>On remand to the district court, Lucky Brand moved to dismiss Marcel&rsquo;s amended complaint, arguing&mdash;for the first time since its motion to dismiss and answer in the 2005 action&mdash;that all of the marks at issue in the current action were &ldquo;registered and/or used by [Lucky] . . . as of the date of th[e Settlement] Agreement,&rdquo; and thus covered by the agreement&rsquo;s release. In response, Marcel argued that &ldquo;the res judicata or collateral estoppel effect&rdquo; of the final judgment in the 2005 action precluded Lucky Brand from relying on the Settlement Agreement in the current action because the same defense could have been resolved in the 2005 action with respect to different claims. The district court disagreed, stating that &ldquo;[i]ssue preclusion does not apply, because the applicability of the Settlement Agreement&rsquo;s release provision was not actually litigated and resolved in the 2005 action.&rdquo; The district court also held that claim preclusion did not apply because Marcel&rsquo;s claims in the 2011 action were different from its claims in the 2005 action.</div> <div>&nbsp;</div> <div>The Second Circuit vacated and remanded the decision, concluding that a doctrine called &ldquo;defense preclusion&rdquo; barred Lucky Brand from raising the release defense in the 2011 action. The Second Circuit reasoned that a defendant should be precluded from raising a defense where: &ldquo;(i) a previous action involved an adjudication on the merits&rdquo;; &ldquo;(ii) the previous action involved the same parties&rdquo;; &ldquo;(iii) the defense was either asserted or could have been asserted, in the prior action&rdquo;; and &ldquo;(iv) the district court, in its discretion, concludes that preclusion of the defense is appropriate.&rdquo; 898 F. 3d, at 241. The Supreme Court granted certiorari to resolve the differences among Circuits regarding &ldquo;when, if ever, claim preclusion applies to defenses raised in a later suit.&rdquo;</div> <div>&nbsp;</div> <div><b><u>The Supreme Court&rsquo;s Unanimous Decision </u></b></div> <div>&nbsp;</div> <div>Justice Sotomayor delivered the unanimous opinion of the Court.</div> <div>&nbsp;</div> <div>The Court began by noting that it has never explicitly recognized &ldquo;defense preclusion&rdquo; as a standalone category of <i>res judicata</i>, &ldquo;unmoored from the two guideposts of issue preclusion and claim preclusion.&rdquo; Slip op. at 7. Further, any preclusion of defenses must, at a minimum, meet the same requirements of issue preclusion or claim preclusion. <i>Id. </i></div> <div><i>&nbsp;</i></div> <div>The decision turned significantly on the finding that the 2005 action and the 2011 action were grounded in different conduct, involved different marks, and occurred at different times, and thus, did not share a &ldquo;common nucleus of operative facts.&rdquo; <i>Id. </i>at 8. For example, the 2005 action alleged that Lucky Brand infringed Marcel&rsquo;s &ldquo;Get Lucky&rdquo; mark by using the phrase to create consumer confusion. However, the 2011 action did not involve any alleged use of the &ldquo;Get Lucky&rdquo; phrase. Instead, Marcel alleged in the 2011 action that Lucky Brand&rsquo;s infringement was based only on the use of Lucky Brand&rsquo;s own marks containing the word &ldquo;Lucky.&rdquo;</div> <div>&nbsp;</div> <div>The Court also wholly rejected Marcel&rsquo;s claim preclusion argument, stating that &ldquo;[e]vents that occur after the plaintiff files suit often give rise to new &lsquo;[m]aterial operative facts&rsquo; that &lsquo;in themselves, or taken in conjunction with the antecedent facts,&rsquo; create a new claim for relief.&rdquo; <i>Id. </i>at 9 (quotation omitted). Importantly, the Court agreed that this principle carries considerable weight in trademark context because &ldquo;liability for trademark infringement turns on marketplace realities that can change dramatically from year to year.&rdquo; <i>Id. </i>at 9. The Court accordingly held that claim preclusion did not and could not bar Lucky Brand from asserting its settlement agreement defense in the 2011 action.</div> <div>&nbsp;</div> <div>In its briefing, Marcel argued that a version of &ldquo;defense preclusion&rdquo; should apply to the facts of its case. However, the Court dismissed the argument, finding that the authorities referenced by Marcel likely did not stand for anything other than traditional claim- or issue-preclusion principles that may bar defenses raised in a subsequent suit. The Court pointed to a hypothetical involving judgment enforcement, where a party takes action to enforce a prior judgment already issued against another. If a different outcome in the second action &ldquo;would nullify the initial judgment or would impair rights established in the initial action,&rdquo; preclusion principles would apply. <i>Id. </i>at 10. However, a court would still simply apply claim or issue preclusion in that scenario to bar a claim or defense that would attack a previously decided claim. Because the Court held that Lucky Brand&rsquo;s defense in the 2011 action did not threaten the judgment of the 2005 action, the judgment enforcement principles would not apply to the case anyway.