Amster Rothstein & Ebenstein, LLP - Intellectual Property Law http://www.arelaw.com/ 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 Wed, 24 Jul 2024 09:07:29 +0000 Floodlight Design CMS Corrected Combined Petition for Panel Rehearing and Rehearing En Banc for Plaintiff-Appellant in Island Intellectual Property LLC v. TD Ameritrade, Inc., et al. http://www.arelaw.com/publications/view/island-v-tdameritrade-petition-for-panel-rehearing-en-banc/ Click to download PDF: <a href="/images/file/Island-petition-rehearing-en-banc.pdf" target="_blank">Corrected Combined Petition for Panel Rehearing and Rehearing En Banc for Plaintiff-Appellant</a> Tue, 18 Jun 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/island-v-tdameritrade-petition-for-panel-rehearing-en-banc/ IN THE NEWS: US Inventor Submit Amicus Brief in Support of Island’s Petition for Rehearing/Rehearing En Banc to Federal Circuit http://www.arelaw.com/publications/view/inthenews-us-inventor-submit-amicus-island/ IP Watchdog reports on Amicus Brief in support of Island&rsquo;s Petition for Rehearing/Rehearing En Banc in <em>Island Intellectual Property LLC v. TD Ameritrade, Inc.</em>, urging the U.S. Court of Appeals for the Federal Circuit (CAFC) to reconsider its use of Rule 36 when affirming decisions.<br /><br />As IP Watchdog reports, USI explained:<br /><br /><div style="margin-left: 40px;">&ldquo;Rule 36 as written permits affirmance in cases that should be reversed, negatively impacts development of both the public and the private patent law, and systematically biases cases toward affirmance through stymying &lsquo;vote fluidity&rsquo; among Circuit Judges.&rdquo; &ndash; USI amicus brief<br />&nbsp;</div>For the full article, see <a href="https://ipwatchdog.com/2024/07/02/us-inventor-urges-cafc-review-implementation-rule-36/id=178509/" target="_blank">https://ipwatchdog.com/2024/07/02/us-inventor-urges-cafc-review-implementation-rule-36/id=178509/</a><br /><br /><div>&nbsp;</div> Wed, 03 Jul 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/inthenews-us-inventor-submit-amicus-island/ Law360 Reports on Petition for Rehearing/Rehearing En Banc Filed by Amster, Rothstein & Ebenstein LLP in Island IP v. TD Ameritrade http://www.arelaw.com/publications/view/law360-petition-for-rehearing-en-banc-filed/ Law 360 reported on Combined Petition for Rehearing and Rehearing En Banc filed by Partner Charles R. Macedo from Amster, Rothstein &amp; Ebenstein LLP and John Dellaportas from Emmet Marvin &amp; Martin LLP on behalf of Island Intellectual Property LLC at the Federal Circuit. The Petition addresses important issues of when the Court needs to provide a reasoned decision on a motion for summary judgment and appellate review.<br /><br />Law360 cites Mr. Macedo as follows:<br /><br /><div style="margin-left: 40px;">&quot;There was a mountain of evidence and a clear explanation in the briefs,&quot; Island lawyer Charles Macedo of Amster Rothstein &amp; Ebenstein LLP told Law360 Thursday.<br /><br />&quot;You don't need to agree with us, it doesn't mean that the factfinder in the end would agree, but at a minimum you have to address it. Unfortunately, neither the district court nor the panel addressed [Alice's] 'Step 2,' let alone the evidence,&quot; said Macedo.</div><div><br />Read more at: <a href="https://www.law360.com/ip/articles/1848953/finance-co-asks-fed-circ-to-read-its-1-4k-pages-of-evidence?copied=1" target="_blank">https://www.law360.com/ip/articles/1848953/finance-co-asks-fed-circ-to-read-its-1-4k-pages-of-evidence?copied=1</a></div> Thu, 20 Jun 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/law360-petition-for-rehearing-en-banc-filed/ Amicus Brief of New York Intellectual Property Law Association in Cellect, LLC v. Vidal in Support of Petition for Certiorari http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-re-cellect-patents/ Click to download PDF:&nbsp;<a href="/images/file/Cellect%20v%20Vidal%20Amicus%20Brief.pdf" target="_blank">Brief of the New York Intellectual Property Law Association as Amicus Curiae in Support of Certiorari</a> Tue, 28 May 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-re-cellect-patents/ Charley Macedo, Darren Haber and David Goldberg Co-Author Article For IP Watchdog on Island Petition Highlights Patent Decisions Increasingly Deviate from Civil Procedure Norms http://www.arelaw.com/publications/view/inthepress-ipwatchdog-island-petition-civil-procedure-norms/ IP Watchdog featured an article by partners Charley Macedo and Darren Haber, and Senior Counsel David Goldberg on &ldquo;Island Petition Highlights Patent Decisions Increasingly Deviate from Civil Procedure Norms&rdquo;.&nbsp;The article was also co-written by&nbsp;John Dellaportas.<br /><br />&ldquo;On June 17th, 2024, Island Intellectual Property LLC (&ldquo;Island&rdquo;) filed a Combined Petition for Rehearing and Rehearing En Banc in Island Intellectual Property LLC v. TD Ameritrade, Inc., Nos. 2023-1318, -1441 (link here). This case involves the failure of the District Court to provide a reasoned decision in granting summary judgment of patent ineligibility in an infringement case.&rdquo;<br /><br />Read the full article <a href="https://ipwatchdog.com/2024/06/20/patent-decisions-deviate-civil-procedure-norms/id=178166/" target="_blank">HERE</a>. Fri, 21 Jun 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress-ipwatchdog-island-petition-civil-procedure-norms/ ARE Trademark Law Alert: Supreme Court Confirms Constitutionality of Lanham Act Prohibition on Registration of Trademarks That Comprise the Names Living People Without Their Consent in Vidal v. Elster http://www.arelaw.com/publications/view/are-trademark-alert-lanham-act-prohibition/ <div>On June 13, 2024, in Vidal v. Elster, No. 22-704, the United States Supreme Court unanimously upheld the constitutionality of a provision of the Lanham Act prohibiting the US Patent &amp; Trademark Office (&ldquo;USPTO&rdquo;) from registering trademarks that name living people without their consent.<br /><br /><strong>Background</strong><br /><br />The case grew out of the USPTO&rsquo;s refusal to grant Steven Elster a federal trademark registration for the trademark TRUMP TOO SMALL for clothing under 15 U.S.C. &sect; 1052(c) (the &ldquo;Names Clause&rdquo;). Elster challenged the refusal, arguing that the prohibition violated his free speech rights by treating speech about Donald Trump different from other speech. The US Court of Appeals for the Federal Circuit agreed. <em>In re Elster</em>, 26 F.4th 1328 (Fed. Cir. 2022). In a two-step analysis, the Federal Circuit found, first, that the Names Clause was a viewpoint-neutral, content-based restriction on speech subject to at least intermediate scru&not;tiny. <em>Id</em>. at 1331, 1333-34. In a second step, the Federal Circuit concluded that the Government could not satisfy intermediate scru&not;tiny because the Names Clause does not advance any sub&not;stantial governmental interest. <em>Id</em>. at 1339.