Newsletter - Volume 64, May 2011
Hunt Control Systems, Inc. v. Koninklijke Philips Electronics N.V.
The Trademark Trial and Appeal Board ("the Board") recently upheld an opposition
to the U.S. extension of a Madrid Protocol application based solely on
opponent's common law trademark rights.
Koninklijke Philips Electronics ("Philips") filed an application to register the
mark SENSE AND SIMPLICITY to market its line of electronics products,
specifically goods in International Class 9. This application was based on a
corresponding International Registration, seeking extension of protection under
the Madrid Protocol. Hunt Control Systems ("Hunt") alleged that it had
maintained common law rights to the mark SIMPLICITY covering identical goods,
and opposed Philips' application.
The Board was required to determine the scope of the goods being opposed as well
as whether the opposer could rely on an application by the opposer's parent
company. The complexity of these issues presented a sharp contrast to the
relatively simple likelihood of confusion analysis that followed.
The parties first disputed which specific goods in Class 9 were opposed. The
rules for Madrid Protocol oppositions provide that once goods are specified in
the electronic filing, they cannot be amended. Hunt attempted to test this rule
by claiming that a supplementary form explaining the basis for the opposition,
and attached with the original electronic filing of the notice of opposition
form, served to amend the filing by adding the words "and related products" to
the list of goods being opposed. Although filed simultaneously with the initial
opposition, the Board refused to include the related products not listed in the
form. Because the opposition electronic filing system required Hunt not to add
goods to be opposed but rather to delete them from the list provided in
Philips' application, the Board did not allow Hunt to add what it had
previously affirmatively removed from its opposition filing.
Secondly, a dispute arose regarding which of Hunt's goods would be examined in
the likelihood of confusion analysis. The Board allowed all of Hunt's claimed
goods under its common law rights, including any "related components." This
decision turned out to be fortunate for Hunt, because although its application
covering the claimed goods in Class 9 had ripened into registration during the
course of the litigation, because the application was registered to Hunt's
parent company and not Hunt itself, this registration could not be used to
define either the scope of goods claimed nor priority in the SIMPLICITY mark.
Even further to Hunt's advantage, Philips admitted Hunt's use for the goods
claimed going back to Hunt's priority date.
Given that most of the arguments related to the scope of the goods examined were
resolved in Hunt's favor, the likelihood of confusion analysis was very
straightforward. The Board, after examining the DuPont factors, determined that
both the marks and the goods they covered were substantially similar, and thus
a likelihood of confusion was present.
This case is noteworthy because it both clarified the strict rule relating to
goods claimed in opposing a Madrid Protocol request for extension of
protection, and because it set forth an expansive view of common law rights
allowing a party to effectively oppose a registration without a federal
registration of its own. The outcome may have been different if Philips had not
stipulated to use and the priority of Hunt's marks, but nevertheless this case
can serve as a blueprint for an individual or business with strong common-law
rights in opposing even a strong application.
—Daniel Lano
"Magic Microscopes," Trees and Kidneys: A Myriad of Arguments under 35 U.S.C. 101
In our April and May 2010 Newsletters, we reviewed a controversial New York
District Court decision that invalidated patent claims directed to breast
cancer genes as unpatentable subject matter under 35 U.S.C. 101. See Association
for Molecular Pathology et al. v. United States Patent and Trademark Office et
al., 2010 U.S. Dist. LEXIS 35418 (SDNY April 5, 2010). The decision
goes against long-standing U.S. policy and practice that takes a broad view of
patentable subject matter under U.S. law. The holder of the patents in the
case, Myriad Genetics (defendant/appellant), has appealed to the Federal
Circuit. We report below on oral arguments presented on appeal in April 2011,
and in particular arguments made for and against the patenting of isolated
genes.
The chemistry and structure of isolated genes were not much discussed during
oral argument, despite the Court's pointed questions in that direction. Rather,
arguments were peppered with analogies to various substances. Counsel for
Myriad Genetics argued that, like a baseball bat made from wood from a tree,
isolated genes are structurally and functionally distinct from genes occurring
in nature and therefore are patentable subject matter. Counsel for the American
Civil Liberties Union (plaintiff/appellee) argued that isolated genes are more
like an unpatentable kidney, easily snipped from one body and placed in
another.