</div> <div>&nbsp;</div> <div><b><u>Practical Effect</u></b></div> <div>&nbsp;</div> <div>Lucky Brands resolves a split between the circuits regarding the existence of the so-called &ldquo;defense preclusion&rdquo; principle.&nbsp; Instead, the Court has limited judicial preclusions to traditional claim and issue preclusion doctrines as the guideposts for barring certain defenses in trademark cases.</div> <div>&nbsp;</div> <div>We will continue to monitor cases regarding this and similar trademark issues. Please feel free to contact us if you have any questions about how this decision may impact your rights.</div> <div><p class="MsoNormal">* <a href="" target="_blank">Anthony F. Lo Cicero</a>, <a href="" target="_blank">Chester Rothstein</a>, <a href="" target="_blank">Charles R. Macedo</a>, and <a href="" target="_blank">Douglas A. Miro</a> are partners, and Devin Garrity is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice involves all aspects of intellectual property law, including trademark litigation. They can be reached at <a href=""></a>, <a href=""></a>, <a href=""></a>, <a href=""></a>, and <a href=""></a>. </p></div> Mon, 18 May 2020 00:00:00 +0000 ARE Law Alert:<br>NYIPLA Names Partners Anthony LoCicero and Charley Macedo and Associate David Goldberg to Continue in Their Leadership Roles for 2020-2021<br> (May 14, 2020) At its Annual Meeting on May 12, 2020, the New York Intellectual Property Law Association (&ldquo;NYIPLA&rdquo;) asked three Amster, Rothstein &amp; Ebenstein LLP attorneys to continue their leadership roles for the next year.<br /> <br />Managing Partner Anthony F. Lo Cicero will continue to Co-Chair the Legislative Action Committee, which develops and coordinates the Association&rsquo;s response to proposed federal and state legislation and rules. Partner Charles R. Macedo will continue to Co-Chair the PTAB Committee, which provides thought leadership with respect to rules and litigation proceedings before the US Patent &amp; Trademark Office&rsquo;s Patent Trial and Appeals Board. Finally, trademark associate David P. Goldberg will continue to Co-Chair the Amicus Briefs Committee, which represents the interests of the Association&rsquo;sconstituency by preparing and filing amicus briefs in the courts. <br /> <br />The firm is proud to support the NYIPLA, which is one of the most active local intellectual property bar associations in the country and has a 98-year history of ably advocating the interests of the New York area&rsquo;s diverse intellectual property community.<br /><br />* <a href="" target="_blank">Anthony F. Lo Cicero</a> and <a href="" target="_blank">Charles R. Macedo</a> are partners and and <a href="" target="_blank">David P. Goldberg</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in all aspects of Intellectual Property Law, including copyrights, trademarks and patents. They can be reached at <a href=""></a>,&nbsp;<a href=""></a>&nbsp;and <a href=""></a>.<br type="_moz" /> Thu, 14 May 2020 00:00:00 +0000 US Supreme Court holds that US states are immune from federal copyright infringement claims in case involving Blackbeard’s flagship <u><strong>Abstract</strong></u><br /><br />Allen v Cooper, No 18-877, 140 S Ct 994, 23 March 2020<br /><br />Thirty years ago, the US Congress passed two nearly identical bills designed to strip US states of their sovereign immunity from claims of patent and copyright infringement&mdash;the Patent Remedy Act (PRA) and Copyright Remedy Clarification Act (CRCA). Almost 10 years later, in <em>Florida Prepaid Postsecondary Education Expense Board v College Savings Bank</em> (1999) 527 US 627, the US Supreme Court held that the PRA lacked a constitutional basis. However, it was not until this year, in Allen v Cooper, No 18-877, 140 S Ct 994 (23 Mar 2020), that the US Supreme Court held that the CRCA also lacked a constitutional basis. This...<br /><br /><a href="" target="_blank">Full article available here</a>.<br /><br /><em>*Published by Oxford University Press. All rights reserved.</em><br type="_moz" /><br /> Wed, 13 May 2020 00:00:00 +0000 ARE Patent Law Alert:<br>The USPTO Unveils Patents 4 Partnerships in an Effort to Facilitate Connections Between Patent Holders and Potential Licensees in COVID-19-Related Technologies<br> On May 4, 2020, the United States Patent and Trademark Office (&ldquo;USPTO&rdquo;) announced a new web-based intellectual property marketplace platform, Patents 4 Partnerships IP Marketplace Platform (<a href="" target="_blank"></a>), which was created to provide a repository of patents and published patent applications related to the COVID-19 pandemic that are indicated as available for licensing. The platform &ldquo;provides a centralized and easily accessible place to list U.S. patents and patent application publications&rdquo; and &ldquo;offers to potential licensees a database of available technologies that permits searches using a variety of parameters.