<br /><br /><strong>Majority Opinion<br /></strong><br />This argument was rejected by the Supreme Court, although the Justices&rsquo; reasons for rejecting the argument differed. <br /><br />After laying out the facts of the dispute in Part I, the majority opinion written by Justice Thomas noted in Part II(A) that the recent Supreme Court decisions in <em>Matal v. Tam</em>, 582 U.S. 218 (2017), and <em>Iancu v. Brunetti</em>, 588 U.S. 388 (2019), clarify that trademark restrictions that discriminate on viewpoint violate the First Amendment. That said, the &ldquo;names clause does not facially discriminate against any viewpoint&rdquo; even though it is clearly &ldquo;content based.&rdquo; <em>Vidal v. Elster</em>, No. 22-704, slip op. at 5-6 (U.S. June 13, 2024).<br /><br />The majority opinion then turned in Part II(B) to the issue of whether these facts call for heightened scrutiny, and concluded they did not. History &ldquo;demonstrates that restrictions on trademarks have always turned on a mark&rsquo;s content. But, despite its content-based nature, trademark law has existed alongside the First Amendment from the beginning. That longstanding, harmonious relationship suggests that heightened scrutiny need not always apply in this unique context.&rdquo; <em>Id</em>. at 10-11.<br /><br />In Part II(C), the majority opinion reviewed the particular history of restrictions on the trademarking of names, noting that such restrictions served purposes such as protecting a people&rsquo;s ability to trademark their own names, <em>id</em>. at 12-14, and protecting people from having third parties piggyback off the goodwill they have built in their names, <em>id</em>. at 14-18. With this in mind, the Court found that the history and tradition of restricting trademarks containing names is sufficient to conclude that the Names Clause is compatible with the First Amendment. <em>Id</em>. at 12-19.<br /><br />In Part III of the majority opinion, which was only joined by Justices Alito and Gorsuch, Justice Thomas defended the historical methodology used in the majority opinion against the analytical methodologies proposed for adoption by Justices Barrett and Sotomayor in their concurring opinions, as discussed below. &ldquo;But, no matter the approach taken, we all agree that the names clause does not violate the First Amendment.&rdquo; <em>Id</em>. at 20.<br /><br /><strong>Kavanaugh Concurrence<br /></strong><br />Justice Kavanaugh, in a concurring-in-part opinion joining all but Part III of the majority opinion, joined by Chief Justice Roberts, noted that not all such viewpoint-neutral, content-based trademark restrictions need a long historical heritage to be constitutional.<br /><br /><strong>Barrett Concurrence<br /></strong><br />Justice Barrett, joined by Justice Kagan, and joined in part by Justices Sotomayor, and Jackson, wrote a concurrence-in-part joining Parts I through II(B) of the majority opinion, but taking issue with Parts II(C) and III of the majority opinion by arguing that history and tradition should not be, and is not, sufficient to settle the constitutionality issue. <br /><br />Instead, the issue should be addressed by determining whether the law is rationally related to a legitimate government purpose, which is the test set forth for analogous free speech cases in <em>Rosenberger v. Rectors and Visitors of Univ. of Va</em>., 515 U.S. 819, 829 (1995). That said, under such an analysis, she argued, the Names Clause &ldquo;passes muster.&rdquo; After all, &ldquo;[t]he Government can reasonably determine that, on the whole, protecting marks that include another living person&rsquo;s name without consent risks undermining the goals of trademark. The names clause is therefore constitutional, both facially and as applied to Elster&rsquo;s mark.&rdquo; <em>Vidal v. Elster</em>, No. 22-704, concurring op. at 9 (U.S. June 13, 2024) (Barrett, J., concurring).<br /><br /><strong>Sotomayor Concurrence<br /></strong><br />Justice Sotomayor, joined by Justices Kagan and Jackson, wrote a concurring opinion to set forth a proposed framework for deciding free speech challenges to provisions of the Lanham Act, namely:<br />&nbsp;</div><div style="margin-left: 40px;">The analysis should proceed in two steps. First ask whether the challenged provision targets particular views taken by speakers on a given subject. If the trademark registration bar is viewpoint based, it is presumptively unconstitutional and heightened scrutiny applies; if it is viewpoint neutral, however, the trademark registration bar need only be reasonable in light of the purpose of the trademark system. Specifically, the trademark registration bar must reasonably serve its purpose of identifying and distinguishing goods for the public. If the challenged provision is both viewpoint neutral and reasonable, then it does not violate the Free Speech Clause.</div><div><br /><em>Vidal v. Elster</em>, No. 22-704, concurring op. at 5-6 (U.S. June 13, 2024) (Sotomayor, J., concurring). In an analysis similar to Justice Barrett&rsquo;s, Justice Sotomayor concluded that the Names Clause is not an unconstitutional infringement of Elster&rsquo;s free speech rights, writing, &ldquo;on the conclusion that the names clause is constitutional, we all agree. Our disagreement boils down primarily to methodology.&rdquo; <em>Id</em>. at 3.<br /><br /><strong>Conclusion</strong><br /><br />This case represents the third case in recent years to consider whether specific restrictions in the Lanham Act prohibiting the federal registration of some types of trademarks violate First Amendment free speech rights. The first two cases struck down the two most obvious viewpoint-discriminatory, content-based trademark restrictions, namely those against disparaging matter in <em>Matal v. Tam</em>, 582 U.S. 218 (2017), and against immoral or scandalous matter in <em>Iancu v. Brunetti</em>, 588 U.S. 388 (2019).<br /><br />The current <em>Elster </em>case tested whether such free speech challenges could also be used to strike down content-based Lanham Act prohibitions that are not viewpoint-discriminatory, and the answer seems to be no. Although the Court did take care to note that its decision in this case &ldquo;is narrow,&rdquo; our understanding is that this is most likely due to the methodological differences between the Justices&rsquo; analyses and is not an invitation to challenge other viewpoint-neutral, content-based trademark restrictions that may unconstitutionally violate the First Amendment. <br /><br />In the end, while the result with respect to Elster&rsquo;s mark was clear, the Justices&rsquo; dispute over how to get to that result leaves much confusion on how to determine the constitutionality of other clauses of the Lanham Act and other laws in general.<br /><br />***<br /><br />We will continue to monitor developments and provide further updates regarding this case. In the meantime, please feel free to contact us if you have questions regarding issues raised by this case.<br /><br />*<a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> is partner and <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is senior counsel at Amster, Rothstein &amp; Ebenstein LLP. They may be reached at <a href="mailto:[email protected]">[email protected]</a> and <a href="mailto:[email protected]">[email protected]</a>.