Sour Patch Trademark Battle Gets Sour as Stoney Patch Creators Refuse to Reveal Their Identity

In July of 2019, Mondelez Canada Inc. (MCI), the company known for the sour gummy candy, Sour Patch Kids, filed a trademark lawsuit against the brand “Stoney Patch,” for selling THC-infused gummies by the same name. In the complaint, MCI claims trademark and trade dress infringement, trademark dilution, and unfair competition.

Trademarks offer protection for logos, symbols, phrases, words and designs and trade dress offers protection for other elements used to promote a product or service. In this way, trademarks serve the function of designating the source of a particular product or service. Trademark infringement occurs when there exists the likelihood of confusing one product or service with another. Similarly, unfair competition is attempting to replace a product or service that already exists with the intention of deceiving the public. Moreover, trademark dilution occurs when someone uses a famous mark in a manner that decreases or harms the mark’s uniqueness.

Considering the similarities in marketing and packaging, the Sour Patch brand could become tarnished due to the fact that they are a children’s candy that might now be associated with a cannabis product. In particular, such an association might harm the reputation and brand image of Sour Patch Kids. On the other hand, the creators of Stoney Patch might attempt to argue parody, which occurs when the subsequent mark uses only so much of the original, famous mark as necessary to bring to the mind the original mark. However, there is not a strong case for parody because of the high likelihood of confusion and tarnishment of the Sour Patch brand. Indeed, tarnishment is a strong argument in this case because of the dramatic difference in the target audience. Sour Patch is obviously a gummy candy brand for children while Stoney Patch is THC-infused. 

This lawsuit highlights a growing trend whereby cannabis companies will package and market their items in a way that is similar to commercially sold candy and foods. This can be dangerous because it is marketed and presented in a way that is appealing to children and confusing for them. Ethics aside, this action is illegal under California’s Medicinal and Adult-Use Cannabis Regulation and Safety Act (MAUCRSA) which states that “packages and labels shall not be made to be attractive to children” and they cannot “be designed to be appealing to children or easily confused with commercially sold candy or foods that do not contain cannabis.” This makes this case much more than trademark infringement, but a public health issue that is not currently being addressed.

The creators behind Stoney Patch have remained a mystery. For over six months, MCI has sent demand letters to third party sellers of Stoney Patch asking them to identify their source. They have also reached out to state regulatory and law enforcement agencies, along with hiring an investigator, but they still had not identified the creators behind the brand. The only information they were able to retrieve included two Instagram accounts and one email address associated with the product. However, Facebook and Google refused to provide user information without a subpoena and court order.

Due to the lack of cooperation from these third-party companies, MCI filed an ex parte application to expedite discovery to determine the identity and location of the defendants. Therein, MCI asserts its extensive efforts to determine the true source of “Stoney Patch.” Since MCI made considerable efforts to identify those behind Stoney Patch and they appeared to have a plausible case, their application to expedite discovery was granted. In addition, the court found there was little risk of prejudice to Facebook and Google because the information sought was narrow in scope.

This case touches upon several interesting categories, ranging from trademark infringement to public health. One of the most interesting aspects of this case is the question of how to maintain a lawsuit against wrongdoers who, as far as can be determined without court intervention, are completely anonymous. This further raises privacy concerns and the dichotomy between the right to privacy and the protection of public health. Moreover, in this particular case, this begs the question of whether the third-party sellers can be held liable if they refuse to reveal their Stoney Patch source. Thus, this case will highlight broader issues relating to intellectual property, privacy, and cannabis law, all of which continue to grow in importance as online distribution of 21+ products grows in popularity.      

Can Tom Brady trademark “Tom Terrific” despite use thereof by a Mets pitcher over 50 years ago?

            In May of this year, New England Patriots quarterback, Tom Brady, filed a set of applications with the United States Patent and Trademark Office (USPTO) to register “TOM TERRIFIC” as a trademark. In particular, TEB Capital Management, Inc., Brady’s management company, filed two applications, one in International Class 16 for “collectible trading cards; sports trading cards; posters; printed photographs” and one in International Class 25 for “t-shirts; shirts.” In response, the USPTO issued identical rejections to both applications based on what is known as “false connection” and “name of living individual.”

            The USPTO examining attorney’s first refusal, “false connection,” provides “the applied-for mark consists of or includes matter which falsely suggests a connection with Tom Seaver.” Moreover, the examiner states that “Tom Seaver is so well-known that consumers would presume a connection.” Tom Seaver is a former American baseball player who pitched in Major League Baseball from 1967 to 1988 for the New York Mets, Cincinnati Reds, Chicago White Sox, and Boston Red Sox. In this time, Tom Seaver apparently received the nickname “Tom Terrific.”

            A false connection exists when the applicant’s applied-for goods or services are of a type that the named person or institution sells or uses, and the named party is sufficiently famous such that it may be inferred that the purchasers of the goods or services would be misled into making a false connection of sponsorship, approval, support, or the like with the named party. In the present situation, the examiner provides that based on the evidence provided in the letter of protest, including news articles, encyclopedia excerpts, and columns, the nickname “Tom Terrific” refers to Tom Seaver.

            The examining attorney’s “false connection” decision is based on a letter of protest that was received by the USPTO in conjunction with Brady’s application. A letter of protest may be filed by a third party who wishes to bring to the attention of the USPTO evidence bearing on the registrability of a mark. Such procedure applies only to pending applications and is intended to aid in the examination process without causing undue delay. When a letter of protest is received by the USPTO, the Office of the Deputy Commissioner for Trademark Examination Policy first reviews the document to determine whether the submitted information should be given to the examining attorney assigned to the relevant application for consideration. In so doing, the Deputy Commissioner considers only the record in the application and the evidence submitted by the protestor.