&rdquo; For now, the IP Marketplace Platform is focused on helping to bring new products and technologies for the prevention, treatment, and diagnosis of COVID-19 to the marketplace (&ldquo;for example, personal protective equipment, disinfectants, ventilators, testing equipment and components thereof&rdquo;), but may expand to include other technologies in the future.<br /><div><br />The content included on Patents 4 Partnership has been drawn from a variety of public sources, including:<br />&nbsp;</div> <div style="text-indent: -0.25in; margin-left: 80px;">&middot;<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal;Times New Roman">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span>The USPTO;</div> <div style="text-indent: -0.25in; margin-left: 80px;">&middot;<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal;Times New Roman">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span>The Federal Laboratory Consortium for Technology Transfer;</div> <div style="text-indent: -0.25in; margin-left: 80px;">&middot;<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal;Times New Roman">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span>The AUTM Innovation Marketplace;</div> <div style="text-indent: -0.25in; margin-left: 80px;">&middot;<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal;Times New Roman">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span>Universities; and</div> <div style="text-indent: -0.25in; margin-left: 80px;">&middot;<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-stretch: normal; font-size: 7pt; line-height: normal;Times New Roman">&nbsp;&nbsp;&nbsp;&nbsp;&nbsp;&nbsp; </span>Federal agencies (including: the National Institutes of Health, the Department of Energy, the National Aeronautics and Space Administration, the Food and Drug Administration, the Centers for Disease Control and Prevention, the Department of Defense, and the Department of Veterans Affairs).</div> <div><br />Director of the USPTO, Andrei Iancu, highlighted the potential benefits of the forum during the global pandemic: &ldquo;Patents for Partnerships is a meeting place that enables patent owners who want to license their IP rights to connect with the individuals and businesses who can turn those rights into solutions for our health and wellbeing. &hellip;With an initial focus on COVID-19, the platform shows how innovation can contribute to the nation&rsquo;s response to this critical health emergency.&rdquo;</div> <div><br />We will continue to monitor the situation. For more information, please feel free to contact us.<br /><br />*<a href="" target="_blank">Charles R. Macedo</a>,&nbsp;<a href="" target="_blank">Douglas A. Miro</a>&nbsp;and&nbsp;<a href="" target="_blank">Benjamin M. Halpern</a>&nbsp;are partners, and Chandler Sturm is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice involves all aspects of intellectual property law, including trademark, patent and copyright litigation. They may be reached at <a href=""></a>, <a href=""></a>, <a href=""></a>, and <a href=""></a>.</div> Tue, 05 May 2020 00:00:00 +0000 ARE PTAB Alert:<br>PTAB Puts Halt To Remands Under Arthrex Until Scotus Decides<br> <div>As previously reported, last October a panel at the Federal Circuit held that Administrative Patent Judges (&ldquo;APJs&rdquo;) of the PTAB were principal officers of the U.S. Government, and appointed in violation of the Appointments Clause of the U.S. Constitution. &nbsp;<b><i><span style="color:windowtext"><a href="" target="_blank">Arthrex v. Smith &amp; Nephew</a></span><u><span style="color: windowtext; font-weight: normal; text-decoration-line: none;">,</span></u><span style="color: windowtext; font-weight: normal; font-style: normal; text-decoration-line: none;"> No. 2018-2140, slip op. (Fed. Cir. Oct. 31, 2019)</span></i></b>; <i>see also </i>Charles R. Macedo, <b><span style="color:#B5002D"><a href="" target="_blank"><span style="color:#B5002D">ARE PTAB Law Alert: FEDERAL CIRCUIT DECLARES PTAB APJs TO BE SUPERIOR OFFICERS APPOINTED IN AN UNCONSTITUTIONAL MANNER, BUT OFFERS A FIX GOING FORWARD WITH LIMITED RELIEF GOING BACK</span></a></span></b>&nbsp;(Nov. 4, 2019). &nbsp;This decision was highly controversial, and eventually resulted in all of the parties to <i>Arthrex</i>&nbsp;seeking to have the full Federal Circuit reconsider the decision <i>en banc</i>. &nbsp;Charles R. Macedo, David Goldberg, Chandler Sturm, <b><i><span style="color:#B5002D"><a href="" target="_blank"><span style="color:#B5002D">&lsquo;Arthrex v. Smith &amp; Nephew&rsquo;: Are PTAB APJs Constitutionally Appointed?</span></a></span></i></b>,&nbsp;<span style="font-variant-numeric: normal; font-variant-east-asian: normal; font-variant-caps: small-caps;">National Law Journal</span> (Mar. 23, 2020).&nbsp; Notwithstanding the unanimous call for the full Court to reconsider this decision, and the dissent by 4 of the Court&rsquo;s Judges, rehearing <i>en banc</i> was denied on March 23, 2020. &nbsp;<i>See Arthrex, Inc. v. Smith &amp; Nephew, Inc.