</div> Mon, 17 Jun 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/are-trademark-alert-lanham-act-prohibition/ IAM Data & Analytics Reports Amster, Rothstein & Ebenstein partners as being among the IAM Patent 1000 http://www.arelaw.com/publications/view/iam-data-analytics-macedo-miro-gershik/ Amster, Rothstein &amp; Ebenstein LLP, and its partners <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charley Macedo</a>, <a href="https://www.arelaw.com/professional/miro/" target="_blank">Douglas Miro</a> and <a href="https://www.arelaw.com/professional/gary-j-gershik/" target="_blank">Gary Gershik</a> are recommended by IAM Data &amp; Analytics as being among the IAM Patent 1000. As IAM reports:<br /><br />&quot;In the words of one client: &ldquo;Every single team member at Amster Rothstein &amp; Ebenstein, and especially Charles Macedo, has been exceptionally sharp, professional and efficient.&rdquo;<br /><br />Read more on the IAM Patent 1000 and our firm <a href="https://www.iam-media.com/rankings/patent-1000/profile/firm/amster-rothstein-ebenstein-llp" target="_blank">here</a>. (subscription required)<br type="_moz" /><br /><br type="_moz" /><br /> Wed, 05 Jun 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/iam-data-analytics-macedo-miro-gershik/ Law360 and Patently-O Reports on NYIPLA Amicus Brief: Advocating for Patent Term Adjustments In re Cellect, LLC http://www.arelaw.com/publications/view/inthenews-nyipla-amicus-brief-inrecellect/ Amster Rothstein &amp; Ebenstein is pleased that Law360 and Patently-O have reported on the amicus brief filed on behalf of NYIPLA with the U.S. Supreme Court on Obviousness Double Patenting in In re Cellect, LLC. Partners, <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charley Macedo</a> and <a href="https://www.arelaw.com/professional/gary-j-gershik/" target="_blank">Gary Gershik</a> and Senior Counsel, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a> appeared on the brief along with other members of the Association. <br /><br /> A copy of the brief is available <a href="https://www.arelaw.com/publications/view/amicus-brief-curiae-cellect-llc/" target="_blank">here</a>. <br /><br /> The Patently-O article is available <a href="https://patentlyo.com/patent/2024/05/nyipla-advocating-adjustments.html" target="_blank">here</a>. (subscription may be required).<br /><br />Read the Law360 article <a href="https://www.law360.com/articles/1841707/ny-attys-back-bid-for-justices-to-hear-double-patenting-row" target="_blank">here</a>. (subscription required) Thu, 30 May 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/inthenews-nyipla-amicus-brief-inrecellect/ Brief of New York Intellectual Property Law Association in Re Cellect LLC http://www.arelaw.com/publications/view/amicus-brief-curiae-cellect-llc/ Click to download PDF:&nbsp;<a href="/images/file/Brief%20of%20New%20York%20Intellectual%20Property%20Law%20Association%20as%20Amicus%20Curiae%20In%20Re%20Cellect%20LLC.pdf" target="_blank">Brief of New York Intellectual Property Law Association as Amicus Curiae In Re Cellect LLC</a> Wed, 22 Nov 2023 00:00:00 +0000 http://www.arelaw.com/publications/view/amicus-brief-curiae-cellect-llc/ WTR Turns to Partner Max Vern on How To Mitigate Risks Of Trademark Scams http://www.arelaw.com/publications/view/wtr-vern-mitigate-risks-trademark-scams/ WTR in its May 28, 2024 article &ldquo;How to protect your clients from new scams targeting US trademark applicants&rdquo; (<a href="https://www.worldtrademarkreview.com/article/how-protect-your-clients-new-scams-targeting-us-trademark-applicants" target="_blank">https://www.worldtrademarkreview.com/article/how-protect-your-clients-new-scams-targeting-us-trademark-applicants</a>) turns to Max Vern, Partner, Amster, Rothstein &amp; Ebenstein LLP for his insights on how to mitigate risk from the proliferation of scams targeting trademark applicants in the United States:<br /><br /><div style="margin-left: 40px;">One unfortunate side effect of the growing importance of trademarks is the significant increase in scams and fraud committed by &ldquo;unscrupulous actors that try to cash in on trademark owners&rsquo; rights&rdquo;, says Max Vern of Amster Rothstein &amp; Ebenstein. &ldquo;The key is strategy and diligence, regardless of whether we are dealing with spoofers trying to lure trademark owners to &lsquo;file&rsquo; or &lsquo;renew&rsquo; brands through them, more sinister hijackers trying to fraudulently get marks assigned to them to get a foothold in the marketplace or outright copycats flooding the market with counterfeits.&rdquo;</div><br />For more information about trademark law and how to mitigate risk of scams, please contact one of our <a href="https://www.arelaw.com/practice/trademark/" target="_blank">trademark attorneys</a>.<br /><h3>&nbsp;</h3> Tue, 28 May 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/wtr-vern-mitigate-risks-trademark-scams/ Amster, Rothstein & Ebenstein's Richard Mandaro Interviewed by Nate Crespo in "Lawyers in the Making" Podcast http://www.arelaw.com/publications/view/inthepress-mandaro-lawyers-in-the-making-podcast/ Richard Mandaro, Partner at Amster, Rothstein &amp; Ebenstein, recently interviewed by Nate Crespo,&nbsp;Creator &amp; Host of the Lawyers in the Making Podcast.<br /><br />Listen to the Podcast <a href="https://lawyersinthemaking.substack.com/p/e47-richard-mandaro-partner-at-amster?r=3hhjsy&amp;utm_campaign=post&amp;utm_medium=web&amp;triedRedirect=true" target="_blank">HERE</a>. Tue, 21 May 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress-mandaro-lawyers-in-the-making-podcast/ ARE Design Patent Alert: En Banc Decision in LXQ Corp. v. GM Global Tech. Brings The Law of Obviousness for Design Patent in Accord with KSR http://www.arelaw.com/publications/view/are-design-patent-alert-en-banc/ <div><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">On May 21, 2024, the full court of U.S. Court of Appeals for the Federal Circuit in </span><i>LKQ Corp. v. GM Global Tech., </i>21-2348 (Fed. Cir. 2023)<span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"> revitalized the law of obviousness for design patents by overruling four decades of precedent based on a rigid and inflexible <i>Rosen-Durling </i>test, to bring the law of obviousness in design patents in accord with the general law of obviousness for utility patents as set forth in <i>Graham v. Deere</i> </span><i><span style="border: 1pt none windowtext; padding: 0in; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">Co.</span></i><span style="border: 1pt none windowtext; padding: 0in; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">, 383 U.S. 1, 86 S. Ct. 684 (1966)</span>.</div> <div><br /> <b>Factual and Procedural Background</b></div> <div><i>&nbsp;</i></div> <div>Prior to LKQ, the long-standing framework for determining obvious for a design patent was developed in the 1980s out of a CCPA decision in <i>In re Rosen</i>, 673 F.2d 388 (CCPA 1982).&nbsp;&nbsp; <i>Rosen</i> held that there must be an earlier design that has the same visual impression as the patented design as a prerequisite for finding a patented design obvious.&nbsp;&nbsp; In 1996, the Federal Circuit in <i>Durling v. Spectrum Furniture Co.