Letter from AmeriKat: 8,000,000, 3, 1970s, 1, $3,340, #24 - US IP News in Numbers

For international travellers coming from the U.S., you will usually find yourself in one of the many Hudson News stores doting our nation's airports pacing the magazine rack for a selection of entertaining flight-fillers. The AmeriKat's favorite staples that are crammed into her already overstuffed Coach carryall, are The Economist, US Weekly (so bad, its good), National Geographic, Psychology Today, Rolling Stone and, front-seat pocket favorites - Time and Newsweek. These are usually the first magazines the AmeriKat starts devouring even before take-off and by the time the plane is taxing to the runway, she has made it to her favorite page - the page with that week's news expressed in numbers. Sadly the AmeriKat is busily stranded in London so the joy of airplane literature have escaped her this summer, but in a tribute to her favorite travel reading she has taken a glossy page out of US news magazines and has put this week's US IP news in figures. (picture, left - the AmeriKat snuggling under her airplane reading)

When IP news is a f(x) of n.....

8,000,000 - The number of patents issued by the USPTO on 16 August 2011 when it granted a patent to Second Sight Medical Products for a product called Argus II - a visual prosthesis apparatus that enhances visual perception for people who have become blind due to outer retinal degeneration. Argus II uses electrical retina stimulation to produce the visual perception of patterns of light. The Argus II is starting its clinical trials in the US and has obtained marketing approval in Europe. President and CEO of Second Sight, Robert Greenberg, stated that "This patent protection and significant federal support for innovation have already played key roles in creating nearly 100 US jobs at our company. Once the Argus II has FDA approval in the United States, we expect to create hundreds of more jobs over the next several years..." IP innovation and protection = economic stimulus, is plainly the message from the USPTO.

75 years - the number of years that it took the USPTO to reach 1 million granted patents in August 1911 when it issued to Francis H. Holton of Akron, Ohio a patent for his improvement in vehicle tires to make them more durable and puncture resistant.

6 years - the number of years that it took the USPTO to go from 7 million patents granted to 8 million patents. The 7 millionth patent was issued to John P. O'Brien for a strong, biodegradable polysaccharide fibers he invented for use in textile applications.

1 - The number of Abercrombie & Fitch articles of clothing the AmeriKat owns - which is far less than the cast of Jersey Shore. IPKat readers may have caught a glance at last week's story that frat-boy favorite apparel retailer, Abercrombie & Fitch, was reported to have offered to pay Michael "The Situation" Sorrentino of MTV reality show Jersey Shore to never where its clothes on air (see A&F press release here) as the "association is contrary to the aspirational nature of our brand, and may be distressing to many of our fans." Many are calling the press release a publicity stunt for a "slow day in August" right before the back-to-school buying begins. However, its interesting to note that a press release about an allegedly detrimental impact on brand reputation was created to increase just that - brand reputation....ahhh, the fickle world of brands!

$3,340 - The cost of the genetic test for breast cancer risk that was subject of Myriad Genetic's recent success in the US Court of Appeals for the Federal Circuit when the court upheld the company's patents on two human genes - BRCA1 and BRCA2 (picture, right - pink ribbon, (c) Science 2002). The sequencing of the genes tests for mutations that increase the risk of a woman getting breast and ovarian cancer. A recent New York Times article reports that despite its recent legal success some commentators are suggesting that the test has been surpassed by newer DNA sequencing techniques which are faster and cheaper. This, the article reports, may be a sign of trouble to come, notwithstanding that Myriad's main patents do not start expiring until 2014. However, Myriad has stated that the company has time to start adapting to the new technology before its patents expire and in the future will be relying more on trade secret protection than on patents. Myriad's CEO Peter D. Meldrum in January stated, in reply to a question about whether Myriad would begin enforcing their European patents, including for BCRA1 and BCRA2, against companies using the genes in tests, that "[i]f I had my druthers, I would not want to go into a new market in a heavy-handed fashion, trying to enforce patents." Instead, the company is reported to begin relying more on its "vastly superior information."

The patent system is premised on requiring public disclosure of inventions - you get to enjoy your monopoly, as long as the rest of us can see and build upon your scientific step for the betterment of society (as long as the use is non-infringing during the limited time you are enjoying your monopoly). Trade secrets, however, are all about keeping information out of the public domain for an indefinite time. Should information, such as the information Myriad has about which of the thousands of mutations in the two genes raise the risk of getting cancer, be kept out of the public domain? If companies with valuable medical information are relying on trade secrets rather than patents, this could have serious impact on the progress of science (Copyright Clause) and in this case, medical research. If this begins to be a trend, are we to blame failings in our patent systems and protections or the desire of companies to maintain a monopoly on proprietary information and technology for as long as possible? Or is this just the same question? Are there public policy arguments for demanding that such information be disclosed, and if so, how does that square with the Anglo-American philosophy of commoditizing property (and IP)for financial gain? Is it only right that a company should use whatever legal means it has to protect its investment and research, regardless of any public policy or ethical considerations? Similiar questions are posed by the New York Times article and by Dan Vorhaus in his blog the Genomics Law Report.

$353 million - the amount of money reported to have been generated by the breast cancer test which accounted for Myriad's $402 million revenue in the year ending June 2011.

3 - The number of grape growers that have successfully claimed that the US government can be joined to a patent invalidity claim. The three Californian grape growers have claimed that a California trade group, The California Table Grape Commission, licensed invalid patents from the US Department of Agriculture(USDA). The USDA owned three patents issued under the Plant Variety Protection Act for grapevines that produce table grapes - Sweet Scarlet, Scarlet Royal and Autumn King. The USDA licensed its rights in the three patents to the California Table Grape Commission, a California state agency. The Commission was established to promote the state's table-grape industry and is funded by a tax levied on each box of table grapes produced in California. The Commission sublicences the patents and under the licences is entitled to retain 60% of the royalties with the remaining 40% going to the USDA. The Commission authorized three nurseries to serve as the exclusive distributors of the patented varieties. The ultimate growers of the grapes have to sign a "Domestic Grower License Agreement" which requires the growers to pay a royalty, prohibits the growers from propagating the plants, and permits the Commission to order the destruction of the purchased plants if the Commission believes the growers are violating the license.

