Amster Rothstein & Ebenstein, LLP - Intellectual Property Law 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 Sat, 02 Dec 2023 19:14:13 +0000 Floodlight Design CMS Brief of New York Intellectual Property Law Association in Re Cellect LLC Click here to download the PDF:&nbsp;<a href="/images/file/Brief%20of%20New%20York%20Intellectual%20Property%20Law%20Association%20as%20Amicus%20Curiae%20In%20Re%20Cellect%20LLC.pdf" target="_blank">Brief of New York Intellectual Property Law Association as Amicus Curiae In Re Cellect LLC</a><br /> Wed, 22 Nov 2023 00:00:00 +0000 Brief of New York Intellectual Property Law Association in Re Cellect LLC &nbsp;Click to download PDF:&nbsp;<a href=""></a> Wed, 22 Nov 2023 00:00:00 +0000 ARE Design Patent Alert: The Full Federal Circuit is Considering Obviousness of Design Patents &nbsp;On June 30, 2023, the U.S. Court of Appeals for the Federal Circuit agreed to take on the following question:<br /><br />Whether the current test for proving obviousness for a design patent has been overruled by US Supreme Court precedent.<br /><br /><address><big><small>LKQ Corp. v. GM Global Tech., 21-2348 (Fed. Cir. 2023)<br /><br type="_moz" /></small></big></address><address>&nbsp;</address>In 1982, In re Rosen held that there must be an earlier design that has the same visual impression as the patented design to test whether a design patent is obvious. In addition, the test analyzes whether it would have been obvious for a designer to modify the earlier reference to create the patented design in question.<br /><br />This matter was raised by LKQ Corp, which is seeking rehearing en banc of a January decision in its case against General Motors, insisting that the appellate court&rsquo;s &lsquo;decades-old&rsquo; test for proving obviousness for a design patent cannot stand following the Supreme Court&rsquo;s 2007 KSR v. Teleflex decision, and should be modified or eliminated. While the question divided the panel, the most significant issue is what the replacement test should be. Not surprisingly, General Motors opposed the review, stating that not only did LKQ fail to raise the KSR issue with the PTAB, but also they are now seeking a complete &lsquo;rewrite of design patent obviousness framework that has otherwise remained unchallenged for decades.&rsquo;<br /><br />For more information, please contact one of our attorneys.<br /><br />* <a href="">Chester Rothstein</a> and <a href="">Charles R. Macedo</a> are partners, <a href="">David Goldberg</a> is an associate and Sofia Siciliani is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. They may be reached at <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a> and <a href="mailto:[email protected]">[email protected]</a>.<br /><br /><br type="_moz" /> Fri, 30 Jun 2023 00:00:00 +0000 ARE Trademark Law Alert: Supreme Court Announces Two-Part Test in its Abitron v. Hetronic Decision on Extraterritorial Reach of the Lanham Act On June 29, 2023, the U.S. Supreme Court issued its ruling in <em>Abitron Austria GmbH v. Hetronic International, Inc.</em>, No. 21-1023, 600 U.S. ___ (2023), addressing the Lanham Act&rsquo;s extraterritorial reach. The Supreme Court held that trademark infringement cases &ldquo;only extend to claims where the claimed infringing use in commerce is domestic.&rdquo; Id. at 1. In a unanimous opinion written by Justice Alito, the Court vacated and remanded the Tenth Circuit Court of Appeals&rsquo; decision, applying its own two-step test for determining when a statutory provision may apply extraterritorially to foreign activity. The Court&rsquo;s two-step test utilized &ldquo;a canon of statutory construction known as the presumption against extraterritoriality,&rdquo; where courts presume that although &ldquo;United States law governs domestically [it] does not rule the world.&rdquo; Id at 14 (citing <em>RJR Nabisco, Inc. v. European Community</em>, 579 U. S. 325, 335 (2016); <em>Microsoft Corp. v. AT&amp;T Corp</em>., 550 U.S 437, 454 (2007).