Counsel from the U.S. Department of Justice (DOJ) stayed more in the chemical
field and directly addressed isolated gene sequences themselves, but ranged far
more broadly than necessary for this case. The DOJ stated that human inventions
are patentable subject matter and products of nature are not, articulating a
"magic microscope" test to identify products of nature: if one could "zoom" a
magic microscope to see a substance in nature, the substance is a natural
product and not patentable subject matter. Purification and isolation do not
render the purified substance patentable.
With regard to DNA inventions, the DOJ argued that its "magic microscope" could
show the sequence of any gene in naturally-occurring DNA, and so isolated genes
are an unpatentable product of nature. The magic microscope cannot see cDNAs or
methods for using DNA, and so such are not products of nature under this test.
The DOJ analogized that no one would think lithium patentable at the time of
its isolation, even though it existed only as a salt or in combination with
other substances until isolated in 1818. Similarly an isolated electron is not
patentable, nor is pollen that cures cancer. According to the DOJ, if isolated
genes are patentable subject matter, electrons and pollen are also.
The Court, noting the potential breadth of the DOJ's arguments, asked about the
patentability of vitamin B12 and antibodies. The DOJ referred to taxol (a drug
isolated from tree bark) as properly patented only in terms of the process for
isolating the compound. The DOJ also indicated that aspirin (acetylsalicylic
acid) was properly patented as a product of the acetylation of
naturally-occurring (and presumably unpatentable) salicylic acid.
The Court noted that the government appears divided on this issue, as the U.S.
Patent and Trademark Office (USPTO) has allowed patents on isolated genes for
over 35 years and currently indicates isolated genes are patentable subject
matter on its website. The DOJ notified the Court that its "high level" review
revealed it is "impossible" to write a brief in support of isolated gene
patents, placing the DOJ at odds with the USPTO. When the Court noted that in
view of the split in executive authority and 35 years of industry development,
this matter may best be considered by Congress, the DOJ responded the courts
should decide this matter with no deference to 35 years of acquiescence by the
USPTO and U.S. courts.
The DOJ's position seems problematic at best, and almost revolutionary under
current practice. If adopted, this position would open the door for a
substantial broadening of the scope of unpatentable subject matter under 35
U.S.C. 101. The DOJ's arguments are somewhat reminiscent of controversies
raised when governments that traditionally prohibited patenting of
pharmaceutical products (from natural and synthetic sources), but allowed
patenting of related processes, changed their laws to join the World Trade
Organization – a change generally encouraged by the U.S. government at that
time.
We will report further on the effects of these arguments upon reviewing the
Federal Circuit's decision in this case.
—Valerie Neymeyer-Tynkov
Facebook Promotion Rules Updated
Facebook recently revised its Promotion Guidelines and related Policies
regarding contests, competitions, sweepstakes and similar offerings. Marketers
and advertisers interested in running promotions using the social networking
site should remember that, in addition to complying with Federal and State
laws, they will also need to comply with Facebook's policies.
Here are a few highlights from Facebook's Guidelines:
1. A company cannot run a promotion directly from its Facebook page. Facebook
requires that promotions be administered within "Apps on Facebook.com." In
order to run a promotion on Facebook, a company must create an app to be loaded
inside the Facebook frame.
2. Promotions can be designed to require a user to "Like" a Page or "Check In"
to a Place to register. Accessing the app can also be used to register
participants. Other than these actions, companies cannot condition registration
or entry in a promotion on taking any action on Facebook. So, marketers may not
require participants to "Like" a Wall post, or upload a photograph on a Wall in
order to enter a contest. Marketers also may not use Facebook posts to notify
the winner of a promotion.
3. Requests to users to be allowed to access their Facebook ID and personal data
in order to run the app must be included and must follow a standard "Request
for Permission" format. Companies cannot use personal data from Facebook for
any purpose other than running their contest app. If marketers wish to obtain
personal data, they must get explicit consent from the user before using it.