</i>, No. 2018-2140, Order (Fed. Cir. Mar. 23, 2020) (denying rehearing and rehearing&nbsp;<i>en banc</i>); <i>see also</i><span style="color:#333333"> Charles R. Macedo, David Goldberg, Chandler Sturm,&nbsp;</span><b><span style="color:#B5002D"><a href=""><span style="color:#B5002D">ARE PTAB Alert:</span></a></span>&nbsp;<span style="color:#B5002D"><a href=""><span style="color:#B5002D">IN A SPLIT DECISION, THE FEDERAL CIRCUIT DENIED REHEARING AND REHEARING EN BANC IN ARTHREX v. SMITH &amp; NEPHEW, INC. REGARDING THE CONSTITUTIONALITY OF HOW PTAB APJs ARE APPOINTED</span></a></span>&nbsp;</b><span style="color:#333333">(March 23, 2020).</span> &nbsp;Further, many cases were summarily vacated and remanded under <i>Arthrex</i>. &nbsp;It is expected that this issue will be presented in one or more petitions for certiorari to the U.S. Supreme Court. &nbsp;<span style="color:#333333">Charles R. Macedo, David Goldberg, Chandler Sturm, </span><b><span style="color:#B5002D"><a href="" target="_blank"><span style="color:#B5002D">ARE PTAB Alert: With Consent Of All Parties, U.S. Government Seeks Stay Of Mandate In Arthrex For 90 Days Or Until Resolution Of Petitions For Certiorari To The Supreme Court</span></a></span></b>&nbsp; (March 30, 2020).</div> <div>&nbsp;</div> <div>The U.S. Government had requested the Federal Circuit, in an unopposed motion, to stay the mandate until the U.S. Supreme Court was allowed an opportunity to weigh in on <i>Arthrex</i>. &nbsp;However, the panel denied the request stating that the &ldquo;delay contemplated by the United States could cause harm&rdquo; to the public interest, as it could cause the continuation of stays in proceedings involving patent claims deemed unpatentable by the Board. &nbsp;This could &ldquo;have the effect of leaving the patent claims in force and also could cause the continued obligation to pay fees under license agreements&hellip;that require payment until a final adjudication of invalidity.&rdquo; <i>Arthrex, Inc. v. Smith &amp; Nephew, Inc.</i>, No. 2018-2140, Order (Fed. Cir. Mar. 30, 2020) (denying motion to stay mandate).</div> <div>&nbsp;</div> <div>Now, Chief Administrative Patent Judge Scott R. Boalick issued a &ldquo;General Order&rdquo; in over 100 PTAB proceedings today, that &ldquo;held in abeyance&rdquo; the actions remanded under the Federal Circuit&rsquo;s decision in <i>Arthrex. </i>&nbsp;Under the General Order, Chief APJ Boalick ordered that &ldquo;until all appellate rights have been exhausted&rdquo; he exercised his discretion to:&nbsp;&ldquo;(1) suspend the requirements in SOP 9 [to contact the Board to schedule telephone conferences] in cases remanded by the Federal Circuit under <i>Arthrex</i>; and&nbsp;(2) hold all such cases in administrative abeyance until the Supreme Court acts on a petition for certiorari or the time for filing such petitions expires.&rdquo; &nbsp;United States Patent and Trademark Office, GENERAL ORDER IN CASES REMANDED UNDER<i> ARTHREX, INC. V. SMITH &amp; NEPHEW, INC.</i>, 941 F.3D 1320 (FED. CIR. 2019) (PTAB May 1, 2020).</div> <div>&nbsp;</div> <div>For now, it looks like none of the remands will go forward, although original proceedings continue to go forward.</div> <div>&nbsp;</div> <div>We will continue to monitor this issue and report on developments. &nbsp;In the meantime, for more information about <i>Arthrex</i> and PTAB proceedings, please feel free to contact us.<br /><br />*<a href="" target="_blank">Charles R. Macedo</a> is a partner, <a href="" target="_blank">Christopher Lisiewski</a> is an associate, and Chandler Sturm is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in intellectual property issues, including litigating patent disputes before the PTAB and District Courts, as well as on appeal to the Federal Circuit and the Supreme Court. The authors may be reached at <a href=""></a>, <a href=""></a>, and <a href=""></a>.<br />&nbsp;</div> Tue, 05 May 2020 00:00:00 +0000 Amster, Rothstein & Ebenstein LLP Was Once Again Recommended By Managing IP In 2020 and Partners Daniel Ebenstein, Anthony Lo Cicero and Charles Macedo Were Again Named As IP STARS In 2020 (May 3, 2020) We are proud to announce that we have been recognized by Managing IP as a &quot;recommended&quot; firm and partners <a href="" target="_blank">Daniel Ebenstein</a>, <a href="" target="_blank">Anthony Lo Cicero</a> and <a href="" target="_blank">Charley Macedo</a> have again been named IP Stars for 2020:<br /><br /><a href="" target="_blank">Daniel Ebenstein</a>: Patent star 2020; Trade mark star 2020; Copyright star 2020<br /><a href="" target="_blank">Anthony Lo Cicero</a>: Patent star 2020; Trade mark star 2020 <br /><a href="" target="_blank">Charles Macedo</a>: Patent star 2020; Trade mark star 2020<br /><br />Congratulations to the team for once again achieving these prestigious honors.<br /><br />Mr. Ebenstein, Mr. Lo Cicero and Mr. Macedo can be contacted at: <a href=""></a>, <a href=""></a>, and <a href=""></a>.