            The “false connection” rejection differs from a classic likelihood of confusion rejection in two important regards. Primarily, a “false connection” refusal requires the potential for confusion to be based on association with a particular individual, either through use of that individual’s nickname or given name. Additionally, for a claim of false connection, a party need not allege proprietary rights in the name for purposes of standing.

            The USPTO examiner further rejected Brady’s application based on “name of living individual” in stating that “Tom Terrific” identifies Tom Seaver, because it was his nickname. More specifically, the USPTO examining attorney stated that registration was refused “because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.” An applied-for mark will identify an individual if the person bearing the name is so well known that the public would reasonably assume a connection or the person is publicly connected with the business in which the mark is used. Such a rejection applies to nicknames as well as legal names. In this way, the examiner contends “’TOM TERRIFIC’ points uniquely and unmistakably to Tom Seaver.”

            Even if Tom Brady remains unable to register “Tom Terrific” as a trademark with the USPTO, registration is not a requirement to trademark rights. An unregistered, or common law, trademark is a mark which is enforceable by virtue of its ability to signify or distinguish a product or service as belonging to a particular source. However, an unregistered trademark does not provide the trademark owner the same extent of protection as the owner of a federal or state registered mark. For example, as opposed to federally registered trademarks, common law trademarks are usually enforceable only within the geographic region or locale where the trademark owner is using it in business.

            Not only has the USPTO rejected the mark’s registration, the attempt has been widely panned in New York City, where Tom Seaver is widely remembered. In response to such criticism, representatives for Tom Brady insisted that the trademark application was an attempt to prevent third parties from capitalizing on the unprotected nickname, both to Tom Brady and Tom Seaver’s detriment. Indeed, Brady’s agent explicitly contends “there is no intention ever to impact Tom Seaver’s legacy.”

Can Apple Music, Pandora, and Google all be found liable for infringement of a patented music streaming functionality?

            Post Media Systems, LLC, recently filed separate lawsuits against Apple Music, Pandora and Google for allegedly infringing four patents related to music streaming. These three lawsuits were filed in the United States District Court for the Northern District of Illinois. Interestingly, Post Media Systems admits to being a Texas corporation with a principal place of business in Texas. Nonetheless, Post Media Systems chose to file this lawsuit in Illinois, where the company seemingly has no connections. Such a filing tactic tends to suggest a strategy and namely, that the attorneys for Post Media Systems believe Illinois to be a more favorable venue for the plaintiff’s case.

            Post Media Systems is an obscure company. Indeed, a Google search for the company primarily, if not solely, produces results relating to the multiple lawsuits filed by the company and not any actual information about the company itself or its dealings, including the locations thereof. The company is perhaps best known for previously suing Spotify and iHeartMedia, alleging similar claims to those currently at issue. In 2016, the company named Spotify in a patent infringement suit, which was filed in Texas, but ultimately settled out of court.

            According to the complaint, as well as the United States Patent and Trademark Office (USPTO) Public Patent Application Information Retrieval (PAIR) system, Post Media Systems, LLC is the assignee and owner of all right, title and interest in and to each of the disputed patents. Such an interest includes the right to assert all causes of action and obtain any remedies for infringement of these patents. However, Post Media Systems is not the original owner of these four patents. Rather, these patents were invented by Alan Bartholomew, a software developer, who was the original owner of the patents. Bartholomew owns SoniClear, a digital recording and automated audio-transcription company. It was not until 2017 that these rights were assigned to Post Media Systems.

            While, in the United States, the inventor is presumed to be the initial owner of a patent or patent application, ownership can be transferred or assigned. Ownership is key to enforceability as patent ownership grants the owner the exclusive right to exclude others from making, using, or selling an invention for a specified time period (the term of the patent). Here, there was likely a patent assignment agreement, or similar contract, which transferred Bartholomew’s patent rights to Post Media Systems. This change in ownership was recorded with the USPTO, thereby providing Post Media Systems the right to file such lawsuits.

            The complaint describes Bartholomew’s upbringing in a Quaker home, where he studied music and performed with the cello and his eventual self-teaching in software development. Moreover, the complaint goes on to discuss his journey to developing the inventions taught by the four patents at issue. More particularly, the complaint explains that Bartholomew “worked in his spare time to find creative ways of combining his musical interests and software expertise.” Bartholomew sold audio and video recording software products through his company, SoniClear, but apparently seeks to retire with recovery from these three industry giants.

            The patents at issue, United States Patent Nos. 7,069,310, 7,472,175, 8,725,832, and 8,959,181 issued between 2006 and 2015, for a “System and Method for Creating and Posting Media Lists for Purposes of Subsequent Playback” (and similar titles). According to the complaint, each of these disputed patents involves “a specific functionality of computers and networks to post, share, and playback media, overcoming posting and interface issues specific to different computing systems and accounts on shared networks.” Post Media Systems claims that each of these defendants directly infringes these patents “by making, using, selling, importing and/or providing and causing to be used without authority within the United States, a system directed to a specific functionality of computers and networks to share media for playback.”

            Direct patent infringement occurs when the accused exercises one of the exclusive rights granted to the owner of a patent without authorization from said owner. More specifically, direct infringement takes place when a person, without authorization, makes, uses, offers to sell, or sells any patent invention within the United States or imports the same into the United States. As sought by Post Media Systems, the patent owner is entitled to recover monetary damages and even attorney’s fees, in exceptional cases. Despite the seemingly baseless nature of these claims, there remains a chance Post Media Systems will convince a jury otherwise and prevail.

Is a fashion designer entitled to post an image of his branded sneakers atop a Ferrari if that designer is the owner of said Ferrari?

            Ferrari recently transmitted a cease and desist letter to Philipp Plein, threatening to sue the German fashion design for posting images of his sneakers on the hood of his own personal Ferrari. On June 30, 2019, on his personal Instagram page, which currently has more than 1.8 million followers, Plein posted an image of a green pair of his branded sneakers atop the rear of his green Ferrari with the caption “50 shades of 🍏 🍏 🍏.” Again, on July 29, 2019, Plein posted another image, which included the same green sneakers atop the hood of (presumably) the same green Ferrari. In response to this series of images, Ferrari sent its letter.

