Amster Rothstein & Ebenstein, LLP - Intellectual Property Law http://www.arelaw.com/ Amster, Rothstein & Ebenstein is a well-established mid-sized legal firm engaged exclusively in the practice of intellectual property law, including patents, trademarks, copyrights, unfair competition and related matters. Since our inception in 1953, we have earned an impressive record of successes for our clients, from individuals to multinational corporations, both domestic and worldwide. These successes are borne of the vigorous application of legal expertise, innovation and objective analysis. en Tue, 21 Nov 2017 11:52:13 +0000 Floodlight Design CMS The Trademark Lawyer, October 2017:<br>Requirement of Use in the USA<br> http://www.arelaw.com/publications/view/101117/ <div><a href="/images/file/ARE%20Law%20-%20Trademark%20Lawyer%20Issue%205.pdf" target="_blank">Max Vern from Amster, Rothstein &amp; Ebenstein LLP explores the&nbsp;practical aspects of Use Requirements in American trademark&nbsp;practice.</a></div> Wed, 11 Oct 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/101117/ The Copyright Lawyer: <br> The interplay between U.S. and International copyright law: Why non-U.S. persons should consider registering in the U.S.A.<br> http://www.arelaw.com/publications/view/10-11-17/ <a href="/images/file/ARE%20Law%20-%20Copyright%20issue%204%202017.pdf" target="_blank">Chester Rothstein and Benjamin Charkow from Amster, Rothstein &amp; Ebenstein, LLP explore some implications that an owner of a non-U.S. work must keep in mind when developing its copyright protection and enforcement strategies.&nbsp;</a> Wed, 11 Oct 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/10-11-17/ The Patent Lawyer, October 2017: <br>The Software Challenge: How International Applicants can still Succeed in Obtaining Software Patents in the U.S.<br> http://www.arelaw.com/publications/view/10112017/ <a href="/images/file/ARE%20Law%20-%20Patent%20Lawyer%20Sept-Oct.pdf" target="_blank">Benjamin Halpern and Brian Comack from Amster, Rothstein &amp; Ebenstein LLP discuss factors that should be considered when drafting software patent applications filed in jurisdictions outside of the U.S., which are intended for subsequent filing in the U.S.</a> Wed, 11 Oct 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/10112017/ Patent Law Alert: <br>En Banc Federal Circuit Clarifies Burden to Challenge Amended Claims in PTAB Proceedings in <i>Aqua Products v. Matal<i><br> http://www.arelaw.com/publications/view/alert101017/ <div>On October 4, 2017, the United States Court of Appeals for the Federal Circuit issued a divided <i>en banc</i> decision in <i>Aqua Products, Inc. v. Matal</i>, No. 15-1177 (Fed. Cir. Oct. 4, 2017).&nbsp; The Court vacated the Patent Trial and Appeal Board&rsquo;s (&ldquo;PTAB&rdquo;) final written decision &ldquo;insofar as it denied the patent owner&rsquo;s motion to amend,&rdquo; and remanded to the PTAB &ldquo;to issue a final decision under [the statute] assessing the patentability of the proposed substitute claims without placing the burden of persuasion on the patent owner.&rdquo; O&rsquo;Malley slip op. at 66.&nbsp; The majority did not come to any agreement as to whether the burden of persuasion should lie with the petitioner or the PTO.<br /><br />The conduct of inter partes review statute, 35 U.S.C. &sect; 316, provides in part:</div><div style="margin-left: 40px;"><br />(a) The&nbsp;Director&nbsp;shall prescribe regulations . . . (9) setting forth standards and procedures for allowing the patent owner to move to amend the patent under subsection (d) to cancel a challenged claim or propose a reasonable number of substitute claims, and ensuring that any information submitted by the patent owner in support of any amendment entered under subsection (d) is made available to the public as part of the prosecution history of the patent; . . .<br /><br />(d)(1) During an inter partes review instituted under this chapter, the patent owner may file 1 motion to amend the patent in 1 or more of the following ways: (A) Cancel any challenged patent claim.&nbsp; (B) For each challenged claim, propose a reasonable number of substitute claims.</div> <div style="margin-left: 40px;">(d)(2) Additional motions to amend may be permitted upon the joint request of the petitioner and the patent owner to materially advance the settlement of a proceeding under section 317, or as permitted by regulations prescribed by the&nbsp;Director.</div> <div style="margin-left: 40px;">(d)(3) An amendment under this subsection may not enlarge the scope of the claims of the patent or introduce new matter.<br /><br />(e) In an inter partes review instituted under this chapter, the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.<br /><i><br /></i></div><div><i>Aqua Products</i> addressed two important questions regarding amended claims in PTAB proceedings under 35 U.S.C. &sect; 316:</div><div>&nbsp;</div><div style="margin-left: 40px;">1.&nbsp;&nbsp;&nbsp;&nbsp; Whether the Patent and Trademark Office (&ldquo;PTO&rdquo;) could require the patent owner to bear the burden of persuasion or production under 35 U.S.C. &sect; 316; and<br /><br />2.&nbsp;&nbsp;&nbsp;&nbsp; Whether the PTAB could raise a patentability challenge to proposed amended claims <i>sua sponte</i>, and where the burden of persuasion or production would lie in such a situation.</div><div><br />The fractured Court issued five separate opinions.<br /><br />The leading opinion was issued by Judge O&rsquo;Malley and supported by a seven-member panel. &nbsp;The majority held that, at least under the current PTO regulations, &ldquo;[t]he only legal conclusions that support and define the judgment of the court are: &nbsp;(1) the PTO has not adopted a rule placing the burden of persuasion with respect to the patentability of amended claims on the patent owner that is entitled to [<i>Chevron</i>] deference; and (2) in the absence of anything that might be entitled deference, the PTO may not place that burden on the patentee.&rdquo;&nbsp; O&rsquo;Malley Slip op. at 66.&nbsp; Judge O&rsquo;Malley described the opinion as &ldquo;narrow&rdquo; asserting that &ldquo;[b]ecause the participating judges have different views&mdash;both as to the judgment we should reach and as to the rationale we should employ in support of that judgment, as explained below, today&rsquo;s judgment is narrow.&rdquo; O&rsquo;Malley slip op. at 6.<br /><br />The Court&rsquo;s analysis clearly identified several judges, including Judge O&rsquo;Malley, who would have held that 35 U.S.C. &sect; 316(e) unambiguously requires the petitioner to carry the burden of persuasion on all propositions of unpatentability, and would have concluded that the PTAB&rsquo;s decision to reject Aqua Products&rsquo; amended claims without considering the entirety of the IPR record was an abuse of discretion. O&rsquo;Malley slip op. at 62.&nbsp;&nbsp; &ldquo;Congress made clear that patent owners may propose amendments to their patents as of right at least once in an IPR.&rdquo; O&rsquo;Malley slip op. at 37.&nbsp; Judge O&rsquo;Malley further explained: &ldquo;By reading too much into &sect; 316(d) and too little into &sect; 316(e), the PTO effectively injects illogic into that framework and undermines its function and purpose.&rdquo; O&rsquo;Malley slip op. at 40.&nbsp; Judge O&rsquo;Malley&rsquo;s opinion repeatedly emphasized the importance of patentees&rsquo; ability to amend their claims in the legislative history and in justifying the PTAB&rsquo;s use of the broadest reasonable construction in IPRs, and concludes that the PTAB&rsquo;s <i>Idle Free Systems, Inc. v Bergstrom, Inc.</i>, IPR2012-00027, Paper 26 (PTAB June 11, 2013) and <i>MasterImage 3D, Inc. v. RealD Inc.</i>, IPR2015-00040, Paper 42 (PTAB July 15, 2015) decisions &ldquo;do not reflect a reasonable accommodation of manifestly competing interests where the agency considered the matter in a detailed and reasoned fashion, and the decision involves reconciling conflicting policies,&rdquo; under Chevron step two. O&rsquo;Malley slip op. at 55 (citing <i>Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc</i>., 467 U.S. 837 (1984)).&nbsp;<br /><br />However, the Court ultimately held that 35 U.S.C. &sect; 316(e) is ambiguous as to who bears the burden of persuasion for proposed substitute claims.&nbsp; Since the majority held that the statute is ambiguous, each of the five opinions addressed the Administrative Procedure Act (&ldquo;APA&rdquo;) and deference under <i>Chevron </i>at length.&nbsp; Consequently, the majority found that there was no interpretation of either 35 U.S.C. &sect; 316(d) or &sect; 316(e) to which courts must defer. O&rsquo;Malley slip op. at 56.<br /><br />The Court&rsquo;s inquiry into whether the PTAB may <i>sua sponte</i> raise patentability challenges to the amended claims was &ldquo;reserved for another day,&rdquo; but the court did reiterate the panel decision that the PTAB may base its patentability determinations of amended claims on the entire record before it, and not limit itself solely on the face of the motion to amend. O&rsquo;Malley slip op. at 60-62.&nbsp; The Court noted that the PTAB&rsquo;s decision to reject Aqua Products&rsquo; proposed amended claims without consideration of the entirety of the IPR record as an independent basis for vacating and remanding the matter to the PTAB.<br /><br />The precedent of <i>Aqua Products</i> is extremely narrow, as Judge O&rsquo;Malley explicitly described. &nbsp;The main takeaway is that the PTAB must assess proposed substitute claims without placing the burden of persuasion on the patent owner. &nbsp;Judge O&rsquo;Malley further wrote that &ldquo;[t]he [PTAB] must follow this same practice in all pending IPRs unless and until the Director engages in notice and comment rulemaking. &nbsp;At that point, the court will be tasked with determining whether any practice so adopted is valid.&rdquo; O&rsquo;Malley slip op. at 66.<br /><br />In a footnote, the Court also addressed prior conflicting decisions: &nbsp;&ldquo;To the extent our prior decisions in <i>Microsoft Corp. v. Proxyconn, Inc.</i>, 789 F.3d 1292 (Fed. Cir. 2015); <i>Prolitec, Inc. v. ScentAir Techs.</i>, Inc., 807 F.3d 1353 (Fed. Cir. 2015), petition for reh&rsquo;g pending; <i>Synopsys, Inc. v. Mentor Graphics Corp</i>., 814 F.3d 1309 (Fed. Cir. 2016); and <i>Nike, Inc. v. Adidas AG</i>, 812 F.3d 1326 (Fed. Cir. 2016), are inconsistent with this conclusion, we overrule those decisions.&rdquo; O&rsquo;Malley slip op. at 5 n.1.<br /><br />The voluminous commentary also included two concurring decisions and two dissenting opinions.&nbsp; The first concurrence was authored by Judge Moore who joined Judge O&rsquo;Malley&rsquo;s opinion in its entirety and agreed with Judge Reyna&rsquo;s conclusion that the agency actions at issue are not entitled to <i>Chevron</i> deference.