Three grape growers, who purchased the grapevines covered by the patents signed the licence agreement and paid the licensing fee. They then brought a claim for declaratory judgment challenging the patents for invalidity for lack of novelty and that the Sweet Scarlet (picture, left) patent is unenforceable because of alleged inequitable conduct during prosecution at the USPTO. The US Court of Appeals for the Federal Circuit issued a decision last Wednesday that the Administrative Procedures Act ("APA")enables the 3 grape growers to "pursue equitable relief against the USDA on its patent law claims." The 3-judge panel ruled that the USDA could be joined as a party to the claim because the licensing agreement between the USDA and the Commission did no transfer all the rights in the patents, as such the USDA was a necessary and proper party to the grape grower's patents claims. Judge William Bryson, giving the opinion of the Court, held that an amendment to section 702 of the APA "recognizes a right of judicial review for 'agency action'" in that it waives "sovereign immunity for actions seeking relief other than money damages against federal agencies, officers, or employees" - such as the equitable relief sought by the grape growers in their dedicatory judgment for patent invalidity. As such, the grape growers could join the USDA in their action. Allegedly invalid patents are also curse for the US government it seems....

#24 - The ranking given to Girl Talk's album, Feed the Animals, by Rolling Stone in 2008. Girl Talk, the one man band of Gregg Gillis, a former biomedical engineer turned musician, is known for weaving hundreds of samples of recorded music and sounds into frenetic tracks which he releases for free or a la Radiohead model. A recent article in the Huffington Post this week explains why Gillis uses this model when he releases his work under the Illegal Art label. Also this week, EMI won a partial victory in a copyright lawsuit against online music storage site MP3tunes who was found liable for contributory infringement when it failed to remove unauthorized songs from its website after being put on notice. District Judge William Pauley however refused to rule on whether MP3tunes employees were liable for copyright infringement in downloading 171 songs.

1970s - The decade when late sportscaster Myron Cope coined the term "The Terrible Towel" (watch the story here). The Terrible Towel, a yellow and black cloth which is swung about in the air by the Pittsburgh Steeler's (an American football team) fans is the subject of a trade mark infringement suit. The lawsuit brought by the Steelers and Allegheny Valley School (who owns the trade mark and is where Cope's autistic son lived) against Eugene Berry Enterprise alleges that that company filed a trade mark application in May for THE TERRIBLE TOWEL and has been selling shirts with the mark. Eugene Berry Enterprise has been asked to withdraw its application.

Update from AmeriKat: Louboutin sees red after injunction rejected against YSL

The AmeriKat has previously reported about the on-going battle between Christian Louboutin and Yves Saint Laurent over the use of a red sole on a pair of Yves Saint Laurent shoes. Louboutin's iconic footwear are identified on the street and red-carpet by their flash of red lacquer sole - a colored sole so famous that the shoe designer owns a US trade mark for red soles on the bottom of footwear. The USPTO granted the trade mark (Reg 3,361,597) on 1 January 2008 for "women's high fashion designer footwear" with the verbal description accompanying the visual depiction as follows

"The color(s) red is/are claimed as a feature of the mark. The mark consists of a lacquered red sole on footwear. The dotted lines are not part of the mark but are intended only to show placement of the mark."

Louboutin sued Yves Saint Laurent for trade mark infringement over the red sole and petitioned the court for an injunction to prohibit Yves Saint Laurent from selling the offending shoes, including YSL's models - Tribute, Tribtoo, Palais and Woodstock.

However, last week Judge Victor Marrero denied the injunction. He stated that

"Louboutin‟s claim would cast a red cloud over the whole industry, cramping what other designers could do, while allowing Louboutin to paint with a full palette."

The AmeriKat has had not had time to fully consider Judge Marrero's decision on the merits of the injunction, but has set out some interesting passages below. By way of a reminder, however, to obtain a preliminary injunction, Louboutin must have established (1) irreparable harm and (2) either (a) likelihood of success on the merits, or (b) sufficiently serious questions going to the merits of its claims to make them fair ground for litigation, plus a balance of the hardships tipping decidedly in [its favor] (Monserrate v New York State Senate (2010)). It was the second part of the test that Judge Marrero's decision focused. As expected, Judge Marrero went through the case law on color and secondary meaning (see AmeriKat post here). He also illustrated the question before the court with an 'interesting' leap into the world of Impressionist and Cubist painters:

"The narrow question presented here is whether the Lanham Act extends protection to a trademark composed of a single color used as an expressive and defining quality of an article of wear produced in the fashion industry. In other words, the Court must decide whether there is something unique about the fashion world that militates against extending trademark protection to a single color, although such registrations have sometimes been upheld in other industries.

To answer this question, and recognizing the fanciful business from which this lawsuit arises, the Court begins with a fanciful hypothetical. Suppose that Monet (picture, right), having just painted his water lilies, encounters a legal challenge from Picasso, who seeks by injunction to bar display or sale of those works. In his complaint, Picasso alleges that Monet, in depicting the color of water, used a distinctive indigo that Picasso claims was the same or too close to the exquisite shade that Picasso declares is “the color of melancholy,” the hallmark of his Blue Period, and is the one Picasso applied in his images of water in paintings of that collection. By virtue of his longstanding prior use of that unique tinge of blue in context, affirmed by its registration by the trademark office, Picasso asserts exclusive ownership of the specific tone to portray that color of water in canvas painting.

Should a court grant Picasso relief?"