            In the letter, Ferrari claims Plein is using Ferrari’s trademarks “for promotional purposes of your brand and products, unlawfully appropriating the goodwill attached to them.” A trademark owner reserves the exclusive right to use its mark in connection with the specific goods or services associated with the same in commerce. Infringement occurs when a second-in-time party uses a similar mark in a manner that is likely to confuse consumers into believing the junior party’s products or services are sourced by, affiliated with, or sponsored by the trademark owner. The concern is that the junior user will wrongfully benefit from the senior user’s goodwill.

            Ferrari also accuses Plein’s images of tarnishing the Ferrari brand. In particular, Ferrari states “Ferrari’s trademarks and model cars are associated in your pictures with a lifestyle totally inconsistent with Ferrari’s brand perception, in connection with performers making sexual innuendos and using Ferrari’s cars as props in a manner which is per se distasteful.” Plein’s Ferrari is featured in multiple other Instagram posts by Plein, many of which include scantily clad females draping their bodies over the car or otherwise interacting with the vehicle in a sexually-suggestive manner.

            Tarnishment is a type of trademark dilution which occurs when a famous mark is linked to products of poor or questionable quality, or is portrayed in an unwholesome or unsavory context. In this way, the reputation of the mark is harmed. Thus, it appears to be Ferrari’s concern that Plein’s marketing of his brand, including the green shoes, in a manner which includes sexual innuendo will harm Ferrari’s otherwise pristine brand. Notably, none of the complained-of photographs featuring Plein’s actual products appear to include such sexually explicit content.

            Philipp Plein is a German fashion designer. Starting in the late 1990’s, Plein’s first collections featured vintage military jackets which he embroidered with Swarovski skulls. Plein’s namesake casual fashion brand was born in 2004 and the luxury read to wear label was launched in 2008. Now, Plein’s collections range from all types of men, women, and junior clothing, shoes, and accessories. Indeed, Plein is the Founder and Chief Executive Officer of the Philipp Plein International Group which includes the Philipp Plein, Plein Sport, and Billionaire Couture brands. Moreover, Plein has worked with numerous notable celebrities including Mischa Barton, Lindsay Lohan, Snoop Dogg, Rita Ora, Naomi Campbell, Iggy Azalea, Grace Jones, Theophilus London, Fergie, Chris Brown, Jeremy Meeks, and Floyd Mayweather.

            In his series of posts, Plein further alleges the letter constitutes blackmail, based on the forty-eight hour window it provides for Plein to remove the images from all media. Plein states “FERRARI GAVE ME AN ULTIMATUM OF ‘48’ hours to remove a photo of my PERSONAL FERRARI FROM MY PERSONAL INSTAGRAM !!!!!!” Plein also claims “[t]his is a clear BLACKMAIL !!!!!” Plein’s frustration stems from the fact, as he claims, that he has purchased four new Ferraris in the past ten years and is therefore, a very loyal customer of the luxury car brand.

            Cease and desist letters are commonly preludes to litigation. The purpose of the letter is to educate the infringer about the trademark owner’s rights, put the infringer on notice of the infringing activities, and make specific demands, with an implied or explicit threat of legal action if the concerns contained therein are not addressed. While it is doubtful such a standard letter would constitute blackmail, Plein’s other points as to Ferrari’s treatment of loyal customers are well-founded.

            Finally, in one of his Instagram posts, Plein ponders “And if I don’t remove it you will do what ??? Take my car away …… hahahahaha.” To date, no lawsuit against Plein, or his company, has actually been filed by Ferrari.

Does the 2013 Katy Perry hit “Dark Horse” copy a 2008 Christian rap song?

            This week, a Los Angeles jury ruled that Katy Perry’s 2013 hit song “Dark Horse” featuring Juicy J infringes a 2008 Christian rap song. The dispute began in 2014, when Christian rapper, Marcus Gray, known to his audience as Flame, in addition to collaborators Lecrae and John Reilly, filed a lawsuit against Katy Perry, Juicy J, and other collaborators of “Dark Horse” alleging the hit infringed their rap song, “Joyful Noise.” The unanimous decision was handed down on July 29^th, after a week-long trial. The jury has yet to decide the amount of damages defendants owe the Christian artists for copyright infringement.

            “Dark Horse” was first released by Perry in 2013 on her fourth album, Prism. The song was produced by Dr. Luke, Max Martin, and Cirkut, who were also named as co-defendants in this lawsuit. At the time, the song was lauded for its strategic combination of techno, pop and trap music. Indeed, plaintiffs allege that “by any measure…[the] song is a mega-hit.” The song experienced weeks at the top of Billboard’s (as well as other) music charts. Millions of digital copies have been sold and downloaded throughout this country. In addition, at the time the complaint was filed, more than 400 million viewers worldwide had watched the official music video for “Dark Horse” on YouTube. Moreover, Katy Perry performed “Dark Horse” during her 2015 Super Bowl halftime show.

            “Joyful Noise,” on the other hand, experienced success in a niche market, due to its “devoutly religious message.” The song was created in 2007 and featured on Flame’s fourth album, Our World: Redeemed, which was nominated for a 2009 Grammy in the category of Best Rock or Rap Gospel Album and for a 2008 Stellar Award for Rap Album. Additionally, “Joyful Noise” was nominated by the Gospel Music Association for Rap/Hip-Hop Recorded Song of the year in 2009. Plaintiffs allege that by mid-2014, nearly 3 million viewers had watched music video versions of “Joyful Noise” on YouTube.