<br /><br /><strong>Factual and Procedural Background<br /></strong><br />The underlying dispute was between a United States company, Hetronic, and six foreign parties, collectively &ldquo;Abitron.&rdquo; Hetronic and Abitron&rsquo;s relationship started when Abitron began distributing Hetronic&rsquo;s radio remote controls. Tension between the parties arose when Abitron found an old agreement that led Abitron to conclude that it owned much of Hetronic&rsquo;s intellectual property rights. Abitron then began selling its own version of HETRONIC-branded products, predominantly in Europe, but also in the United States. Hetronic filed suit against Abitron, alleging trademark infringement under &sect;1114(1)(a) and &sect;1125(a)(1) of the Lanham Act, seeking damages for Abitron&rsquo;s infringement worldwide. <br /><br />Abitron argued that allowing Hetronic to recover domestically for global infringement would be an impermissible extraterritorial application of the Lanham Act. The U.S. District Court for the Western District of Oklahoma rejected Abitron&rsquo;s argument and subsequently a jury awarded Hetronic roughly $96 million in damages with respect to Abitron&rsquo;s domestic and foreign sales of infringing radio remote controls, despite the fact that only 3% of Abitron&rsquo;s sales took place domestically. The District Court also entered a permanent injunction that prevented Abitron from using the infringing marks anywhere in the world.<br /><br />On appeal, the Tenth Circuit affirmed the District Court&rsquo;s decision but narrowed the broad injunction to cover specific countries. The Tenth Circuit, applying the First Circuit&rsquo;s <em>McBee v. Delica Co.</em>&cedil;417 F.3d 107 (1st Cir. 2005), framework, concluded that the District Court had properly applied the Lanham Act to Abitron&rsquo;s conduct &ldquo;because the &lsquo;impacts within the United States [were] of a sufficient character and magnitude as would give the United States a reasonably strong interest in the litigation.&rsquo;&rdquo; <em>Abitron Austria GmbH ET AL. v. Hetronic International, Inc</em>., No. 21-1023, 600 U.S. ___ (2023) (quoting <em>Hetronic Int&rsquo;l, Inc. v. Hetronic Germany GmbH</em>, 10 F. 4th 1016, 1046 (2021)). <br /><br />The Supreme Court granted certiorari and rejected the Tenth Circuit&rsquo;s framework for determining extraterritoriality in a unanimous opinion delivered by Justice Alito and two concurring opinions, one delivered by Justice Jackson and another delivered by Justice Sotomayor.<br /><br /><strong>Majority Opinion<br /></strong><br />Bright Line Test. In seeking to create a bright line test, the Supreme Court held that the correct framework to evaluate the extraterritorial reach of the Lanham Act would recognize the law&rsquo;s longstanding presumption against extraterritoriality. The first step of the analysis &ldquo;turns on whether &lsquo;Congress has affirmatively and unmistakably instructed that&rsquo; the provision at issue should &lsquo;apply to foreign conduct.&rsquo;&rdquo; <em>Abitron Austria GmbH ET AL. v. Hetronic International, Inc</em>., No. 21-1023, 600 U.S. ___ (2023) (quoting <em>RJR Nabisco</em>, 579 U. S. at 337). Finding that Congress has not &ldquo;unmistakably instructed&rdquo; that the Lanham should apply extraterritorially, the Court moved to the second step, which asks &ldquo;when claims involve &lsquo;domestic&rsquo; applications of these provisions.&rdquo; <em>Abitron Austria GmbH ET AL. v. Hetronic International, Inc</em>., No. 21-1023, 600 U.S. ___ (2023). The Court stated that the answer to this question turns on where the conduct relevant to the focus of the statute at issue took place. Because the focus of the Lanham Act is to prevent infringing use in commerce, the Court held that if the infringing activity occurred in the United States, then the case involves a permissible application of the Lanham Act. <br /><br />The Court then vacated the Tenth Circuit&rsquo;s judgment and remanded the case for further proceedings consistent with the Court&rsquo;s opinion.