Uhh......The AmeriKat is pretty sure that her fellow female feline, Merpel, will have some things to say about this, but understands what Judge Marerro was trying to do in illustrating the similarities between designer and painter who

"strive to please patrons and markets by creating objects that not only serve a commercial purpose

but also possess ornamental beauty."

The illustration goes to show that one's use of color in a field commerce which inhabits the world of art and design can not (and should not) be easily protected. He stated:

"No one would argue that a painter should be barred from employing a color intended to convey a basic concept because another painter, while using that shade as an expressive feature of a similar work, also staked out a claim to it as a trademark in that context. If as a principle this proposition holds as applied to high art, it should extend with equal force to high fashion. The law should not countenance restraints that would interfere with creativity and stifle competition by one designer, while granting another a monopoly invested with the right to exclude use of an ornamental or functional medium necessary for freest and most productive artistic expression by all engaged in the same enterprise."

The AmeriKat understands the beauty of this philosophical and academic analogy, but the similarity between the two forms of art and commerce remain similar only in a vacuum. In the real world, fine art and fashion are treated differently in the eyes of the law. If fashion designs benefited from the level of protection afforded to their brothers in fine art by way of copyright, perhaps one could more easily extend this analogy - but the fact is that in the U.S. fashion designers have no protection for their design, save for the protection they can evoke by way of trade mark registration (such as Louboutin's registration) and use of copyright prints in their garments. But such a criticism from the AmeriKat of the analogy is more of a critique of the state of law in this area, not of the interpretation of the present laws.

Although Judge Marrero acknowledged that Louboutin had, in applying red colored lacquer to the soles of his shoes, created a product "so eccentric and striking that it is easily perceived and remembered", he nevertheless that

"Louboutin's claim to 'the color red' is, without some limitation, overly broad and inconsistent with the scheme of trade mark registration established by the Lanham Act. Awarding one participant in the designer shoe market a monopoly on the color red would impermissibly hinder competition among other participants. YSL has various reasons for seeking to use red on its outsoles -- for example, to reference traditional Chinese lacquer ware, to create a monochromatic shoe, and to create a cohesive look consisting of color-coordinating shoes and garments.

Presumably, if Louboutin were to succeed on its claim of trademark infringement, YSL and other designers would be prohibited from achieving those stylistic goals. In this respect, Louboutin's ownership claim to a red outsole would hinder competition not only in high fashion shoes, but potentially in the markets for other women‟s wear articles as well. Designers of dresses, coats, bags, hats and gloves who may conceive a red shade for those articles with matching monochromatic shoes would face the shadow or reality of litigation in choosing bands of red to give expression to their ideas.

The effects of this specter -- the uncertainty and apprehension it generates -- are especially acute in the fashion industry because of its grounding on the creative elements discussed above. "

David Bernstein, Yves Saint Laurent's lawyer (and yes it appears to be the very same from the Bacardi battle reported here), stated that

"This was a trademark that never should've been issued...YSL has been using red since the 1970s, other designers have used red on the soles of their shoes. They aren't doing so to confuse people, but because it is a design aesthetic."

However, according to CNN, Harley Lewin for Louboutin stated that he has never received such support from fellow attorneys, law professors and the fashion industry telling him

"This [verdict] is an abomination. Tell your client to appeal."

In two days time on 17 August, the parties will meet for a case management conference where it is reported Lewin will announce Louboutin's appeal of the decision.

The AmeriKat knew there was going to be trouble with granting an injunction in this case. Even had Louboutin managed to get past the first and second hurdles of the test (the court did not consider the first hurdle re irreparable harm because Louboutin did not demonstrate that its red sole mark merited protection) it would have been a pretty tall task to try and come up with a form of an injunction that prevented the alleged harm without being overly broad. Prohibiting the sale of any red-soled shoe ("red" being the subject of the trade mark registration) would have been too broad, i.e. what red? Louboutin argued that the Court draw a designated range above and below the borderlines of Pantone No. 18-1663 TP or "Chinese Red" and declare all stripes of red within that zone forbidden to competitors. Judge Marrero did not like that suggestion as it would have had the effect of Louboutin appropriating even more shades of red than the one at issue. What form of injunction could Judge Marrero have ever granted without it being overly broad?

Judge Marrero's decision on the color red here

Pantone's 175 new colors here

Trooping of the Color here

A Lack of Color here

Letter from AmeriKat: Innovation Over Imitation

Last Sunday, the AmeriKat was recovering from a nasty bout of bronchitis. To cheer her spirits, she decided to grant herself a dose of pre-planned enjoyment in the form of live music. Wrapped up warm in a navy blue trench coat and various cashmere sweaters, she braved the incredibly fresh 'summer' skies to watch the acclaimed My Morning Jacket perform in the grandiose arena of Somerset House. The crystalline cry of the guitars, pulse-rattling base, and atmospheric harmonies melted many an audience member as the band waltzed through their set. When the first smoky chords of Wordless Chorus were played, the audience immediately geared themselves up to sing one of the most popular, and IP apropos, lyrics by the band:

"We are the innovators, they are the imitators."

The question of who is the innovator and who is the imitator is the perennial question for all intellectual property law, and this week's stories are no exception. (picture, above left - the AmeriKat asleep after the concert on one of the guitars)

Louboutin judge promises red-soles ruling on injunction soon

The Amerikat previously reported on the stiletto feud between Christian Louboutin and Yves Saint Laurent back in April when Louboutin sued Yves Saint Laurent for trade mark and trade dress infringement for selling shoes that allegedly bear the identical red soles that that have made Louboutin famous. Louboutin was granted a US trade mark in 2008 for its red-lacquered sole. Louboutin has claimed $1million in damages and has asked the court to grant a preliminary injunction against Yves Saint Laurent. (picture, right - the offending Yves Saint Laurent shoe)

During a hearing last Thursday, US District Judge Victor Marrero stated that he would decide on whether to grant Louboutin's request for a preliminary injunction "as soon as possible".