            In their complaint, the plaintiffs allege that Katy Perry and her collaborators never sought or obtained permission from plaintiffs to use the “Joyful Noise” song in creating and performing “Dark Horse.” Nonetheless, plaintiffs further contend, “Dark Horse” is substantially similar to their copyrighted song. In this way, plaintiffs have been irreparably harmed. Further, the Christian rapper argued that the religious message of his song was irreparably tarnished by its association with “Dark Horse.” More particularly, “witchcraft, paganism, black magic, and Illuminati imagery” is evoked by the music of Perry’s allegedly infringing song.

            Generally, copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. After ownership of a valid copyright is shown, to prove infringement, the plaintiff must demonstrate (1) access to the protected work and (2) substantial similarity between the disputed works.

            To determine substantial similarity, objective similarities between the works are compared after filtering out unprotectable elements of the copyright owner’s work. At trial, the Christian artist argued numerous similarities between the two disputed songs. As one example, both songs use derivative descending minor scales in a basic rhythm. As another example, both works use staccato downbeat rhythms on a high voiced synthesizer. However, as defendants argued, these are common elements of trap beats. Additionally, defendants argued that the songs are in different keys and have divergent beats per minute. Moreover, the melodies are not the same notes.

            Defendants’ access to “Joyful Noise” was also disputed during trial. Katy Perry and her co-defendants testified during trial that they had never heard of “Joyful Noise.” In rebuttal, plaintiffs theorized that they may have heard it at the Grammy Awards or seen it on YouTube or MySpace, where the song was played millions of times. Ultimately, the jury found access in addition to substantial similarity in finding Katy Perry and her co-defendants liable for copyright infringement.

            While the damages phase is to begin right away, still pending is a motion for judgment as a matter of law from Perry’s lawyers requesting the U.S. District Judge to rule that no reasonable jury could find copyright infringement based on the evidence presented at trial. If the motion is granted, the judge would overturn the verdict and instead, find in favor of Perry and her co-defendants.

Can a New Mexico nonprofit research Park Corporation prevail in a patent infringement lawsuit against Apple for a patent originally filed by a Taiwanese ‘Patent Troll’?

Can a New Mexico nonprofit research park corporation prevail in a patent infringement lawsuit against Apple Inc. (“Apple”) for patents originally filed by a Taiwanese ‘Patent Troll’?

STC.UNM is a New Mexico nonprofit research park corporation formed, owned, and controlled entirely by the Board of Regents of the University of New Mexico (“UNM”).  UNM is New Mexico’s flagship research institution with over 25,000 students and 1,700 faculty members across Albuquerque, Gallup, Los Alamos, Rio Rancho, Taos, and Los Lunas, New Mexico.  STC.UNM’s intellectual property portfolio includes 1,700 inventions and over 500 United States patents.

On July 19, 2019, STC.UNM filed a complaint in the United States District Court for the Western District of Texas WACO Division, against tech-giant, Apple, alleging direct, induced, contributory, and willful infringement of United States Patent Number 8,249,204 (’204 Patent), United States Patent Number 8,265,096 (’096 Patent), and United States Patent Number (’326 Patent).

The complaint alleges Apple infringed the patents through making, using, selling, offering for sale, and/or importing 31 products.  Specifically, the complaint accuses the following 31 products for infringing the patents: iPhone 6, iPhone 6 Plus, iPhone 6s, iPhone 6s Plus, iPhone SE, iPhone 7, iPhone 7 Plus, iPhone 8, iPhone 8 Plus, iPhone X, iPhone XS, iPhone XR, iPhone XS Max, iPad Pro (1^st & 2^nd generation), iPad (5^th & 6^th generation), iPad Air 2, iPad Mini 4, Apple TV (4^th generation), Apple TV 4k, iPod touch, MacBook Air, MacBook, MacBook Pro (3^rd & 4^th generation), iMac (4^th & 5^th generation), iMac (5^th generation), iMac Pro, MacPro (2^nd generation), Mac Mini (3^rd generation).

With respect to the ’204 Patent, titled an “Apparatus and method for channel state information feedback,” the complaint alleges that the 31 products are adapted to, “operate in and with wireless telecommunications networks that at least comply with the requirements of the IEEE 802.11ac wireless networking standard (referred to as “Wireless Telecommunications Networks”).  The complaint provides that Apple infringes the ’204 Patent, because at least some of the 31 products infringe claims 1, 11, and 12.  The claims disclose “a method for a mobile station to provide to a base station feedback of channel state information (CSI) regarding a plurality of communication channels between the mobile station and the base station, the method comprising: estimating the CSI by calculating a plurality of channel responses each for one of the communication channels; compressing the estimated CSI; and sending the compressed CSI as the feedback to the base station, wherein the estimating further comprises selecting a plurality of channel taps from each of the calculated channel responses to estimate the CSI,” a mobile station to provide a base station feedback of CSI regarding a plurality of communication channels between the mobile station and the base station, and a mobile station in an “orthogonal frequency-division multiplexing based communication system,” respectively.

With respect to the ’096 Patent, titled a “Method for constructing frame structures,” the complaint alleges that at least some of the 31 products infringe claim 8 of the ’096 Patent.  Claim 8 provides “a method of constructing a frame structure for data transmission, the method comprising: generating a first section comprising data configured in a second format compatible with a second communication system using symbols; generating a second section following the first section, the second section comprising data configured in a second format compatible with a second communication system using symbols, wherein the first communication system’s symbols and the second communication system’s symbols co-exist in one transmission scheme and wherein the second communication system has pilot symbols that are denser than those in the first communication system; generating at least one non-data section containing information describing an aspect of data in at least one of the first section and the second section; and combining the first section, the second section and the at least one non-data section to form the frame structure.”

