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.

Can an inventor patent a dog-power machine that provides enough power to operate a range of small machinery?

On June 7, 1859, inventor Dexter C. Slater patented a device for using “dog-power” to power a wide-range of small machinery (U.S. Patent No. 24,338).  As silly as such an invention may seem in today’s technologically driven world, Mr. Slater’s invention was not unique in its time.  In the 19th century, a period when dogs were not only “man’s best friend”, but also diligent workers, inventors patented devices and methods for using “dog-power” to operate machinery.  Inventions similar to Mr. Slater’s device include Heinrich Feldt’s dog-powered sewing machine and H.M. Childs’ dog-powered butter churn.

U.S. Patent No. 24,338 describes a device made from an inclined head wheel, shaft, cam, and lever, all arranged and combined in a manner shown by the picture above.  The patent also describes the device as extremely simple that anyone familiar with tools may construct.  It further describes that a dog operates the device by walking on the wheel.  Specifically, a dog rotates the wheel by walking around the wheel.  The wheel’s rotation rotates a cam that creates a vibrating motion, and that is transferred to a lever.  The resulting “dog-power” is harnessed from the lever.

A patent refers to an inventor’s exclusive right granted for an invention.  Specifically, a patent is a property right that allows an inventor to prohibit, or exclude, others from making, using, selling, or offering for sale or importing the patented invention.  An inventor’s patent is protected by the Article 1, Section 8, Clause 8 of the United States Constitution that provides  Congress with the power to, “to prompt the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

In order for an inventor to patent an invention, the invention must be subject matter eligible, new, useful, and non-obvious.  Additionally, the invention may not be an abstract idea, a law of nature, or natural phenomena.  Subject matter eligible inventions include machines, processes, articles of manufacturing, and compositions of matter as provided under Section 101 of the Patent Act.  An invention is new, or novel, if certain public disclosures of the invention have not been made prior to the inventor applying for a patent.  In order for an inventor to patent an invention, the invention must serve a useful purpose.  This requirement is usually easily satisfied.  Finally, an invention is non-obvious if the invention would have been obvious “to a person having ordinary skill in the art to which the claimed invention pertains.”  Practically speaking, a patent examiner determines whether an invention meets this requirement by asking whether the invention would have been obvious to a person having ordinary skill in the type of technology used in the invention.  In 2007, the U.S. Supreme Court increased the difficulty in satisfying the non-obvious requirement holding that the “person having ordinary skill in the art to which the claimed invention pertains” possesses an ordinary level of creativity.  

The United States Patent and Trademark Office (USPTO) grants patent rights to an inventor according to the invention’s subject matter.  The USPTO may issue six different patent types.  The six different types include reissue patents, defensive publications, statutory invention registrations, utility patents, design patents, and plant patents.  The three most common types of patents are utility patents, design patents, and plant patents.

A utility patent protects an invention for a new and useful machine, process or method, article of manufacture, composition of matter, or a new and useful improvement thereof.  A utility patent protects the functional aspects of an invention.  A utility patent is the most common type of patent issued by the USPTO and usually lasts for twenty years from its filing date.  In order for a utility patent to remain valid for the entire twenty-year period, the inventor, or patent holder, is required to pay maintenance fees to the USPTO.

A design patent protects an invention’s aesthetics, or in other words, ornamental features, of an invention.  Design patents differ from utility patents because they only protect the invention’s aesthetic features, and do not protect the functional aspects of an invention.   A design patent lasts for fifteen years from date the design patent is granted.  A design patent holder is not required to pay maintenance fees to the USPTO in order for the design patent to remain valid for the entire fifteen-year period.

A plant patent protects an invention for a new variety of plant, excluding a tuber propagated plant or a plant found in an uncultivated state.  A plant patent protects cultivated sports, mutants, hybrids, new seedlings, algae, and macro fungi.  A plant patent is unique because in addition to discovering the plant, the inventor must also asexually reproduce the plant.  A plant patent lasts for twenty years from its filing date.  Unlike utility patents, plant patents do not require maintenance fees to remain valid for the entire twenty-year period.

Generally, anyone from anywhere can apply for a patent to protect their invention.  In order to receive a patent, an inventor must file a U.S. patent application with the USPTO.  Once an inventor files a patent application, a USPTO patent examiner prosecutes the application.  Prosecution refers to a process during which a patent examiner examines the application to confirm that the patent application conforms with various requirements.  After examining the application, the examiner either accepts the application and issues a patents, issues an objection, or issues a rejection of some or all of the claims.

On June 7, 1859, the USPTO granted Mr. Slater’s application for his “new and Improved DogPower” device.  The patent has since expired.

