Last week, the Ninth Circuit upheld the lower court ruling that the artists of the 2013 “Blurred Lines” best-selling single infringed the copyright of Marvin Gaye’s 1977 song “Got To Give It Up”.
In 2013, the family of the late Marvin Gaye sued musicians Pharrell Williams, Robin Thicke, and T.I. (Clifford Harris, Jr.), and related recording companies, for copyright infringement. “Blurred Lines” was the best-selling single in the world that year and the Gaye family believed it to be similar in composition to Marvin Gaye’s 1977 song “Got To Give It Up”. In 2015, the trial jury agreed. After three years of an appeal process brought by the musician defendants, the United States Court of Appeals for the Ninth Circuit upheld the infringement ruling (Williams, et al. v. Gaye, et al. Case No. 15-56880)(March 21, 2018).
The decision was not unanimous. Judge Nguyen wrote a dissenting opinion stating that the songs “differ in melody, harmony, and rhythm.” She also noted that it can be “challenging for judges untrained in music to parse two pieces of sheet music for extrinsic similarity. But however difficult this exercise, we cannot simply defer to the conclusions of experts about the ultimate finding of substantial similarity. […] Judges must still decide whether, as a matter of law, these elements collectively support a finding of substantial similarity.” This ruling ultimately changes the music industry landscape moving forward, as it is arguable that the decision improperly protects an artist’s form of musical style. The majority opinion written by Judge Milan D. Smith, Jr., however, focused mostly on the technicalities of the case and the grounds for appeal, determining that the trial court erred only in finding Interscope Records and T.I. liable.
The Gaye family is entitled to approximately a $5.3 million-dollar judgement and running royalties of 50% on future songwriter and publishing revenues. The damages breakdown consisted of: $3,188,528 in actual damages, plus profits of $1,768,192 against Thicke and $357,631 against Williams (and companies collecting royalties on William’s behalf). TI and his associated recording company were cleared of any infringement.
***To investigate or consider copyright protection for music, lyrics, or other works of art, or for more information, please contact Pamela K. Riewerts, Esq., partner at Oliver & Grimsley, LLC. Pamela may be reached via email at: email@example.com
How Famous is the Coca-Cola bottle design? Not quite enough to protect small differences
Design patents are an increasingly useful tool in product configuration protection, but as Coca-Cola recently learned, even a famous product design has its limits. As surely everyone knows, Coca-Cola owns a protected famous trademark for it’s original hour-glass bottle shape featuring fluted ridged lines. Earlier this year, however, the European Union (“EU”) Court denied trademark protection to Coca-Cola for a newly evolved, smooth shaped bottle. The Coca-Cola Company v. Office from Harmonisation in the Internal Market (Trademarks and Designs)(OHIM) 2016.
Under EU law, a trademark may consist of “the shape of goods”, as long as the shape is distinguishable from other third-party products. Coca-Cola’s original hour-glass bottle featuring ripple contours is “one of the most famous shapes in the world… is so distinctive it could be recognized in the dark” Coca-Cola stated. However, the EU court found that Coca-Cola failed to establish that the new smooth bottle design had acquired distinctive familiar connection and character through use.
Coca-Cola originally developed the fluted contoured bottle in the U.S. in 1915 to distinguish its bottle from competitors making similar bottles. Cola-Cola developed a glass “bottle so distinct that you would recognize if by feel in the dark or lying broken on the ground.” After several years of continuous use the unique distinction and recognition lead to trademark protection.
The new smooth bottle shape maintains the hour-glass bulge in the center of the bottle consistent with the original bottle shape, but does not feature the rippled contours that brought the original bottle its worldwide recognition. Although Coca-Cola argued that the smooth bottle is “a natural evolution” of the traditional bottle, both the EU Trademark Office in 2014 and the EU court in 2016, denied the request for trademark protection.
Strategies to Secure Initial Product Appearance and Shape Protection via Design Patents
Similar to the EU, U.S law also allows for trademark protection of product configuration and packaging that acquire distinctiveness over time. See Section 43(a) of the Lanham Act, Section 15 U.S. Code 1051. However, the design must gain “secondary meaning” as the Supreme Court has ruled that “a product’s design is distinctive, and therefore protectible, only upon a showing of secondary meaning”. See Walmart v. Samara.
Design patents can fill this “use” gap – as they also have the ability to protect unique product appearance and packaging at initial launch of products. This form of protection can serve as the first line of protection to claim ownership of distinctive shapes before the established passage of time that later may provide a basis for prolonged customer recognition which eventually may be used to establish trademark protection for the source of origin of the product. While design patent protection has a definitive term of protection– 15 years (See Manual of Patent Examining Procedures (MPEP) 1501), trademark protection, once established, may continue perpetually so long as the trademark is in use.
