Kmart Banana Costume Subject of Unap-peel-ing Copyright Lawsuit

Rasta Imposta, a small costume company, sued Kmart for copyright infringement after the retail store discontinued carrying the company’s banana costume. Instead, Kmart switched to another company and Rasta Imposta alleges the current Kmart costume has the same shape, lines, and cutouts of its banana costume. Moreover, the complaint continues, even the model displaying the costume is adorning it in a similar fashion with black pants and dress shoes. Rasta Imposta’s argument relies on a recent Supreme Court ruling on the copyright status of cheerleading uniforms. In that case, the Court held the uniform was eligible for copyright protection to the extent the design elements could be identified separately from the utilitarian aspects of the article. Normally, copyright law granted only limited protection to the design of useful articles such as clothing. Functional aspects of an item, such as holes in the costume for the neck and arms, are not eligible for copyright protection. In contrast, traditional creative works such as books, films, or paintings were granted broader protection. Since Rasta Imposta did not invent how a banana looks in nature nor can it claim protection for the costume’s functional aspects, the question will be whether its banana design adds enough originality over a generic banana costume to justify copyright protection. #omnilegalgroup #copyright #Kmart

Did You Know?

In addition to a host of technical and design patents Apple holds on the technology itself, the company also patents its packaging design. Not only is Apple concerned with how a product fits comfortably inside its box, it also aims to maximize the user experience from the time the consumer picks up the box to when they remove the product. As such, Apple’s boxes appeal to visual and tactile senses alike. When a user moves to lift the lid from an Apple box, one notices how the lid slowly glides apart from the bottom, creating anticipation before the big reveal of their newest toy.  Competitors have also noticed this attention to detail which led to one of Apple’s many lawsuits against Samsung.

Allergan Finds Loophole in System to Protect Patents from Challengers

Pharmaceutical giant, Allergan, may have found a loophole in the patent system to extend its monopoly over its drug, Restasis. Generic drugmakers sought to invalidate Allergan’s patents on the dry eye medication in order to introduce generic, less expensive versions of the drug to consumers. These companies, led by Mylan, brought suit in district court as well as an inter partes review (IPR) proceeding before the U.S. Patent Trial and Appeal Board (PTAB), a process which makes patent challenges easier and less costly. In order to avoid IPR, which is simultaneously celebrated by patent challengers and loathed by drugmakers, Allergan transferred its patents to the New York Saint Regis Mohawk Tribe. The Tribe’s status as a sovereign nation shields any patents it holds from IPR. In exchange for agreeing to exclusively license the patents back to the drug manufacturer, Allergan is to pay the Tribe $13.75 million upfront then $15 million per year thereafter in royalties. These figures pale in comparison to the $1.5 billion the drug brought in last year alone, accounting for 10% of Allergan’s overall revenues.

There is a concern this tactic could inhibit the entry of more affordable pharmaceuticals into the market. Indeed, four senators have asked the Senate Judiciary Committee to conduct an investigation into the agreement claiming it is “a blatantly anti-competitive attempt to shield its patents from review and keep drug prices high.” However, in a case against the University of Florida earlier this year, it was argued and decided that sovereign immunity applies not only to courts but also to quasi-judicial proceedings managed by the U.S. Patent and Trademark Office. Based on this precedent, Allergan has a solid argument as to the validity of its agreement with the Tribe. The only exception to a tribe’s sovereign immunity is if Congress expressly abrogated it or the tribe itself expressly waives it. Nothing in the Patent Act abrogates such tribal immunity and the Tribe has made it clear they are definitely not waiving their immunity in this situation.

Allergan responded to these concerns by stating the focus need not be on their agreement with the Saint Regis Mohawk Tribe but rather on the IPR process and “its negative impact on life sciences.” In long-term investment strategies, drug manufacturers find comfort in the protection of their patents. The threat of IPR creates significant business uncertainty rendering it far less attractive to expend vast resources to research and develop new pharmaceuticals. The Supreme Court will hear arguments this month as to the constitutionality of IPRs.

Netflix “Narcos” Trademark Dispute Reignites After New Threats

The year-long trademark dispute between the Escobar family and Netflix reignites after a Netflix scout was found dead after suffering from multiple gunshot wounds in a cartel-dominated area near Mexico City. The location manager was scouting a site for filming “Narcos,” a popular Netflix series, the first two seasons of which chronicle the life of Pablo Escobar from the time he first began manufacturing cocaine through his career as an infamous Columbian drug lord. Escobar is survived by his brother, Roberto De Jesus Escobar Gaviria, who seeks to protect his legacy from alleged intellectual property violations by the streaming service. Pablo Escobar’s brother is the founder of holding company Escobar Inc. that requested $1 billion from Netflix claiming the company has reaped a substantial financial benefit through their use of Escobar’s name and story on the show. Escobar Inc., Escobar’s brother claims, owns the trademarks to all of their names as well as the Narcos brand. He also threatened that if Netflix does not pay the requested compensation, he would “close their little show.” Moreover, he cautioned Netflix (or any other film production company) against filming anything in Colombia related to the Escobar family without the consent of Escobar Inc. Alternately, he suggested the show consider hiring hitmen as security for its film crew. #omnilegalgroup #trademark #Netflix