<br /><br /><a href="" target="_blank"><br /></a><br /><img src="/images/image/IP%20Stars%20IP%20Star%202020.png" width="100" height="163" alt="" /><br /><br type="_moz" /> Sun, 03 May 2020 00:00:00 +0000 ARE Copyright Law Alert:<br>Supreme Court Holds That Official State Codes Are in the Public Domain and Not Copyrightable<br> (April 29, 2020) In a 5-4 decision on April 27, 2020, the U.S. Supreme Court found that the government edicts doctrine (which generally holds that works authored by certain federal public officials in the course of their official duties are in the copyright public domain) applies to the States, territories, and the District of Columbia.&nbsp; <i>Georgia v. Public.Resource.Org, Inc.</i>, No. 18-1150, slip op. at 1, 5 (U.S. Apr. 27, 2020).&nbsp; This decision further clarified that the doctrine applied even to &ldquo;annotated&rdquo; versions of the law text, to prevent a situation where there is &ldquo;first class&rdquo; versus &ldquo;economy class&rdquo; access to the law.&nbsp; To be clear, this decision will not stop those states and territories that currently charge for access to such materials from doing so.&nbsp; However, those states and territories will not now be able to prevent third-parties from providing free access to such materials by bringing copyright infringement actions.<div>&nbsp;</div> <div><b><u>Background</u></b></div> <div>&nbsp;</div> <div>The State of Georgia has one official code called the Official Code of Georgia Annotated (&ldquo;OCGA&rdquo;).&nbsp; The OCGA includes the text of all current Georgia statutes as well as annotations to the text.&nbsp; The annotations, which are not officially binding, typically include summaries of judicial opinions construing the provisions of the statutes.&nbsp; The annotations to the current OCGA were produced as a work for hire by Matthew Bender &amp; Co., Inc., a third-party publisher of law books, for the Georgia Code Revision Commission (&ldquo;CRC&rdquo;).&nbsp; The CRC is a state-entity composed mostly of state legislators, funded by legislative branch appropriations, and staffed by Georgia&rsquo;s Office of Legislative Counsel.&nbsp;</div> <div>&nbsp;</div> <div>In 2013, the non-profit organization Public.Resource.Org, Inc. (&ldquo;PRO&rdquo;) purchased a full copy of the OCGA and posted it online, allowing free public access to the OCGA on various website.&nbsp; After sending PRO several cease-and-desist letters, the CRC filed an action for infringement of its copyright in the OCGA annotations in the U.S. District Court for the Northern District of Georgia.&nbsp; The Northern District ruled in favor of the CRC, reasoning that the annotations were eligible for copyright protection because they were not enacted by the legislature.&nbsp; The U.S. Court of Appeals for the Eleventh Circuit reversed, rejecting the CRC&rsquo;s argument under the government edicts doctrine, whose animating principle is that no one person can own the law.&nbsp; The U.S. Supreme Court affirmed.</div> <div>&nbsp;</div> <div><b><u>The Supreme Court&rsquo;s Majority Opinion</u></b></div> <div>&nbsp;</div> <div>Chief Justice Roberts delivered the majority opinion of the Court, which was joined by Justices Sotomayor, Kagan, Gorsuch and Kavanaugh.</div> <div>&nbsp;</div> <div>The Court found that the annotations in the OCGA were not eligible for copyright protection under the government edicts doctrine, which holds that &ldquo;officials empowered &nbsp;to speak with the force of law cannot be the authors of&mdash;and therefore cannot copyright&mdash;the works they create in the course of their official duties.&rdquo; Slip op. at 1.&nbsp; The doctrine, based on the Court&rsquo;s prior decisions in <i>Wheaton v. Peters</i>, 8 Pet. 591 (1834),<i> Banks v. Manchester</i>, 128 U.S. 244 (1888), and <i>Callaghan v. Myers</i>, 128 U.S. 617 (1888), derives from the basic principle that, in a democracy, the people are &ldquo;the constructive authors&rdquo; of the law and judges and legislators are merely draftsmen &ldquo;exercising delegated authority.&rdquo; Slip op. at 5 (quoting <i>Georgia v. Public.Resource.Org, Inc.</i>, 906 F.3d 1229, 1239 (11<sup>th</sup> Cir. 2018)).</div> <div>&nbsp;</div> <div>The Court here clarified that the appropriate test is &ldquo;based on the identity of the author . . . . judges&mdash;and, we now confirm, legislators&mdash;may not be considered the &lsquo;authors&rsquo; of works that they produce in the course of their official duties as judges and legislators.&rdquo; Slip op at 5-6.&nbsp; Just as judges who have the authority to interpret the law cannot claim copyright in their decisions under <i>Banks</i>, the same holds true for legislative bodies who have the authority to make the law.&nbsp; In short, &ldquo;copyright does not vest in works that are (1) created by judges and legislators (2) in the course of their judicial and legislative duties.&rdquo; Slip op. at 9.</div> <div>&nbsp;</div> <div>Applying this two-step test to the facts of the case, the Court found that Georgia&rsquo;s annotations are not copyrightable.