Coca-Cola first obtained U.S. design patents on its ornamental bottle shape in 1916, and again on it’s redesigned contoured bottle in 1923 and 1937. Design patent protection at that time lasted 14 years (currently 15 years). Years later in April 1960, after the product gained established customer recognition over time, Coca-Cola obtained federal trademark registration for its fluted contour bottle shape, thereby enabling the company to protect its fluted bottle design indefinitely with continuous use and protecting the iconic bottle that it is today.
If Coca-Cola is seeking to protect its new bottle shape in the U.S., one avenue may be to investigate the availability of design patent protection for the initial protection of the new bottle shape, and then look to secure trademark protection after prolonged continued use of the product. This strategy faired well for Coca-Cola in obtaining initial design patent protection and then continued trademark protection of its original rippled bottle shape.
Discussing these concepts in the current age – the design elements of product are becoming very important. For example, Apple protected its iPhone design and recovered significant damages against Samsung for infringement. Car manufacturers have recently filed claims against game manufacturers for digitizing their car shapes into a game. See as an example BMW v Turbosquid.
Should you seek Design Patent Protection for the Appearances and Shapes on Products or Packaging?
A protectable design must be manifested in the appearance of the product and consist of “visual ornamental characteristics embodied in, or applied to, an article of manufacture. The subject matter of a design patent application may relate to the configuration or shape of an article, to the surface ornamentation applied to an article, or to the combination of configuration and surface ornamentation.” MPEP 1500 et seq.; 35 USC 171 et seq. Design protection is based on specifically drawn product figures made in accordance with the U.S. Patent Office Rules, and submitted to the U.S. Patent Office with a patent application in order to identify the legal metes and bounds of the protected design. If you are interested in preventing others from making, using, selling or importing the same or similar product shape or appearance, you may want to engage a patent attorney to investigate whether design patent protection may be available for your product or packaging. An investigation generally consists of a preliminary search and initial evaluation of your product shape or appearance as being new, novel and non-obvious in order to meet the requirements of the U.S. Patent Office.
Should you Trademark the Appearance and Shape of Products or Packaging?
You do not need to register a trademark with the U.S. Trademark Office to establish trademark rights. Protection is established through use of the trademark. However, without federal registration, the trademark is only enforceable in the geographic area where the product is sold. A federal registration on the principal register, however, provides additional advantages and is likely beneficial in most cases primarily because a federally registered trademark on the principal register establishes nationwide priority throughout the entire U.S. Therefore, registration ultimately gives you the right to prevent others from using or registering your trademark nationwide and provides notice to third-parties of your registration. It should be noted that even with principal register trademark protection you cannot prevent someone in a remote location where you do not actually market or sell your product from using a trademark or product design that is confusingly similar until you actually enter that market. A registered trademark is also presumed valid and may eliminate certain invalidity arguments after 5 years of continuous use (incontestability).
How to Register Appearances and Shapes on Products or Packaging:
In order to register your product shape or packaging in the U.S. Patent and Trademark Office, as a trademark your packaging or product design must have acquired secondary meaning – that is, unique, original, and recognizable by consumers as the source of origin. Can the public identify your company as the source of origin of the product or the packaging by its distinctive features?
If a product design or packaging is not inherently distinctive it can still be registered after it acquires distinctiveness through long use, known as secondary meaning.
There are three ways that a mark itself may be inherently distinctive—if its intrinsic nature serves to identify a particular source.
1) Fanciful trademarks, such as a made-up word (Xerox- a created name with no other meaning than acting as a trademark);
2) Arbitrary trademarks, having no relation to the product other than as a means of identifying the company that produces it (Apple computers- a word in the English language not related to the product);
3) Suggestive trademarks, providing a link between the characteristics of a particular product and its producer (Microsoft- suggestive of software for microcomputers).
Generally, any mark that meets one of these criteria qualifies for trademark protection without any specific proof that consumers associate the mark with the specific source of the product.
To prove that the trademark product or packaging has acquired distinctiveness through secondary meaning, a mark must be shown to be distinct in the minds of the consumer and with a recognizable source of origin. Proving distinctive secondary meaning, however, is often expensive and legally challenging and often involves consumer surveys for recognition.
If you are interested in filing a design patent and/or registering your product configuration or packaging with the USPTO, you should contact an attorney to investigate, advise, and file an application for your product or packaging for registration.