<br /><br />Justice Jackson&rsquo;s Concurrence <br /><br />One concurrence, authored by Justice Jackson, agreed with the majority&rsquo;s two-step framework but wrote separately to point out that &ldquo;use in commerce&rdquo; occurs &ldquo;whenever the mark serves its source-identifying function.&rdquo; To illustrate this point, Justice Jackson mentioned that &ldquo;&lsquo;use in commerce does not cease at the place the mark is first affixed, or where the item to which it is affixed is first sold,&rsquo;&rdquo; and discussed a hypothetical case were travelers from Europe resold bags purchased in Europe in the United States, possibly opening the door to a domestic infringement action. Justice Jackson&rsquo;s concurrence concludes that a foreign entity may be subject to Lanham Act liability even if it never &ldquo;directly&rdquo; sold its infringing products in the United States. <br /><br />Justice Sotomayor&rsquo;s Concurrence<br /><br />A separate concurrence, penned by Justice Sotomayor and joined by Chief Justice Roberts and Justices Kagan and Barrett, disagreed with the second step of the majority&rsquo;s framework, and argued that the Lanham Act should apply to conduct occurring abroad if, as a result, consumer confusion occurs in the United States.<br /><br />Legal And Practical Implications<br /><br />In short, this decision held that Congress has not intended for the Lanham Act to apply extraterritorially, and that the Act may only be applied when infringing use in commerce occurs domestically. This bright-line test provides trial courts, practitioners, and trademark owners with at least some guidance, and should ameliorate the forum shopping caused by the current Circuit split on this issue. <br /><br />As a practical matter, US brand owners will need to be more vigilant in seeking trademark protection in foreign jurisdictions in which they do business. These brand owners will also likely need to bring more trademark infringement actions in those foreign jurisdictions. <br /><br />We will continue to monitor developments and provide further updates regarding this case, and the law of trademark with respect to extraterritorial infringement. In the meantime, please feel free to contact us if you have questions regarding issues raised by this case.<br /><br /><a href="">Anthony Lo Cicero</a>,&nbsp;<a href="">Douglas A. Miro</a>&nbsp;and&nbsp;<a href="">Charles Macedo</a>&nbsp;are partners,&nbsp;<a href="">David P. Goldberg</a>&nbsp;is an associate, and Jamie Zipper is a Law Clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of intellectual property, including trademark law.&nbsp;They can be reached at&nbsp;<a href="mailto:[email protected]">[email protected]</a>,&nbsp;<a href="mailto:[email protected]">[email protected]</a>,&nbsp;<a href="mailto:[email protected]">[email protected]</a>,&nbsp;<a href="mailto:[email protected]">[email protected]</a>, and&nbsp;<a href="mailto:[email protected]">[email protected]</a>, respectively.<br type="_moz" /> Fri, 30 Jun 2023 00:00:00 +0000 Trademark Lawyer Magazine Publishes Article: US Supreme Court to Rule on Jack Daniel's proposal to throw 'Bad Spaniels' to the dogs The Trademark Lawyer Magazine features article by Amster, Rothstein &amp; Ebenstein's <a href="" target="_blank">Max Vern</a> and <a href="" target="_blank">David Goldberg</a> on &quot;US Supreme Court to Rule on Jack Daniel's proposal to throw 'Bad Spaniels' to the dogs&quot;.&nbsp; The article was published on pages 8-11, Issue 2 2023 of The Trademark Lawyer Magazine.<br /><br /><a href="" target="_blank">Read the full article here.