&nbsp; First, the Court determined that the CRC &ldquo;is not identical to the Georgia Legislature, but functions as an arm of it for the purpose of producing the annotations.&rdquo; <i>Id</i>.&nbsp; This, thought the Court, was eminently clear from the membership, staffing, funding, and procedure followed by the CRC in approving the annotations, as well as from state law precedent that the CRC &ldquo;is within the sphere of legislative authority.&rdquo; <i>Id</i>. at 10 (quoting <i>Harrison Co. v. CRC</i>, 24 Ga. 325, 330 (1979)).&nbsp; Second, the Court found that, although the annotations are not enacted into law, their preparation is an act of &ldquo;legislative authority&rdquo; and they provide &ldquo;commentary and resources that the legislature has deemed relevant to understanding its laws.&quot;</div> <div>&nbsp;</div> <div>The Court rejected Georgia&rsquo;s argument that by listing &ldquo;annotations&rdquo; as copyrightable works in Section 101 of the Copyright Act, Congress exempted this type of work from the government edicts doctrine.&nbsp; The majority ruled that Section 101 only applied to &ldquo;annotations . . . which . . . represent an original work of authorship.&rdquo;&nbsp; The Court also rejected Georgia&rsquo;s argument that a negative inference should be made from the fact that the Copyright Act explicitly precludes copyright protection for the works of federal officials but not for state officials.&nbsp; Instead, the Court opined, &ldquo;the federal rule does not suggest an intent to displace the much narrower government edicts doctrine with respect to the States.&rdquo; <i>Id</i>. at 12.&nbsp;</div> <div>&nbsp;</div> <div>Finally, the Court noted its concern with Georgia&rsquo;s argument in favor of limiting the government edicts doctrine based on content and not authorship.&nbsp; Taken strictly, such an argument would exclude not just annotations but also consenting and dissenting opinions, headnotes and syllabi prepared by judges, proposed bills and committee reports prepared by legislators, and other materials supplementary materials that &ldquo;do not have the force of law, yet . . . are covered by the doctrine.&rdquo; <i>Id</i>. at 15.&nbsp; These materials, although they are without the force of law, are greatly important.&nbsp; &ldquo;Imagine a Georgia citizen&rdquo; reading an unannotated copy of Georgia&rsquo;s Code &ldquo;criminalizing broad categories of consensual sexual conduct . . . with no hint [from annotations] that important aspects of those laws have been held unconstitutional by the Georgia Supreme Court.&rdquo; <i>Id</i>. at 17.&nbsp; Adopting Georgia&rsquo;s argument, the court concluded, might lead to an unfair justice system based on the ability to pay for copyrighted material.</div> <div>&nbsp;</div> <div><b><u>Thomas Dissent</u></b></div> <div>&nbsp;</div> <div>Justice Thomas filed a dissenting opinion, joined in full by Justice Alito and joined in part by Justice Breyer.</div> <div>&nbsp;</div> <div>Justice Thomas objected to the majority&rsquo;s interpretation of the 19<sup>th</sup> Century cases that form the basis of government edicts doctrine, due to the narrower understanding of authorship and copyright protection current at the time, and agreed with Georgia&rsquo;s arguments that the annotations should be eligible for copyright protection under the terms of the Copyright Act because they were not enacted by the legislature.&nbsp; In response to the majority&rsquo;s policy concerns, he noted that the practical effect of the majority&rsquo;s decision may well be that states would stop producing annotated codes altogether, which would render obtaining quality legal assistance even more expensive than it is now.</div> <div>&nbsp;</div> <div><b><u>Ginsburg Dissent</u></b></div> <div>&nbsp;</div> <div>Justice Ginsburg issued a separate dissenting opinion, joined in full by Justice Breyer.</div> <div>&nbsp;</div> <div>Justice Ginsburg agreed with the two-part test set forth in the Majority Opinion as to whether the government edicts doctrine should apply.&nbsp; However, she disagreed with the majority&rsquo;s finding that the OCGA&rsquo;s annotations were drafted by legislators &ldquo;in the course of their . . . legislative duties.&rdquo;&nbsp; She argued that since the annotations were not created contemporaneously with the statutes, are descriptive rather than prescriptive, and were drafted for the convenience of the public, that they should not satisfy the second prong of the test.</div> <div>&nbsp;</div> <div><b><u>Practical Effect</u></b></div> <div>&nbsp;</div> <div>This decision makes it clear that under the government edicts doctrine, official statutes (and their annotations) promulgated by the U.S. States, territories, and the District of Columbia are in the public domain and not copyright-eligible, even if annotated.&nbsp; Accordingly, those states and territories that currently charge for access to such materials may no longer do so.