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Did you know?

For 90 years, ranging from 1790 to 1880, the government required every patent application to be accompanied by a working scale model of the invention, which could be no larger than 12 inches on each side. This practice terminated after the Patent Office ran out of space to store all of the models. The Rothschild Petersen Patent Model museum in New York maintains the largest private collection of patent models, housing over 4,000. Currently, applicants are neither required nor generally permitted to submit any type of working model unless the Patent Office deems it necessary for proper examination. Once returned to the applicant, the model or exhibit must be retained for the enforceable life of any patent resulting from the application.

District Court Denies TRO Against Allegedly Infringing Use of Tagline

The creators behind a raunchy comedy featuring Melissa McCarthy and cast of puppets are being sued by the educational nonprofit organization behind “Sesame Street.” McCarthy portrays a police officer who teams up with a new puppet partner to solve “the brutal murders of the former cast of a beloved classic puppet television show.” Sesame Workshop, the nonprofit, claimed the new film, titled “The Happytime Murders” through its creators, STX Productions, wrongfully misappropriates the “Sesame Street” trademark, trusted brand, and goodwill for promotional purposes. The complaint further alleges that defendants do not own or have any right to the “Sesame Street” mark and that the trailer deliberately confuses consumers into mistakenly believing that Sesame Workshop is in some way associated with or has endorsed the R-rated film. In particular, the nonprofit organization took issue with the film’s tagline “No Sesame. All Street.”

For these reasons, Sesame Workshop sought a temporary restraining order barring STX Productions from continuing to use the tagline but such order was denied. The movie, to be released on August 17^th, is directed by Brian Henson, son of now-deceased Jim Henson, who helped develop the iconic “Sesame Street” characters prior to creating “The Muppet Show.” After the court’s ruling, a representative from STX publicly stated the company’s satisfaction with the ruling, claiming it reinforced STX’s intention in honoring the heritage of The Jim Henson Company’s creations while clearly distinguishing those characters and the new world Brian Henson and STX has envisioned.

Ivanka Trump Fashion Brand Issued 13 Trademarks in China

Ivanka Trump’s fashion brand was issued thirteen new trademarks in China within the last three months, seven of which issued in May alone. Further, the company was granted provisional approval for eight more applications, which will be finalized if no objections are brought within a three month period. These filings apply to items the brand currently sells as well as others that it seeks to prevent third parties from selling under the its brand. Indeed, the trademarks have been registered for coffins, baby blankets, bamboo craft, perfume, makeup, bowls, mirrors, furniture, coffee, chocolate, honey, and other goods and services. Registration of one’s intellectual property garners a number of benefits. Of particular importance in regions where trademark infringement is prevalent is preventing copycats from trading off the goodwill of one’s brand. Critics have disapproved of these registrations, claiming the timing raises suspicions about potential ethical violations. In particular, commentators are concerned that the first daughter is receiving special treatment for her brand from a foreign government. However, Ivanka Trump has previously withdrawn from management of her company and placed its assets in a trust. Moreover, the Ivanka Trump brand rigorously files and defends its international trademarks during the normal course of its business, especially in regions known for excessive infringement. #omnilegalgroup #trademark #ivankatrump

Lisa Frank Settles Copyright Infringement Suit Over Vibrantly Colored Designs

Lisa Frank, Inc. recently settled a copyright infringement lawsuit against a Canadian company, Orb Factory. The Tucson-based company filed suit in 2015 in the U.S. District Court in Arizona alleging Orb Factory copied its protected images on its packaging. Lisa Frank’s vibrantly colored school supplies, stationary, and other unique items were known and loved by every little girl in the 1980’s and 1990’s and feature designs of unicorns, tigers, and other fanciful creatures. In its complaint, Lisa Frank cited the fact that its brand attained iconic status as a result of the “unique look and quality” of its product line. Since its inception in 1979, the company has generated over $1 billion in sales. A copyright exists as soon as an original, creative work is fixed in a tangible medium of expression. While copyrights need not be registered with the U.S. Copyright Office to be protected, Lisa Frank has in fact been issued over 400 certificates of registration for its collection of graphics and designs used on or with its products. Lisa Frank contended that Orb Factory’s “sticky mosaics” and other products were “substantially and confusingly similar” to its own products. On the fifth day of the civil jury trial, Lisa Frank and Orb Factor entered into a confidential settlement agreement effectively terminating the dispute. #omnilegalgroup #copyright #lisafrank

Nuthin But a Trademark Thang

This month, the United States Patent and Trademark Office ended a legal battle between Dr. Dre and a practicing doctor. Back in 2015, Dr. Draion M. Burch filed trademark applications for the marks “Dr. Drai” and “Doctor Drai OBGYN and Media Personality” in connection with “educational and entertainment services.” The Pennsylvania-based gynecologist’s intent was to use this brand on audio books and seminars. Indeed, Burch hosts webinars and sex education classes for adults and teenagers. Dr. Dre, the stage name of rapper and producer Andre Young, instituted this opposition proceeding based on the similar appearance and pronunciation of the names. To prove trademark infringement, Dr. Dre needed to demonstrate there existed a likelihood of confusion as to the source of the goods or services, that is, consumers were likely to believe an association existed between the respective parties’ goods and services. Burch argued that he was merely using his name, a name that he actually earned the right to be called by virtue of his graduation from medical school. As a result, he further argued consumers were unlikely to be confused because Dr. Dre the rapper is not a medical doctor nor is he qualified to provide any medical services. Moreover, Burch disclaimed any interest in trading off the hip-hop mogul’s goodwill as he believes such association was more likely to harm his practice due to certain lyrics featuring misogynistic or homophobic messages. #omnilegalgroup #trademark #DrDre #DrDrai