<br /><br /><br /><div style="text-align: center;"><img src="/images/image/JackDanielsPost.jpg" width="500" height="354" align="middle" alt="" /></div></a> Fri, 16 Jun 2023 00:00:00 +0000 ARE Trademark Law Alert: U.S. Supreme Court Overturns Ninth Circuit’s Decision and Rules that Likelihood of Confusion Test Must Be Applied to Dog Toy Parody in Jack Daniel’s Case On June 8, 2023, the U.S. Supreme Court issued its ruling in <em>Jack Daniel&rsquo;s Properties, Inc. v. VIP Products LLC</em>, No. 22-148, 599 U.S. ___ (2023),&nbsp;unanimously vacating and remanding the Ninth Circuit Court of Appeal&rsquo;s decision that VIP&rsquo;s BAD SPANIELS dog toys neither infringe nor dilute Jack Daniel&rsquo;s trademark and trade dress rights in its iconic OLD NO. 7 BRAND TENNESSEE SOUR MASH WHISKEY. The key to the Supreme Court&rsquo;s narrow decision is that when the alleged infringer uses a trademark as a designation of source for the infringer&rsquo;s own goods, the way which the Lanham Act most cares about, the lower court must conduct a standard likelihood of confusion trademark and dilution analysis. This narrow decision makes it clear that in those cases, even parodic marks may cause a likelihood of confusion or dilution. <br /><br />The dispute between Jack Daniel&rsquo;s Properties, Inc. (&ldquo;Jack Daniel&rsquo;s&rdquo;) and VIP Products LLC (&ldquo;VIP&rdquo;) arose from the sale of a squeaky dog toy, BAD SPANIELS, that humorously resembled a bottle of Jack Daniel&rsquo;s whiskey. Finding the toy to be in poor taste, Jack Daniel&rsquo;s demanded that VIP cease selling its product. In response, VIP filed a lawsuit in the U.S. District Court for the District of Arizona seeking a declaratory judgment that its product did not infringe or dilute Jack Daniel&rsquo;s trademark and trade dress. VIP strongly believed their argument of parody would prevail against any future claims. Jack Daniel&rsquo;s then countersued with claims of trademark infringement and dilution. After a four-day bench trial the District Court held in favor of Jack Daniel&rsquo;s. <br /><br />On appeal, the Ninth Circuit reversed. With respect to the first claim of trademark infringement, the Ninth Circuit held that VIP&rsquo;s use of its parodic trademark was expressive and, therefore, subject to First Amendment protection under the <em>Rogers </em>test, which holds free speech rights need to be balanced against intellectual property rights with respect to expressive works. See <em>Rogers v. Grimaldi</em>, 875 F. 2d 994. As to the second claim, dilution, the Ninth Circuit held that VIP&rsquo;s trademark was &ldquo;noncommercial&rdquo; use because VIP&rsquo;s mark communicated a message of parody. In short, the Ninth Circuit said there was no need to conduct a likelihood of confusion, or a likelihood of dilution analysis, where the accused product is a parody.<br /><br />The Supreme Court granted review on both claims and rejected both of the Appeals Court&rsquo;s conclusions in a unanimous opinion delivered by Justice Kagan and two concurring opinions, one delivered by Justice Sotomayor and another delivered by Justice Gorsuch. <br /><br />The Supreme Court found that the BAD SPANIELS trademark should not receive &ldquo;special First Amendment protection,&rdquo; and thus should not be subject to the <em>Rogers </em>test prior to conducting a traditional likelihood of confusion analysis under the Lanham Act. Explicitly sidestepping the question of whether <em>Rogers </em>should be applied in other circumstances, the Court held that it is not applicable when an infringer uses its mark for source identification, which VIP did in this case. Pointing to extensive case law, the Court stated that <em>Rogers </em>&ldquo;has always been a cabined doctrine,&rdquo; only applying in cases where the mark is not being used as a source identifier. Thus, the fact that VIP uses its mark to convey parody does not automatically make it subject to the <em>Rogers </em>test. &ldquo;As a leading treatise puts the point, the Ninth Circuit&rsquo;s expansion of <em>Rogers </em>&lsquo;potentially encompasses just about everything&rsquo; because names, phrases, symbols, designs, and their varied combinations often &lsquo;contain some &ldquo;expressive&rdquo; message&rsquo; unrelated to the source.&rsquo;&rdquo; <em>Jack Daniel&rsquo;s Properties, Inc. v. VIP Products LLC</em>, No. 22-148, 599 U.S. ___ (2023) (quoting 1 J. McCarthy, Trademarks and Unfair Competition (5th ed. 2023)).