&nbsp; This decision will directly affect those states and territories that have negotiated contracts with legal publishers regarding the issuance of official annotated copies of their statues.&nbsp; Additionally, the Supreme Court&rsquo;s reasoning would seem to extend beyond annotated codes to more broadly reach and impact similar arrangements by the states with respect to other public documents, such as state zoning or flood maps.</div> <div>&nbsp;</div> <div>We note Justice Thomas&rsquo; dissenting policy concern that states may stop producing annotated codes altogether, thus hindering quality judicial access to both rich and poor. &nbsp;Time will tell if such concerns are justified and whether high-quality annotated state codes continue to be written.</div> <div>&nbsp;</div> <div>We will continue to monitor cases regarding this and similar copyright issues.&nbsp; Please feel free to contact us if you have any questions about how this decision may impact your rights.<br /><br />*<a href="" target="_blank">Chester Rothstein</a>, <a href="" target="_blank">Charles R. Macedo</a> and <a href="" target="_blank">Douglas A. Miro</a> are partners and <a href="" target="_blank">David P. Goldberg</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practice specializes in all aspects of Intellectual Property Law, including copyrights, trademarks and patents. They can be reached at <a href=""></a>, <a href=""></a>, <a href=""></a> and <a href=""></a>.</div> Wed, 29 Apr 2020 00:00:00 +0000 ARE Trademark Law Alert:<br>Supreme Court Holds That Willfulness Is Not Required for an Award of Profits in Federal Trademark Infringement Cases Brought Under 15 U.S.C. § 1125(a)<br> (April 24, 2020) On Thursday, April 23, 2020, the Supreme Court Unanimously decided that trademark infringers may be liable for their profits in actions brought under 15 U.S.C. &sect; 1125(a), even if they did not violate the law willfully.&nbsp; <i>Romag Fasteners, Inc. v. Fossil Group, Inc</i>., No. 18-1233, Slip op. at 3, 7 (U.S. Apr. 23, 2020).&nbsp; This decision overturns contrary precedent in the Second Circuit, which includes New York, as well as the First, Eighth, Ninth, Tenth, and D.C. Circuits.&nbsp; The Court did, however, make a point of noting that a defendant&rsquo;s willfulness should nonetheless be an important factor for lower courts to consider when exercising their discretion to award an infringer&rsquo;s profits.<div>&nbsp;</div> <div><b>Background</b></div> <div><b>&nbsp;</b></div> <div>In 2002, Fossil, Inc. signed an agreement to use Romag Fasteners, Inc.&rsquo;s patented magnetic snaps in its handbags.&nbsp; Romag later discovered that Fossil&rsquo;s Chinese factories were using counterfeit Romag fasteners.&nbsp; Unable to settle the dispute amicably, Romag sued Fossil in 2010 in the U.S. District Court for the District of Connecticut for trademark infringement under 15 U.S.C. &sect; 1125(a).&nbsp; In accordance with Second Circuit precedent, the District Court rejected Romag&rsquo;s request for an award of profits because the jury found that Fossil&rsquo;s behavior was &ldquo;in callous disregard&rdquo; of Romag&rsquo;s rights but was not willful. Slip op. at 2.</div> <div>&nbsp;</div> <div>Romag appealed to the U.S. Court of Appeals for the Federal Circuit.&nbsp; The Federal Circuit, applying Second Circuit trademark precedent, affirmed the District Court&rsquo;s decision.</div> <div>&nbsp;</div> <div>Romag then filed a Petition for Certiorari to the U.S. Supreme Court.&nbsp; Because federal courts in different judicial circuits were split upon whether willfulness was a precondition for an award of profits in trademark infringement cases brought under 15 U.S.C. &sect; 1125(a), the Supreme Court agreed to hear the case.</div> <div>&nbsp;</div> <div><b>Majority Opinion of the Supreme Court<br /> <br /> </b></div> <div>Justice Gorsuch delivered the opinion of the Court, which was joined by Chief Justice Roberts and Justices Thomas, Ginsburg, Breyer, Alito, Kagan and Kavanaugh.</div> <div>&nbsp;</div> <div>The Court began by noting that the key issue in this case was whether a categorical rule that willfulness is required as a precondition for an award of profits &ldquo;can be reconciled with the statute&rsquo;s plain language.&rdquo; &nbsp;Slip op. at 1.&nbsp; The relevant section of the Lanham Act governing remedies, 15 U.S.C. &sect; 1117(a), states in pertinent part:</div> <div>&nbsp;</div> <div style="margin-top:0in;margin-right:.5in;margin-bottom:0in;&#10;margin-left:.5in;margin-bottom:.0001pt">When . . . a violation under section 1125(a) or (d) of this title, or a willful violation under section 1125(c) of this title, shall have been established . . . the plaintiff shall be entitled . . . subject to the principles of equity, to recover (1) defendant&rsquo;s profits . . . .</div> <div>&nbsp;</div> <div>The Court clarified that this section of the statute explicitly requires a showing of willfulness in order for plaintiffs in actions brought under 15 U.S.C. &sect; 1125(c), for trademark dilution, to recover a defendant&rsquo;s profits.