Following the hearing Harley Lewin, one of Louboutin's lawyers, stated that

"This is the lifeblood of this company, the red sole. When people see the red sole on the street they think Louboutin."

The AmeriKat has previously regaled readers regarding the origin of the Louboutin red sole (here) which was introduced as a mark of the shoe brand in 1992. Following the court filing, Yves Saint Laurent hit back arguing that Louboutin had no monopoly over the red-colored shoe soles and that similar applications were commonplace before Louboutin's use (picture, left - a Louboutin). The defence filed by Yves Saint Laurent stated:

"Red outsoles are commonly used ornamental design feature in footwear, dating as far back as the red shoes worn by King Louis XIV in the 1600s and the ruby red shoes that carried Dorothy home in The Wizard of Oz. As an industry leader who has devoted his entire professional life to women's footwear, Mr. Louboutin either knew or should have known about some or all of the dozens of footwear models that rendered his sworn statement false."

Even so, the lack of innovation does not mean that Louboutin's lawsuit would fail. Like with EU trade mark law (dare the AmeriKat say there is such a thing), a sign that is otherwise common place or generic can acquire distinctiveness through use and be protected by trade mark law. The same can apply for color trade marks and trade dress in the U.S. as long as the color has acquired a "secondary meaning" and is non-functional, i.e. the color does not function except as an indication as to source (Qualitex v Jacobson) Ask any shopper on Fifth Avenue and the AmeriKat thinks one could quickly come to the conclusion that the primary function of the red-sole is that of indicating the source of the shoe as being Louboutin - that or signalling to the poor masses that one can afford such a shoe. However, it does then become an interesting "chicken or the egg" type question. Does the non-functional indication of source by way of the red-sole give the shoes a aesthetic functional value or does the aesthetic functional value of the red-sole give the shoes a non-functional indication as to source? Or is that just asking the same question in a different way? (picture, above right - Sex and the City made Louboutins and their red soles a house hold name)

Such questions and debates are not presently before the court, however (see New York and WWD's report about the debate here). The first hurdle is for Judge Marrero to decide whether or not to grant Louboutin's injunction. During the hearing, it was reported that the judge repeatedly asked Louboutin's counsel about the design elements of the shoe, including the shade of red on the sole, in order to determine what would and would not be trade mark infringement for the purposes of granting an injunction. (picture, left - various shades of red, but which one is infringing?)

Yves Saint Laurent's lawyer, David Bernstein, emphasized the potential danger of an over-wide injunction stating that

"We don't know what we are and what we are not allowed to do. Even Mr. Louboutin does not know. "

The AmeriKat is quizzical about the injunction issue. Where is the irreparable harm? Yves Saint Laurent have been able to quantify the number of sales of the allegedly offending shoe. Does it warrant an injunction at this stage? Or is the heavy-hitting approach with the injunction just fodder for the media so Louboutin can send the message that they are serious about those who use red-soles on their shoes? We await Judge Marrero's decision...

We are the innovators, screams re-introduced IDPPPA fashion copyright bill

Like with patent reform, the AmeriKat was hit with another strong sense of IP deja vu when two weeks ago, Representative Bob Goodlatte (R-VA) (picture, right) reintroduced the Innovative Design Protection and Piracy Prevention Act (IDPPPA) - not a very fashionable acronym. The bill would give three years of copyright protection to new, innovative designs with the hope that such protection would stem off the flood of fast-fashion copies.

After Rep. Goodlatte's introduction, Proenza Schouler designers Lazaro Hernandez and Jack McCollough testified before members of Congress arguing that the IDPPPA was necessary for young designers. Hernandez, one of several designers to have testified before Congress on this issue, explained the frustration that designers, like Proenza Schouler, encounter when after growing a company from scratch one sees its signature piece copied en masse by retailers. The signature piece Hernandez was referring to is their PS1 satchel. Readers may recall a recent AmeriKat report regarding the PS1 (picture, below) and a similar bag marketed by Target (see report here).

Without useful IP tools like trade mark patterns or fixtures adorning their bags, the Proenza Schouler bags are feats of design - not branding. Fashion designs are not afforded protection in the U.S., as they are in the U.K. and EU, and thus the investment of time and money in this work can frustratingly be lost due to rampant copying. Hernandez told Congress:

“Our designs are born in our imagination. We create something from nothing at all,...By far the majority of apparel is based on garments already in the public domain. Nothing about the proposed legislation will change that. Nobody will ever be able to claim ownership of the T-shirt or pencil skirt. This bill is intended to protect only those designs that are truly original."

The IDPPPA, now in its second incarnation, has a higher standard of proof for designers than the previous bill. Besides demonstrating that a design is new and innovative, designers also now have to show that a copy is "substantially identical" rather than "substantially similar" and that the similarities between the two are in the construction and not surface decoration such as color and patterns. All of this is feeling a bit "UK Unregistered Design Rights" to the AmeriKat - noooo-ooooo......!

Irrespective of the content of the bill, the mere passage of such fashion legislation would be a symbolic victory for sections of the fashion industry who have been lobbying with the Council of Fashion Designers of America for this legislation for the past five years. However, with the US government dealing with the debt ceiling, it is unlikely that there will be much enthusiasm for concentrating on this legislation, and even on the more-publicized patent reform, until the Fall.

For more information see the report in the New York Times and Washington Post.

And now for something different...patents (sort of)

The AmeriKat picked up an issue of The Spectator last week and read with interest a recap of this year's commencement speeches in the U.S. The tradition, which sadly does not extend itself to well to the British higher education system, is where a usually famous individual gives an inspirational/funny/serious speech to the graduating class. The AmeriKat was interested to note that this year USPTO Director David Kappos gave a Commencement address at UC-Davis's College of Engineering graduation (picture, left - David Kappos giving his speech). No mention of the word "intellectual property", but there were 15 mentions of the word "innovate" signalling the stated desire of the US government to spur innovation to kick-start a lagging economy. Kappos stated:

"Ladies and gentleman—with the degrees conferred upon you today, you will lead the course of history by innovating & implementing; and by building & making. Innovation bridges cultures through new channels of communication; innovation renews hope in villages plagued by disease; innovation stems the tide of environmental degradation; innovation builds new industry; and innovation affords a young mind the chance to dream and the chance to make those dreams come true."