A brief recent history of patenting software in the United States goes something like this: before 1998 it was possible, but the internet was just coming to its own so there were not many software patents; then in 1998 the State Street decisionwas handed down. The State Street decision essentially said that patents that claimed inventions for methods and processes traditionally accomplished using manual techniques but now accomplished using a computer process or method such as spreadsheets, financial calculations etc could be valid – that is, they were at least within patent subject matter and not merely laws of nature. In the ensuing years before the run up to the turn of the century “everything under the sun” in software and internet technology was sought to be patented, and hundreds of thousands of “software” patents were issued. The crash of 2000 wiped out a lot of marginal internet businesses, however software patenting continued in earnest under State Street. Thanks in part to the combination of the huge number of software patents issued and the bankruptcy of a lot of companies after the financial crashes of 2000 and 2007, a new industry was born – the so called “patent troll” or in our parlance, non practicing entity (NPE) or patent assertion entity (PAE). Whatever you call it, the business model is to sue companies that use what most of us consider to be “basic building blocks” technology in those patents. Economically patent suits are staggeringly expensive so many companies, including many of our clients, opted to pay -or colloquially – feed the troll – it just made more economic sense. However, slowly bigger companies started fighting back. What was born from that unholy (or holy, depending on your view) war was a series of Supreme Court cases, starting with In Re Bilski, and finishing on the Alice Corp decision.
Alice Corp literally laid waste to nearly every software/internet patent in its path. Alice Corp’s impact can be seen in the somewhat dramatic reduction of patent filings since it issued (see 2015 Patent Litigation Study) – some people have just given up trying… Recently, however, a Federal Circuit decision has given some hope in overcoming Alice Corp.
In Enfish v Microsoft the Federal Circuit found that certain database technology process described in the patent was not abstract – that is, that the invention overcame the first prong of the 2 part Alice Corp test. Under Alice Corp and the previous decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.  If so, we then ask, “[w]hat else is there in the claims before us?”  To answer that question, we consider the elements of each claim both individually and “as an ordered combination” to determine whether the additional elements “transform the nature of the claim” into a patent-eligible application.” The first prong of the test is known as the “abstract idea” prong, meant to embody “the longstanding rule that ‘[a]n idea of itself is not patentable.” So, for example “an algorithm for converting binary-coded decimal numerals into pure binary form” was merely abstract because it sought to “in practical effect . . .  patent  the algorithm itself.” Likewise, “a method for hedging against the financial risk of price fluctuations” was unpatentable because “”the basic concept of hedging, or protecting against risk. [is] a fundamental economic practice long prevalent in our system of commerce and taught in any introductory finance class.'” The addition of the computer did not transform the idea of hedging into anything inventive. Most cases that find prong 1 of the test go on to find that whatever the system or process that is claimed in the patent is, it is not sufficiently transformative to overcome the 2nd prong.
In Enfish, the Federal Circuit held that the database technology described in the claim was not abstract. The specific technology deals with a better method of handling related database data. In a traditional relational database, an information source is stored in one table, another information source is stored in another table, and the relationship between those tables is either defined in columns on each table, or held in a third “pivot” table that defines the foreign table keys that link the tables together. The invention in Enfish involved placing all of the related data in ONE table, and defining the relationships in table columns in that same table. The effect of doing that was to make the process of retrieving related data faster and more efficient, among other benefits. This invention thus directly impacted computer process efficiency – in this case, database efficiency. The Federal Circuit held that “the first step in the Alice inquiry in this case asks whether the focus of the claims is on the specific asserted improvement in computer capabilities (i.e., the self-referential table for a computer database) or, instead, on a process that qualifies as an “abstract idea” for which computers are invoked merely as a tool. . . [a]ccordingly, we find that the claims at issue in this appeal are not directed to an abstract idea within the meaning of Alice. Rather, they are directed to a specific improvement to the way computers operate, embodied in the self-referential table.”
The patent lawyers at Oliver & Grimsley have overcome Alice Corp rejections in several instances, and have learned to navigate the intricacies of obtaining patent protection over computer based technology. In a series of future articles we will go over some of the issued patents we have been counsel on and some of the issues that come up during prosecution of software and computer based patents.
Multi-Purpose Wrist Worn Tool Watch: O&G Timely Moves Through USPTO to Obtain Patent
We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 9,304,496, entitled: “Multi-Purpose Tool Watch Housing Multiple Tool Members to be moved from a Stored Position and Extended Position for Use”. This application proceeded through the patent office in less than one year as a prioritized application.
The invention is an integrated combination of a wristwatch with multi-purpose tool members that may be stored and extended from a wristband housing. Use of the tool watch is particularly suited for an individual to carry a tool set in a convenient form on the user’s wrist and to be able to access tools during daily or outdoor activities.
Congratulations to Patrick Hancock on his recently issued patent!