Both the state of Georgia and a non-profit corporation, Public.Resource.Org (PRO) have filed writs of certiorari with the United States Supreme Court seeking its decision on whether annotations commissioned and approved by the state may be copyrighted. Stated differently, that is, in the manner in which PRO asserts the issue, these parties seek to figure out whether citizens can have access to the raw materials of our democracy.

This case arises out of the Official Code of Georgia Annotated (OCGA), which was re-codified and annotated in the 1970s. At this time, the Code Revision Commission of the Georgia General Assembly contracted with the Michie Company to prepare and publish the OCGA. The Michie Company proceeded to prepare a manuscript containing an unannotated compilation of Georgia statutes, which was then adopted as Georgia’s official code. Michie, then, added annotations and the OCGA, as it exists today, became effective in 1982.

Currently, Georgia is under contract with Lexis Nexis to maintain, publish and distribute the OCGA. States often strike deals of this type with private publishers. PRO, in its petition to the Supreme Court, claims that publishers subsequently use tools to control who has access to the text of the law, how much they must pay, and under what terms. However, to ensure that Georgia law is readily accessible to the general public, pursuant to agreement, Lexis is required to publish the code’s unannotated statutory text online, free of charge. Moreover, a CD-ROM version of the OCGA, complete with annotations, is available to the general public without charge at over 60 state and county-operated facilities throughout Georgia, such as libraries and universities.

PRO is operated by Carl Malamud and its primary activity is publishing government documents online, including several state codes, and encouraging the public to access them for free. Despite knowledge of Georgia’ registered copyright, PRO purchased printed volumes and supplements of the OCGA, scanned them, and posted them online. After PRO refused to comply with cease and desist letters, Georgia filed an infringement suit in district court and PRO counterclaimed for judgment of non-infringement. PRO continued reproducing the OCGA after Georgia had filed its suit.

Copyright subsists in original works of authorship fixed in a tangible medium of expression and covers both published and unpublished works. Copyright grants owners a bundle of exclusive rights, including the rights of reproduction and distribution. This protection only extends to the original expressions of ideas and not the ideas themselves. Thus, even if certain elements in a work are ineligible for protection, other elements may still be protected.

It is well-settled that judicial opinions cannot be copyrighted. The Supreme Court last addressed this matter in 1888 when it ruled that “the whole work done by the judges constitutes the authentic exposition and interpretation of the law, which, binding every citizen, is free for publication to all.” The so-called government edicts doctrine is a narrow, judicially created exception to copyright protection for certain works having the force of law. Under this doctrine, the standard that is applied is whether the work sought to be registered has “the force of law.” If it does, it cannot be copyrighted. Some lower courts have applied this principle to statutes but the status of other sorts of legal materials has not been definitively resolved.

No statute directly codifies the government edicts doctrine but instead, the Copyright Act provides that “copyright protection is not available for any work of the United States Government.” That being said, there is no parallel provision for works of state and local governments. Moreover, in a compendium issued by the Copyright Office, it was decreed that a work that does not constitute a government edict may be registered as a copyright “even if it was prepared by an officer or employee of a state, local, territorial, or foreign government while acting within the course of his or her official duties.” The Copyright Office also recognizes that copyright protection is available for annotations that summarize or comment upon legal materials issued by the federal, state, local, or foreign government, unless the annotations themselves have the force of law. If this doctrine extends to works that lack the force of law, such as annotations to a statute, those works would thereby be uncopyrightable

Annotations include descriptions of judicial decisions interpreting the statutes. In particular, in viewing a statute, its meaning is not always necessarily clear. Instead, it is usually necessary to go to the annotations, which lead the court decisions where the judges actually inform as to the meaning of the words of the statute. At times, courts will cite to the annotations as authoritative sources on statutory meaning and legislative intent.

The Georgia General Assembly has repeatedly made clear that only the statutory portion of the OCGA has the force of law and that the annotations constitute mere research aids lacking any legal effect. Due to this, Georgia does not claim copyright protection in the OCGA’s statutory text and numbering but does claim that it holds a registered copyright in the annotations thereof.

The district court held the OCGA annotations were copyrightable and that PRO’s activities constituted infringement, thereby entitling Georgia to injunctive relief. The federal appeals court reversed this finding, ruling against the state and for PRO. Unsurprisingly, the state filed a petition with the Supreme Court asking them to take up the question. On the other hand, in an unusual move, despite its success at the appellate level, PRO has also urged the court to hear the dispute. Indeed, PRO contends, approximately 20 other states have claimed that parts of similar annotated codes are copyrighted so this is an important and relevant case.