Innovate, ladies and gentleman, do not imitate.

Cloud-to-Cloud lightning hits Apple in the States

The IPKat's friend, Queen Mary's very own Cloud-watcher Kingsley Egbuonu, has been gazing at the iClouds and pondering on the prospect of a perfect iStorm.  The particular object of his interest is the clash between a Titan and a Tiddler, the former being Apple, Inc and the latter being iCloud Communications.  Let Kingsley take up the story:

"The facts -- and the allegations 

On 9 June 2011, Arizona-based company iCloud Communications (iCC) filed a complaint in the District Court of Arizona against Apple, Inc, seeking 

“preliminary and permanent injunctive relief, monetary relief, and attorneys’ fees based on (i) federal unfair competition and false designation of origin in violation of § 43 of the Lanham Act, 15 U.S.C. § 1125 (a); and (ii) Arizona state trade mark infringement, unfair competition, and injury to business reputation in violation of Arizona common law” 

for the use of the its trade mark, iCloud.

iCC, formed in 2005, was a provider of inter alia, cloud computing services and products, computer telephony (telecommunications) – [contrast this to “25 years expertise and track record in voice-over-IP solutions to its customers” on its webpage].

In support of its complaint, iCC claims to have substantially invested in the long and extensive use of the iCloud marks (see page 4 of the complaint) at home and abroad, via various marketing channels as well as over $550,000 in infrastructure. With customers in North America, South America, Europe and the Middle East, it says that (prior to June 6, 2011) it established

“…significant goodwill and valuable rights in and ownership to the iCloud marks in connection with computer telephony and electronic data transmission and storage services”.

iCC alleges that, despite Apple’s claim to use the iCloud platform to store music, photos, apps, calendars, documents etc and to push them wirelessly them to all devices, its recent trade mark filings at the USPTO and OHIM show that: 

“the goods and services with which Apple intends to use the “iCloud” mark are identical to or closely related to the goods and services that have been offered by iCloud Communications under the iCloud marks since its formation in 2005”.

More importantly, iCC claims that as a result of the marketing and media coverage of Apple’s iCloud,

“the media and the general public have quickly come to associate the mark “iCloud” with Apple, rather than iCloud Communications” and “Apple was aware of or was willfully blind to iCloud Communications’ use of and rights in the iCloud marks”.

iCC began its convincing tale of Apple’s trade mark infringement history from the 1970s till 2010, including its trade mark filing strategy by which apparently, in its view (and probably in the view of many of us) 

“Apple is attempting to use a foreign jurisdiction’s laws to gain priority for its U.S. registrations while circumventing the notice and publication requirements for trademark applications filed here in the United States with respect to “intent-to-use” applications”. 

iCC also claims that Apple’s acquisition of the iCloud mark from Xcerion appears to have been “in gross” and thus invalid. A further argument goes that Apple’s launch and continued use of the iCloud mark caused irreparable harm to its business reputation and goodwill. Indeed, it claims to have received enquiries from existing and prospective clients regarding whether it is now economically associated with Apple, adding that such confusion and subsequent damage to its reputation will continue if Apple is not ordered to stop using the iCloud mark. iCC therefore seeks the following relief:

• A preliminary and permanent injunctive relief against Apple’s use of the iCloud mark (identical or similar) in telecommunications services or its marketing, throughout the United States and the world;
• Delivery up of the alleged infringing articles and account of profits;
• An invalidation of the U.S. Trademark Reg. No. 3,744,821 as having been abandoned due to its “in gross” transfer to Apple;
• Various damages plus interest, and
• Transfer of the domain name, iCloud.com.

Kingsley's comments:

It is trite to say that registration is the best form of protection and that all brand owners should endeavour to monitor their trade marks, whether registered or unregistered. With this in mind, it’s quite amazing that Apple is now being dragged to court while another party made use of this same mark in question for a number of years under the noses of iCC.

Perhaps, it is unfortunate that Apple courted publicity with its iCloud.com acquisition, which may also (in the short term) pose a cybersquatting headache for its team. Ultimately, the question at trial will be that of likelihood of confusion.

Apple’s “i” branding strategy/campaign began at the launch of the iMac in 1998 when Steve Jobs successfully repositioned its products as being personal, beautiful, standalone, fast and, most of all, seamlessly able to utilise the internet . Since then, we’ve witnessed a range of Apple products and services under brands with the prefix, “i”, such as iTunes, iPod, iPhone to name but a few.

To be fair on Apple, a web search for “iCloud” while I was writing this earlier piece displayed no results (at least within the first two pages) relating to iCloud Communications.

In consideration of the above, here are some little questions in search of comments:

1. Are there limits to clearance searches (both for registered and unregistered marks)?
2. Should Apple now review its “i” branding strategy or is this just a knee-jerk reaction? and
3. Has Apple truly educated its consumers to this “i” effect as a distinguishing factor to negate any claims for confusion?
4. Is the alleged unlawful act wilful?
5. Is there a lesson to be learned in respect of seeking trade mark registration covering vast class headings?".

For further reading see PC Mag.com, 11 June 2011, here.

Letter from Amerikat: Happy Bunny Day!