&nbsp; Judge Moore wrote separately to address the problems with the Director&rsquo;s attempt to extend <i>Chevron</i> deference beyond any prior applications of the doctrine and to explain why the PTAB&rsquo;s opinions are not entitled to <i>Chevron</i> deference.&nbsp;<br /><br />Judge Reyna&rsquo;s concurrence argued that the majority and Judge Taranto&rsquo;s dissent incorrectly &ldquo;operate under the premise that whether Chevron deference is warranted is a yes-or-no question.&rdquo; Reyna slip op. at 1-2.&nbsp; Judge Reyna agreed with Judge Taranto&rsquo;s reading of &sect; 316(e) as ambiguous and of &sect; 316(a)(9) as authorizing the PTO to promulgate a regulation on the burden of persuasion. &nbsp;The concurrence argued that the PTO&rsquo;s general discussion finding that the burden of persuasion is &ldquo;borne by the patentee&rdquo; is not an interpretation of the statute that carries the full force of law. Reyna slip op. at 2. &nbsp;Judge Reyna also concluded that &sect; 316(d) and 37 C.F.R. &sect; 42.121 place a default burden of production on the patentee.&nbsp;<br /><br />Judge Taranto&rsquo;s dissent argued that &sect; 316(a), which authorizes the PTO Director to prescribe regulations governing IPRs, also authorizes the Director to address who has the burden of persuasion for amended claims.&nbsp; Judge Taranto claimed that &ldquo;&sect; 316(e) does not&nbsp;unambiguously<i>&nbsp;</i>bar assigning that burden to the patent owner.&rdquo; Taranto slip op. at 1-2. &nbsp;Contrary to the majority opinion, Judge Taranto argued that the PTO prescribed 37 C.F.R. &sect; 42.20(c), &nbsp;a regulation assigning the burden to the patent owner, which states that any movant bears the burden of proof to establish that it is entitled to its requested relief.&nbsp;<br /><br />Judge Hughes&rsquo;s dissent highlighted the fact that the majority agreed that the statute is ambiguous, which mandates deference to the Director&rsquo;s interpretation of the statute.&nbsp; The dissent further argued that the <i>Aqua Products</i> decision contravenes traditional rules of administrative law when faced with an ambiguous statute, which is to determine whether the PTO&rsquo;s interpretation was reasonable.&nbsp;Judge Hughes proposed that even if the PTO&rsquo;s regulation offered by Judge Taranto, 37 C.F.R. &sect; 42.20(c), is ambiguous, the PTO is also entitled to deference for its interpretation of its own regulation under&nbsp;<i>Auer v. Robbins</i>, 519 U.S. 452 (1997).<br /><br />While Judge O&rsquo;Malley admitted that &ldquo;very little said over the course of the many pages that</div> <div>form the five opinions in [<i>Aqua Products</i>] has precedential weight,&rdquo; we can expect some far-reaching effects of this decision. O&rsquo;Malley slip op. at 65-66. &nbsp;The Court&rsquo;s decision effectively invites the PTO to clarify the burden of proof for motions to amend, through notice and comment rulemaking.&nbsp; Judge O&rsquo;Malley observed that the PTAB&rsquo;s existing regulations on the burden of production may create a hole by which the PTAB could reach the same conclusion on the patentability of proposed amended claims as existed under <i>Idle Free </i>and <i>MasterImage</i>.<br /><br />We will continue to monitor developments in the law on amended claims in PTAB proceedings.&nbsp; In the meantime, please feel free to contact one of our attorneys regarding the issues raised by this case.<br /><br />* Charles R. Macedo is a Partner and Christopher Lisiewski is a Legal Intern at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice focus on all facets of the intellectual property law, including patent, trademark and copyright.&nbsp; They may be contacted at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a> and <a href="mailto:clisiewski@arelaw.com">clisiewski@arelaw.com</a>.</div> Tue, 10 Oct 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/alert101017/ In The Press: <br>2017 New York Metro Super Lawyers Names Nine Attorneys From The Firm For Intellectual Property, Intellectual Property Litigation and Alternative Dispute Resolution and Three Attorneys as Rising Stars <br> http://www.arelaw.com/publications/view/inthepress100317/ Amster, Rothstein &amp; Ebenstein LLP is pleased to announce that 2017 New York Metro <i>Super Lawyer</i>&nbsp;<i>Magazine </i>has named nine of its Attorneys including: <div>&nbsp;</div> <div><strong>Partners:</strong></div> <div>&nbsp;</div> <div><b><a href="http://www.arelaw.com/professional/debenstein/" target="_blank">Daniel S. Ebenstein</a></b>&nbsp;<br /> Intellectual Property&nbsp;<br /> Selected to Super Lawyers 2006, 2013 - 2017</div> <div>&nbsp;</div> <div><b><a href="http://www.arelaw.com/professional/alocicero/" target="_blank">Anthony F. Lo Cicero</a></b>&nbsp;<br /> Intellectual Property&nbsp;<br /> Selected to Super Lawyers 2007 - 2017</div> <div>&nbsp;</div> <div><b><a href="http://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a></b>&nbsp;<br /> Intellectual Property&nbsp;<br /> Selected to Super Lawyers 2011 - 2017</div> <div>&nbsp;</div> <div><b><a href="http://www.arelaw.com/professional/miro/" title="https://profiles.superlawyers.com/new-york-metro/new-york/lawyer/douglas-a-miro/08f1f4ef-2702-4537-9fc9-802e785143fa.htmlCmd+Click to follow link" target="_blank">Douglas A. Miro</a></b>&nbsp;</div> <div>Intellectual Property, Intellectual Property Litigation&nbsp;</div> <div>Selected to Super Lawyers 2006, 2009 - 2017</div> <div>&nbsp;</div> <div><b><a href="http://www.arelaw.com/professional/nzipkin/" target="_blank">Neil M. Zipkin</a></b>&nbsp;<br /> Intellectual Property, Intellectual Property Litigation, Alternative Dispute Resolution&nbsp;<br /> Selected to Super Lawyers 2006, 2013 - 2017</div> <div>&nbsp;</div> <div><strong>Senior Counsel:<br /><br type="_moz" /></strong></div> <div><b><a href="http://www.arelaw.com/professional/mberkowitz/" target="_blank">Mark Berkowitz</a></b>&nbsp;<br /> Intellectual Property Litigation&nbsp;<br /> Rising Stars 2015 - 2017</div> <div>&nbsp;</div> <div><b><a href="http://www.arelaw.com/professional/rmandaro/" onclick="window.open(this.href,'','resizable=no,location=no,menubar=no,scrollbars=no,status=no,toolbar=no,fullscreen=no,dependent=no,status'); return false">Richard S. Mandaro</a></b>&nbsp;<br /> Intellectual Property&nbsp;<br /> Selected to Super Lawyers 2013 - 2017</div> <div>&nbsp;</div> <div><strong>Associates:<br /><br type="_moz" /></strong></div> <div><b><a href="http://www.arelaw.com/professional/shudak/" target="_blank">Sandra A. Hudak</a></b>&nbsp;<br /> Intellectual Property Litigation, Intellectual Property&nbsp;<br /> Rising Stars 2017</div> <div>&nbsp;</div> <div><b><a href="https://profiles.superlawyers.com/new-york-metro/new-york/lawyer/tuvia-rotberg/90835d63-ca36-4e24-8b58-50dc8ed497a3.html" target="_blank">Tuvia Rotberg</a></b>&nbsp;<br /> Intellectual Property Litigation&nbsp;<br /> Rising Stars 2016 - 2017</div> <div>&nbsp;</div> <div><strong>Congratulations to our Super Lawyers.</strong></div> <div>&nbsp;</div> <div><a href="https://profiles.superlawyers.com/new-york-metro/new-york/lawfirm/amster-rothstein-and-ebenstein-llp/8f061797-a903-4c7a-938f-2e0ce2b082a5.html" target="_blank">https://profiles.superlawyers.com/new-york-metro/new-york/lawfirm/amster-rothstein-and-ebenstein-llp/8f061797-a903-4c7a-938f-2e0ce2b082a5.html</a></div> Tue, 03 Oct 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress100317/ Supreme Court 2016-2017 IP Case Review http://www.arelaw.com/publications/view/supreme-court-2016-2017-ip-case-review/ In the past term, the Supreme Court continued to show a keen interest in intellectual property issues.&nbsp; The Court issued opinions in five patent cases, one design patent case, one trademark case, one copyright case and even a trade secret case.&nbsp;<a href="http://pub.lucidpress.com/NYIPLA2017AugustSeptember/#Yo9zUdQAn07i" target="_blank">Read more&gt;&gt;</a> Fri, 29 Sep 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/supreme-court-2016-2017-ip-case-review/ Patent Law Alert: <br>Federal Circuit Clarifies “Regular And Established Business” For Venue Purposes in In re Cray Inc.<br> http://www.arelaw.com/publications/view/alert092117/ <div>On September 21, 2017, the United States Court of Appeals for the Federal Circuit issued its decision in <i>In re Cray Inc.</i> The Federal Circuit granted a writ of mandamus and vacated an order of the United States District Court for the Eastern District of Texas (&ldquo;District Court&rdquo;) denying a motion to transfer. In doing so, the court rejected the four-factor test established by Judge Gilstrap to determine what constitutes a &ldquo;regular and established place of business&rdquo; within the meaning of 28 U.S.C. 1400(b).<br /><br />In vacating the District Court's decision, the Federal Circuit set forth a new three-part test to assist courts in defining a &ldquo;regular and established place of business&rdquo; means within the meaning of Section 1400(b).&nbsp; The Federal Circuit listed the following three requirements as relevant to the inquiry:</div> <div>&nbsp;</div> <div style="margin-left: 40px;">(1) there must be a physical place in the district;</div> <div style="margin-left: 40px;">&nbsp;</div> <div style="margin-left: 40px;">(2) it must be a regular and established place of business; and</div> <div style="margin-left: 40px;">&nbsp;</div> <div style="margin-left: 40px;">(3) it must be the place of the defendant.</div> <div>&nbsp;</div> <div>If any of these statutory requirements is not satisfied, venue is improper.<br /><br />In the District Court proceeding, Cray moved to transfer the action and argued that it did not &ldquo;reside&rdquo; in the Eastern District of Texas in light of the Supreme Court's recent decision in <i>TC Heartland LLC v. Kraft Foods Group Brands LLC,</i> 137 S. Ct. 1514 (2017).&nbsp; Cray also argued that venue was improper in the Eastern District of Texas because Cray had neither committed acts of infringement, nor maintained &ldquo;a regular and established place of business&rdquo; within that district. The District Court rejected that argument and found that venue was proper based, among other facts, on a Cray employee&rsquo;s activities within the District.&nbsp;Cray petitioned the Federal Circuit for a writ of mandamus.<br /><br />In vacating the District Court&rsquo;s order, the Federal Circuit found that the District Court misunderstood the scope and effect of its prior decisions, leading it to improperly deny the motion to transfer. As the Federal Circuit stated,&nbsp;&ldquo;although the law was unclear and the error understandable, the district court abused its discretion by applying an incorrect legal standard, which we now clarify in this opinion.