<br /><br />Additionally, the Supreme Court found that VIP&rsquo;s use of the BAD SPANIELS trademark did not fall under the &ldquo;fair use&rdquo; exclusion from dilution liability for noncommercial use of a mark. The Court held that although the exclusion specifically encompasses parodying, it can only be applied if the mark is not used as a source identifier. Thus, a diluter is not &ldquo;shielded&rdquo; from liability if its parodic mark is source-identifying. Importantly, the Court did not address exactly how far the &ldquo;noncommercial use&rdquo; exclusion reaches.<br /><br />The Court then remanded the case to determine whether a consumer is likely to be confused by the use of these two marks, taking into consideration the fact one of the marks is meant to convey parody. <br /><br />The Supreme Court&rsquo;s decision makes it clear that there are no shortcuts around conducting a likelihood of confusion or a likelihood of dilution analysis with respect to goods that may not be primarily expressive. The consequence is that trademark infringement cases regarding arguably expressive goods will become more expensive, with parties having to hire expert witnesses and conduct consumer surveys instead of disposing of such cases early in the litigation process.<br /><br />However, the concurrence, authored by Justice Sotomayor and joined by Justice Alito, addresses concerns with the weight given to consumer surveys in the context of parodic marks. The opinion suggests that results may be skewed by the framing of questions which would unduly silence parodies. The concurrence also cautions that wealthier mark owners with greater ability to conduct these surveys &ldquo;would be handed an effective veto over mockery.&rdquo;<br /><br />A second concurring opinion, authored by Justice Gorsuch and joined by Justice Thomas and Justice Barrett, leaves the door open as to the importance of <em>Rogers </em>in future cases.<br /><br />We will continue to monitor developments and provide further updates regarding this case, the <em>Rogers </em>doctrine, and the law of trademark infringement and dilution. In the meantime, please feel free to contact us if you have questions regarding issues raised by this case.<br /><br /><a href="" target="_blank">Chester Rothstein</a> and <a href="" target="_blank">Charles R. Macedo</a> are partners, <a href="" target="_blank">David P. Goldberg</a> is an associate, and Jamie Zipper is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of trademark law. They can be reached at <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a>, and <a href="mailto:jzippe[email protected]">[email protected]</a> respectively. Thu, 08 Jun 2023 00:00:00 +0000 ARE Patent Alert: U.S. Supreme Court Issues Ruling on Enablement of Functionally Claimed Composition Claims <span style="text-align: justify;">On May 18, 2023, the U.S. Supreme Court issued its decision in </span><i style="text-align: justify;">Amgen, Inc. v. Sanofi et al., </i><span style="text-align: justify;">No. 21-757, 598 U.S. ____ (2023),</span><i style="text-align: justify;"> </i><span style="text-align: justify;">unanimously affirming the Federal Circuit&rsquo;s invalidation of Amgen&rsquo;s claims to a broad class of antibodies for lack of enablement. Although some observers have lamented that the opinion marks a shift in the law of enablement, patent practitioners and industry professionals understand that the claim type at issue&mdash;a composition claimed solely by its function&mdash;has long been notoriously difficult to support with an enabling disclosure. Indeed, to support its analysis, the Supreme Court reached all the way back to </span><i style="text-align: justify;">O&rsquo;Reilly v. Morse</i><span style="text-align: justify;">, in which a claim covering &ldquo;all means of achieving telegraphic communication&rdquo; was invalidated by the Supreme Court because it was too broad. </span><i style="text-align: justify;">Amgen</i><span style="text-align: justify;">, slip op. at 10.