The AmeriKat has been enjoying the warmth of the sunbeams that have danced across her numerous files, spreadsheets and bundles this past week. The warmer weather brings out the summer clothes and English smiles, but also insects. Almost this time last year the AmeriKat was in the throws of a biblical scale warfare with swarms, floods, and drought inflicting her house. She had hoped that the spring and summer of 2010 was a blip in the calendar of insect infestations she would have to deal with, but alas, with the warmer weather the ants are back. She has now found the gap in her floorboards were the pesky insects have been arriving from, but like plugging a hole in a leaky boat, the water will always find somewhere else to spill in from. So instead of lounging out in the sun, dying eggs, eating chocolate and drinking lemonade on Easter Sunday, she is instead attacking any small six-legged body racing across her floor. (picture, left- the AmeriKat inspecting an alleged Easter bunny) Happy Easter from the AmeriKat!

Bratz Beats Barbie with $89 million jury-award

From pesky six-legged insects, to perky two-legged dolls. Last week a Californian federal jury issued their verdict in favor of Bratz (picture, right) in the now-famous copyright and trade secret battle between Barbie and Bratz (see previous reports here). Barbie's maker, Mattel, had alleged that the maker of the Bratz doll - MGA Entertainment- stole the idea for the Bratz doll by entering into a deal with the designer of the doll, Carter Bryant, who had previously worked for Mattel. Mattel subsequently filed a lawsuit for copyright infringement and trade secret violations, while MGA alleged unfair competition and also trade secret theft. This case was heard by first by Judge Larson who ruled in favor of Mattel, but that $100 million verdict was overturned on appeal. The Court of Appeals for the Ninth Circuit held that the federal court judge had erred in ruling that Mattel automatically owned the designer's sketch of the doll under the terms of the 'Employee Confidential and Inventions Agreement' between Mattel and the designer and remanded the case back to the federal court.

Bryant's employment agreement had assigned all rights, titles and interests in any such inventions, patents and copyrights to Mattel. The contract defined "inventions" as including, but not limited to, discoveries, improvements, processes, designs and know-how. The district court had held that this agreement assigned Bryant's ideas to Mattel despite 'ideas" not being included on the list or mentioned anywhere else. Mattel argued that the list of examples in the contract were illustrative not exclusive, but the Court held that "ideas" are "markedly different from the list of examples including discoveries, improvements and designs" (People ex rel Lungren v superior Court (1996)). (picture, left - no amount of law school could prepare Lawyer Barbie for the cruelty of a jury verdict) The Court of Appeals stated that the contract was arguable capable of either including or not including ideas, but that the trial court did not recognize this ambiguity and thus did not examine the extrinsic evidence before it on this issue.The Appeals Court concluded that the agreement could be interpreted to cover ideas, but that the text of the agreement did not compel that reading and thus remanded the issue back to the district court. They stated that:

"Designs, processes, computer programs and formulae are concrete, unlike ideas which are ephemeral and often reflect bursts of inspiration that exist only in the mind."

At the end of last year, Mattel and MGA applied for summary judgment on the issue of copyright infringement for the first and second generation Bratz dolls. Judge Carter granted summary judgment in MGA's favor in respect of the second generation Bratz dolls, but the remaining issues, including breach of copyright for the first generation of Bratz dolls and the breach of confidence/trade secret claims, remained for trial. The court was tasked with determining whether the Inventions Agreement entitled Mattel to Bryant's ideas for names like "Bratz" together with sketches that he created outside working hours. Also, ripe for ruling was MGA's trade secret claim against Mattel through a campaign of corporate espionage, whereby MGA alleged that Mattel's employees gained access to regulated private MGA toy showrooms by deceptive means.

On Thursday, a federal court jury in Santa Anna, California, found in favor of MGA and following the Court of Appeals opinion held that Mattel did not own the sketches or ideas for the Bratz dolls. The jury verdict also held in favor of MGA's counterclaim that Mattel had willfully misappropriated trade secrets and slammed Mattel with a $88.5 million damages price tag. A slight saving grace, albeit an insulting one, was that the federal jury also found that MGA had interfered with Bryant's contract with Mattel and issued Mattel a $10,000 award for the interference.

Although the battle may not be over with reports that Mattel will file a motion for a retrial within two weeks and will reserve the right to appeal, the case does remind everyone of the importance of carefully drafted employee contracts, as well as taking the business decision to litigate over seven or so years even if it costs your shareholders $400 million (see MSN money report here). However, if Mattel's intention was to quash the rival dollmaker, the litigation may have just done that. MGA's CEO, Isaac Larian is reported as saying that the Bratz brand "will never be the same level it was before."

The IPKat will keep you posted on any further developments in the case.

Tony Duquette seeing Spots with J.Crew sweater

Tony Duquette, Inc, the proprietor of the various IP rights associated from the late namesake artist and designer filed a trade mark infringement suit against clothing retailer and AmeriKat favorite, J.Crew in a New York federal court last week. For those not in the know, the late Tony Duquette was a Tony award-winning designer and artist who counted Elizabeth Arden and the Duke and Duchess of Windsor as clients. Tony Duquette allege that J.Crew has infringed the DUQUETTE name and trade mark by producing and selling a sweater with the style name the "J.Crew Duquette Factory Leopard Print". The complaint alleges that J.Crew knowingly and willfully used the DUQUETTE trade mark in connection with their leopard print sweater because of Duquette's alleged unique association with leopard prints, in particular with woven and printed textiles including carpets and tapestries. (picture, left - a fabric design by Duquette) The AmeriKat is seeing more and more product descriptions that use trade marked words become the subject of trade mark disputes. In the UK, one can always invoke the fun game of whether the product description is being used as a function (of many, many functions) of a trade mark. In the U.S., the case is arguably little more straightforward.

Albeit having not read the complaint, the AmeriKat's gut instinct is that there is not enough here to satisfy the test of trade mark infringement. i.e., namely where is the confusion and whether Duquette has enough reputation in his name associated with leopard print textiles to claim dilution? Further live trade mark registration for DUQUETTE the AmeriKat found on USPTO is for tapestries of textiles, carpets and rugs - not apparel (Reg No. 3863326). The AmeriKat perused J.Crew's website today and found one leopard print sweater which is called the "Wild spots cardigan" - a very un-J.Crew product name - so her guess is that J.Crew has already taken steps to change the name of the contentious product. The Amerikat predicts this lawsuit to die a quickish death, just like the animal print trend of last season.

