Infringements of the heart

Would you ever have thought that the question of whether a party is tortuously liable for inducing another to infringe a patent depends on what is in the inducing parties heart? If you did, today the Supreme Court decided in Commil v. Cisco (opinion here) that you were in error, holding that a defendant’s belief regarding patent validity is not a defense toan induced infringement claim.

Mistakes, I’ve had a few. But this wasn’t one of them. And in this 2013 brief in a patent case, we tried to address why it could not possibly be enough for a party defending against such a claim to take the position that it cannot have induced infringement because when it acted as alleged it did not subjectively believe the patent is valid.

What made this argument particularly interesting was that the defendants’ position was premised in part on the state of the law at the time, in particular with respect to the controversial, and still-evolving, matter of joint infringement under Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1313 (Fed. Cir. 2012).  Still, we argued, this legal question can’t come down to feelings.  We wrote against this subjective concept of the intent requirement for inducement, resisting the defendants’ motion for summary judgment on the ground of non-infringement, as follows:

[Defendants] argument that the pre-Akamai law made it “impossible” to form the necessary intent to infringe—which is restated in a different form in part (D) of their moving brief, which regurgitates their invalidity defense—is preposterous. By that logic, the defendant in Akamai itself, and every case that follows it, could and would say the same thing. . . .

The issue . . . is not whether a criminal-law-type mens rea to act unlawfully must be alleged or proved to show “intent” for purposes of contributory liability. Rather, it is whether “the accused inducer . . . “knew of the asserted patents”and performed or induced the performance of the steps of the claimed methods.”

Defendants’ statements regarding “good faith intent” on this score are, therefore, irrelevant, besides typically being inappropriate issues on which to base dismissal on summary judgment. . . . Read More…

Bad for the Juice: The TTAB’s phantom tag

New York Yankees LogoNo, not that Juice.  He’s got enough trouble already.  (And no, not the Juice that has this guy all in a froth either.)  I write, rather, about the too-clever-by-half would-be parodists recently sluiced through the ringer by a family-size panel of the TTAB in a case reported by, of course, John Welch, to wit:

An augmented panel (seven judges) of the TTAB sustained an opposition to registration of the mark THE HOUSE THAT JUICE BUILT for T-shirts, baseball caps, hats, jackets and sweatshirts, the mark “THE HOUSE THAT JUICE BUILT” for mugs, and the design mark shown immediately below for “T-shirts, baseball caps, hats, jackets and sweatshirts,” finding the first two marks likely to cause dilution-by-blurring of the Yankees’ registered marks THE HOUSE THAT RUTH BUILT and the third likely to dilute its “Top Hat” design mark. The Board declined to consider applicant’s parody defense in its Section 43(c) analysis, because applicant asserted an intention to use the opposed marks as source indicators, which by definition is not a noncommercial use or a “fair use” exempted from a dilution claim. New York Yankees Partnership v. IET Products and Services, Inc., Opposition No. 91189692 (May 8, 2015) [precedential].

Juice BuiltThere’s a lot going on here, and John methodically mows through this Murderer’s Row of trademark jurisprudence at his post.  What John is too delicate to mention is the central gag here:  The house that “juice built,” see, is the house that “juice” — steroids — built.  As the decision notes,

Applicant makes clear that it selected its THE HOUSE THAT JUICE BUILT mark to evoke Opposer’s famous mark for parodic purposes.  Applicant’s President, Steven Lore, testified that its marks “play off of the idea that steroids are a player on MLB teams and the Yankees.”

“A player…” Lots of inside-baseball type lingo in this case.  But by now, hopefully, you get the joke.  In any event, I recommend John’s post just to help you remember a whole bunch of trademark law or to learn what you never did, as I do whenever I read his blog. I was, however, particularly interested in this bit: Read More…

Dimming star?

Originally posted 2008-01-31 11:43:10. Republished by Blog Post Promoter

Ann Althouse:

Starbucks used to seem like a luxury brand, and now it feels like a fallback when you can’t get to the real thing.

Ouch. (Via Instapundit.) Ann sees it happening in the automated coffee machines in the shops. But could it have to do with branding incoherence typified by this?
Cobranding hell

Likelihood of jurisdiction

Appellate courts, we see, choose what interests them, and how much.  Sometimes they surprise the parties and their counsel.

We weren’t all that shocked about the argument in Naffe v. Frey, the free-blogger-speech case involving Patterico, but perhaps the degree of the court’s emphasis on one issue as opposed to the other was a bit surprising.  We (the legal team including Ken from Popehat) were ready for it, however.

