Letter from AmeriKat: Blue Ivy Carter, the Crimson Tide, Motorola v Apple and Prior User Rights

The AmeriKat all bundled up
in London's 1 inch of snow...

This past week the AmeriKat has been trying to keep her paws and nose leather warm – a massive challenge given the Arctic cold that has been blowing through the silvery streets of London.  Preparing one’s self for the impending wall of cold one will face when stepping outside takes some planning.  Collating the requisite gloves, cashmere scarfs and wooly hats, together with fuzzy boots and earmuffs takes planning.  When one has a little kitten to dress, as the AmeriKat did this past Christmas with her niece, the planning takes a new level.  Layers of clothes have to be acquired and layered on said wiggly kitten, mittens adhered to slippery paws and scarves expertly wrapped to ensure maximum warmth but also ability to breathe.

Bottles – check. Diapers – check. USPTO trade mark application - check. 

USPTO App 85526099 for BLUE IVY CARTER

There is always a level of planning required when taking care of kittens.  Besides the winter outfits, there is the feeding, play, and nap time schedules to address.  But on the long list of To-Dos, after buy more Cheddar Bunnies, most people do not have “File baby’s name as a trade mark with the USPTO”.  Most people, except Beyoncé and Jay-Z  that is, who on 26 January 2012,  four weeks after their baby girl – Blue Ivy Carter– was born, filed a trade mark application for the name with the USPTO.   The application made by Beyoncé’s company, BGK Trademark Holdings, is for the name BLUE IVY CARTER for goods that span the music mogul merchandise spectrum , including CDs, basketballs, baby carriers,  baby rattles, fragrances, and earmuffs. 

Trade mark registrations afford you the exclusive right to use the mark in connection to those classes of goods under the mark.  Importantly it allows you to stop others from doing the same without your permission.  That is where the true value in Beyoncé/Jay-Z’s potential trade mark registration lies – in preventing the use of their child’s name being plastered over every polyester bib and sad looking bear from New York to L.A.  Indeed, earlier third-party applications for the name were rejected by the USPTO on the grounds that the name belonged to a “very famous infant” and consumers would falsely assume that the goods under the mark were approved by or in association with Beyoncé and Jay-Z.  The AmeriKat is going to guess that like her mom and dad, Blue Ivy will also obtain a trade mark registration from the USPTO and that a business and design team is already working on the first line of Blue Ivy baby care accessories.   It's not a bad deal to have the potential to make money off of your name before you even know where your nose is....

For more information see articles in the Washington Post and the Philadelphia Inquirer. 

Florida filing latest in Motorola v Apple war

Nothing warms patent lawyers' cockles during these freezing winter months than more mobile patent disputes.  The latest in the line is Motorola who has filed a brand, new bouncing lawsuit in Florida federal court against Apple Inc. last Wednesday.  Motorola Mobility, who Google agreed to purchase last August for $12.5 billion, runs its phones with Google’s Android software – the biggest rival to the iPhone’s iOS system.  The claim concerns two Apple products – the iPhone 4s and iCloud remote storage system – and six patents related to wireless antennae (U.S. Patent No. 5,710,987) , multiple pager status synchronization system and method (U.S. Patent No. 5,754,119), method and apparatus for communicating summarized data (U.S. Patent No. 5,958,006),  a system for communicating user-selected criteria filter between wireless client and server, (U.S. Patent No. 6,101,531), an apparatus for controlling use of software added to a mobile device (U.S. Patent No. 6,008,737) and finally, a method and apparatus in a mobile device for facilitating and exchange of address information (U.S. Patent No. 6,377,161). 

The federal court filing comes after the US International Trade Commission (ITC) issued an early ruling that Motorola had not infringed the patents at dispute in an ITC claim brought by Apple.  The ruling is still subject to a final decision by a 6-person panel.    The filing also coincides with the ruling of Judge Andreas Voss of the Mannheim Regional Court in Germany granting a permanent injunction against Apple in Germany in respect of the push e-mail service of Apple’s iCloud and any devise that can access it.    

According to this article in the Guardian, this legal agreement signed between Google and Motorola which governs the purchase by Google of Motorola for $12.5 billion states that Motorola cannot commence new IP proceedings without written agreement from Google.  The AmeriKat has previously written on Google’s patent portfolio stance in its long-running fight with Apple.  The latest actions against Apple, via Motorola, have been heralded by some commentators as being another building block in the escalating mobile patent war with the iPhone

Free-riding the Crimson Tide? Dispute over artist’s use of football trade marks hits 11^th Circuit Appeals Court

Guest Kat Tara posted yesterday on the beauty of Super Bowl Sunday.  Not wishing to be left out in this most of American of pastimes, the AmeriKat has her own football story.  Last Thursday the Circuit Court of Appeals for the 11^th Circuit in Atlanta, Georgia heard arguments in the trade mark infringement battle between sports artist Daniel Moore and the University of Alabama.  In 2005, the University of Alabama sued Moore for trade mark infringement alleging that his paintings, which depicted scenes from the University’s football games and players in their crimson and white uniforms (“the Crimson Tide”) infringed their trade marks.  Moore also used the marks on coffee cups. 