Apple v Samsung v Apple v Samsung v Apple....

Last year the AmeriKat was constantly up-to-date reporting on the latest of the patent mobile phone wars. She has now officially lost track, except for the latest of the battles now between Samsung and Apple. Apple sued Samsung two weeks ago in California federal court for trade dress, design patent, trade mark and patent infringement against Samsung's Galaxy line of smartphones and tablets. Apple allege that Samsung's products are copies of the iPhone and iPad designs including the "icons with the rounded corners."

The incestuous ties of the smartphone and tablet manufacturers and retailers are felt in this case. In 2010 Samsung earned a reported $5.7 billion revenue from Apple by way of their purchase of Samsung semidconductors. Tim Cook, Apple's CEO, told the Wall Street Journal that Apple is

"Samsung's largest customer, and Samsung is a very valued component supplier to us, and I expect the strong relationship will continue. Separately from this, we felt the mobile communication division of Samsung had crossed the line, and after trying for some time to work the issue, we decided we needed to rely on the courts."

The litigator in the AmeriKat sensed a nice little bargaining chip for Apple in this suit, however not to be uncharacteristic in this type of litigation Samsung then "countersued" Apple last week, but not in the U.S. Samsung filed patent infringement lawsuits against Apple in Korea, Japan and Germany alleging violations of patents filed in each of those jurisdictions. The allegedly infringed patents involve "transmission optimization and reduction of power usage during data transmission, 3G technology for reducing data-transmission errors and a method of tethering a mobile phone to a PC to enable the PC to utilize the phone's wireless data connection." The speed in which these lawsuits were filed indicate that Samsung may have been preparing itself for this counter-attack for sometime.

This latest chapter in the mobile patent war saga again demonstrates that when it comes to litigation surrounding smartphone technology, the best defence that is repeatedly being employed by parties is that of pursuing offensive litigation strategies on a global level. Whether or not that will prompt the parties to settle sooner is not a certainty, but the more complicated and more jurisdictions in which a company has to battle, the more attractive it becomes to resolve the dispute before litigation costs rocket and stated commercial relationships are massively affected.

Letter from AmeriKat: From Sea to Shining Sea

The AmeriKat was travelling again this past week. Irrespective of the past 25 years of frequent flying transatlantic-ally, continentally, transpacific-ally, and more, she is always surprised to find herself in a completely new location after seemingly no time at all. Leaving behind one established life and role and trading it in for a new role, set of contacts and friends has always given the AmeriKat a bit of a thrill. She can discard her "American lawyer in London" role when she steps off the plane in Dallas and just be someone welcomed home by immigration officials. Entering immigration in other ports her role is constantly transformed by a stamp in the passport to tourist, visiting family, attending a conference, here for business, or "living and working here". The only constant in these travels, from country to country and coast to coast, is her trusty Coach luggage, who has seen her across hundreds of thousands of miles, over-head bins and immigration authorities and is the subject of her first story this week.

Jo-Ann Fabrics sued for infringing fabric by Coach

In most isolated strip malls in U.S. cities from sea to shining sea, usually in between a dry-cleaners and a cell-phone retailer, is a Jo-Ann Fabrics where soccer-moms, crafters, and all in between go to purchase a multitude of fabrics, zippers, buttons and threads. Last Monday, Jo-Ann Fabrics was sued for trade mark, trade dress and copyright infringement in Chicago federal court by New York-based high-end leather goods manufacturer and AmeriKat favorite, Coach. Coach is complaining about a fleece fabric being sold by Jo-Ann Fabrics in store and on-line which is infringing Coach's signature "C" trade mark, associated trade dress rights and copyright in the signature "C" trade mark design (picture, right). Coach is asking the court for $2 million per each infringing mark, additional damages, attorney fees, and an injunction restraining future sales of the infringing product.

The "C" trade mark and insignia is on several of Coach's signature lines of bags, wallets, belts, shoes, hats, scarves and the lining therein and was registered as a U.S. trade mark in September 2002. You can even spot the AmeriKat in Holborn by the violet Coach scarf with the trade mark double "C" pattern that she carries on her Coach bag. However, the "C" insignia and pattern is a prime target for counterfeiters and counterfeit Coach bags (see AmeriKat report on previous action taken by Coach in Chicago) and the market is rife with copycats. According to the complaint Coach sells more than $3 billion products annually and has filed more than 500 trade mark infringement suits since 2010.

According to the complaint the fabric (picture, left) was designed and supplied to Jo-Ann Fabric by the named co-defendant, Feldman Co. and together with Jo-Ann Fabric are accused by Coach of trying to benefit from the "incalcuable goodwill" associated with Coach's C trade mark by selling the allegedly infringing fabric. Coach also argue that consumers will be confused as to the source of the fabric - the AmeriKat does not disagree, but there are some differences between the two fabrics. The "C"s on Jo-Ann's Fabric fabric are almost closed, looking more like "O"s than the clearly differentiated "C"s on Coach's fabric. The AmeriKat believes these differences not to be fatal and also believes that although a consumer would be able to recognize the difference after closer study of the fabric, initial interest confusion is nevertheless present.

Had the Amerikat seen the fabric in a Jo-Ann's Fabrics store her immediate reaction would first be "Why is Coach allowing their signature print fabric to be sold in Jo-Ann's Fabrics?"- a reaction that goes first to the pure dilution argument as argued by the complaint. Her next reaction would be one dealing with tarnishment of the mark - "Why is Coach allowing their signature print fabric to be printed on fleece and sold in Jo-Ann fabrics?". As far as the AmeriKat knows from the Coach range, they have never used their signature print on fleece - a fabric that is not associated with the up-market silk and leather ranges produced by Coach. Of note Jo-Ann Fabrics does sell fabrics with trade mark names and logos, namely for major league sports teams such as the New York Yankees and licensed fabrics from Disney. The AmeriKat does not anticipate this case going all that far and expects it to settle quite quickly given the similarity of the designs and strength of reputation in Coach's mark, however it acts as a warning to fabric buyers not to skate so closely to the edge of trade mark infringement.