You’ll understand what I mean if you scan the brief, and then behold the oral argument:

I love my job.

The Only Good Patent

Originally posted 2005-07-28 18:49:48. Republished by Blog Post Promoter

… is a smiley patent! (Most aren’t.) I got a heads-up on this one from the editor of Blawg Review, but before I could slip into shooting-pixels-in-a-barrel mode my own adopted general-topic blog beat me to it.

Out to launch

Boycotting the RIAA?

Originally posted 2007-03-07 08:48:12. Republished by Blog Post Promoter

Gizmodo seems to be the epicenter of this intriguing concept. Hat tip to attorney Brett Trout.

The deceptively simple process of “trademarking”


James Major of Hitlab

Somewhere, some time — I think, perhaps, it was in my contribution to this work, actually — I noted that with the advent of online trademark registrations, it has become deceptively easy to think anyone — just anyone! — can register a trademark.  Later I held forth more boldly, and for free, in this space on the perils of do-it-yourself trademark applicating.  Did it scare anyone off?  I hope so, but I doubt it.

Now, however, I think I have been bested or, at the very least, quite a bit bettered by this post by James Major on Patently-O entitled Pitfalls in Trademark Prosecution, who may just have scared me off, though at least James agrees with me on one point:  It’s become too easy to think you’re doing it right.  His introductory paragraph:

In a post entitled “Trademark: Registration Void if Completed Prior to Actually Rendering Services in Commerce,” Prof. Crouch asserted that “[o]ne of the traditional benefits of trademark law is that it has fewer disastrous pitfalls for the uninformed (as compared with patent law).”[1]  This guest post respectfully disagrees with Prof. Crouch and asserts that trademark law contains administrative traps for the unwary not commonly found in patent law.

Of course, a patent prosecutor and a trademark attorney can each make substantive and procedural errors; creating an estoppel and blowing a deadline, respectively, are just two.  But, substantive and procedural errors are hardly unique to patent and trademark law.  This post argues that there is the possibility of what I will call “administrative” errors that are unique to trademark law. These administrative errors arise partly because of the ease of submitting documents to the United States Patent and Trademark Office (the “USPTO”) through the Trademark Electronic Application System (“TEAS”),[2] and partly because of the fundamentals of U.S. trademark law.

The piece goes on to delineate a number of “pitfalls” for lawyers filing applications to register (not “to trademark,” of course) or assign trademarks and to examine them in turn, specifically: Read More…

Marco Randazza SLAPPS back

My brother-from-another-mother Marc Randazza is obsessed these days, and understandably, with an attack on anti-SLAPP statutes, particularly the one in Nevada:

I get at least one call a week from someone who wants me to file a defamation claim. I turn almost all of them away, because most of them are either frivolous, or just don’t have a good chance of winning, or they will backfire on the Plaintiff.

At least once a month, one of them says something to the effect of “I don’t care if I win, I just want to bury this guy.” They dangle very large checks in front of me.

My answer is “I don’t use my law license that way. Might I suggest you retain a more ethically flexible lawyer.”

When the potential plaintiff in that situation is looking at filing in a state with an Anti-SLAPP act, they usually don’t bother at all after I explain the ramifications of an Anti-SLAPP motion. . . .

But someone didn’t like that.

Therefore, last week, in a pretty sneaky legislative maneuver, the Nevada Senate Judiciary Committee slid through Senate Bill 444. The bill is a paragon of sleaze. It starts off with preamble statements that make itseem like it is there to protect freedom of expression, but once you read it, you realize that whoever drafted this must have done so with the clear intent of destroying the Anti-SLAPP law.

  • It creates a Rube Goldberg mechanism for bringing an Anti-SLAPP motion — which will clearly increase the cost of litigation. 
  • It narrows the definition of “issue of public concern” – so consumer reviews, social commentary, and other forms of important public speech are now outside of its protection.
  • It weakens the attorneys’ fees provisions of the existing law.
  • It lowers the burden for unethical plaintiffs to keep their SLAPP suits alive.
  • It repeals important provisions that seek to deter plaintiffs from filing anti-SLAPP suits in the first place.
  • It is tailor-made to ensure that public figures do not have to be worried about New York Times v. Sullivan at the SLAPP stage, anyhow.
  • It virtually ensures that you can’t ever bring an Anti-SLAPP motion in federal court.