Moore's "The Sack" 

In 2009, District Judge Robert Propst held that Moore’s paintings per se did not infringe UA’s trademarks  but the sale of the paintings on mugs, t-shirts and other goods did.  The judge explained that there was no reason why consumers of Moore’s paintings and larger prints would assume that those prints were either licensed from or associated with the university when making their purchasing decision.  It was more likely that consumers were purchasing the paintings because of their allegiance to the team, not because the paintings were thought to be originated or affiliated with the University of Alabama (dare the AmeriKat cite Arsenal v Reed's "badge of allegiance" argument?) .  Moore has denied infringing UA’s trade marks and claimed that his art is protected under the US Constitution as free speech.   The artist likens his paintings, which document important plays and events in the team’s sporting history to that of Sports Illustrated documenting the moments with photography.   

Alabama's football helmet

In a statement, university spokeswoman Deborah Lane stated that : 

“The University of Alabama believes the court ruled correctly when it found that Daniel Moore and his company engaged in activities that infringe on the University’s trademarks.  While we regret the necessity of having to involve the courts in this matter, the lawsuit was necessary since UA must protect the value and reputation of our trademarks, name, colors, indicia and logos, by determining who uses them, as well as when and how they are used.”

Moore’s lawyer, Stephen Heninger argued:

“All they are saying is any time, anywhere, our marks are shown, somebody has to pay us.  And that’s not what trade mark law says.  What they’re trying to gain here is an expansion of trade mark law.  The law of trade mark infringement is if you use somebody else’s mark to try to pass their work off as yours, that’s a trade mark violation.” 

Numerous universities had filed amicus briefs in support of the University of Alabama, while Moore’s case has been supported by media organizations, like the American Society of Media Photographers, who claim that like Claude Monet’s water lilies in France, Moore was just expressing “the culture of his surroundings”. 

The three-judge appeals bench has yet to issue a decision. 

For more information see these articles from CBS , the New York Times and the Huffington Post. 

The expansion of "Prior User Rights" under AIA good for business

USPTO Director Kappos defending
the prior user rights defence before
the House of Representatives

Last week, USPTO Director David Kappos, was before the House of Representative’s Subcommittee on Intellectual Property, Competition and the Internet  and Committee on the Judiciary on the hot topic of “prior user rights” defence following singing into law of the Leahy-Smith America Invents Act (AIA) last September.  Director Kappos’s testimony can be read here.  Of the numerous changes to the US patent law system, not least of which was the change to the first-to-file system, one of the key changes was the expansion of “prior user rights” defence to patent infringement.  Third parties who can show that they were commercially using an invention for at least one year prior to the filing date of a patent application can benefit from the “prior user rights” defence.  Kappos stated that the expansion of this defence was “pro-manufacturer, pro-small business, and, on balance, good policy."

Prior to the AIA, US law provided for prior user rights but it was limited to patents for methods of doing or conducting business (thus, it was of little utility).  The AIA extended the prior user rights defence to cover all technologies, not just business method patents. However, the AIA also provides for limitations and exceptions to the prior user rights defence.  There was much legistative debate and concern about the impact of the expanded user rights defence on the patent system and innovation.  As such the USPTO conducted a study on the operation and impact of the prior user rights (including fun little comparison between some European countries, including the UK), as well as its relationship with a first-to-file patent system.  Following public hearings and comments, the USPTO made several findings and recommendations – all basically saying that the expansion of the prior user rights defence was unproblematic.  Director Kappos concluded saying:    

The expansion of prior user rights - not as
bad for America;s (economic) health than
some might have thought?

"The prior user rights defense as set forth in the AIA is narrowly tailored and not expected to be asserted frequently in patent litigation.  There is no substantial evidence that prior user rights will negatively impact innovation, start-up enterprises, venture capital, small businesses, universities or individual inventors.  The USPTO will, however, reevaluate the economic impacts of prior user rights as part of its 2015 report to Congress on the implementation of the AIA when better evidence as to these impacts might be available.

A prior use defense to patent infringement, and specifically the one set forth in the AIA, is neither unconstitutional nor unlawful, as the defense is consistent with the Constitution and Supreme Court precedent recognizing that trade secret law and patent law can and do legally co-exist in the United States as they have for hundreds of years. Trade secret protection is of considerable value to United States businesses and the United States economy, and as such, there are compelling economic and policy justifications for providing a prior user rights defense to patent infringement.  Providing a suitably limited prior user rights defense in a first-inventor-to-file system is an appropriate response to an inherent inequity such a system creates as between an earlier commercial user of the subject matter and a later patentee.  Additionally, there is a strong preference that United States businesses be afforded the same advantages in terms of prior use protections in the United States that their competitors enjoy abroad. "

It should be welcomed that the USPTO and Congress are engaged with this issue and are conducting such analyses, but wouldn't it have been better had this report been published before the AIA was enacted, not retrospectively?  For debate about the problems or lack of problems with prior-user rights see this article here in Patently-O.