Organic farmers sue Monsanto over genetically modified seeds

From Illinois to New York now. Two weeks ago, the Public Patent Foundation (PUBPAT), a non-for profit legal services organization based out of the Cardozo School of Law, filed a pre-emptive lawsuit in Manhattan federal court on behalf of 60 plaintiff family farmers, seed businesses and organic agricultural organizations against agricultural biotechnology company Monsanto challenging their patents on genetically modified seed. The lawsuit was pre-emptive in order to protect the class from anticipated patent infringement suits should their crops ever be contaminated by Monsanto's genetically modified seed. The AmeriKat has read about the 60 plaintiffs and noted that they included three farmers and seed producers from her home state of New Mexico, Chispas Farms, in Albuquerque, Jardin del Alma from Monticello and farmer Paul Romero from Espanola - a reminder that patent litigation does not just impact big businesses in Silicon Valley, but your neighbors.

PUBPAT's Executive Director and law lecturer at the Cardozo School of Law, Dan Ravicher, stated that the case

"asks whether Monsanto has the right to sue organic farmers for patent infringement if Monsanto's transgenic seed should land on their property. It seems quite perverse that an organic farmer contaminated by transgenic seed should be accused of patent infringement, but Monsanto has made such accusations before and is notorious for having sued hundreds of farmers for patent infringement, so we had to act to protect the interests of our clients."

For anyone who has seen Food, Inc., you will be aware about such legal issues involving Monsanto (click here for an excerpt of Food, Inc. about Monsanto) and the case of Percy Schmeiser. Genetically modified seed are alleged to contaminate and destroy organic seeds when they enter organic crops. Further, legally speaking, as with what happened with Schmeiser, when genetically modified seed enters a neighbouring crop and grows and/or cross pollinates with a farmer's crop the farmer can be held to be infringing the patent of that seed. PUBPAT is thus asking the court to declare that if organic farmers are contaminated by Monsanto's seed they need not fear of being threatened with patent infringement proceedings.

PUBPAT are also arguing that Monsanto's genetically modified patents for seeds are invalid because they do not meet the "usefulness" criteria under section 101 of the Patent Act. An invention is "useful" under section 101 if it is capable of providing some identifiable benefit. The complaint cites Justice Story's dicta in Lowell v Lewis (1817) which stated that inventions that are "injurious to the well being, good policy, or sound morals of society" are unpatentable. Ravicher's argument is that genetically modified seed has negative economic and health effects, and the promised benefits and usefulness of the seed, namely increased production and decreased herbicide use, are false. (picture, right - alfalfa)

Monsanto stated that the lawsuit was a "publicity stunt" and that Monsanto is committed to never suing farmers over the inadvertent presence of their genetically modified seed in their fields - (the AmeriKat wonders how does one even prove or disprove inadvertent presence of GM seeds?) Monsanto also stated that the validity of their patents was without question and supported by legal precedent. Monsanto stated that:

"The plaintiffs' approach is a publicity stunt designed to confuse the facts about American agriculture. These efforts seek to reduce private and public investment in the development of new higher-yielding seed technologies. This attack comes at a time when the world needs every agricultural tool available to meet the needs of a growing population, expected to reach 9 billion people by 2050. While we respect the views of organic farmers as it relates to the products they choose to grow, we don't believe that American agriculture faces an all-or-nothing approach."

The suit comes soon after the US Department of Agriculture (USDA) fully deregulated genetically modified strains of alfalfa. The USDA has also allowed farmers to plant genetically modified sugar beets without restrictions while it completes its Environmental Impact Statement (EIS) on that crop. The timing of the lawsuit suggests that the plaintiffs groups may feel that the time is right to take action before an increasing number of GM crops are deregulated by the USDA and before the alleged impacts of GM crops on organic crops become more serious.

The AmeriKat will be watching this fight with anticipation. Although it is unlikely that PUBPAT will be able to create much of a dent in such a powerful organization, like Monsanto, she is interested in any attempt to try to address the balance of power created by the patent system in the agricultural industry. But what do readers think - is it a hopeless publicity stunt, or are the invalidity arguments with merit?

The AmeriKat recommends this recent interesting article by Anna Lappe in The Atlantic about the issues surrounding GM, Monsanto and food production.

Byrne settles with Crist over Talking Heads song use

From New York, we fly south to Florida where Florida's former Governor Charlie Crist settled (picture, left) a copyright infringement lawsuit last week brought against him by Talking Heads' David Byrne after Crist used the 1985 Talking Heads's song "Road to Nowhere" in a political attack ad during his Senate campaign last year. Crist's campaign failed to seek permission from Byrne, the Talking Heads or Warner Brothers when they used the song in the Senate campaign video published on YouTube attacking Crist's Republican opposition, Marco Rubio. Byrne sued Crist for $1 million. Byrne said last year that the lawsuit was

"not about politics...It's about copyright and about the fact that it does imply that I would have licensed it and endorsed him and whatever he stands for."

Rubio himself was also on criticized for using The Steve Miller Band's "Take the Money and Run" in an attack ad against Crist. Rubio, however, was not sued. AmeriKat readers may recall past political song problems, such as in 2008 when Jackson Browne sued then presidential candidate John McCain for unauthorized use of his song "Running on Empty". Browne's lawyer, Lawrence Iser, also represented Byrne and stated in the initial complaint that it was "extraordinary" for another Republican campaign to misappropriate another artists's work without permission.

Another lesson that party politics and rock music do not mix.