</i>, built on the Rosen test to further require the court to looked at whether it would have been obvious for a designer to modify the earlier reference to create the patented design in question. 101 F.3d 100 (Fed. Cir. 1996).&nbsp; This two-part test has been commonly referred to as the <i>Rosen-Durling </i>test.</div> <div>&nbsp;</div> <div><b>Question Presented</b></div> <div>&nbsp;</div> <div>The issue raised in this case, is whether the Rosen-Durling test is at odds with <span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">the Supreme Court&rsquo;s 2007 in <i>KSR v. Teleflex</i> decision, and should be modified or eliminated. While the question divided the panel, the most significant issue is what the replacement test should be. Not surprisingly, General Motors opposed the review, stating not only that LKQ failed to raise the KSR issue with the PTAB, but also, they were seeking a complete &lsquo;rewrite of design patent obviousness framework that has otherwise remained unchallenged for decades.&rsquo;</span></div> <div>&nbsp;</div> <div><b><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">NYIPLA Amicus Brief</span></b></div> <div><b>&nbsp;</b></div> <div><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">The issue of obviousness in design patents does not often get to be heard by the Federal Circuit, let alone the full court, and a significant number of amicus briefs were submitted to help guide the Court.&nbsp; Some of the authors, along with others from the New York Intellectual Property Law Association (&ldquo;NYIPLA&rdquo;), submitted an amicus brief in this case urging the Federal Circuit to adopt a more flexible approach for determining obviousness of design patents in lieu of the <i>Rosen-Durling </i>test. The brief argued for an approach similar to the one outlined in </span><i>KSR Int&rsquo;l Co. v. Teleflex Inc.</i>, 550 U.S. 398 (2007), reasoning that patent law statutes require that the same conditions for patentability for utility patents apply to design patents<span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">. </span></div> <div>&nbsp;</div> <div><span style="background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">In <i>KSR</i>,the Supreme Court rejected the restrictive approach to the obviousness analysis for utility patents and, instead, offered a variety of rationales for finding obviousness. In response to <i>KSR</i>, the Federal Circuit adopted a more flexible test. The brief likened the rigidness of the pre-<i>KSR </i>analysis to the <i>Rosen-Durling </i>test and respectfully urged the Federal Circuit to follow suit by applying the same types of flexible rationales to design patents. </span></div> <div>&nbsp;</div> <div><b>Majority Opinion (Authored by Judge Stoll)</b></div> <div>&nbsp;</div> <div>In an opinion filed by Circuit Judge Stoll, in which Chief Judge Moore and Circuit Judges Dyk, Prost, Reyna, Taranto, Chen, Hughes, and Stark joined, the Federal Circuit overruled the <i>Rosen-Durling </i>test and opted for a more flexible approach, as suggested by the NYIPLA brief.</div> <div>&nbsp;</div> <div>Guided by &sect; 103, and the Supreme Court&rsquo;s and Federal Circuit Court&rsquo;s precedent, the Court adopted the <i>Graham </i>four-part obviousness test for utility patents to also apply to design patents:</div> <div>&nbsp;</div> <div>(1) considering the scope and content of the prior art with knowledge of an ordinary designer in the field of design,</div> <div>(2) determining the differences between the prior art designs and the design claim at issue,</div> <div>(3) considering the level of ordinary skill in the pertinent art, and</div> <div>(4) assessing secondary considerations of non-obviousness.</div> <div>&nbsp;</div> <div><i>Graham v. John Deere Co.</i>, 383 U.S. 1, 17-18 (1965). Subsequently, the Court vacated and remanded the case for the Board to apply its new framework.</div> <div>&nbsp;</div> <div><b>Concurrence (Authored by Judge Lourie)</b></div> <div><b>&nbsp;</b></div> <div>The concurrence by Circuit Judge Lourie agreed with the Court&rsquo;s decision to vacate and remand but disagreed with the Court&rsquo;s decision to overrule the <i>Rosen-Durling </i>test, arguing that the original test should have been tweaked rather than overruled.<br /><br />***<br /><br />We will continue to monitor&nbsp;developments and provide further updates regarding this case. In the meantime, please feel free to contact us if you have questions regarding issues raised by this case.<br /><br />* <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> and <a href="https://www.arelaw.com/professional/miro/" target="_blank">Douglas A. Miro</a> are partners, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a> is a senior associate and Jamie Zipper is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. They may be reached at <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected] </a>and <a href="mailto:[email protected]">[email protected]</a>.</div> Wed, 22 May 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/are-design-patent-alert-en-banc/ ARE Copyright Law Alert: Supreme Court Issues Ruling on Recovery of Damages Beyond the Copyright Act’s Three-Year Statute of Limitations http://www.arelaw.com/publications/view/are-copyright-law-alert/ <div>On May 9, 2024, the U.S. Supreme Court issued its ruling in <i>Warner Chappell Music, Inc. v. Sherman Nealy</i>, No. 22-1078, 601 U. S. ____ (2024), addressing whether, under the discovery rule of accrual, a copyright owner claiming infringement &ldquo;&lsquo;can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit.&rsquo;&rdquo; <i><span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">Warner</span></i><span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">, majority slip op., at 2.</span>(citing <i><span style="border: 1pt none windowtext; padding: 0in; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">Nealy v. Warner Chappell Music, Inc.</span></i><span style="border: 1pt none windowtext; padding: 0in; background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">, 60 F.4th 1325, 1334 (11th Cir. 2023)). </span>The Court held that in circuits applying the discovery rule, a copyright owner can obtain damages for an infringement of more than three years so long as the claim was timely.</div> <div>&nbsp;</div> <div><b>Factual and Procedural Background</b></div> <div>&nbsp;</div> <div>In 1983, Respondent Sherman Nealy and Tony Butler formed Music Specialist, Inc., a company that released recordings of various musical compositions. After Music Specialist dissolved three years later, Nealy was incarcerated from 1989 to 2008 and then again from 2012 to 2015 for cocaine distribution. While incarcerated, Nealy did not approve of any deals involving the use of Music Specialist&rsquo;s catalog of compositions. However, Butler, on his own, agreed to license works to Petitioner, Warner Chappell Music, Inc. In fact, Warner Chappell used one work, &ldquo;Jam the Box,&rdquo; famously in Flo Rida&rsquo;s hit song &ldquo;In the Ayer.