</span><p class="MsoNormal" style="text-align:justify"><o:p></o:p></p> <p class="MsoNormal" style="text-align:justify">At issue in Amgen were claims of two US patents reciting antibodies that have two functions: (1) binding to one or more of sixteen specified amino acid residues of a particular protein, and (2) blocking that particular protein from binding to a receptor. Commenting on the breadth of these claims, the Court noted that &ldquo;Amgen seeks to monopolize an entire class of things defined by their function&mdash;every antibody that both binds to particular areas of the sweet spot of PCSK9 and blocks PCSK9 from binding to LDL receptors.&rdquo; <i>Amgen</i>, slip op. at 15.<o:p></o:p></p> <p class="MsoNormal" style="text-align:justify">In affirming that the claims lacked enablement across their full scope, the Supreme Court did not provide a deep factual analysis. Instead, they simply held that the two methods provided by Amgen to produce antibodies with the claimed blocking and binding functionality amount to &ldquo;little more than two research assignment&rdquo;&mdash; characterizing the first method (what Amgen described as a &ldquo;roadmap&rdquo; that could be used to generate new antibodies withing the scope of the claims) to be a mere description of Amgen&rsquo;s own &ldquo;trial-and-error&rdquo; method for finding functional antibodies, and the second method (of &ldquo;conservative substitution&rdquo; of amino acids from the disclosed antibodies) to similarly be nothing more than an invitation to make substitutions and see if the resulting antibody has the same functionality. <i>Amgen</i>, slip op. at 16. Notably, the opinion leaves open the possibility that a &ldquo;roadmap&rdquo; or &ldquo;conservative substitution&quot; <b><i>may</i></b> enable other claims in other patents, if the inventor &ldquo;identifies a quality common to every functional embodiment&rdquo;. The Supreme Court alleged that such a common quality was absent from Amgen&rsquo;s disclosure. <i>Id</i> at 17.<o:p></o:p></p> <p class="MsoNormal" style="text-align:justify">Finally, the Supreme Court dismissed Amgen&rsquo;s argument that the Federal Circuit had &ldquo;conflated the question whether an invention is enabled with the question [of] how long may it take a person skilled in the art to make every embodiment within a broad claim&rdquo;.<i> Amgen</i>, slip op. at 18. &nbsp;Here, the Supreme Court noted, <a href="">as we have previously commented</a>, that the Federal Circuit went out of its way to say that it &ldquo;do[es] not hold that the effort required to exhaust a genus is dispositive&rdquo;. <i>Id.</i><o:p></o:p></p> <p class="MsoNormal" style="text-align:justify">In a prior <a href="">article</a>, we emphasized that that Federal Circuit&rsquo;s decision did not focus solely on the <i>number</i> of different antibodies falling within the claims, but their <i>functional</i> breadth as well. <i>Amgen Inc. v. Sanofi</i>, 987 F. 3d 1080, 1087 (&ldquo;[W]e are not concerned simply with the number of embodiments but also with their functional breadth. Regardless of the exact number of embodiments, it is clear that the claims are far broader in functional diversity than the disclosed examples&rdquo;). The Federal Circuit noted that the claims cover antibodies binding up to sixteen residues, while none of their examples bind more than nine. <i>Id.</i> n.1. It was possible for the Supreme Court to find the claims invalid for this reason alone, leaving open the possibility of functionally claiming a composition with the disclosure of a sufficient number of examples across the functional scope of the claims. However, a discussion or analysis of this fact is notably absent from the Supreme Court decision. Thus, the Supreme Court holding goes further than invalidating Amgen&rsquo;s claims simply because they did not exemplify antibodies with sufficient functional diversity (i.e. antibodies that bind all sixteen residues as encompassed by the claims). <span class="ui-provider">The Supreme Court held that the methods described by Amgen to produce antibodies with the claimed double binding functionality require too much trial and error to warrant granting them a monopoly to all antibodies with that functionality.