&nbsp; However, the Court found that such a showing is clearly not required for plaintiffs in actions brought under 15 U.S.C. &sect; 1125(a) such as for infringement of an unregistered trade dress, or for false or misleading use of trademarks.</div> <div>&nbsp;</div> <div>The Court rejected Fossil&rsquo;s contention that the term &ldquo;subject to the principles of equity&rdquo; implicitly includes a willfulness requirement because &ldquo;equity courts historically required a showing of willfulness before authorizing a profits remedy in trademark disputes.&rdquo; &nbsp;Slip op. at 4.&nbsp; First, because the Lanham Act &ldquo;speaks often and expressly about mental states,&rdquo; the Court disagreed that Congress would use coded language here to import a willfulness requirement that is expressly prescribed in other sections of the Act.&nbsp; Second, the Court doubted that the &ldquo;principles of equity&rdquo; could be stretched to include &ldquo;a narrow rule about a profits remedy within trademark law.&rdquo;&nbsp; Third, the Court did not find the evidence in the record supported that &ldquo;trademark law historically required a showing of willfulness before allowing a profits remedy.&rdquo; &nbsp;Slip op. at 5.</div> <div>&nbsp;</div> <div>That said, in language that many defendants will undoubtedly point to in the future to try to forestall an award of profits, the Court wrote:&nbsp; &ldquo;We do not doubt that a trademark defendant&rsquo;s mental state is a highly important consideration in determining whether an award of profits is appropriate.&rdquo; Slip op. at 7.</div> <div>&nbsp;</div> <div>The Court concluded its opinion with a curt dismissal of the policy arguments made by both sides, noting that the Court&rsquo;s &ldquo;limited role is to read and apply the law.&rdquo;</div> <div>&nbsp;</div> <div><b>Concurring Opinions</b></div> <div><b>&nbsp;</b></div> <div>Justice Alito wrote a concurring opinion, joined by Justices Breyer and Kagan, noting that pre-Lanham Act cases &ldquo;show that willfulness is a highly important consideration in awarding profits under 15 U.S.C. &sect; 1117(a), but not an absolute precondition.&rdquo;</div> <div>&nbsp;</div> <div>Justice Sotomayor also wrote a concurring opinion, disagreeing that courts of equity were just as likely to award profits for willful infringement as for innocent infringement, but nevertheless finding &ldquo;that 15 U.S.C. &sect; 1117(a) does not impose a &lsquo;willfulness&rsquo; prerequisite for awarding profits in trademark infringement actions.&rdquo;</div> <div>&nbsp;</div> <div><b>Practical Effect</b></div> <div><b>&nbsp;</b></div> <div>This Supreme Court decision reconciles differences in statutory interpretation among the judicial circuits and holds that &ldquo;willfulness&rdquo; is no longer an &ldquo;inflexible precondition&rdquo; to an award of profits for trademark infringement under 15 U.S.C. &sect; 1125(a), while acknowledging that &ldquo;a trademark defendant&rsquo;s mental state is a highly important consideration.&rdquo;</div> <div>&nbsp;</div> <div>This means that defendants in federal trademark infringement actions may face more severe monetary consequences in the event that they are successfully accused of trademark infringement.&nbsp; As a result, this gives added incentive for plaintiffs to file more trademark infringement actions. Thus, it may be even more prudent to conduct thorough trademark searches for potential conflicts before adopting new trademarks and to give extra scrutiny to possible conflicts discovered in those searches.&nbsp; Moreover, allegations of trademark infringement need to be taken even more seriously.&nbsp; A common view among accused infringers that they can simply stop using an accused trademark in the event of litigation without further consequence may no longer apply.&nbsp;</div> <div>&nbsp;</div> <div>Finally, although the Court did not discuss in detail the other remedies set out in 15 U.S.C. &sect; 1114, because the Court remarked that &ldquo;no one suggests [that section] contain[s] the rule Fossil seeks,&rdquo; it would appear that the same logic with respect to willfulness requirements (or the lack thereof) would apply there as well. &nbsp;<i>See</i> Slip op. at 3.</div> <div>&nbsp;</div> <div>We will continue to monitor and report on developments in U.S. trademark law.&nbsp; In the meantime, please feel free to contact us to learn more.</div> <div>&nbsp;</div> *<a href="" target="_blank">Anthony F. Lo Cicero</a>, <a href="" target="_blank">Chester Rothstein</a>, and <a href="" target="_blank">Douglas A. Miro</a> are partners, and <a href="" target="_blank">Benjamin Charkow</a> and <a href="" target="_blank">David P. Goldberg</a> are associates at Amster, Rothstein &amp; Ebenstein LLP. Their practice involves all aspects of intellectual property law, including trademark, patent and copyright litigation. They may be reached at <a href=""></a>, <a href=""></a>, <a href=""></a>, <a href=""></a>, and <a href=""></a>. <br /> Fri, 24 Apr 2020 00:00:00 +0000