&rdquo;&nbsp;<br /><br />In its analysis of whether Cray has a &ldquo;regular and established place of business&rdquo; in the Eastern District of Texas within the meaning of Section 1400(b), the Federal Circuit focused on the language of the statute.&nbsp; It held that Section 1400(b) requires that &ldquo;a defendant has&rdquo; a &ldquo;place of business&rdquo; that is &ldquo;regular&rdquo; and &ldquo;established.&rdquo;&nbsp; &nbsp;It found that the four-factor test used by the lower court was not sufficiently tethered to the statutory language, and thus failed to inform each of the necessary requirements of the statute.&nbsp; Rather, the Federal Circuit stated, &ldquo;the analysis must be closely tied to the language of the statute.&rdquo;&nbsp;<br />With regard to the first requirement that there &ldquo;must be a physical place in the district&rdquo; the court found that the statute cannot be read to refer merely to a virtual space or to electronic communications from one person to another. Rather, there must be a physical, geographical location in the district from which the business of the defendant is carried out.&nbsp;<br /><br />In its analysis of the second factor that the place &ldquo;must be a regular and established place of business&rdquo; the court focused on the word &ldquo;regular.&rdquo;&nbsp; It stated that &ldquo;a business may be&rdquo; regular, &ldquo;for example, if it operates in a steady, uniform, orderly and methodical manner.&rdquo;&nbsp; Neither sporadic business activity, nor a transient business location, can create venue.&nbsp;&nbsp;<br /><br />In its analysis of the third&nbsp;prong that the place of business &ldquo;must be the place of the defendant,&rdquo; the court explains that an employee's residence in a district is not necessarily enough to establish venue.&nbsp; &ldquo;The mere fact that a defendant has advertised that it has a place of business or has even set up an office is not sufficient; the defendant must actually engage in business from that location.&rdquo; This was the crucial factor upon which the court relied in vacating the District Court's decision. The Federal Circuit found that an employee's home was not a regular and established place of business of Cray.&nbsp; Cray did not own, lease or rent any portion of the employee's home in the Eastern District of Texas. Further there was no evidence that indicated that Cray played a part in selecting the employee's location, or stored inventory or conducted demonstrations in the employee's home. Additionally, the employee's employment was not conditioned upon his maintenance of a location in the Eastern District of Texas. The District Court had merely found that there was a physical location within the district where an employee of the defendant carried on certain work for his employer.&nbsp;</div> <div>The Federal Circuit explained that no one factor was controlling.&nbsp; However, taken together the facts did not support a finding that Cray had an established a place of business in the Eastern District of Texas and thus venue was improper under Section 1400(b). The case was remanded back to the District Court to determine the proper transferee district.<br /><br />This decision will help companies and courts more easily determine whether a &ldquo;regular and established place of business&rdquo; exists for the purpose of venue under Section 1400(b).<br /><br />We will continue to monitor developments in the law on patent venue.&nbsp; In the meantime, please feel free to contact one of our attorneys regarding the issues raised by this case.</div> <div>&nbsp;</div> <div>* Anthony F. Lo Cicero is a Partner and Richard Mandaro is Senior Counsel at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice specializes in intellectual property issues.&nbsp;&nbsp; They can be reached at <a href="mailto:alocicero@arelaw.com">alocicero@arelaw.com</a> and <a href="mailto:rmandaro@arelaw.com">rmandaro@arelaw.com</a>.</div> Thu, 21 Sep 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/alert092117/ US Supreme Court clarifies definition of corporate residence for purpose of patent venue http://www.arelaw.com/publications/view/091417/ <em>Journal of Intellectual Property Law &amp; Practice</em>, jpx163,&nbsp;<a href="https://doi.org/10.1093/jiplp/jpx163">https://doi.org/10.1093/jiplp/jpx163<br /></a><em><br />TC Heartland LLC v Kraft Foods Group Brands LLC</em>, 581&thinsp;US __ (2017), Supreme Court of the United States, 22 May 2017<br /><br /><p>The US Supreme Court unanimously held that &lsquo;a domestic corporation &ldquo;resides&rdquo; only in its state of incorporation for purposes of the patent venue statute.&rsquo; The court reversed the decision of the United States Court of Appeals for the Federal Circuit, rejecting a line of authority which dates back to at least 1990 in&nbsp;<em>VE Holding Corp. v Johnson Gas Appliance Co.</em>, 917 F.2d 1574 (Fed. Cir. 1990), in which the Federal Circuit held that the statutory definition of corporate residence found in the general venue statute is incorporated into the patent venue statute.</p><div scrollto-destination="96549071" id="96549071"><b>Legal context</b><br /><br />The patent venue statute, 28 USC &sect;1400(b), provides:</div><blockquote><div>[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.</div></blockquote><div>In&nbsp;<em>Fourco Glass Co. v Transmirra Products Corp</em>., 353&thinsp;US 222 (1957), the United States Supreme Court held that, for purposes of &sect;1400(b), a defendant that is a domestic corporation &lsquo;resides&rsquo; only in its state of incorporation. In rendering its decision in&nbsp;<em>Fourco</em>, the court rejected an argument that &sect;1400(b) incorporated the definition of corporate &lsquo;residence&rsquo; that was found in the general venue statute, 28 USC &sect;1391(c).</div><div>Since the court&rsquo;s decision in&nbsp;<em>Fourco</em>, &sect;1400(b) has not been amended, but Congress has amended &sect;1391 twice, in 1988 and again in 2011. The current version of &sect;1391 reads as follows:</div><blockquote><div>(a) Applicability of Section.<strong>&mdash;</strong>Except as otherwise provided by law&mdash;&hellip;</div><div><br />(c) Residency.&mdash;For all venue purposes&mdash;&hellip; an entity with the capacity to sue and be sued in its common name under applicable law, whether or not incorporated, shall be deemed to reside, if a defendant, in any judicial district in which such defendant is subject to the court&rsquo;s personal jurisdiction with respect to the civil action in question &hellip; .</div></blockquote><div>The issue in the present case,&nbsp;<em>TC Heartland LLC v Kraft Foods Group Brands LLC</em>&nbsp;(<em>TC Heartland</em>) was whether the definition of corporate &lsquo;residence&rsquo; that is found in the current version of &sect;1391(c) superseded the definition set forth by the court in&nbsp;<em>Fourco</em>&nbsp;and thus permitted a corporation to be sued for patent infringement in any district in which the corporation is subject to the personal jurisdiction of the district court. Unlike other areas of law where the US Supreme Court has refused to find patent law special, in this case the court found that it was in fact special.</div><p><b>Facts</b><br /><br />TC Heartland LLC (Heartland) is an Indiana limited liability company whose headquarters is in Indiana.&nbsp;<em>In re TC Heartland</em>, 821 F.3d 1338, 1340 (Fed. Cir. 2016). (The case came to the Supreme Court on the understanding that Heartland is a corporation.) Heartland manufactures liquid water enhancer products. Kraft Foods Group Brands LLC (Kraft) is a Delaware corporation whose principal place of business is in Illinois. Kraft sued Heartland in the United States District Court for the District of Delaware, accusing certain of Heartland&rsquo;s products of infringing three of Kraft&rsquo;s patents.</p><div>Based on Heartland&rsquo;s admission that it had shipped orders of the accused products into Delaware pursuant to two national accounts, the Magistrate Judge of the district court concluded that the district court had personal jurisdiction over Heartland for Kraft&rsquo;s patent infringement claims.<br /><br />Heartland nonetheless alleged that it had no specific contacts with the District of Delaware, including no physical presence in Delaware, no supply contracts or sales accounts in Delaware, and no registration to do business in Delaware. Accordingly, Heartland argued that the current version of &sect;1391, as amended in 2011, rendered the District of Delaware an improper venue for Kraft&rsquo;s patent infringement lawsuit.<br /><br />In its opinion, the Federal Circuit held that Congress&rsquo;s 2011 amendments to &sect;1391(c) did not affect its holding in&nbsp;<em>VE Holding Corp. v Johnson Gas Appliance Co.</em>&nbsp;and that the definition of corporate residence in &sect;1391(c) applies to &sect;1400(b) as well.&nbsp;<em>In re TC Heartland LLC</em>, 821 F.3d at 1341&ndash;2. The Federal Circuit explained that in&nbsp;<em>VE Holding</em>&nbsp;it found that Congress vitiated the&nbsp;<em>Fourco</em>&nbsp;decision with its 1988 amendments to &sect;1391 by making the definition of corporate residence in &sect;1391 applicable to patent cases as well. The Federal Circuit also rejected Heartland&rsquo;s argument that Congress&rsquo;s 2011 amendments to &sect;1391 codified the&nbsp;<em>Fourco</em>&nbsp;decision.<br /><b><br />Analysis</b><br /><br />In&nbsp;<em>TC Heartland</em>, a unanimous (Justice Gorsuch took no part in the consideration or decision of this case) Supreme Court reversed the Federal Circuit, and held that &lsquo;a domestic corporation &ldquo;resides&rdquo; only in its State of incorporation for purposes of the patent venue statute.&rsquo; Slip op. at 2.</div><div>Since Congress has not amended &sect;1400(b) since&nbsp;<em>Fourco</em>, the court considered whether the meaning of &sect;1400(b) changed when Congress amended &sect;1391. The court concluded that there was no clear indication in the text of &sect;1391 that Congress intended to change the meaning of &sect;1400(b) as interpreted by&nbsp;<em>Fourco</em>&nbsp;when it amended &sect;1391. In particular, the court reasoned that the current version of &sect;1391(c)&mdash;whose default applicability is &lsquo;[f]or all venue purposes&rsquo;&mdash;is essentially the same as the version that was at issue in&nbsp;<em>Fourco</em>&mdash;whose default applicability was &lsquo;for venue purposes&rsquo;. The court pointed out that in&nbsp;<em>Fourco</em>&nbsp;it rejected the argument that such language in &sect;1391 includes patent venue.