We are pleased to announce that Oliver & Grimsley, LLC successfully secured U.S. Patent No. 8,827,115 entitled, “Container for Storing, Measuring and Dispensing a Liquid” that proceeded seamlessly through the patent office in 3 months, 26 days. The invention relates to an improved device for storing, measuring and then dispensing, using only gravitational forces, a user-selected specific volume of liquid.
Generally, the length of time it takes to navigate the patent system is 2-3 years for a regularly filed application. For an additional filing fee, a prioritized application may be filed to expedite the examination process to about one year, which is how our client elected to proceed.
In addition, the USPTO generally rejects 85%-90% of all filed patent applications at least once. In this case, however, Oliver & Grimsley, LLC was able to successfully clear the patent prosecution phase without any rejections, which allowed the application to issue in record time — 3 months, 26 days, much earlier than the one year anticipated time frame.
Congratulations to Victor Katz for his recently issued patent!
The Maryland Legislature passed Senate Bill 585, adding a new section to Md. Commercial Law Annotated Section 11-1605, “Bad Faith Assertions of Patent Infringement” That law was signed by the Governor and became effective June 1, 2014. That bill contains a litany of requirements to be met before sending a patent infringement letter to an accused infringer in Maryland. As a result of the bill, sadly, a patent rights holder needs to strongly consider NOT sending any pre-litigation letters, and instead, simply suing first. More on why that is an important consideration below.
SB 585 is one of many similar bills passed in several states, is aimed squarely at non practicing entities that assert allegedly unviable patents as a “shakedown” to extort license fees – also euphemistically labelled “patent trolls.” The problem is that not every non practicing entity is a “patent troll,” and diluting the right to enforce patents can have a negative impact on innovation. For a good article on why this may be a bad thing, see Inventing the Smart Phone: Why the ‘Trolls’ Were Saviors.
Bad faith assertion of intellectual property rights is nothing new in the law, the Supreme Court has addressed it numerous times. The Supreme Court settled a long standing issue under the Noerr-Pennington doctrine (the 1st amendment doctrine that determines when a person is validly exercising 1st amendment rights to petition the government for redress of grievances) in PREI, INC. v. COLUMBIA PICTURES, 508 U.S. 49. There, the Supreme Court held that “First, the lawsuit must be objectively baseless in the sense that no reasonable litigant could realistically expect success on the merits. If an objective litigant could conclude that the suit is reasonably calculated to elicit a favorable outcome, the suit is immunized under Noerr, and an antitrust claim premised on the sham exception must fail. [n.5] Only if challenged litigation is objectively meritless may a court examine the litigant’s subjective motivation. Under this second part of our definition of sham, the court should focus on whether the baseless lawsuit conceals “an attempt to interfere directly with the business relationships of a competitor,” , through the “use [of] the governmental process–as opposed to the outcome of that process–as an anticompetitive weapon,” . This two tiered process requires the plaintiff to disprove the challenged lawsuit’s legal viability before the court will entertain evidence of the suit’s economic viability. ” While the Noerr Pennington Doctrine is most often applied in the context of antitrust law, the rule is one based on the 1st Amendment – and hence, applies across all rights-assertion scenarios, and is the Supreme Law of the land.
Pre-litigation demand letters are pre-cursors to effective petitioning of the government. Indeed, numerous cases have held that the the law favors dispute resolution, and favors the parties communicating before filing suit, in an effort to settle their disputes. However, under SB 585, engaging in those efforts could cost you $50,000 if you fail to comply with the requirements.
In general, SB 585 requires that a patent rights holder include in the letter several pieces of information (the patent holder’s real identity, the patent number, certain facts about the accused infringer), that the patent rights holder engage in specific analysis regarding infringement, and that the accused infringer be given a not “unreasonably short” time to respond. Further, the law requires that the demand be based on a “reasonable estimate of the value of the license.” As a practicing lawyer, I can tell you that if you put any two (or more) lawyers in the same room and asked them what a reasonable royalty was or what an “unreasonably short” period of time was – they would not agree.
If the patent rights holder gets it wrong in the letter, the risk is huge. The court can award 3 times “damages” (whatever that is in this context) or $50,000, and reasonable attorneys fees.
SB 585, while aimed at some of the more reprehensible “patent trolling” conduct in the news, is unfortunately a law that is going to promote patent rights holders to not engage in pre-litigation resolution effort, and instead sue. A person who sues still must engage in pre-litigation investigation to avoid numerous other bad faith litigation related remedies, like Fed R. Civ. P Rule 11 relief. However, that standard applies to the substance of the claim – not the demand for resolution – and is much harder for a defendant to meet.
SB 585 also appears to apply both prior to, and during litigation, so even making written offers of settlement during litigation is dangerous.
We strongly urge our clients who are considering sending patent enforcement/settlement letters to consider whether or not to do so. If they do, they need to comply with this law or risk severe penalties.