With respect to the ’326 Patent, titled a “System and method for bit allocation and interleaving,” the complaint alleges that at least claim 1 of the ’326 Patent.  Generally, the ’326 Patent claims “a method for transmitting data represented by a plurality of coded bits includes: allocating the coded bits to a plurality of groups; rearranging, for a retransmission of the coded bits, ones of the coded bits allocated to a first one of the plurality of groups to a second one of the plurality of groups, and ones of the coded bits allocated to the second one of the plurality of groups to the first one or a third one of the plurality of groups; and changing, for the retransmission, a sequence of coded bits allocated to each of the plurality of groups after the rearranging.”  Additionally, claim 1 discloses “a method for transmitting data represented by a plurality of coded bits, the method comprising: performing a circular shift, with a variable length related to a modulation order and a number of transmissions, on ones of the plurality of coded bits; and transmitting the circularly shifted ones of the plurality of coded bits.”

Surprisingly, STC.UNM is not the original patentee for the patents.  Rather, Industrial Technology Research Institute (“ITRI”), a major Taiwanese Patent Troll which holds just under 19,000 patents, is the original patentee.  ITRI transferred all rights, title, and interest in and to the patents, including the right to sue and recover for past infringement, by written assignment recorded in the USPTO.  This suggests that ITRI may be using as a STC.UNM as a proxy for pursuing patent infringement claims against Apple.  Several years ago, ITRI pursued similar patent infringement claims in the United States District Court for the Eastern District of Texas against another tech giant, LG.  In that case, the court found in favor LG, holding that ITRI does not have an industry in the United States relating to articles allegedly protected by the patents in question and thereby limiting the jurisdiction of the patent.  The court followed United States Supreme Court’s precedent, in its 2014 decision, Alice Corporation v. CLS Bank.  In Alice Corporation, the United States Supreme Court reaffirmed that patents must be associated with both an idea and how the idea will be actionable.  Specifically, the Supreme Court held that, “merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.” Alice Corporation makes it more difficult for trolls such as ITRI to pursue infringement claims.

Generally, a patent troll is defined as an entity that owns or controls patents but that does not manufacture products.  A patent troll owns or controls patents in order to sue entities for patent infringement in the hopes of making money.  However, in a more positive connotation, patent trolls may be known as non-practicing entities (NPEs).  NPEs acquire patents in order to license or sell them to others.  This definition includes universities.  Under the Bayh-Dole Act, universities are encouraged to license inventions discovered using federal funding and are even required to do so in some instances.

It remains to be seen whether STC.UNM, or perhaps ITRI, will prevail against Apple.  STC.UNM seeks a judgment that Apple infringed the three patents, damages, and attorneys’ fees.

Can an inventor patent a UFO-like space craft capable of traveling at extreme speeds across land, water, and space?

Can an inventor patent a UFO-like space craft capable of traveling at extreme speeds across land, water, and air by using an inertial mass reduction device?

On April 28, 2016, military inventor and researcher, Salvatore Cezar Pais, filed patent application 15/141,270 for a UFO-like space craft capable of traveling at extreme speeds using an inertial mass reduction device.  Several years later, on December 4, 2018, the United States Patent and Trademark Office issued the patent for the invention to the United States Secretary of Navy (U.S. Patent No. 10,244,532 B2). 

The Patent describes a UFO-like space craft capable of stealthily navigating air, space, and water mediums, while enclosed in a protective vacuum sheath.  Specifically, the craft includes an inner resonant cavity wall, an outer resonant cavity, and microwave emitters.  The outer resonant cavity wall and the inner resonant cavity wall combine together to form a resonant cavity.  A noble gas, such as xenon, fills the cavity used for the plasma phase transition aspect of symmetry-breaking for amplification of the Prigogine effect.  Per the patent, the microwave emitters create high frequency electromagnetic waves throughout the resonant cavity causing the outer resonant cavity wall to vibrate in an accelerated mode and create a local polarized vacuum outside the outer resonant cavity wall.  This allows the craft to propel itself at extreme rates of speed by reducing the craft’s inertia, or resistance to motion. 

The patent further describes a craft designed to operate in space, sea, or land environments. The patent includes an example of a hybrid aerospace/undersea craft (HAUC), which due to the physical mechanisms enabled with the inertial mass reduction device, can function as a submersible craft capable of extreme underwater speeds (lack of water-skin friction) and enhanced stealth capabilities (non-linear scattering of RF and sonar signals).  Moreover, the patent provides that the “hybrid” craft would move with great ease through the air/space/water mediums, by being enclosed in a vacuum plasma bubble/sheath, due to the coupled effects of electromagnetic field-induced air/water particles repulsion and vacuum energy polarization.  Furthermore, the highly complex patent describes methods of reducing mass using the generation of gravity waves, which were first detected 2016.

At first glance, it would seem a patent for such an invention would be kept secret from the general public given its military applications.  The United States Patent and Trademark Office screens each patent application for subject matter detrimental to national security.  The Invention Secrecy Act of 1951 requires the United States Patent and Trademark Office to impose a “secrecy order” on an application for an invention detrimental to national security.  The secrecy order restricts disclosure of the invention and withholds the grant of a patent.  Specifically, the Invention Secrecy Act of 1951 provides that whenever:

“publication or disclosure by the publication of an application or by the grant on an invention in which the Government has a property interest might, in the opinion of the interested Government agency, be detrimental to the national security, the Commissioner of Patents upon being so notified shall order that the invention be kept secret and shall withhold the publication of the application or the grant of a patent…”

A secrecy order prevents an inventor from receiving a patent for their invention.  The United States Patent and Trademark Office sends a notice to the inventor which instructs the inventor that “the subject matter or any material information relevant to [the] application, including unpublished details of the invention, shall not be published or disclosed to any person not aware of the invention prior to the date of [the security] order, including any employee of the principals.”  The secrecy order also prohibits an inventor from disclosing or publishing any information related to the invention disclosed in the patent application.  Additionally, secrecy orders usually last for 1 year.  Secrecy orders may be renewed for additional periods of up to 1 year.  In order to renew secrecy orders, the government agency sponsoring the security order petitions to the United States Patent and Trademark Office, “that an affirmative determination has been made that the national interest continues so to require.”  A secrecy order ends when the government agency sponsoring the secrecy order fails to renew the secrecy order, or when the government agency sponsoring the secrecy order notifies the United States Patent and Trademark Office that the disclosure of the invention is no longer deemed “detrimental to national security.”  The United States Patent and Trademark Office may impose a secrecy order even when the inventor generates and owns the company without government sponsorship or support.