<br /><br />The court also noted that the current version of &sect;1391 includes a &lsquo;saving clause&rsquo;, which states that &sect;1391 is inapplicable when &lsquo;otherwise provided by law&rsquo;. Slip op. at 9. In the court&rsquo;s opinion, the inclusion of a saving clause in &sect;1391 provides an even firmer basis for the court&rsquo;s holding in&nbsp;<em>Fourco</em>, because it recognizes that other venue statutes may include a definition of &lsquo;resides&rsquo; which conflicts with the default definition provided in &sect;1391(c).<br /><br />Finally, the court found no indication that the 2011 amendments to &sect;1391 ratified the Federal Circuit&rsquo;s decision in&nbsp;<em>VE Holding</em>. In particular, in 1988 Congress amended &sect;1391(c) so that on its face it was applicable &lsquo;[f]or purposes of venue under this chapter&rsquo;. 28 USC &sect;1391(c) (1988). The Federal Circuit interpreted the phrase &lsquo;this chapter&rsquo; to refer to chapter 87 of title 28, which includes both &sect;&sect;1391(c) and 1400(b).&nbsp;<em>VE Holding</em>, 917 F.2d at 1578. Accordingly, the Federal Circuit held that the 1988 amendment to &sect;1391(c) redefined the meaning of the word &lsquo;resides&rsquo; in &sect;1400(b). As the Supreme Court pointed out in&nbsp;<em>TC Heartland</em>, Congress&rsquo;s amendment of &sect;1391 in 2011 deleted the phrase &lsquo;under this chapter&rsquo; from &sect;1391(c) and thus returned &sect;1391 to the almost identical language it had in its original version, thereby undermining the Federal Circuit&rsquo;s rationale in&nbsp;<em>VE Holding</em>. Slip op. at 9&ndash;10.<br /><br /><b>Practical significance</b><br /><br />By narrowing the definition of corporate residence for patent venue purposes to the state where a corporation is incorporated,&nbsp;<em>TC Heartland</em>&nbsp;significantly reduces the number of judicial districts where a corporation can be sued for patent infringement. However,&nbsp;<em>TC Heartland</em>&nbsp;was not without limits. The statute leaves open the possibility of a domestic corporation being sued &lsquo;where the defendant has committed acts of infringement and has a regular and established place of business&rsquo;. The statute also does not address where unincorporated entities or foreign corporations may be sued and the court expressly reserved judgement on those issues.</div><div>No doubt the number of lawsuits where the venue will be appropriate in the popular United States District Court for the Eastern District of Texas will be reduced. It is anticipated, that since many corporations are incorporated in the State of Delaware, the number of patent cases filed in the District of Delaware will increase. It is likely that lawsuits in other venues with significant business operations and incorporated entities, like New York, will also see an increase in lawsuits filed.</div> Mon, 18 Sep 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/091417/ US Supreme Court reverses Federal Circuit’s precedent on patent exhaustion http://www.arelaw.com/publications/view/091317/ <em>Journal of Intellectual Property Law &amp; Practice</em>, jpx162<br /><br /><em>Impression Products Inc. v Lexmark International Inc.</em>, No. 15&ndash;1189, 581&thinsp;US ___ (2017), Supreme Court of the United States, 30 May 2017<br /><br /><div>The US Supreme Court held that &lsquo;a patentee&rsquo;s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.&rsquo; Justice Ginsburg issued her own opinion, in which she concurred &lsquo;in the Court&rsquo;s holding regarding domestic exhaustion&rsquo; but dissented &lsquo;from the Court&rsquo;s holding on international exhaustion.&rsquo;&nbsp;<em>Impression Products</em>&nbsp;reverses precedent of the United States Court of Appeals for the Federal Circuit on both domestic and international patent exhaustion.<br /><br /><b>Legal context</b><br /><br />A US patent grants the patentee an exclusive right to exclude others from &lsquo;making, using, offering for sale, or selling the invention throughout the United States or importing the invention into the United States.&rsquo; 35 USC &sect; 154(a); see also 35 USC &sect; 271(a).<br /><br />In&nbsp;<em>Impression Products</em>, the US Supreme Court was asked to address two important questions regarding the scope of the doctrine of patent exhaustion:</div><ol><li><div>Whether a patentee that sells an item under an express restriction on the purchaser&rsquo;s right to reuse or resell the product can enforce that restriction through a patent infringement lawsuit.</div></li><li><div>Whether a patentee exhausts its patent rights by selling its products outside the United States, where US patent laws do not apply.</div></li></ol><div>The court found exhaustion in both instances, contrary to decades of Federal Circuit precedent.</div><p><b>Facts</b><br /><br />Lexmark International, Inc. (&lsquo;Lexmark&rsquo;) designs, manufactures and sells toner cartridges that are used in laser printers. Lexmark holds patents that cover components of the toner cartridges and the manner in which the cartridges are used.<br /><br />Lexmark sells toner cartridges in the United States and in other countries. Purchasers of Lexmark cartridges under its &lsquo;Return Program&rsquo; receive a roughly 20 per cent discount on the price of the cartridges in exchange for their contractual promise to use them only once and to return the empty cartridges only to Lexmark. Each Return Program cartridge includes a microchip which renders the cartridge unusable once the toner runs out.</p><div>Several so-called &lsquo;remanufacturers&rsquo; obtained empty Return Program toner cartridges from Lexmark customers in the United States and abroad. After developing a way to circumvent the microchips in the cartridges, the remanufacturers refilled the cartridges with toner and resold them.<br /><br />Lexmark sued the remanufacturers, including Impression Products, Inc., for patent infringement based on both Return Program cartridges that Lexmark sold in the United States and Return Program cartridges that Lexmark sold abroad. Lexmark argued that it sold the cartridges domestically with an express prohibition on their reuse and resale, and that, as a result, Impression Products infringed Lexmark&rsquo;s patents when it refilled and resold the cartridges. With regard to its foreign sales of Return Program cartridges, Lexmark argued that it did not authorize anyone to import those cartridges into the United States, and thus Impression Products infringed Lexmark&rsquo;s patents when it imported the cartridges into the United States.<br /><br />Impression Products countered that Lexmark&rsquo;s sales of the Return Program cartridges, both domestic and foreign, exhausted Lexmark&rsquo;s patent rights in those cartridges. The district court agreed with Impression Products as to Lexmark&rsquo;s domestic sales of Return Program cartridges, but not as to Lexmark&rsquo;s foreign sales.<br /><br />In its&nbsp;<em>en banc</em>&nbsp;decision (816 F. 3d 721, 735 (2016)), the Federal Circuit ruled in favour of Lexmark as to both its domestic and foreign sales of Return Program cartridges. In accordance with its decision in&nbsp;<em>Mallinckrodt, Inc. v Medipart, Inc.</em>, the Federal Circuit held that Lexmark&rsquo;s domestic sales of Return Program cartridges did not result in patent exhaustion because Impression Products knew of the reuse and resale restrictions that accompanied those sales, and those restrictions were lawful. As to Lexmark&rsquo;s foreign sales of the Return Program cartridges, the Federal Circuit relied on its decision in&nbsp;<em>Jazz Photo Corp. v International Trade Commission</em>&nbsp;to hold that Lexmark&rsquo;s foreign sales also did not result in patent exhaustion.<br /><br />A petition for certiorari was filed thereafter, raising both of these issues for resolution by the US Supreme Court.</div><p><b>Analysis</b><br /><br />The Supreme Court reversed the Federal Circuit, and held that &lsquo;a patentee&rsquo;s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.&rsquo; Slip op. at 2. The court reversed the&nbsp;<em>en banc</em>&nbsp;decision of the Federal Circuit below and remanded the case to the Federal Circuit for further proceedings consistent with its opinion.</p><p><b>1. Lexmark&rsquo;s domestic sales of Return Program cartridges</b></p><div>The court concluded that Lexmark&rsquo;s patent rights in the Return Program cartridges it sold in the United States were exhausted &lsquo;the moment it sold them&rsquo;. Slip op. at 5. &lsquo;The single-use/no-resale restrictions in Lexmark&rsquo;s contracts may have been clear and enforceable under contract law, but they do not entitle Lexmark to retain patent rights in an item it has elected to sell&rsquo; (Id). The Court&rsquo;s conclusion was grounded in the &lsquo;venerable principle&rsquo; against restraints on alienation, as well as in the court&rsquo;s &lsquo;well-settled line of precedent&rsquo; that, even in the face of an express restriction, a patentee does not retain patent rights in a product it has sold. Slip op. at 6&ndash;9. In particular, the court stated that its decision in&nbsp;<em>Quanta Computer, Inc. v LG Electronics, Inc</em>., 553&thinsp;US 617 (2008), settled that &lsquo;patent exhaustion applies even when a sale is subject to an express, otherwise lawful restriction.&rsquo; Slip op. at 9.<br /><br />The court also noted that, since a patent license does not pass title to a product, a patent license does not involve the same concerns about a restraint on alienation as a sale. Hence, a patentee can impose restrictions on a licensee. However, if the licensee complies with the license when selling a licensed product, the licensee&rsquo;s sale of the product will exhaust the patentee&rsquo;s patent rights in that item.<br /><br />&lsquo;In sum, patent exhaustion is uniform and automatic. Once a patentee decides to sell&mdash;whether on its own or through a licensee&mdash;that sale exhausts its patent rights, regardless of any post-sale restrictions the patentee purports to impose, either directly or through a license.&rsquo; Slip op. at 13.</div><p><b>2. Lexmark&rsquo;s foreign sales of Return Program cartridges</b></p><div>For the Return Program cartridges Lexmark sold outside the United States, the court held that &lsquo;[a]n authorized sale outside the United States, just as one within the United States, exhausts all rights under the Patent Act.&rsquo; Slip op. at 13. Here, the court relied on its holding in&nbsp;<em>Kirtsaeng v</em><em>John Wiley &amp; Sons, Inc.</em>, 568&thinsp;US 519 (2013), that the copyright &lsquo;first sale&rsquo; doctrine applies to copies of copyrighted works sold outside the United States, and on the strong similarity between the copyright &lsquo;first sale&rsquo; doctrine and the patent exhaustion doctrine and the bond between copyright and patent law. According to the court, the territorial limit on patent rights is irrelevant because patent exhaustion is triggered by a patentee&rsquo;s decision to exchange a patented item and the invention it embodies for whatever compensation it deems appropriate.