Music Modernization Act Expected to Reform Music Licensing

The new Music Modernization Act combines provisions of four separate legislative initiatives into a single bill that is expected to reform the music licensing system. In particular, the Act proposes to create the Mechanical Licensing Collective (MLC), an independent not-for-profit organization selected by the Copyright Office. This licensing organization would create a publicly accessible database storing song ownership information and provide a blanket mechanical license for digital streaming. While there are currently other royalty collection societies for performance copyrights, such as ASCAP and BMI, there has never existed an organization that provides licenses for mechanical copyrights. Under the MLC regime, streaming companies would be required to provide a monthly usage report detailing the number of streams of each song in its repertoire and then pay royalties that would ultimately go to the publishers and songwriters. MLC would also allow unclaimed songs, that is, songs for which the mechanical copyright owner is unknown, to be recognized and claimed by publishers, facilitating proper payment of royalties. It has been estimated that the Music Modernization Act will result in significantly more royalties being paid to the rightful copyright owners. #omnilegalgroup #copyright #musicmodernizationact

Ariana Santoro Represents Omni Legal Group Well At Bloomfield High School College & Career Day

Omni Legal Group’s Ariana Santoro was recently honored by being invited to attend the annual College and Career Day at Alliance Margaret M. Bloomfield High School in Huntington Park. While there, Ms. Santoro inspired students with college on the horizon by regaling them about her college experience in obtaining two degrees and unusual path to becoming a patent attorney. Ariana emphasized how keeping an open mind and pursuing interesting opportunities while in college pushed her towards her eventual success. She engaged the students of multiple classes by providing a primer on intellectual property law and even demonstrated exemplary patented client inventions. By the end, students found themselves inspired and eager to follow Ariana’s example of hard work and ambition.

Did you know?

Apple Inc. recently patented the design of the Apple Store. The tech giant received a design patent in China in 2015, which was filed in the United States that same year. The design patent covers a “Building” and the patent figures feature a four support beam structure. This particular design was used for the Zhongjie Joy City Apple Store in China, which ended up only including two support beams.

United States Supreme Court Decides Two Cases on Inter Partes Review

In two recent decisions by the United States Supreme Court, the constitutionality of inter partes review was determined. Inter partes review (IPR) is a procedure within the United States Patent and Trademark Office (USPTO) which authorizes a board (namely, the Patent Trial and Appeals board) to reconsider and cancel an already-issued patent claim. Any person who is not the patent owner may petition for such review.

The first case, Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, involved a patent owned by Oil States and relating to technology for protecting wellhead equipment used in hydraulic fracturing. Oil States sued Greene’s Energy for infringement and in respons, Greene’s challenged the patent’s validity in parallel proceedings before the District Court and the USPTO in the form of an IPR. The case eventually made its way up to the Supreme Court which was tasked with determining whether IPR violates Article III or the Seventh Amendment of the Constitution.

The Court found that patents are public rights and therefore a decision to grant a patent is a matter involving public rights. Granting patents is a constitutional function that may be performed by the executive or legislative branches without judicial determination. Since IPR is simply a reconsideration of that original patent grant, such procedure may properly occur outside an Article III court. Moreover, the Court held that while the Seventh Amendment preserves the right of trial by jury in suits at common law, Congress particularly assigned this review of patent grants to the Patent Trial and Appeals Board, a non-Article III tribunal, so the action can be adjudicated by a nonjury fact finder.

The Court also considered the IPR procedure in the other case, SAS Institute v. IANCU. In that case, petitioner sought review of a software patent by alleging that all of the sixteen patent claims were unpatentable. The Patent Trial and Appeal Board’s final decision only addressed some of the claims and denied review of those remaining. Basing its decision on the plain text of the statute, 35 U.S.C. §318(a), the Supreme Court found this to be in error. Indeed, the Court held that when the USPTO institutes an IPR, it must decide the patentability of no less than all of the claims that have been challenged.

Monkeys Can Sue But Not For Copyright Infringement Says Ninth Circuit

The Court of Appeals for the Ninth Circuit recently ruled that an animal can potentially have constitutional standing to claim copyright infringement but that the Copyright Act does not expressly provide for such ability. While on a wildlife reserve in Sulawesi, Indonesia, wildlife photographer David Slater’s unattended camera was picked up and used by Naruto, a local monkey, to take several photographs of itself. These “monkey selfies” of the seven-year-old crested macaque later appeared in a book published by Slater and Wildlife Personalities, Ltd. This book identifies Slater and Wildlife Personalities as the copyright owners of these photographs. Subsequently, People for the Ethical Treatment of Animals (PETA) filed a complaint for copyright infringement, alleging Naruto to be the rightful author and owner of the “monkey selfies.” Defendants argued lack of standing, that is, that there is no statutory authority to bring a copyright infringement suit in the name of an animal. PETA originally sued as a “next friend,” a mechanism by which a third party can represent someone who is unable to represent themselves due to mental incapacity, lack of access, or other similar disability. The court found that since PETA and Naruto did not have the requisite “significant relationship,” PETA could not bring this suit on Naruto’s behalf. Instead, the court interpreted precedent in finding that animals can have standing if the relevant statute so provides. In this case, since the Copyright Act does not expressly authorize animals to file copyright infringement suits, Naruto lacks standing. #omnilegalgroup #copyright #monkeyselfies