An inventor who’s invention is subject to a secrecy order has several options.  First, an inventor has an option to appeal the decision by filing a petition to have the secrecy order withdrawn.  Second, if a secrecy order delays an invention, the inventor may be subject to just compensation.  An inventor also receives a term extension on a patent that was subject to a secrecy order.  The term extension is for a day-per-day basis for the length of the secrecy order. 

At the end of fiscal year 2018, 5,792 secrecy orders were in effect.  Recently made public patents include a laser-tracking system, a warhead-production method, an anti-radar-jamming apparatus, and a stronger net.

Pais’ other patents include a Piezoelectricity-Induced Room Temperature Superconductor and a Gravity Wave Generator.

Does a legendary artist’s creation of 16 artworks known as the “Prince Series” constitute fair use of a 1981 picture taken by renowned photographer Lynn Goldsmith?

On July 1, 2019, Justice John G. Koeltl from the United States District Court for the Southern District of New York issued the Opinion and Order. In the Opinion and Order, the Court finds that Andy Warhol’s “Prince Series” constitutes fair use and does not infringe Lynn Goldsmith’s copyright over the Goldsmith Prince Photograph.

Andy Warhol is one of the most celebrated American artists of the 20th Century. Warhol created works about widely circulated images of celebrities, and everyday items such as Campbell’s soup cans and Brillo pads. Museums and universities across the globe display his works which are viewed by millions of people. In 1984, Warhol created a series of portraits of world famous singer Prince Rogers Nelson, commonly known as “Prince.” The portraits reference Lynn Goldsmith’s, a famous rock and roll photographer, photograph of Prince taken in 1981 (“Goldsmith Prince Photograph”).

On April 7, 2017, the Andy Warhol Foundation for the Visual Arts, Inc. (“Foundation”) filed a complaint against Lynn Goldsmith and Lynn Goldsmith, Ltd. seeking a declaratory judgment that (1) the portraits in Warhol’s “Prince Series” do not infringe upon Goldsmith’s copyright in the photographs, (2) the portraits are transformative or are otherwise protected by fair use, and (3) Goldsmith’s claims are barred by the statute of limitations and the equitable doctrine of laches.

On June 9, 2017, Goldsmith filed a counterclaim for copyright infringement against Warhol’s “Prince Series,” specifically against the portrait appearing on the 1984 Vanity Fair publication which was newly published with color by Condé Nast on the cover of a May 9, 2016, special Prince tribute magazine. Per the counterclaim, in 1984, Vanity Fair’s photo department solicited Goldsmith for submission of one of the Prince images from her 1981 Newsweek photo shoot, which Warhol ultimately illustrated. The agreement between Goldsmith and Vanity Fair included that the Goldsmith Prince Photograph was for a one-time use. The counterclaim provides that Condé Nast created and released the 2016 Publication as a special tribute issue to Prince’s life, using for its cover a different color version of the same image Warhol created for Vanity Fair in 1984, based on Goldsmith’s 1981 photo. Condé Nast licensed the image from the Foundation and not Goldsmith. The counterclaim alleges Warhol commercially used the Goldsmith Prince Photograph without Goldsmith’s permission on several occasions.

Copyright refers to an author’s right to control the use of their work for a limited period of time. Copyright protection arises under federal law and is codified under Title 17 of the United States Code. Copyright law protects literary, musical, dramatic, choreographic, pictoral, graphic and sculptural works, motion pictures and other works. Original works, fixed in a tangible medium of expression, are eligible for copyright protection. Under the 1976 Copyright Act, the copyright owner has the exclusive right to reproduce, adapt, distribute, publicly perform, and publicly display the work. A copyright owner may transfer, license, sell, donate, or bequeath their rights. Depending on the work, Copyright protections last anywhere from 70 years after the author’s death to 120 years from the work’s creation. Although original works fixed in a tangible medium of expression receive immediate copyright protection, registration with the federal government allows copyright owners to file copyright infringement claims against infringers.

Copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. To prevail, a plaintiff must prove its ownership of a valid copyright and a copying of elements of the work that are original.

Fair use is a codified legal doctrine under Section 107 of the Copyright Act and functions as a statutory exception to copyright infringement. Fair use limits the protections offered by copyright law by ensuring copyright law does not encroach upon the public’s freedom of expression. Fair use limits copyright law by permitting use of copyrighted works by the public under certain circumstances. The Copyright Act lists the following four factors for determining fair use: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market for or value of the copyrighted work.

The first factor considers whether the secondary work “is of commercial nature or is for nonprofit educational purposes.” The most important consideration under the first factor is the “transformative” nature of the work at issue. Generally, the more transformative the new work, the less will be the significance of other factors. In the Opinion and Order, the Court finds that the first factor favors the Foundation, holding that the works in the “Prince Series” are transformative of the Goldsmith Prince Photograph because the “Prince Series” “have a different character, give the Goldsmith Prince Photograph a new expression, and employ new aesthetics with creative and communicative results distinct from Goldsmith’s.” Specifically, all but one of the works in the “Prince Series” remove Prince’s torso and bring his face and neckline to the forefront. Additionally, the “Prince Series” depicts Prince as two-dimensional and uses loud unnatural colors.

The second factor calls for recognition that some works are closer to the core of intended copyright protection than others, with the consequence that fair use is more difficult to establish when the former works are copied. Courts consider whether the copyrighted work is (1) creative or factual and (2) unpublished versus published. Here, the Court finds that the second factor favored neither the Foundation nor Goldsmith stating that although unpublished works enjoy additional protection against fair use, this bears little weight on the case because Goldsmith licensed her photograph to Vanity Fair.