Marc is not happy. Read More…

Holding Their Ink-Stained Breath Till They Turn Blue

Originally posted 2005-02-20 09:47:00. Republished by Blog Post Promoter

Update on the the Tulsa World silliness: Michael Bates reports, citing to the blog Tulsa Topics, that the World has wisely decided that it will deal with criticism of its editorial and political deeds by disabling its own Internet capability, not only to Michael and his critical blog but to the rest of humanity — including its own paid customers! Now no one can get PDF’s off their site.

That’s the best way to protect your copyright: Just publish for your friends and family. This way if any of them crosses the line — WHAM! You ground ’em, or don’t invite them to the cousin’s club meeting, or disinherit them. Good thing is you keep the mess away from those Article III judges and their pesky technicalities.

Another victory for self help. Is anyone at Overlawyered going to compliment the World on this? Don’t count on it!

Federal Circuit on the THE SLANTS: [Updated]


Our new world -- and welcome to it

UPDATE: When this post was written, the world we lived in was one particular kind of world.

Then the morning of Monday, April 27, 2015 came, and we were living in a very different world.

I spoke about The Slants’, and my, transition to that world here …  and a few other places.

So, that’s The Slants’ juridical world now, their only one, and having said what I’ve said — which, you’ll grant, is plenty — while I won’t delete any posts, I won’t be commenting on the case any more on LIKELIHOOD OF CONFUSION® until it’s over.

Remember when I said, and said, and said, the appeal involving the TTAB’s rejection of the trademark application for THE SLANTS was fundamentally about PTO procedure and hardly at all a matter of constitutional law?  And that the constitutional issue was, really, not necessary to reach for to find merit in the appeal?

I said that, right?

See?  This works fine.

See? This works fine.

I thought I said that.  I thought I wrote that.  I thought I argued that.

Evidently, however, someone wanted to write an opinion on constitutional law.  Maybe someone wanted to write it in another case, even, but that case wasn’t before that someone.  So someone thought this case would be a good substitute for that case.

So the issues we appealed on got an amount of shrift which you are free to measure for yourself, and THE SLANTS lost their appeal.

And you’re wondering, by the way, was it unanimous?  Is there a dissenting opinion, perhaps, such as might form the basis for automatically taking the appeal to the full panel?

Well, go to page 12 of the opinion, and tell me the answer to that.  I’m always interested in additional views.

UPDATE, April 27, 2015, from the Federal Circuit:  Never mind;  please come back soon.

Trademarks — and Copyrights — in the Public Interest?

Originally posted 2005-09-26 18:31:09. Republished by Blog Post Promoter

South Brooklyn section of MTA Subway MapWired News reports:

Transit officials in New York and San Francisco have launched a copyright crackdown on a website offering free downloadable subway maps designed to be viewed on the iPod. . . .

More than 9,000 people downloaded the map, which was viewable on either an iPod or an iPod nano, before Bright received a Sept. 14 letter from Lester Freundlich, a senior associate counsel at New York’s Metropolitan Transit Authority, saying that Bright had infringed the MTA’s copyright and that he needed a license to post the map and to authorize others to download it.

Not very freundlich of Lester, was it?

“I removed it promptly,” said Bright, a design director at “I’m very aware that they are copyright violations, but I’m not trying to make money or do anything malicious. I’m not in this to piss people off.”

Last week Bright received a similar cease-and-desist letter from officials with Bay Area Rapid Transit, or BART, demanding that Bright remove a map of the San Francisco rail system.

I blogged about this topic in general — the assertion of intellectual property rights in arguably public goods such as train-line symbols — in June. My conclusion then:

It’s one thing to say that services aren’t free and that even when, as in the case of the MTA, they succesfully address significant externalities, their costs should not be unduly disconnected from users. But it’s another thing to say that, however revenue-starved, a public institution (in the broad sense of the word) such as the MTA should restrict the public, much less the bloggy, enjoyment of a public iconography such as the train number symbols and the image of the classic subway token.

In other words, if you get a C&D letter from the MTA, give me call, won’t you?

The issue here is not quite the same. It is narrower, and deals only with the copyright in the maps. But in a broader sense, it is the same: Should these public authorities, ostensibly in the business of helping people get around, be more interested in rent seeking than in … helping people get around?

I don’t think so.

UPDATE: Excellent legal analysis, as usual, by Patry.

BUT WAIT, THERE’S MORE:  How did the MTA’s ad department let this past the boys in legal?!