&rdquo;</div> <div>&nbsp;</div> <div>In 2018, following his release from prison, Nealy sued Warner Chappell Music for copyright infringement alleging he held the copyrights to Music Specialist&rsquo;s songs. Neally alleged the infringement began more than ten years before the date Nealy filed the suit, but Nealy argued that his claims were timely because he sued within three years of discovering the infringement. Chappell accepted that Nealy timely filed his suit within three years of discovery but argued that Nealy could only recover damages or profits that accrued within the past three years, pointing to the Copyright Act&rsquo;s three-year statute of limitations.<i> See</i> 17 U. S. C. &sect;507(b). The District Court agreed with Chappel&rsquo;s interpretation barring Nealy&rsquo;s claim. However, on interlocutory appeal, the Eleventh Circuit reversed, finding that when claims are timely filed there is no three-year damages bar under the Copyright Act.</div> <div>&nbsp;</div> <div>The Supreme Court granted certiorari and affirmed the Eleventh&rsquo;s Circuit&rsquo;s decision in an opinion written by Justice Kagan and joined by Chief Justice Roberts, and Justices Sotomayor, Kavanaugh, Barret and Jackson. Justice Gorsuch filed a dissenting Opinion, joined by Justice Thomas and Justice Alito.</div> <div>&nbsp;</div> <div><b>Majority Opinion by Justice Kagan</b></div> <div>&nbsp;</div> <div>Certiorari was originally granted to address the question, &ldquo;[w]hether, under the discovery accrual rule applied by the circuit courts,&rdquo; a copyright plaintiff &ldquo;can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit.&rdquo;&nbsp;&nbsp; Slip op. at 4.&nbsp; That question, as the Court noted, assumes a copyright claim accrues when a plaintiff discovers or should have discovered an infringement, rather than when infringement happened.&nbsp;&nbsp; But as the Majority noted, that issue has never been decided, and since Warner Chappel never challenged the Eleventh Circuit&rsquo;s use of the discovery rule below it is not properly raised in this appeal.&nbsp; Thus, the Court assumed, without deciding, that the discovery rule applied, and thus confined its review to whether circuits applying the discovery rule should &ldquo;superimpose a three-year limit on damages.&rdquo; <i><span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">Warner</span></i><span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">, majority slip op., at 4.</span>(citing <i>Petrella</i>, 572 U. S., at 670, n. 4). The Court ultimately ruled that a three-year limit on damages should not be superimposed, reasoning that &ldquo;[t]he &lsquo;time-to-sue prescription&rsquo; [found in the Copyright Act] establishes no separate three-year period for recovering damages . . . .&rdquo; <i><span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">Warner</span></i><span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">, majority slip op., at 5.</span>(citing <i>Petrella</i>, 572 U. S. at 686). Thus, the Court held that when a copyright owner timely sues in a circuit court that applies the discovery rule, the owner can recover for damages occurring more than three years prior. However, the Court left up in the air whether the discovery rule itself should be applied in copyright infringement cases.</div> <div>&nbsp;</div> <div><b>Justice Gorsuch&rsquo;s Dissent</b></div> <div><b><u>&nbsp;</u></b></div> <div>In the dissenting opinion, Justice Gorsuch disagreed with the majority&rsquo;s decision to &ldquo;sidestep[] the logically antecedent question whether the [Copyright Act] has room for . . . a [discovery] rule.&rdquo;<span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;"> <i>Warner</i>, dissent slip op., at 1.</span> In fact, Justice Gorsuch went as far as to say, &ldquo;the Act almost certainly does not tolerate a discovery rule&rdquo; finding that the Court in the past has &ldquo;said . . . that the rule is not &lsquo;applicable across all contexts.&rsquo;&rdquo; <i>Id. </i>(citing <i>TRW Inc. v. Andrews</i>, 534 U. S. 19, 27 (2001)). Furthermore, Justice Gorsuch stated that the discovery rule should only be applied &ldquo;in cases of fraud or concealment,&rdquo; and, thus, &ldquo;has no role to play here&mdash;or, indeed, in the mine run of copyright cases.&rdquo; <i><span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">Warner</span></i><span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">, dissent slip op., at 2</span>. The dissent ended by heavily criticizing the majority opinion, stating that it &ldquo;would have dismissed [the case] as improvidently granted and awaited another squarely presenting the question whether the Copyright Act authorizes the discovery rule.&rdquo; <i>Id.</i>, <span style="color: rgb(51, 51, 51); background-image: initial; background-position: initial; background-size: initial; background-repeat: initial; background-attachment: initial; background-origin: initial; background-clip: initial;">dissent slip op., at 3. </span>Gorsuch reasoned that it is &ldquo;[b]etter . . . to answer a question that does matter than one that almost certainly does not&rdquo; considering that if the Court were to answer whether the discovery accrual rule applies in the future, it could make anything said in the majority opinion &ldquo;about the rule&rsquo;s operational details a dead letter.&rdquo; &nbsp;<i>Id.</i>, dissent slip op., at 1, 3.</div> <div>&nbsp;<br />We will continue to monitor developments and provide further updates regarding this case, and the law with respect to the discovery rule&rsquo;s application in Copyright cases. In the meantime, please feel free to contact us if you have questions regarding issues raised by this case.<br /><br />* <a href="https://www.arelaw.com/professional/miro/" target="_blank">Douglas A. Miro</a> is a partner, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is an associate, and Jamie Zipper is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of intellectual property, including trademark law. They can be reached at <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a>, and <a href="mailto:[email protected]">[email protected]</a>, respectively.</div> Thu, 23 May 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/are-copyright-law-alert/ Technology Transfer Tactics Quotes ARE Partner Charley Macedo in Unlocking the AI advantage: A technology transfer office primer Article http://www.arelaw.com/publications/view/inthepress-ttt-unlocking-the-ai-advantage/ Technology Transfer Tactics quotes Partner Charley Macedo in its April 2024 issue on monetizing AI in Tech Transfer:<br /><blockquote><div>&quot;Every day brings what seems to be a never-ending stream of new AI tools. In fact, at his session on monetizing AI at the AUTM conference in February, IP attorney Charles R. Macedo , partner with Amster, Rothstein &amp; Ebenstein LLP, told attendees that &ldquo;since March of 2020, what my VC friends tell me is that every month they get 9,000 new AI companies.&rdquo; And every day, the tools those companies are creating are getting better, because the more we use AI, the more it learns from our interactions, and the better it gets &mdash; quickly.