</span><o:p></o:p></p> <p class="MsoNormal" style="text-align:justify">As discussed above, practitioners understand that it is difficult to provide enabling support for claims that broadly encompass compositions with a particular functionality. Although reasonable people may not agree that Amgen&rsquo;s screening method for producing antibodies with the claimed double binding functionality was merely &ldquo;trial and error&rdquo;, as alleged by the Supreme Court, <i>Amgen v. Sanofi</i> reinforces the need for inventors to identify and describe &ldquo;a quality common to every functional embodiment&rdquo; to support broad functional claims. The case also reinforces the need to pursue a variety of claiming strategies to obtain sufficient scope of protection for biological inventions. <o:p></o:p></p> <p class="MsoNormal" style="text-align:justify">We will continue to monitor developments and provide further updates about the enablement doctrine.<o:p></o:p></p> <p class="MsoNormal" style="text-align:justify">In the meantime, please feel free to contact our attorneys regarding issues raised by this case.<o:p></o:p></p> <p class="MsoNormal" style="text-align:justify"><a href="" target="_blank">Gary Gershik</a> and <a href="" target="_blank">Darren Haber</a> are partners at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of life sciences IP procurement. They can be reached at <a href="mailto:[email protected]">[email protected]</a> and <a href="mailto:[email protected]">[email protected]</a>, respectively.<o:p></o:p></p> Fri, 19 May 2023 00:00:00 +0000 ARE Copyright Alert: U.S. Supreme Court Issues Ruling on the Application of the First Prong of Fair Use Defense On May 18, the Supreme Court issued a ruling in <em>Andy Warhol Foundation for Visual Arts, Inc v. Goldsmith</em>, No. 21-869, 598 U.S. _____ (2023), clarifying the scope of the first prong of the &ldquo;fair use&rdquo; defense to copyright infringement. In an opinion by Justice Sotomayor, the Court, 7-2, affirmed the ruling of the Second Circuit, holding that the &ldquo;purpose and character&rdquo; of the Andy Warhol Foundation&rsquo;s particular commercial use of Lynn Goldsmith&rsquo;s photograph does not favor AWF&rsquo;s &ldquo;fair use&rdquo; defense to copyright infringement.<br /><br />By way of background, in 1984, photographer Lynn Goldsmith granted a limited, one-time only license to Vanity Fair of a photograph she had taken of the musician Prince. Vanity Fair hired pop artist Andy Warhol to create an illustration of the photograph, resulting in a purple silkscreen which appeared on the cover of Vanity Fair&rsquo;s November 1984 issue. Warhol created a total of sixteen works from the photograph, one of which was an orange silkscreen, known as &ldquo;Orange Prince&rdquo;. After Prince&rsquo;s death in 2016, the Andy Warhol Foundation for the Visual Arts, Inc. (&ldquo;AWF&rdquo;) (which controls the intellectual property of the late Warhol) licensed to Cond&eacute; Nast an image of &ldquo;Orange Prince&rdquo; to appear on the cover Vanity Fair&rsquo;s issue commemorating Prince. Goldsmith and AWF entered into litigation, with Goldsmith alleging that AWF&rsquo;s use of Goldsmith&rsquo;s photograph constituted copyright infringement, and AWF claiming fair use.<br /><br /><img src="/images/image/Andy%20Warhol's%20Prince%20Series%20Isn't%20Fair%20Use-Graphic!.jpg" width="700" height="394" alt="" /><br /><div>&nbsp;</div> <div>While the District Court granted AWF summary judgment on its defense of fair use, the Second Circuit reversed, finding that all four fair use factors favored Goldsmith. The Supreme Court granted certiorari on the sole question of whether the first fair use factor, &ldquo;the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes&rdquo;, 17 U.S.C. &sect;107(1), weighed in favor of AWF&rsquo;s commercial license to Cond&eacute; Nast of an image of Orange Prince.</div> <div>&nbsp;</div> <div>In the majority opinion authored by Justice Sotomayor and joined by Justices Thomas, Alito, Gorsuch, Kavanaugh, Barrett, and Jackson, the Court held that it did not, affirming the Second Circuit ruling. Relying on its precedent, including its opinion in <i>Campbell v. Acuff-Rose Music</i>, <i>Inc</i>., 510 U.S. 569 (1994), the Court noted that the &ldquo;first fair use factor considers whether the use of a copyrighted work has a further purpose or different character, which is a matter of degree, and the degree of difference must be balanced against the commercial nature of the use.