The third factor considers whether the quantity and value of the materials used are reasonable in relation to the purpose of the copying. The Court finds that although Warhol initially used Prince’s head and neckline as they appear in the Goldsmith Prince Photograph, Warhol removed nearly all protectable elements from the Goldsmith Prince Photograph, such as Prince’s crude and creative facial features which evoked the desired expression. Thus, the Court finds that the third factor favors Warhol.

The fourth factor considers the effect of the use upon the potential market for or value of the copyrighted work. This factor focuses on whether the alleged infringing work “usurps” the market or derivative markets for the original work. The Court finds that the fourth factor favors Warhol because the “Prince Series” works and the Goldsmith Prince Photograph are not market substitutes and do not harm Goldsmith.

The Opinion and Order concludes the action.

Can a popular yoga-inspired apparel company enforce its intellectual property rights against a discount retail chain store?

On June 20, 2019, upscale Canadian yoga-inspired apparel company, Lululemon Athletica, filed a lawsuit in the United States District Court for the Northern District of California alleging federal trademark infringement, federal trademark counterfeiting, and both federal and state unfair completion claims against discount retailer Ross Stores, Inc. and its athletic apparel supplier, Impulse Off Price Apparel (“IOPA”), for importing and selling cheap counterfeit copies of Lululemon’s high-end leggings.

As known by many fans and consumers, Lululemon is a leading designer and retailer of high-quality, yoga-inspired athletic apparel.  The Canadian athletic apparel company founded in 1998 develops, manufactures, and sells premium apparel including shirts, shorts, pants, and leggings along with other products such as yoga mats, bags, and accessories.  Per the complaint, Lululemon’s products are designed to offer performance, fit, and comfort while incorporating both function and style, which allow Lululemon to address the needs of athletes and consumers. Lululemon’s products all bear its distinctive trademarks.

The complaint provides that Lululemon owns and widely promotes several trademarks which have earned substantial fame and considerable goodwill among the public.  Lululemon’s registered trademarks include registration nos. 4391115, 4367598, 2607811, 2460180, 4345516, 5393854, which include marks for “LULULEMON” and the “Upside-Down U Seam.”  The complaint provides that Lululemon’s Trademarks attributed to its high level of brand recognition and that as a result of Lululemon’s longstanding and widespread use and promotion of the Lululemon trademarks, Lululemon’s customers worldwide have come to rely upon Lululemon’s trademarks to identify its high-quality goods and services.  

In March 2019, Lululemon representatives bought 20 counterfeit leggings from Ross Stores, Inc. operated dd’s DISCOUNTS stores in San Leandro and Hawthorne for $7.99 each.  Lululemon’s All the Right Places Plant II and Fast & Free Tight usually retail for $128 each.  Per the complaint, Lululemon representatives analyzed the counterfeit leggings and determined that the counterfeit leggings were among the lowest-quality counterfeit leggings.  Lululemon makes their famous All the Right Places Pant II and Fast & Free Tights using smooth, four-way stretch Full-On Luxtreme fabric and Lululemon’s Nulux quick-drying, seat-wicking fabric.  Unlike the four-way stretch Full-On Luxtreme fabric and the Nulux quick-drying fabric which compose Lululemon’s products, thin inexpensive polyester blends compose the counterfeit leggings. 

The complaint alleges that Ross Stores, Inc. and IOPA imported, advertised, distributed, and sold at least 1,000 counterfeit leggings to consumers and retailers, and that Ross Stores, Inc. and IOPA were aware of or willfully blind to the fact the leggings were counterfeit.  Lululemon supports its allegation that Ross Stores, Inc. and IOPA were aware of or willfully blind to the fact that the leggings were counterfeit due to the difference in quality between the counterfeit and original Lululemon leggings.  Lululemon claims that Ross Stores, Inc. and IOPA know that Lululemon only sells its products through its website, outlet stores, and strategic partners such as premium yoga studios, gyms, and wellness centers.  

The complaint further alleges that IOPA imported counterfeit leggings bearing marks identical or substantially indistinguishable from Lululemon’s trademarks.  Lululemon claims Ross Stores, Inc. and IOPA confused consumers through selling counterfeit leggings branded with identical or substantially indistinguishable trademarks from Lululemon’s trademarks.  In support of its allegation, Lululemon identifies social media posts indicating consumers actually believed they purchased authentic Lululemon leggings from dd’s DISCOUNTS.

The lawsuit includes federal trademark infringement, federal trademark counterfeiting, and federal and state unfair completion claims against Ross Stores, Inc. and IOPA.  

To succeed on its trademark infringement claim, Lululemon needs to demonstrate that it has valid and subsisting trademark rights in its “LULULEMON ATHLETICA” (U.S. reg. no. 2607811), Lululemon logo (U.S. reg. no. 2460180), and “LULULEMON” (U.S. reg. no. 4391115) trademarks and that the counterfeit leggings use a mark that is confusingly similar thereto. In other words, Lululemon needs to demonstrate that the use is likely to confuse a consumer regarding the source and origin of the leggings sold in the discount retailers, and is likely to cause confusion or mistake and to deceive purchasers as to Lululemon’s affiliation, connection, or association with, or approval or sponsorship of the counterfeit leggings.

To succeed on its trademark counterfeiting claim, Lululemon needs to demonstrate that Ross Stores, Inc. and IOPA intentionally used the counterfeit marks in commerce while knowing the marks were counterfeit.  Lululemon also needs to demonstrate that Ross Stores, Inc. and IOPA used the counterfeit marks in connection with the sale, offering for sale, or distribution of the alleged counterfeit leggings, and that this use was like to confuse or deceive consumers regarding the source and origin of the leggings sold in the discount retailers.