&quot;</div></blockquote><br /> Read the full article <a href="https://techtransfercentral.com/reprints/ttt/424-unlocking-the-ai-advantage-technology-transfer-office-primer/" target="_blank">HERE</a>. Mon, 22 Apr 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress-ttt-unlocking-the-ai-advantage/ Charles R. Macedo, David P. Goldberg, Thomas Hart, Yangfan Xu coauthor Article for Oxford University Press's Journal of Intellectual Property Law & Practice on Round-up of United States copyright cases 2023 http://www.arelaw.com/publications/view/macedo-goldberg-hart-xu-round-up-article-jiplp-20240318/ Charles R. Macedo, David P. Goldberg, Thomas Hart, Yangfan Xu co-author Article for Oxford University Press's Journal of Intellectual Property Law &amp; Practice on Round-up of United States copyright cases 2023.<br /><br />Abstract<br /><ul><li>The US Supreme Court and lower court provided further guidance on fair use defense.</li><li>The US Copyright Office provided guidance on AI as an author.</li><li>The Court of Appeals provided guidance on substantial similiarty, server test, abstraction-filtration-comparison, and discovery rule.</li></ul><a href="https://academic.oup.com/jiplp/advance-article-abstract/doi/10.1093/jiplp/jpae027/7631210?redirectedFrom=fulltext" target="_blank"><strong>Read the full article here</strong></a>&nbsp;(subscription required) Mon, 18 Mar 2024 00:00:00 +0000 http://www.arelaw.com/publications/view/macedo-goldberg-hart-xu-round-up-article-jiplp-20240318/ Brief for Amicus Curiae New York Intellectual Property Law Association in Support of No Party in LKQ Corporation, Keystone Automotive Industries, Inc. v. GM Global Technology Operations LLC, No.: 2021-2348 http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-lkq-gm-global/ Click here to download the PDF:&nbsp;<a href="/images/file/LKQ-GM%20Global%202023-08-28%20ECF%20No_%20107%20-%20%20Brief%20for%20Amicus%20Curiae%20-%20NYIPLA.pdf">Brief for Amicus Curiae New York Intellectual Property Law Association in Support of No Party</a><br /> Mon, 28 Aug 2023 00:00:00 +0000 http://www.arelaw.com/publications/view/brief-for-amicus-curiae-nyipla-lkq-gm-global/ ARE Design Patent Alert: The Full Federal Circuit is Considering Obviousness of Design Patents http://www.arelaw.com/publications/view/are-patent-alert-design-supreme-court-federal-circuit-rosen/ &nbsp;On June 30, 2023, the U.S. Court of Appeals for the Federal Circuit agreed to take on the following question:<br /><br />Whether the current test for proving obviousness for a design patent has been overruled by US Supreme Court precedent.<br /><br /><address><big><small>LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2023)<br /><br type="_moz" /></small></big></address><address>&nbsp;</address>In 1982, In re Rosen held that there must be an earlier design that has the same visual impression as the patented design to test whether a design patent is obvious. In addition, the test analyzes whether it would have been obvious for a designer to modify the earlier reference to create the patented design in question.<br /><br />This matter was raised by LKQ Corp, which is seeking rehearing en banc of a January decision in its case against General Motors, insisting that the appellate court&rsquo;s &lsquo;decades-old&rsquo; test for proving obviousness for a design patent cannot stand following the Supreme Court&rsquo;s 2007 KSR v. Teleflex decision, and should be modified or eliminated. While the question divided the panel, the most significant issue is what the replacement test should be. Not surprisingly, General Motors opposed the review, stating that not only did LKQ fail to raise the KSR issue with the PTAB, but also they are now seeking a complete &lsquo;rewrite of design patent obviousness framework that has otherwise remained unchallenged for decades.&rsquo;<br /><br />For more information, please contact one of our attorneys.<br /><br />* <a href="https://www.arelaw.com/professional/crothstein/">Chester Rothstein</a> and <a href="https://www.arelaw.com/professional/cmacedo/">Charles R. Macedo</a> are partners, <a href="https://www.arelaw.com/professional/dgoldberg/">David Goldberg</a> is an associate and Sofia Siciliani is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. They may be reached at <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a> and <a href="mailto:[email protected]">[email protected]</a>.<br /><br /><br type="_moz" /> Fri, 30 Jun 2023 00:00:00 +0000 http://www.arelaw.com/publications/view/are-patent-alert-design-supreme-court-federal-circuit-rosen/ ARE Trademark Law Alert: Supreme Court Announces Two-Part Test in its Abitron v. Hetronic Decision on Extraterritorial Reach of the Lanham Act http://www.arelaw.com/publications/view/are-trademark-alert-supreme-court-abitron-hetronic-tenth-circuit/ On June 29, 2023, the U.S. Supreme Court issued its ruling in <em>Abitron Austria GmbH v. Hetronic International, Inc.</em>, No. 21-1023, 600 U.S. ___ (2023), addressing the Lanham Act&rsquo;s extraterritorial reach. The Supreme Court held that trademark infringement cases &ldquo;only extend to claims where the claimed infringing use in commerce is domestic.&rdquo; Id. at 1. In a unanimous opinion written by Justice Alito, the Court vacated and remanded the Tenth Circuit Court of Appeals&rsquo; decision, applying its own two-step test for determining when a statutory provision may apply extraterritorially to foreign activity. The Court&rsquo;s two-step test utilized &ldquo;a canon of statutory construction known as the presumption against extraterritoriality,&rdquo; where courts presume that although &ldquo;United States law governs domestically [it] does not rule the world.&rdquo; Id at 14 (citing <em>RJR Nabisco, Inc. v. European Community</em>, 579 U. S. 325, 335 (2016); <em>Microsoft Corp. v. AT&amp;T Corp</em>., 550 U.S 437, 454 (2007).<br /><br /><strong>Factual and Procedural Background<br /></strong><br />The underlying dispute was between a United States company, Hetronic, and six foreign parties, collectively &ldquo;Abitron.&rdquo; Hetronic and Abitron&rsquo;s relationship started when Abitron began distributing Hetronic&rsquo;s radio remote controls. Tension between the parties arose when Abitron found an old agreement that led Abitron to conclude that it owned much of Hetronic&rsquo;s intellectual property rights. Abitron then began selling its own version of HETRONIC-branded products, predominantly in Europe, but also in the United States. Hetronic filed suit against Abitron, alleging trademark infringement under &sect;1114(1)(a) and &sect;1125(a)(1) of the Lanham Act, seeking damages for Abitron&rsquo;s infringement worldwide. <br /><br />Abitron argued that allowing Hetronic to recover domestically for global infringement would be an impermissible extraterritorial application of the Lanham Act. The U.S. District Court for the Western District of Oklahoma rejected Abitron&rsquo;s argument and subsequently a jury awarded Hetronic roughly $96 million in damages with respect to Abitron&rsquo;s domestic and foreign sales of infringing radio remote controls, despite the fact that only 3% of Abitron&rsquo;s sales took place domestically. The District Court also entered a permanent injunction that prevented Abitron from using the infringing marks anywhere in the world.