4. In order to cut down on spam, the promotion cannot incentivize players to use
the News Feed or contact their friends regarding the promotion. For example,
"Share this game with 10 of your friends and receive 10 points," is not
acceptable. However, the promotion can ask contestants if they would like to
publish a News Feed story when they reach a milestone or take an action that
might be associated with an award.
5. Promotions on Facebook must include the following:
a. A complete release of Facebook by each entrant or participant.
b. Acknowledgment that the promotion is in no way sponsored, endorsed or
administered by, or associated with, Facebook.
c. Disclosure that the participant is providing information to the company and
not to Facebook.
6. The promotion cannot use Facebook's name (other than in the required release
and disclosures), trademarks or logos and Facebook cannot be mentioned in the
Rules or other materials relating to the promotion. Marketers should make sure
that consumers understand that the promotion originates from their company and
not from Facebook.
—Carolyn Knecht
Pop Culture and Intellectual Property
It is not that often that trademarks and copyrights are at the forefront of pop
culture, but in the past few weeks each have surfaced in different but unique
ways.
First, within days after the announcement of Osama Bin Laden's death during a
raid led allegedly by the top-secret United States Navy Seal Team 6, eight
separate applications to register trademarks containing the word SEAL were
filed in the USPTO. Among these, several applications were filed by various
parties in connection with watches, timepieces, commemorative coins and action
figures. Additionally, the day after the announcement, Disney Enterprises filed
three applications for the mark SEAL TEAM 6 in connection with various toys,
clothing, games, and "entertainment services." Could this be a hint at the
first film and games to recreate the attack?
Seeking to capitalize on the reputation and popularity of the U.S. Navy's
special forces, these parties took steps to at least attempt to secure some
form of rights to a name now known world-wide, even if we are unsure if such a
SEAL TEAM 6 even exists. What rights, if any, these parties will ultimately
secure in the mark is unknown at present, but the rapid filing of applications
containing the SEAL TEAM 6 term was interesting to see. Trademark provides a
party with a temporary, limited monopoly over a term as used in connection with
enumerated goods/services, so why not try to take hold of that with a popular
term?
Another recent entertainment related development involves the upcoming film Hangover
2. In the film, one character wakes up to find out that at some point
the night before he received a tribal design tattoo on his face. The tattoo is
reminiscent of the facial tattoo sported by former heavyweight boxing champion
Mike Tyson. S. Victor Whitmill, a tattoo artist in St. Louis, has filed suit
against the film's producers claiming that use of the tribal design face tattoo
in the move infringes his copyright in that artwork. The producers apparently
received a release from Mike Tyson to copy the tattoo for the film but Whitmill
claims that he, not Tyson, owns the copyright and no release was obtained from
him.
This case represents a unique issue. A tattoo is like any other piece of art.
Generally speaking, the creator of a work of art retains copyright to that
artwork, including the right to reproduce the work. In many instances, the
artist will assign his or her rights in the work to the party that commissioned
it. Here, that could mean Whitmill's rights in the tattoo art transferred to
Mike Tyson and the film producers would have only required his release.
However, Whitmill contends he never assigned, transferred or licensed his
rights to Tyson. Therefore, he still owns rights in the tattoo art and
reproduction of that art on another character in the film is an infringement.
At the same time, regardless of ownership of the copyright, since the tattoo is
inextricably linked to Mike Tyson, literally, would use of that tattoo design
in a film on a character who is clearly not Mike Tyson even constitute
infringement? Given the nature of the film, a comedy involving
reality-stretching hijinks, could use of the tattoo be a form of parody or fair
use? Whatever the substantive outcome of the litigation, this case again
demonstrates the depth to which film producers must dive in order to ensure
complete clearance for items appearing in films.
—Mark A. Nieds
Disclaimer: The contents of this newsletter are presented for information purpose only, and as such are not intended to constitute legal advice and should not be construed as such or acted upon without seeking advice of legal counsel. This information is not intended to and shall not create an attorney-client relationship of any kind or nature with IpHorgan Ltd. Please contact the firm with queries, concerns or for further details regarding the information presented herein. The entire contents are current only as of the date of the newsletter and are not to be interpreted as the opinions of our clients past, present, pending or future. (c)2011, IpHorgan Ltd. All Rights Reserved.
Newsletter Volume 72, January 2012