</div><p><b>3. Justice Ginsburg&rsquo;s Opinion</b></p><div>Justice Ginsburg wrote separately to &lsquo;concur in the Court&rsquo;s holding regarding domestic exhaustion&mdash;a patentee who sells a product with an express restriction on reuse or resale may not enforce that restriction through an infringement lawsuit, because the U.S. sale exhausts the U.S. patent rights in the product sold.&rsquo; Ginsburg, J., op. at 1. She dissented, however, from the court&rsquo;s holding that a foreign sale exhausts a US patentee&rsquo;s US patent rights (Id). (Justice Ginsburg likewise dissented from the court&rsquo;s decision in&nbsp;<em>Kirtsaeng</em>&nbsp;that a foreign sale exhausts US copyright protections.)<br /><br />Justice Ginsburg argued that, since patent rights are territorial, a foreign sale of a product does not implicate the US patent system and thus should not operate to exhaust a patentee&rsquo;s US patent rights. She also argued that the court&rsquo;s reliance on&nbsp;<em>Kirtsaeng</em>&nbsp;was inapposite since the US Patent Act does not have an analogue to the copyright first-sale provision in 17 USC &sect;109(a), which was at issue in&nbsp;<em>Kirtsaeng</em>. Furthermore, Justice Ginsburg added that, unlike patent protections, copyright protections are harmonized across countries under the Berne Convention, and thus US and foreign copyright protections are likely to be similar.</div><p><b>Practical significance</b></p>While&nbsp;<em>Impression Products</em>&nbsp;answered the two questions posed, it has raised new questions and while likely impact licensing strategy going into the future. For example, the rationale of&nbsp;<em>Impression Products</em>focuses heavily on the free alienability of goods in commerce, but it says nothing about services, and the impact of the exhaustion doctrine on such services. The court also found that under the exhaustion doctrine patent remedies would not be available for violations of post-sale restrictions of goods, but it expressly left open the possibility that contract law might be enforced. No doubt, many prior settlement agreements which tried to apportion liability among joint tortfeasors using the prior guidance in&nbsp;<em>Mallinckrodt, Inc. v Medipart, Inc.</em>&nbsp;will be subject to new scrutiny going forward. Patent infringement actions may be substituted with new breach of contract and tortious interference actions going forward. Only time will tell the ultimate impact of the significant deviation from the law as expressed by the Federal Circuit for decades.&nbsp; Wed, 13 Sep 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/091317/ The Bitcoin Network, Blockchain Technology and Altcoin Futures http://www.arelaw.com/publications/view/article091217/ <div><a href="http://www.ipwatchdog.com/author/charmac/"><img border="0" id="_x0000_i1025" src="http://www.ipwatchdog.com/wp-content/uploads/2015/12/pic_cmacedo-80x100.jpg" scale="0" alt="" /></a></div> <div><strong><br />IPWATCHDOG</strong><br /><br />In 2008, as the financial markets crumbled in the largest economic crisis the world has seen since the 1930s, Satoshi Nakamoto published a white paper describing his&nbsp;<strong>Bitcoin</strong>network and the&nbsp;<strong>blockchain</strong>&nbsp;technology that was used to enable it.&nbsp; (By common convention, Bitcoin with a capital &ldquo;B&rdquo; typically refers to the Bitcoin network as a whole, whereas bitcoin with a lowercase &ldquo;b&rdquo; refers to the digital asset of the Bitcoin network.)&nbsp; Since then, while markets have recovered, Nakamoto&rsquo;s creation has flourished and spawned countless other &ldquo;<strong>altcoins</strong>&rdquo; along with new uses and applications for his blockchain technology and its derivatives.<br /><br />Because the Bitcoin network and blockchain technology have become key components of today&rsquo;s digital economy, it is important for attorneys and others to understand the basic terminology and features of this technology. &nbsp;This article provides high-level explanations for this purpose.<br /><br />* * * *<br /><br /><b><font size="5"><strong>Block out some time this week</strong></font></b></div> <div>&nbsp;</div> <div>On Thursday, September 14, 2017 at noon EDT, we will be&nbsp;<a href="https://intellar.com/main/09-14-bitcoin-blockchain-webinar/" target="_blank">hosting a webinar to discuss Keeping Up with the Bitcoin and Blockchain Opportunity</a>, using smart dashboards maintained by&nbsp;<a href="https://www.intellar.com/" target="_blank">Intellar.com</a>&nbsp;to track global players, technologies and events in this explosive area.<br /><br />For more information on Bitcoin, blockchain, altcoins, and intellectual property issues associated therewith, please contact the author at&nbsp;<a href="mailto:cmacedo@arelaw.com" target="_blank">cmacedo@arelaw.com</a>&nbsp;and for more information on Intellar&trade; dashboards powered by Perception Partners&reg; please contact author at&nbsp;<a href="mailto:bbrager@perceptionpartners.com" target="_blank">bbrager@perceptionpartners.com</a>.<br /><br />(Full Article is available at IPWATCHDOG: &nbsp;<a href="http://www.ipwatchdog.com/2017/09/12/bitcoin-network-blockchain-technology-altcoin-futures/id=87916/">http://www.ipwatchdog.com/2017/09/12/bitcoin-network-blockchain-technology-altcoin-futures/id=87916/</a>)</div> Tue, 12 Sep 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/article091217/ In The Press:<br>Law360 Turns to Partner Charles R. Macedo for Thoughts On Biggest Open Questions in Trademark Law Analysis<br> http://www.arelaw.com/publications/view/inthepress083017/ <div>The Biggest Open Questions In Trademark Law, Part 1 By Bill Donahue</div> <div>&nbsp;</div> <div>How Do You Protect Marijuana Marks?</div> <div>&nbsp;</div> <div>***</div> <div>&nbsp;</div> <div>&ldquo;Now that many states have legalized marijuana, will the PTO adapt its rules to allow for federal registrations?&rdquo; asked Charles R. Macedo, a partner at Amster Rothstein &amp; Ebenstein LLP.</div> <div>&nbsp;</div> <div>Available at <a href="https://www.law360.com/ip/articles/958500/the-biggest-open-questions-in-trademark-law-part-1?nl_pk=88415768-d0fc-4b8c-ac54-c442ceb4e1f6&amp;utm_source=newsletter&amp;utm_medium=email&amp;utm_campaign=ip" target="_blank">https://www.law360.com/ip/articles/958500/the-biggest-open-questions-in-trademark-law-part-1?nl_pk=88415768-d0fc-4b8c-ac54-c442ceb4e1f6&amp;utm_source=newsletter&amp;utm_medium=email&amp;utm_campaign=ip</a></div> <div>(Subscription Required)</div> Wed, 30 Aug 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress083017/ US Supreme Court holds that the disparagement clause of the Lanham Act is unconstitutional http://www.arelaw.com/publications/view/081817/ <em>Journal of Intellectual Property Law &amp; Practice</em>, jpx146,<br /><a href="https://academic.oup.com/jiplp/article/doi/10.1093/jiplp/jpx146/4085326/US-Supreme-Court-holds-that-the-disparagement?guestAccessKey=0606b8a6-ed40-4202-9dec-b9150d5e3178" target="_blank">https://academic.oup.com/jiplp/article/doi/10.1093/jiplp/jpx146/4085326/US-Supreme-Court-holds-that-the-disparagement?guestAccessKey=0606b8a6-ed40-4202-9dec-b9150d5e3178</a><br type="_moz" /><br /><div><em>Matal v Tam, 582&thinsp;US ___ (2017) (Tam)<br /><br type="_moz" /></em>On 19 June 2017 the US Supreme Court issued its decision in&nbsp;<em>Matal v Tam</em>, 582&thinsp;US ___ (2017) (<em>Tam</em>), holding that the &lsquo;disparagement clause&rsquo; of the Lanham Act, which prohibits the federal registration of disparaging trade marks, &lsquo;violates the Free Speech Clause of the First Amendment&rsquo; of the US Constitution. According to the court, the disparagement clause &lsquo;offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend&rsquo; (Slip op. at 1&ndash;2).<br /><b><br />Legal context<font size="5"><br /></font></b></div><div scrollto-destination="95258945" id="95258945">The disparagement clause of the Lanham Act provides that the US Patent &amp; Trademark Office (USPTO) shall refuse to register marks that &lsquo;may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt or disrepute&rsquo; (15 USC &sect; 1052(a)). Although the provision historically has not been particularly controversial, in recent years, as two authors of this article have pointed out in a previous Current Intelligence note, several high-profile and divisive cases have arisen under this provision (Charles R. Macedo and David P. Goldberg, &lsquo;Lanham Act constitutionality affirmed as six federal REDSKINS-based trade marks are cancelled&rsquo; ((2016) 11(1) JIPLP 7).<br />&nbsp;</div><div>The most consequential of these cases may be&nbsp;<em>Pro-Football, Inc. v Blackhorse</em>, 112 F.Supp.3d 439 (ED Va 2015), which involves a challenge by Native Americans to trade mark registrations owned by the &lsquo;Washington Redskins&rsquo; American football team. The Washington Redskins&rsquo; popularity is especially strong because it has been among the most successful of Washington DC&rsquo;s professional sports teams. Of course, Washington DC is the seat of numerous important political and legal institutions, including the US Supreme Court, the US court of ultimate appeal for federal matters.<br />&nbsp;</div><div>The Washington Redskins&rsquo; team name was selected in 1933, ostensibly because it implied stamina and an outdoorsy toughness, and the team eventually obtained six US trade mark registrations for various REDSKINS-based marks. In modern times, Native Americans have voiced objections to the REDSKINS marks, which literally identify a race by the colour of its skin. The&nbsp;<em>Pro-Football</em>&nbsp;case, the latest in a series of lawsuits that began in 1971, is currently being heard by the US Court of Appeals for the Fourth Circuit.<br /><br />Over the past few years, trade mark owners and applicants seeking to maintain or obtain protection for allegedly disparaging trade marks have sought to bolster their arguments with free speech references. The test case for the success of such arguments, notably, has not been the difficult&nbsp;<em>Pro-Football</em>&nbsp;case, but the instant case&nbsp;<em>In re Tam</em>, 600 F App&rsquo;x 775 (Fed Cir 2015), which involves the alleged &lsquo;re-appropriation&rsquo; of the racial slur &lsquo;slants&rsquo; by an Asian-American musical band and therefore presents a more palatable fact pattern.