<br /><br />On appeal, the Tenth Circuit affirmed the District Court&rsquo;s decision but narrowed the broad injunction to cover specific countries. The Tenth Circuit, applying the First Circuit&rsquo;s <em>McBee v. Delica Co.</em>&cedil;417 F.3d 107 (1st Cir. 2005), framework, concluded that the District Court had properly applied the Lanham Act to Abitron&rsquo;s conduct &ldquo;because the &lsquo;impacts within the United States [were] of a sufficient character and magnitude as would give the United States a reasonably strong interest in the litigation.&rsquo;&rdquo; <em>Abitron Austria GmbH ET AL. v. Hetronic International, Inc</em>., No. 21-1023, 600 U.S. ___ (2023) (quoting <em>Hetronic Int&rsquo;l, Inc. v. Hetronic Germany GmbH</em>, 10 F. 4th 1016, 1046 (2021)). <br /><br />The Supreme Court granted certiorari and rejected the Tenth Circuit&rsquo;s framework for determining extraterritoriality in a unanimous opinion delivered by Justice Alito and two concurring opinions, one delivered by Justice Jackson and another delivered by Justice Sotomayor.<br /><br /><strong>Majority Opinion<br /></strong><br />Bright Line Test. In seeking to create a bright line test, the Supreme Court held that the correct framework to evaluate the extraterritorial reach of the Lanham Act would recognize the law&rsquo;s longstanding presumption against extraterritoriality. The first step of the analysis &ldquo;turns on whether &lsquo;Congress has affirmatively and unmistakably instructed that&rsquo; the provision at issue should &lsquo;apply to foreign conduct.&rsquo;&rdquo; <em>Abitron Austria GmbH ET AL. v. Hetronic International, Inc</em>., No. 21-1023, 600 U.S. ___ (2023) (quoting <em>RJR Nabisco</em>, 579 U. S. at 337). Finding that Congress has not &ldquo;unmistakably instructed&rdquo; that the Lanham should apply extraterritorially, the Court moved to the second step, which asks &ldquo;when claims involve &lsquo;domestic&rsquo; applications of these provisions.&rdquo; <em>Abitron Austria GmbH ET AL. v. Hetronic International, Inc</em>., No. 21-1023, 600 U.S. ___ (2023). The Court stated that the answer to this question turns on where the conduct relevant to the focus of the statute at issue took place. Because the focus of the Lanham Act is to prevent infringing use in commerce, the Court held that if the infringing activity occurred in the United States, then the case involves a permissible application of the Lanham Act. <br /><br />The Court then vacated the Tenth Circuit&rsquo;s judgment and remanded the case for further proceedings consistent with the Court&rsquo;s opinion.<br /><br />Justice Jackson&rsquo;s Concurrence <br /><br />One concurrence, authored by Justice Jackson, agreed with the majority&rsquo;s two-step framework but wrote separately to point out that &ldquo;use in commerce&rdquo; occurs &ldquo;whenever the mark serves its source-identifying function.&rdquo; To illustrate this point, Justice Jackson mentioned that &ldquo;&lsquo;use in commerce does not cease at the place the mark is first affixed, or where the item to which it is affixed is first sold,&rsquo;&rdquo; and discussed a hypothetical case were travelers from Europe resold bags purchased in Europe in the United States, possibly opening the door to a domestic infringement action. Justice Jackson&rsquo;s concurrence concludes that a foreign entity may be subject to Lanham Act liability even if it never &ldquo;directly&rdquo; sold its infringing products in the United States. <br /><br />Justice Sotomayor&rsquo;s Concurrence<br /><br />A separate concurrence, penned by Justice Sotomayor and joined by Chief Justice Roberts and Justices Kagan and Barrett, disagreed with the second step of the majority&rsquo;s framework, and argued that the Lanham Act should apply to conduct occurring abroad if, as a result, consumer confusion occurs in the United States.<br /><br />Legal And Practical Implications<br /><br />In short, this decision held that Congress has not intended for the Lanham Act to apply extraterritorially, and that the Act may only be applied when infringing use in commerce occurs domestically. This bright-line test provides trial courts, practitioners, and trademark owners with at least some guidance, and should ameliorate the forum shopping caused by the current Circuit split on this issue. <br /><br />As a practical matter, US brand owners will need to be more vigilant in seeking trademark protection in foreign jurisdictions in which they do business. These brand owners will also likely need to bring more trademark infringement actions in those foreign jurisdictions. <br /><br />We will continue to monitor developments and provide further updates regarding this case, and the law of trademark with respect to extraterritorial infringement. In the meantime, please feel free to contact us if you have questions regarding issues raised by this case.<br /><br /><a href="https://www.arelaw.com/professional/alocicero/">Anthony Lo Cicero</a>,&nbsp;<a href="https://www.arelaw.com/professional/miro/">Douglas A. Miro</a>&nbsp;and&nbsp;<a href="https://www.arelaw.com/professional/cmacedo/">Charles Macedo</a>&nbsp;are partners,&nbsp;<a href="https://www.arelaw.com/professional/dgoldberg/">David P. Goldberg</a>&nbsp;is an associate, and Jamie Zipper is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of intellectual property, including trademark law.&nbsp;They can be reached at&nbsp;<a href="mailto:[email protected]">[email protected]</a>,&nbsp;<a href="mailto:[email protected]">[email protected]</a>,&nbsp;<a href="mailto:[email protected]">[email protected]</a>,&nbsp;<a href="mailto:[email protected]">[email protected]</a>, and&nbsp;<a href="mailto:[email protected]">[email protected]</a>, respectively.<br type="_moz" /> Fri, 30 Jun 2023 00:00:00 +0000 http://www.arelaw.com/publications/view/are-trademark-alert-supreme-court-abitron-hetronic-tenth-circuit/ Trademark Lawyer Magazine Publishes Article: US Supreme Court to Rule on Jack Daniel's proposal to throw 'Bad Spaniels' to the dogs http://www.arelaw.com/publications/view/are-jackdaniels-dog-toy-bad-spaniels-vern-goldberg-article/ The Trademark Lawyer Magazine features article by Amster, Rothstein &amp; Ebenstein's <a href="https://www.arelaw.com/professional/mvern/" target="_blank">Max Vern</a> and <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David Goldberg</a> on &quot;US Supreme Court to Rule on Jack Daniel's proposal to throw 'Bad Spaniels' to the dogs&quot;.&nbsp; The article was published on pages 8-11, Issue 2 2023 of The Trademark Lawyer Magazine.<br /><br /><a href="https://trademarklawyermagazine.com/wp-content/uploads/2023/04/TML2.23_interactive.pdf" target="_blank">Read the full article here.