To succeed on both the federal and state unfair competition claims, Lululemon must establish that it holds valid and subsisting trademark rights in its trademarks.  Additionally, Lululemon must establish that the use of the marks on the counterfeit leggings is likely to cause consumer confusion with respect to the source and origin of the leggings, and with respect to Lululemon’s affiliation with the counterfeit leggings.

Lululemon seeks a court order prohibiting Ross Stores, Inc. and IOPA and their agents, servants, employees, and any related persons or entities acting in concert with them from unlawfully using and/or counterfeiting the Lululemon trademarks or any marks confusingly similar to the Lululemon trademarks.  Lululemon also seeks an order requiring Ross Stores, Inc. and IOPA to destroy the remaining counterfeit leggings.  Naturally, Lululemon seeks damages to the fullest extent available under the law.

Can trademark law protect “instantly identifiable” fragrances such as Le Labo’s Santal 33?

Unfortunately for fragrance connoisseurs and veterans such as Eddie Roschi and Fabrice Penot, founders of the world-famous Le Labo’s Santal 33 fragrance, trademark law does not offer protections against copycats.  Although consumers often “instantly” link the scent to a brand as they would “instantly” link a brand name to a brand, trademark law does not protect scents in the same way as it protects name brands.

In 2006, Eddie Roschi and Fabrice Penot, fragrance connoisseurs and veterans, founded Le Labo in New York.  The founders met while working together for Giorgio Armani’s perfume division.  Since its inception in 2006, the world-famous fragrance maker expanded to more than 50 locations across the globe.  As of November 3, 2014, Le Labo operates as a subsidiary of The Estée Lauder Companies Inc.  Le Labo separates itself from prestige brands that often spend in excess of tens of millions of dollars in marketing efforts, by focusing its marketing efforts into niche markets.

Perhaps Le Labo’s best know scent is its distinct and popular fragrance, Santal 33.  According to the New York Times, Santal 33 began “as an antipode to mass-market scents.”  The widely popular $180 unisex fragrance is a particular, distinctly musky scent, that combines aromas of leather and sandalwood.  Although Santal 33’s scent creates an instant link to Le Labo in the minds of many consumers, the scent is unable to receive protection under trademark law.

Trademark law protects a wide variety of subject matter.  Very generally, any symbol or device that serves to identify and distinguish both the goods and the source of an entity’s goods from those of another is eligible for trademark protection.  The trademark functionality doctrine limits the extent of trademark law.

The trademark functionality doctrine prevents perfumes, fragrances, and scents such as Santal 33 from being protected by trademark law.  The functionality doctrine prevents trademark law from inhibiting market competition because it allows for control over useful product features.  Under the Lanham Act, a trademark which comprises any matter, that as a whole, is functional, is prohibited from trademark registration.  In other words, trademark law does not protect purely functional trademarks.  Trademark law only protects non-functional and source-identifying trademarks.  Under the functionality test, a product feature is functional, and cannot serve as a trademark, if it essential to the use or purpose of the product or if it affects the cost or quality of the product.  The two general types of functionality are utilitarian functionality and aesthetic functionality.

Utilitarian functionality provides that a product feature is functional if it serves a utilitarian purpose.  In Trafix Devices, Inc. v. Marketing Displays, Inc., the United States Supreme Court held that a product feature is functional “when it is essential to the use or purpose of the device or when it affects the cost or quality of the device.”  Accordingly, where a product requires a product feature to optimally function, that product feature may not be protected by trademark law.  

Aesthetic functionality provides that a product feature is functional if it constitutes the actual benefit that the consumer wishes to purchase, as distinguished from an assurance that a particular entity made, sponsored, or endorsed a product.  For example, a candy box in the shape of a heart may be functional because a consumer may wish to purchase it because of its significance as a gift to a loved one or a significant other.  In contrast, a box without a distinct shape and perhaps only a ribbon surrounding it may not be functional.  In recent years, courts adopted a test for aesthetic functionality which asks whether the allegedly functional design is “necessary to effective competition” between competitors.

Accordingly, this may appear as if trademark law does not protect any scents.  However, this is not the case.  The United States Patent and Trademark Office allows for trademark law protection over scents because scents are not explicitly excluded by the Lanham Act.  In order to be protected by trademark law, a scent must be inherently distinctive or its distinctive nature can be acquired through association of the scent with the scent’s producer.  Practically speaking, this requires those seeking trademark protection for scents to provide substantial proof to prove that a scent is distinctive.  Forms of such proof may include, statements from industry dealers or retailers, advertising evidence, brochures, and advertising expenditures.

Last year, Hasbro the internationally renown toy company and the creator of the iconic Play-Doh, received trademark protection for its distinct Play-Doh smell, which it describes as a unique scent formed through the combination of a sweet, slightly musky, vanilla-like fragrance, with slight overtones of cherry, and the natural smell of a salted, wheat-based dough.  Additional scents protected by trademark law include Verizon’s flowery musk scent used in its retailer stores, Grendene’s bubble gum scent used for shoes and flip-flops,  Manhattan Oil’s cherry, grape, and strawberry scents used in connection with lubricants for land and water vehicles, Le Vian’s chocolate scent used in its retail locations, Eddy Finn Ukulele Co.’s piña colada scent used to coat ukuleles, Flip Flop Shop’s coconut suntan oil scent used in its retail locations, Lactona’s strawberry toothbrushes, and Hisamitsu Pharmaceutical Co.’s “minty” pain-relief patches.  

Unfortunately for Le Labo and other fragrance manufacturers, scents that serve a utilitarian purpose cannot be registered as trademarks, even though the scents have acquired distinctiveness.  In other words, these fragrances serve the function of making the consumer smell better, and thus cannot be registered as trademarks and receive protection under trademark law.  Although trademark law may not protect scents such as Santal 33, patent law and trade secret law may do so.