<br /><br />In this case, the constitutionality of the disparagement clause was considered by the US Court of Appeals for the Federal Circuit (Federal Circuit) in the context of the USPTO&rsquo;s denial of a federal registration for the mark THE SLANTS for an Asian-American dance-rock band. In its decision, the Federal Circuit ultimately found the disparagement clause &lsquo;facially unconstitutional&rsquo; under the First Amendment&rsquo;s Free Speech Clause (<em>In re Tam</em>, 808 F.3d 1321 (Fed Cir 2015) (en banc)). The US government appealed, and the Supreme Court swiftly and unsurprisingly granted the government&rsquo;s petition for a writ of certiorari.<br /><br /><b>Facts</b></div><div>Simon Tam is the lead singer of an Asian-American dance-rock band called The Slants (id at 1331). He named the band &lsquo;The Slants&rsquo; &lsquo;to &ldquo;reclaim&rdquo; and &ldquo;take ownership&rdquo; of Asian stereotypes&rsquo; and later applied for federal registration of the mark THE SLANTS (id).<br /><br />At the USPTO, a prima facie case of disparagement occurs if a trade mark examiner finds that &lsquo;a substantial composite, although not necessarily a majority&rsquo; of a group that is referred to by the meaning of the applied-for mark would find it &lsquo;disparaging in the context of contemporary attitudes&rsquo;. (Trademark Manual of Examining Procedure &sect; 1203.03(b)(i)). The applicant for the mark then has the burden to prove that the mark is not disparaging. The fact that the applicant is a member of the group, or that good intentions are behind the applicant&rsquo;s use of the mark, does not weigh in favour of the registration of the mark if it is otherwise deemed to be objectionable.<br /><br />The trade mark examiner rejected Mr Tam&rsquo;s application to register the mark under the disparagement clause, finding that a &lsquo;substantial composite&rsquo; of persons would find the mark THE SLANTS offensive (Slip op. at 7). The USPTO&rsquo;s Trademark Trial and Appeal Board (TTAB) upheld the examiner&rsquo;s denial of registration for the mark.<br /><br />In its original panel decision, the Federal Circuit affirmed the TTAB&rsquo;s determination that the mark is disparaging (785 F.3d at 570&ndash;1). The panel noted that binding Federal Circuit precedent&mdash;namely&nbsp;<em>In re McGinley</em>, 660 F.2d 481, 484 (CCPA 1981)&mdash;held that &lsquo;the refusal to register a mark under [the disparagement clause of the Lanham Act] does not bar the applicant from using the mark, and therefore does not implicate the First Amendment&rsquo; (<em>In re Tam</em>, 808 F.3d at 1333). However, based on concerns about the viability of the&nbsp;<em>McGinley</em>&nbsp;decision in view of subsequent First Amendment jurisprudence, the Federal Circuit sua sponte vacated the panel decision and ordered rehearing en banc to consider whether the disparagement clause violates the First Amendment.<br /><br />In its en banc decision, the Federal Circuit held that the disparagement clause is unconstitutional under the First Amendment (id at 1358). The Federal Circuit found that &lsquo;[s]ection 2(a) is a viewpoint-discriminatory regulation of speech, created and applied in order to stifle the use of certain disfavored messages. Strict scrutiny therefore governs its First Amendment assessment&mdash;and no argument has been made that the measure survives such scrutiny&rsquo; (id at 1337). The Federal Circuit also held that:</div><blockquote><div>1. &lsquo;The government cannot escape strict scrutiny by arguing that &sect; 2(a) regulates commercial speech&rsquo; because &lsquo;critically, it is always a mark&rsquo;s expressive character, not its ability to serve as a source identifier, that is the basis for the disparagement exclusion from registration&rsquo; (id at 1337&ndash;38).<br /><br />2. Strict scrutiny applies to the disparagement clause, even though the disparagement clause does not ban the use of the mark, because &lsquo;the [disparagement clause&rsquo;s] bar on registration creates a strong disincentive to choose a &ldquo;disparaging&rdquo; mark&rsquo; (id at 1340&ndash;1).<br /><br />3. Trade mark registration does not constitute government speech, and thus the disparagement clause is not insulated from First Amendment review on that basis (id at 1345).<br /><br />4. Trade mark registration is not a subsidy that the federal government can withhold when it disapproves of the message the mark conveys, and thus the disparagement clause is not exempt from strict scrutiny (id at 1348&ndash;55).<br /><br />5. The disparagement clause is aimed at the expressive aspect of a mark, and &lsquo;therefore should be evaluated under the First Amendment Standards applicable to the regulation of expressive speech&rsquo; (id at 1355). Thus, the intermediate scrutiny standard for commercial speech is not applicable to the disparagement clause, even though trade marks have been referred to as commercial speech. Even if marks were treated as commercial speech, the disparagement clause would fail to survive intermediate scrutiny because &lsquo;[t]he entire interest of the government in [the disparagement clause] depends on disapproval of the message&rsquo; (id).</div></blockquote><div>Several judges wrote separately to present the following concurring and dissenting opinions: (1) the disparagement clause is unconstitutionally vague; (2) the disparagement clause is facially constitutional, but is unconstitutional as applied to the mark THE SLANTS; (3) the disparagement clause is facially constitutional, and is constitutional as applied to the mark THE SLANTS; (4) trade mark registration is a government subsidy; and (5) trade marks are commercial speech and the disparagement clause survives intermediate scrutiny afforded to commercial speech (id at 1358&ndash;82).<br /><br />The US federal government (on behalf of the USPTO charged with enforcing the statute) filed a petition for certiorari. The Supreme Court granted certiorari, and its decision is discussed below.<br /><b><br />Analysis</b></div><div>In&nbsp;<em>Tam</em>, the US Supreme Court affirmed the en banc decision of the Federal Circuit, holding that the disparagement clause &lsquo;violates the Free Speech Clause of the First Amendment [of the US Constitution]. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend&rsquo; (Slip op. at 1&ndash;2).<br /><br />As a threshold issue, the court addressed Respondent Tam&rsquo;s argument that the disparagement clause does not apply to marks that disparage the members of racial or ethnic groups. The court considered this argument even though Tam did not raise it before the USPTO or the Federal Circuit, and even though the court denied Tam&rsquo;s request to grant certiorari on this question, because the case would be resolved without having to address the constitutional question if the court agreed with Tam&rsquo;s argument (id at 9).<br /><br />Based on the &lsquo;plain terms&rsquo; of the disparagement clause, which applies to marks that disparage &lsquo;persons&rsquo;, the court held that the disparagement clause applies to the members of a racial or ethnic group because &lsquo;a mark that disparages a &ldquo;substantial&rdquo; percentage of the members of a racial or ethnic group &hellip; necessarily disparages many &ldquo;persons&rdquo;, namely, members of that group&rsquo; (id at 10). The court further found that, since the disparagement clause also expressly applies to &lsquo;institutions&rsquo;, &lsquo;beliefs&rsquo;, and, according to Tam, &lsquo;juristic&rsquo; persons, &lsquo;the clause is not limited to marks that disparage a particular natural person&rsquo; (id).<br /><br />Since the court concluded that the disparagement clause applies to marks that disparage the members of racial or ethnic groups, it next considered whether the disparagement clause violates the Free Speech Clause of the First Amendment to the US Constitution. In particular, the court considered three arguments that would render the disparagement clause immune to First Amendment scrutiny or would permit a more lenient standard of review: &lsquo;(1) that trademarks are government speech, not private speech, (2) that trademarks are a form of government subsidy, and (3) that the constitutionality of the disparagement clause should be tested under a new &ldquo;government program&rdquo; doctrine&rsquo; (id at 12).</div><div scrollto-destination="95258964" id="95258964">&nbsp;<br /><b>Trade marks are not government speech<br /></b>Under the &lsquo;government speech&rsquo; doctrine, the First Amendment&rsquo;s protections against viewpoint discrimination with regard to speech do not apply to the speech of the federal government (id at 12&ndash;13). In this regard, the Supreme Court noted that the federal government does not create the marks that are registered, and that &lsquo;if the mark meets the Lanham Act&rsquo;s viewpoint-neutral requirements, registration is mandatory&rsquo; unless the trade mark examiner finds that the disparagement clause applies (id at 14). The court also noted that, once a mark is allowed by a trade mark examiner, it is not further reviewed by a higher official unless it is challenged. Additionally, once a mark has been registered, it is not removable from the trade mark register unless the mark expires or certain proceedings are commenced either by a party or by the US Federal Trade Commission.<br /><br />The court considered that the USPTO &lsquo;has made it clear that registration does not constitute approval of a mark&rsquo; (id at 15), and in any case none of its government speech cases supports the proposition that trade marks are government speech (id at 16&ndash;17).<br /><br />Accordingly, the court concluded that &lsquo;[t]rademarks are private, not government, speech&rsquo; (id at 18). As such, the Free Speech Clause of the First Amendment, which applies only to private speech, applies to the disparagement clause. A contrary conclusion&mdash;that trade marks are government speech&mdash;would have a &lsquo;most worrisome implication&rsquo; for the US copyright system, the court noted (id at 18).<p><b>Trade mark registration is not a form of government subsidy<br /></b>The US Supreme Court also rejected the argument that the disparagement clause could be saved by considering trade mark registration as a type of subsidized speech that expresses a particular viewpoint. In this regard, the court stated that the federal registration of a trade mark is &lsquo;nothing like the programs at issue&rsquo; in the government-subsidy cases relied on by the government (id at 19). In particular, those cases all involved &lsquo;cash subsidies or their equivalent&rsquo;, whereas the USPTO does not pay applicants to register their marks (id). The court also discounted any non-monetary benefits of trade mark registration resulting from USPTO expenditures on the trade mark examination process, reasoning that &lsquo;just about every government service requires the expenditure of government funds&rsquo; (id).