<br /><br /><br /><div style="text-align: center;"><img src="/images/image/JackDanielsPost.jpg" width="500" height="354" align="middle" alt="" /></div></a> Fri, 16 Jun 2023 00:00:00 +0000 http://www.arelaw.com/publications/view/are-jackdaniels-dog-toy-bad-spaniels-vern-goldberg-article/ ARE Trademark Law Alert: U.S. Supreme Court Overturns Ninth Circuit’s Decision and Rules that Likelihood of Confusion Test Must Be Applied to Dog Toy Parody in Jack Daniel’s Case http://www.arelaw.com/publications/view/are-trademark-alert-supreme-court-overturns-ninth-circuits-decis/ On June 8, 2023, the U.S. Supreme Court issued its ruling in <em>Jack Daniel&rsquo;s Properties, Inc. v. VIP Products LLC</em>, No. 22-148, 599 U.S. ___ (2023),&nbsp;unanimously vacating and remanding the Ninth Circuit Court of Appeal&rsquo;s decision that VIP&rsquo;s BAD SPANIELS dog toys neither infringe nor dilute Jack Daniel&rsquo;s trademark and trade dress rights in its iconic OLD NO. 7 BRAND TENNESSEE SOUR MASH WHISKEY. The key to the Supreme Court&rsquo;s narrow decision is that when the alleged infringer uses a trademark as a designation of source for the infringer&rsquo;s own goods, the way which the Lanham Act most cares about, the lower court must conduct a standard likelihood of confusion trademark and dilution analysis. This narrow decision makes it clear that in those cases, even parodic marks may cause a likelihood of confusion or dilution. <br /><br />The dispute between Jack Daniel&rsquo;s Properties, Inc. (&ldquo;Jack Daniel&rsquo;s&rdquo;) and VIP Products LLC (&ldquo;VIP&rdquo;) arose from the sale of a squeaky dog toy, BAD SPANIELS, that humorously resembled a bottle of Jack Daniel&rsquo;s whiskey. Finding the toy to be in poor taste, Jack Daniel&rsquo;s demanded that VIP cease selling its product. In response, VIP filed a lawsuit in the U.S. District Court for the District of Arizona seeking a declaratory judgment that its product did not infringe or dilute Jack Daniel&rsquo;s trademark and trade dress. VIP strongly believed their argument of parody would prevail against any future claims. Jack Daniel&rsquo;s then countersued with claims of trademark infringement and dilution. After a four-day bench trial the District Court held in favor of Jack Daniel&rsquo;s. <br /><br />On appeal, the Ninth Circuit reversed. With respect to the first claim of trademark infringement, the Ninth Circuit held that VIP&rsquo;s use of its parodic trademark was expressive and, therefore, subject to First Amendment protection under the <em>Rogers </em>test, which holds free speech rights need to be balanced against intellectual property rights with respect to expressive works. See <em>Rogers v. Grimaldi</em>, 875 F. 2d 994. As to the second claim, dilution, the Ninth Circuit held that VIP&rsquo;s trademark was &ldquo;noncommercial&rdquo; use because VIP&rsquo;s mark communicated a message of parody. In short, the Ninth Circuit said there was no need to conduct a likelihood of confusion, or a likelihood of dilution analysis, where the accused product is a parody.<br /><br />The Supreme Court granted review on both claims and rejected both of the Appeals Court&rsquo;s conclusions in a unanimous opinion delivered by Justice Kagan and two concurring opinions, one delivered by Justice Sotomayor and another delivered by Justice Gorsuch. <br /><br />The Supreme Court found that the BAD SPANIELS trademark should not receive &ldquo;special First Amendment protection,&rdquo; and thus should not be subject to the <em>Rogers </em>test prior to conducting a traditional likelihood of confusion analysis under the Lanham Act. Explicitly sidestepping the question of whether <em>Rogers </em>should be applied in other circumstances, the Court held that it is not applicable when an infringer uses its mark for source identification, which VIP did in this case. Pointing to extensive case law, the Court stated that <em>Rogers </em>&ldquo;has always been a cabined doctrine,&rdquo; only applying in cases where the mark is not being used as a source identifier. Thus, the fact that VIP uses its mark to convey parody does not automatically make it subject to the <em>Rogers </em>test. &ldquo;As a leading treatise puts the point, the Ninth Circuit&rsquo;s expansion of <em>Rogers </em>&lsquo;potentially encompasses just about everything&rsquo; because names, phrases, symbols, designs, and their varied combinations often &lsquo;contain some &ldquo;expressive&rdquo; message&rsquo; unrelated to the source.&rsquo;&rdquo; <em>Jack Daniel&rsquo;s Properties, Inc. v. VIP Products LLC</em>, No. 22-148, 599 U.S. ___ (2023) (quoting 1 J. McCarthy, Trademarks and Unfair Competition (5th ed. 2023)).<br /><br />Additionally, the Supreme Court found that VIP&rsquo;s use of the BAD SPANIELS trademark did not fall under the &ldquo;fair use&rdquo; exclusion from dilution liability for noncommercial use of a mark. The Court held that although the exclusion specifically encompasses parodying, it can only be applied if the mark is not used as a source identifier. Thus, a diluter is not &ldquo;shielded&rdquo; from liability if its parodic mark is source-identifying. Importantly, the Court did not address exactly how far the &ldquo;noncommercial use&rdquo; exclusion reaches.<br /><br />The Court then remanded the case to determine whether a consumer is likely to be confused by the use of these two marks, taking into consideration the fact one of the marks is meant to convey parody. <br /><br />The Supreme Court&rsquo;s decision makes it clear that there are no shortcuts around conducting a likelihood of confusion or a likelihood of dilution analysis with respect to goods that may not be primarily expressive. The consequence is that trademark infringement cases regarding arguably expressive goods will become more expensive, with parties having to hire expert witnesses and conduct consumer surveys instead of disposing of such cases early in the litigation process.<br /><br />However, the concurrence, authored by Justice Sotomayor and joined by Justice Alito, addresses concerns with the weight given to consumer surveys in the context of parodic marks. The opinion suggests that results may be skewed by the framing of questions which would unduly silence parodies. The concurrence also cautions that wealthier mark owners with greater ability to conduct these surveys &ldquo;would be handed an effective veto over mockery.&rdquo;<br /><br />A second concurring opinion, authored by Justice Gorsuch and joined by Justice Thomas and Justice Barrett, leaves the door open as to the importance of <em>Rogers </em>in future cases.<br /><br />We will continue to monitor developments and provide further updates regarding this case, the <em>Rogers </em>doctrine, and the law of trademark infringement and dilution. In the meantime, please feel free to contact us if you have questions regarding issues raised by this case.<br /><br /><a href="https://www.arelaw.com/professional/crothstein/" target="_blank">Chester Rothstein</a> and <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a> are partners, <a href="https://www.arelaw.com/professional/dgoldberg/" target="_blank">David P. Goldberg</a> is an associate, and Jamie Zipper is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of trademark law. They can be reached at <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a>, and <a href="mailto:[email protected]">[email protected]</a> respectively. Thu, 08 Jun 2023 00:00:00 +0000 http://www.arelaw.com/publications/view/are-trademark-alert-supreme-court-overturns-ninth-circuits-decis/