W. John Eagan
Mr. Eagan earned his bachelor’s degree in Mechanical Engineering from Lehigh University and his law degree, with honors from the University of Miami. While at the University of Miami he served as the Inter-American Citator and an Articles and Comments Editor for the Inter-American Law Review. Mr. Eagan is admitted to practice law in the State of Florida and concentrates his practice in Intellectual Property litigation.
The latest chapter in the Apple v. Samsung litigation, previously blogged about here, involves a determination by the Supreme Court of the United States that damages for design patent infringement can be calculated based on only a component of a product, rather than the entire product, if only that component is found to infringe. This is significant because Apple's $400M damages award was based on Samsung's total profit for sales of the infringing phones. However, Apple's design patent only covered certain features of Samsung's phones, and according to the language of the patent statute, as Samsung argued, it should only have to pay damages on the infringing components, not the entire product.
The Copyright Office has issued final rules updating its practices for receiving the designation of agents under the Digital Millenium Copyright Act ("DMCA"). Until now it was paper based, but after December 1, 2016, the Copyright Office will switch to an electronic system. If you have previously appointed such an agent to receive notices of claimed infringement in order to take advantage of the Safe Harbor provisions for internet service providers, you must file a new designation before December 31, 2017 in order to ensure that your agent is listed in the new electronic directory.
The latest chapter in the Apple v. Samsung saga, previously blogged about here, is set to play out during oral arguments in front of the United States Supreme Court this fall. Samsung was found to infringe several of Apple's design patents related to specific design features of a smartphone, and not necessarily an entire phone. 35 U.S.C. § 289 authorizes courts to award the total profit from the article of manufacture bearing the design. Thus, the original damage award was based on Samsung's profits from the sales of the smartphone. The Supreme Court, however, will hear the question of whether, where a design patent is applied to only a component of a product, an award of infringer’s profits should be limited to those profits attributable to the component.
It is axiomatic that descriptive trademarks cannot be registered without a sufficient showing of acquired distinctivess. However, it has long been possible to register a stylized form of a descriptive trademark, if that stylization imparts a separate commercial impression apart from the descriptive word. For example, descriptive marks merely presented in a common or recognizable typeface will likely be rejected. However, the TTAB recently allowed a registration for the word "jiujiteiro" presented in a cursive, handwritten style of typeface. The TTAB found that the handwritten style of typeface imparted sufficient distinctiveness to create a separate commercial impression, apart from the word itsef. Of course, such findings will continue to be handled on a case-by-case basis, but this decision serves to clarify the threshold for the amount of stylization required for a finding of distinctiveness.
The U.S. Olympics Committee has reportedly threatened legal action over the use of its trademarks as hasthags, such as #Rio2016 or #TeamUSA, by corporations that are not sponsors of the Olympics. Ostensibly, such action helps to clear the way for paid sponsors to be highlighted when searching social media posts by hashtag. Some folks, however, might feel that this has a chilling effect on free spech. A Minnesota cleaning company has filed a declaratory action in the U.S. District Court for the District of Minnesota seeking to have its right to use such hashtags clarified. The company also requested a speedy hearing on the matter, given that the games are scheduled to end in little more than two weeks.
The USPTO recently introduced its initiative to "fast track" patent applications which cover immunotherapies for cancer. The program is designed to support the White House's National Cancer Moonshot, which aims to eliminate cancer with a $1 Billion call to arms to find new therapies and techniques for prevention. Eligible applications will be prioritized for examination, and, once accepted into the program, applicants can expect to receive a final decision in one year or less.
Recognizing that it was taking an unusual step, the Court of Appeals for the Ninth Circuit deliberatley broke from Sixth Circuit precedent in VMG Salsoul, LLC v. Madonna Louise Ciccone when it determined that the 0.23 second sample of horns which was copied from an earlier song titled "Love Break" was de minimis, and therefore, did not constitute copyright infringement.
In Petrella v. Metro-Goldwyn-Mayer, the "Raging Bull" case, the Supreme Court of the United States held that the defense of laches, whereby the accused infringer alleges that the right holder sat on its rights for too long before bringing suit, cannot be used to shorten the three-year statute of limitations set forth in the Copyright Act. In the case of SCA Hygeiene Products, AK v. First Quality Baby Products, LLC, the Supreme Court has recently taken up the question as it pertains to the defense of laches and the six-year statute of limitations set forth in the Patent Laws. Follow the case here for updates.
The National Archives reports that the original patent documents for the Wright brothers' Flying Machine surfaced recently after having been mis-filed in 1979. The document was recovered after a targeted search of more than 269 Million documents maintained by the Archives. The discovery is timely, as the documents were due to be displayed next month during the 110th anniversary of the patent grant date. U.S. Patent No. 821,393 was filed in March of 1903, several months before the historic flight, which would have been good advice from the brothers' patent attorney.
Swedish furniture company IKEA has long maintained a portfolio of trademark registrations in Indonesia since at least as early as 2005. However, IKEA did not open its first store in the country until 2014. An applicant is not required to show use of the mark in Indonesia as a requirement for registration (in direct contrast to the United States requirements). However, the registration may be vulnerable to cancellation if the owner fails to make use of the mark for a three-year period after registration.