</p><p><b>Trade mark registration is not a type of government programme in which some content- and speaker-based restrictions are permitted<br /></b>The court likewise rejected the argument that the disparagement clause could be saved by analysing trade mark registration as a type of government programme in which some restrictions on content and speech are permitted. The court found that the cases cited by the government in regard to this argument that related to a public employer&rsquo;s collection of union dues from its employees &lsquo;are far removed from the registration of trademarks&rsquo; and &lsquo;are no more relevant for present purposes than the subsidy cases previously discussed&rsquo; (id at 20, 22). As to other cases involving government programs in which some content and speech restrictions were permitted, the court stated that those cases did not permit viewpoint discrimination. The court concluded that, since the disparagement clause denies registration of a mark based on whether that mark would offend a substantial percentage of the members of a group, it impermissibly involves viewpoint discrimination. Oddly, however, the court left open &lsquo;the question whether this is the appropriate framework for analyzing free speech challenges to provisions of the Lanham Act&rsquo; (id at n.16).</p><p><b>The Supreme Court left open the question of whether trade marks are commercial speech<br /></b>Finally, the court found that it did not need to resolve the question of whether trade marks are commercial speech, and thus entitled to more relaxed constitutional scrutiny as set forth in&nbsp;<em>Central Hudson Gas &amp; Electric Corp. v Public Service Commission of NY</em>, 447&thinsp;US 557 (1980).<br /><br />Under&nbsp;<em>Central Hudson</em>, a restriction on speech must be &lsquo;narrowly drawn&rsquo; to serve &lsquo;a substantial interest&rsquo; (Slip op. at 24). Here, the court found, the government could not meet the test. The government argued that the disparagement clause served two substantial interests. First, &lsquo;[t]he Government has an interest in preventing speech expressing ideas that offend&rsquo;. However, the court found that &lsquo;this idea strikes at the heart of the First Amendment&rsquo;, and could not be sustained. Second, the government argued that eliminating trade marks that support discriminatory conduct and disrupt the market, &lsquo;protect[s] the orderly flow of commerce&rsquo; (id at 25). However, the court found that the disparagement clause is too broadly drawn to eliminate such trade marks, since the clause &lsquo;reaches any trademark that disparages&nbsp;<em>any person, group, or institution</em>&hellip; . In this way, it goes much further than is necessary to serve the interest asserted&rsquo; (id).<br /><br />The court thus left open the issue of whether&nbsp;<em>Central Hudson</em>&nbsp;governs free speech challenges to provisions of the Lanham Act (id at n.17).</p><p><b>Concurring opinions<br /></b>In separate opinions, Justice Kennedy (joined by Justices Ginsburg, Sotomayor and Kagan) and Justice Thomas concurred in the court&rsquo;s judgment and concurred in the majority opinion in part. Justices Kennedy and Thomas both opined that the viewpoint discrimination at issue in the disparagement clause of the Lanham Act requires strict scrutiny, regardless of whether trade marks qualify as commercial speech. Justice Thomas also expressed his view that procedurally the court should not have considered the issue of whether the disparagement clause applies to marks that disparage the members of racial or ethnic groups, since the court declined to grant certiorari on this question.</p><p><b>Practical significance<br /></b>The band The Slants will now be able to obtain a US federal trade mark registration on its name. Likewise, as the US federal government has conceded in a 28 June 2017 letter to the court, the Washington Redskins football team will regain control over the federal registrations for the six trade marks that were cancelled in&nbsp;<em>Pro-Football, Inc. v Blackhorse</em>&nbsp;(<em>see</em>&nbsp;Letter from US Dep&rsquo;t of Justice to US Court of Appeals for the Fourth Circuit (28 June 2017),&nbsp;<em>Pro-Football, Inc. v Blackhorse</em>, No 15-1874). Only time will tell how many more offensive marks will make it on to the Trademark Registry in the USA.<br /><br />Further afield, the Supreme Court&rsquo;s&nbsp;<em>Tam</em>&nbsp;decision calls into question whether certain other of the Lanham Act&rsquo;s prohibitions on federal trade mark registration are similarly unconstitutional. Most immediately, the Lanham Act also prohibits registration of a mark that &lsquo;[c]onsists of or comprises immoral &hellip; or scandalous matter&rsquo; (15 USC &sect; 1052(a)). This &lsquo;scandalous clause&rsquo;, which prohibits the federal registration of trade marks including, for example, profanities, sexually explicit images and the like, may be deemed unconstitutional for similar reasons as the disparagement clause. The constitutionality of this clause has been challenged in the case&nbsp;<em>In re Brunetti</em>, no. 15-1109, which appeals the USPTO&rsquo;s refusal to grant a registration for the mark FUCT and is pending before the US Court of Appeals for the Federal Circuit. The USPTO has advised that examination of US trade mark applications subject to a provisional rejection for containing scandalous material have been suspended pending the outcome of&nbsp;<em>In re Brunetti</em>&nbsp;(TMEP Examination Guide 1-17 (26 June 2017)).<br /><br />Despite these developments, it should be recalled that an applicant seeking the federal registration of a trade mark in the USA must still either use or intend to use the mark in commerce in connection with the specified goods or services. This, coupled with concerns about how disparaging or scandalous marks may be viewed by consumers, will hopefully moderate the number of such marks that are applied for, registered, and used in US commerce.</p></div> Fri, 18 Aug 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/081817/ The Trademark Lawyer, August 2017: <br>Requirement of Use in the USA<br> http://www.arelaw.com/publications/view/080817/ <div><a href="/images/The Trademark Lawyer - August 2017 - Max Vern.pdf" target="_blank">Max Vern from Amster, Rothstein &amp; Ebenstein LLP explores the practical aspects of Use Requirements in American trademark practice.</a></div> Tue, 08 Aug 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/080817/ In The Press: <br>Bloomberg Law turns to partner Charles Macedo for insight on Patent Losers Piggyback on Supreme Court Constitutionality Review http://www.arelaw.com/publications/view/inthepress080317/ <a href="https://www.bna.com/patent-losers-piggyback-n73014462637/" target="_blank">https://www.bna.com/patent-losers-piggyback-n73014462637/</a><br /><br />&ldquo;The downside of asking additional questions is that your petition may just be denied because of the additional questions,&rdquo; said patent litigator <strong><a href="http://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo, a partner at Amster Rothstein &amp; Ebenstein LLP</a>, </strong>New York. &ldquo;The advantage in only asking the same question as&nbsp;<i>Oil States</i>&nbsp;is that the petition will likely be held in abeyance until&nbsp;<i>Oil States</i>&nbsp;is decided, and then follow that decision&rsquo;s results.&rdquo; Thu, 03 Aug 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress080317/ In The Press:<br>IPWATCHDOG turns to Partner Anthony F. Lo Cicero for his insight on Online Counterfeit Products<br> http://www.arelaw.com/publications/view/inthepress072017/ <p>&nbsp;<a href="https://www.google.com/url?rct=j&amp;sa=t&amp;url=http://www.ipwatchdog.com/2017/07/20/growing-problem-online-counterfeit-products/id%3D85846/&amp;ct=ga&amp;cd=CAEYACoUMTU0OTM2OTE0MDE2MzkyODMxOTIyGjc4OTM0MGQ1ZTliMDhjNmE6Y29tOmVuOlVT&amp;usg=AFQjCNENPLMYLUnhyPcr3mf5p1sGh2-Dow" target="_blank"><span style="color: rgb(66, 127, 237); text-decoration-line: none;">The Growing Problem of Online Counterfeit Products</span></a></p><p><span style="font-size:9.0pt;Arial&quot;,&quot;sans-serif&quot;;Times New Roman&quot;;color:#737373;">IPWatchdog.com</span><br /><br />...&nbsp;<a href="https://www.arelaw.com/professional/alocicero/" target="_blank" rel="noopener" style="box-sizing: border-box; outline: none; transition: color 0.2s ease; color: rgb(35, 64, 143);Source Sans Pro">Anthony F. Lo Cicero</a><span style="color: rgb(34, 34, 34);Source Sans Pro">, <strong>Amster, Rothstein &amp; Ebenstein LLP</strong> and seasoned trial attorney who has represented some of the most recognizable brands in the world, sat down with IPWatchdog to discuss the importance brands using state trademarks to protect themselves from counterfeiting.</span></p> Thu, 20 Jul 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress072017/ Successful Strategies for Diagnostic Method Patents<br> Journal of Commercial Biotechnology (2017) 23(1), 60–64. doi: 10.5912/jcb783<br> http://www.arelaw.com/publications/view/062817/ This article addresses strategies used to obtain patent protection for diagnostic method patents after the 2012 Mayo decision by the U.S. Supreme Court. <div>&nbsp;</div> <div>Copies of the article can be obtained at:</div> <div><a href="http://www.commercialbiotechnology.com/index.php/jcb" target="_blank">http://www.commercialbiotechnology.com/index.php/jcb</a></div> <div>&nbsp;</div> Wed, 28 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/062817/ In The Press: <br>Law360 Reports on 2nd Circ. Says Macy’s Didn’t Infringe UK Retailer’s TM<br> http://www.arelaw.com/publications/view/inthepress062117/ <a href="https://www.law360.com/articles/937055/2nd-circ-says-macy-s-didn-t-infringe-uk-retailer-s-tm" target="_blank">Law360, Los Angeles (June 21, 2017, 10:14 PM EDT) </a>-- A Second Circuit panel agreed with a lower court Wednesday that Macy&rsquo;s &ldquo;Maison Jules&rdquo; clothing line doesn&rsquo;t infringe the trademark of U.K.-based clothing line Joules, saying the circuit&rsquo;s eight-part trademark-confusion test weighed in the U.S. retailer&rsquo;s favor.<br /><br />Macy's is represented by <a href="http://www.arelaw.com/professional/alocicero/" target="_blank">Anthony F. LoCicero</a>, <a href="http://www.arelaw.com/professional/rmandaro/" target="_blank">Richard S. Mandaro</a>, and <a href="http://www.arelaw.com/professional/rjain/" target="_blank">Reena Jain</a> of Amster Rothstein &amp; Ebenstein LLP.<br /><br /><a href="/images/file/2nd%20Circ_%20Says%20Macy%E2%80%99s%20Didn%E2%80%99t%20Infringe%20UK%20Retailer%E2%80%99s%20TM.pdf" target="_blank">View pdf here</a> Wed, 21 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress062117/ In The Press:<br>IPWatchdog Turns to Partner Charles R. Macedo for Insight on SCOTUS Decision Declaring Disparagement Clause of Lanham Act Unconstitutional in Matal v. Tam<br> http://www.arelaw.com/publications/view/inthepress062017/ <div>Industry Reaction to SCOTUS First Amendment Decision in Matal v. Tam - <a href="http://IPWatchdog.com">IPWatchdog.com</a> | Patents &amp; Patent Law<br />&nbsp;</div> <div>By Gene Quinn</div> <div>&nbsp;</div> <div><a href="https://www.arelaw.com/professional/cmacedo/" target="_blank"><img border="0" width="150" height="150" id="_x0000_i1025" src="http://www.ipwatchdog.com/wp-content/uploads/2016/05/charles-macedo-150x150.jpg" size-thumbnail="" scale="0" alt="" /></a><br /><a href="http://www.arelaw.com/professional/cmacedo/" target="_blank">Charles Macedo</a><br />Partner, Amster, Rothstein &amp; Ebenstein LLP</div> <div><br />Today, the U.S. Supreme Court found that the Lanham Act provision prohibiting the federal registration of trademarks that &ldquo;may disparage . . . persons, living or dead&rdquo; (15 U.S.C. &sect; 1052(a)) violates the Free Speech Clause of the First Amendment, and thus is unconstitutional. While this case represents one of the rare instances in which the Federal Circuit has been affirmed by the high court, it was at the expense of the other two branches of government. Specifically, Congress was in essence found to have passed an unconstitutional law, and the P.T.O. had been &ldquo;offend[ing] a bedrock First Amendment principle&rdquo; in enforcing this unconstitutional provision: &ldquo;Speech may not be banned on the ground that it expresses ideas that offend.&rdquo; In rejecting the government&rsquo;s position, Justice Alito made clear that &ldquo;it is far-fetched to suggest that the content of a registered mark is government speech.&rdquo;</div> <div><br />Although this case was decided 8-0 (Justice Gorsuch did not participate), the concurring opinions by Justice Kennedy (with whom 3 Justices joined) and Justice Thomas showcase different rationales and reflect the hotbed of dispute underlying this case.</div> <div><em><br />Charles R. Macedo is a partner with&nbsp;Amster Rothstein &amp; Ebenstein LLP. He&nbsp;litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work.</em></div> <div>&nbsp;</div> <a href="http://www.ipwatchdog.com/2017/06/20/industry-reaction-scotus-first-amendment-decision-matal-v-tam/id=84791/">http://www.ipwatchdog.com/2017/06/20/industry-reaction-scotus-first-amendment-decision-matal-v-tam/id=84791/</a>&nbsp; Tue, 20 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress062017/ Trademark Law Alert:<br>SUPREME COURT HOLDS THAT THE DISPARAGEMENT CLAUSE OF THE LANHAM ACT IS UNCONSTITUTIONAL<br> http://www.arelaw.com/publications/view/alert061917/ <div>The U.S. Supreme Court issued a decision in <i>Matal v. Tam,</i> 582 U.S. __ (&ldquo;<i>Tam</i>&rdquo;) addressing the &ldquo;disparagement&rdquo; clause of the Lanham Act, 15 U.S.C. &sect; 1052(a).&nbsp; (Justice Gorsuch took no part in the consideration of the case.&nbsp; Slip op. at 26.)<br />&nbsp;</div><div style="margin-left: 40px;">The disparagement clause of the Lanham Act provides that:</div> <div style="margin-left: 40px;">&ldquo;No trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it&mdash;<br /><br />(a) Consists of or comprises . . . matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute . . . .&rdquo;<br />&nbsp;</div><div>In its decision, the Court held that the disparagement clause &ldquo;violates the Free Speech Clause of the First Amendment.&nbsp; It offends a bedrock First Amendment principle:&nbsp; Speech may not be banned on the ground that it expresses ideas that offend.&rdquo;&nbsp; Slip op. at 1&ndash;2.&nbsp; The Court affirmed the <i>en banc</i> decision of the U.S. Court of Appeals for the Federal Circuit (&ldquo;Federal Circuit&rdquo;), which held that the disparagement clause was facially unconstitutional under the First Amendment&rsquo;s Free Speech Clause.&nbsp; <i>In re Tam</i>, 808 F.3d 1321 (Fed. Cir. 2015).&nbsp;<br /><br />As a threshold issue, the Court&rsquo;s decision addresses whether the disparagement clause applies to marks that disparage the members of a racial or ethnic group.&nbsp; Slip op. at 8-12.&nbsp; Based on the &ldquo;plain terms&rdquo; of the disparagement clause, which applies to marks that disparage &ldquo;persons,&rdquo; the Court held that the disparagement clause applied to the members of a racial or ethnic group because such members were &ldquo;persons.&rdquo; &nbsp;Slip op. at 10.&nbsp; &ldquo;Thus, the clause is not limited to marks that disparage a particular natural person.&rdquo;&nbsp; <i>Id.</i><br /><br />Significantly, the Court also based its decision on its conclusion that &ldquo;[t]rademarks are private, not government, speech.&rdquo;&nbsp; Slip op. at 18.&nbsp; As such, the Free Speech Clause of the First Amendment, which applies only to private speech, applies to the disparagement clause.&nbsp; Slip op. at 12&ndash;18.&nbsp; The Court noted that a contrary conclusion&mdash;that trademarks are government speech&mdash;would have a &ldquo;most worrisome implication&rdquo; for the U. S. copyright system.&nbsp; Slip op. at 18.<br /><br />The Court also rejected arguments that the disparagement clause could be saved by analyzing it as a type of subsidized speech, or as a type of government program in which some restrictions on content and speech are permitted.&nbsp; Slip op. at 18&ndash;23.&nbsp; Finally, the Court concluded that it did not need to resolve the question of whether trademarks are commercial speech, and thus are entitled to more relaxed constitutional scrutiny, as set forth in <i>Central Hudson Gas &amp; Elec. Corp. v. Public Serv. Comm&rsquo;n of N.Y.</i>, 447 U. S. 557 (1980).&nbsp; According to the Court, the disparagement clause &ldquo;strikes at the heart of the First Amendment,&rdquo; and is too broadly drawn to withstand even the relaxed scrutiny for restrictions of commercial speech.&nbsp; Slip op. at 24&ndash;26.&nbsp;<br /><br />In separate opinions, Justice Kennedy (joined by Justices Ginsburg, Sotomayor, and Kagan) and Justice Thomas concurred in the Court&rsquo;s judgment and concurred in the majority opinion in part.&nbsp; Justices Kennedy and Thomas both expressed the view that the viewpoint discrimination at issue with the disparagement clause of the Lanham Act requires strict scrutiny, regardless of whether trademarks qualify as commercial speech.&nbsp; Kennedy, J. op. at 5&ndash;6; Thomas, J. op. at 1.&nbsp; Justice Thomas also presented his opinion that the Court should not have considered the issue of whether the disparagement clause applies to marks that disparage the members of a racial or ethnic group, since the Court declined to grant certiorari on this question.&nbsp; Thomas, J. op. at 1.&nbsp;<br /><br />We will continue to monitor developments in the law on trademarks.&nbsp; In the meantime, please feel free to contact one our attorneys regarding issues raised by this case.<br /><br />*<a href="http://arelaw.com/professional/cmacedo/">Charles R. Macedo</a>&nbsp;is a Partner, <a href="https://www.arelaw.com/professional/mmetelski/">Marion P. Metelski</a> is a Senior Counsel, and David P. Goldberg is an associate at Amster, Rothstein &amp; Ebenstein LLP.&nbsp; Their practice specializes in intellectual property issues.&nbsp; Messrs. Macedo, Metelski, and Goldberg may be reached at <a href="mailto:cmacedo@arelaw.com">cmacedo@arelaw.com</a>, <a href="mailto:mmetelski@arelaw.com">mmetelski@arelaw.com</a>, and <a href="mailto:dgoldberg@arelaw.com">dgoldberg@arelaw.com</a>. &nbsp;<br /><br />Messrs. Macedo and Goldberg represented <i>amicus curiae</i> New York Intellectual Property Law Association at the Supreme Court in <i>Tam</i>.</div> Mon, 19 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/alert061917/ In The Press: <br>IPWATCHDOG Turns to Partner Charles R. Macedo for his Insights on SCOTUS decision in Sandoz v. Amgen over Biosimlar Drugs<br> http://www.arelaw.com/publications/view/inthepress061417/ <p><b><font size="6"><span style="font-size: small;">Industry Reaction to SCOTUS decision in Sandoz v. Amgen</span></font></b></p> <div>By Gene Quinn</div> <div>&nbsp;</div> <div><img width="150" height="150" id="_x0000_i1025" src="http://www.ipwatchdog.com/wp-content/uploads/2016/05/charles-macedo-150x150.jpg" size-thumbnail="" scale="0" alt="" /><br /> <a href="https://www.arelaw.com/professional/cmacedo/" target="_blank">Charles R. Macedo</a><br /> Amster Rothstein &amp; Ebenstein LLP<br /><br />In&nbsp;<i>Sandoz v. Amgen</i>, the Supreme Court addressed the &ldquo;plain language&rdquo; of a &ldquo;carefully crafted and detailed enforcement scheme&rdquo; relating to &ldquo;biologic&rdquo; drugs. Under this complex statute that was enacted as part of ObamaCare as an effort to get generic biosimilar and interchangeable biologic drugs on the market quicker if the patent hurdle can be overcome. In a unanimous decision, the Supreme Court vacated, reversed and remanded yet another Federal Circuit decision. Even when the Supreme Court agreed with part of the result arrived at by the Federal Circuit, the Court nevertheless felt obliged to explain why the Federal Circuit had the wrong reason for the correct result.<br /><br />By rejecting the availability of injunctive relief to enforce a violation of the statutory provisions, some might argue that the Court gutted the protections provided by Congress in reaching the carefully crafted compromise. However, the Court nevertheless offered a few rays of hope. &nbsp;In footnote 2, when it &ldquo;express[ed] no view&rdquo; on an alternative theory on which an injunction might issue under a different provision for this same violation of the statute. &nbsp;The Court also remanded for potential resolution under state law. The answer to these questions will no doubt be left unresolved by the Court for many more years.<br /><br />Finally, it is worth mentioning that Justice Breyer&rsquo;s concurrence is a foreshadowing of the battle we can expect to see next year (in&nbsp;<i>SAS</i>) over the continuing viability of the&nbsp;<i>Chevron</i>&nbsp;doctrine.</div> <div><em>Charles R. Macedo is a partner with&nbsp;Amster Rothstein &amp; Ebenstein LLP. He&nbsp;litigates in all areas of intellectual property law, including patent, trademark and copyright law, with a special emphasis in complex litigation and appellate work.<br type="_moz" /></em><i><br /> </i></div> <a href="http://www.ipwatchdog.com/2017/06/14/industry-reaction-scotus-sandoz-v-amgen/id=84473/">http://www.ipwatchdog.com/2017/06/14/industry-reaction-scotus-sandoz-v-amgen/id=84473/</a> Wed, 14 Jun 2017 00:00:00 +0000 http://www.arelaw.com/publications/view/inthepress061417/