&rdquo; <i>Goldsmith</i>, majority slip op., at 15. Accordingly, where &ldquo;an original work and a secondary use share the same or highly similar purposes, and the secondary use is of a commercial nature, the first factor is likely to weigh against fair use, absent some other justification for copying.&rdquo; <i>Id</i>.</div> <div>&nbsp;</div> <div>Applying this reasoning, the Court found that the first factor did not favor fair use. According to the Court, the purpose of the works is similar, as they are both &ldquo;portraits of Prince used in magazines to illustrate stories about Prince&rdquo;, <i>id.,</i> majorityslip op., at 22-23, and AWFs use &ndash; licensing the photograph &ndash; was commercial in nature. Further, while recognizing that the &ldquo;meaning or message&rdquo; of a secondary work, to the extent it can be reasonably perceived, &ldquo;is relevant to . . . purpose,&rdquo; the Court noted that it was not dispositive. <i>Id</i>. at 31.&nbsp; Here, any difference in meaning was not, standing alone, enough to resolve the first factor in favor of a finding of fair use, particularly given the commercial context.</div> <div>&nbsp;</div> <div>Additionally, in a footnote, the Court clarified that this outcome was consistent with its holding in <i>Google LLC v. Oracle America, Inc</i>., 141 S. Ct. 1183 (2021), where the Court found that placing Oracle&rsquo;s code in a new context (i.e. mobile devices), given the necessity of use and context of the case, was fair use. <i>Goldsmith</i>, majorityslip op., at 30, n. 18.&nbsp; The Court did not engage in a significant comparison of the facts of the cases, however.</div> <div>&nbsp;</div> <div>Justice Gorsuch, joined by Justice Jackson, authored a concurring opinion, interpreting the question as a &ldquo;narrow one of statutory interpretation&rdquo; and opining that the issue was one of &ldquo;which &lsquo;purpose&rsquo; and &lsquo;character&rsquo; counts&rdquo;&mdash;&ldquo;the purpose the <i>creator</i> had in mind when producing his work and the character of his resulting work&rdquo; or &ldquo;the purpose and character of the <i>challenged use</i>.&rdquo; <i>See id., </i>concurrenceslip op., at 1-2 (emphasis in original). Because the law does not require &ldquo;judges to try their hand at art criticism&rdquo; but to instead focus on &ldquo;the particular use under challenge&rdquo;, the Court&rsquo;s decision was correct due to the significant overlap in purpose and use between AWF&rsquo;s challenged use and Goldsmith&rsquo;s protected use. <i>Id.</i> at 2.</div> <div>&nbsp;</div> <div>Justice Kagan, joined by Chief Justice Roberts, dissented, casting the majority&rsquo;s opinion as a &ldquo;doctrinal shift&rdquo; resting more on <i>ipse dixit </i>than sound legal reasoning, and which &ldquo;undermines creative freedom&rdquo; by emphasizing the similarity in commercial use in the two works. <i>Id</i>., dissent slip op., at 3-4. The dissent points to precedent &ndash; in <i>Campbell </i>and <i>Google </i>&ndash; suggesting that transformative copying qualifies as fair use, and pointed towards the transformative nature of Warhol&rsquo;s work to suggest that the majority was mistaken in its analysis.</div> <div>&nbsp;</div> <div>The dissent also takes a broad stance on the importance of follow-on works and the way fair use protects them. The dissent&rsquo;s opinion describes the ways in which follow-on works can be transformative, pointing to, as one example of many, a series of paintings surrounding the reclining nude, and reflecting sardonically that &ldquo;the majority would presumably describe the purposes to be &ldquo;just two portraits of reclining nudes painted to sell to patrons.&rdquo; <i>See id., </i>dissentslip op., at 31. In the dissent&rsquo;s opinion, fair use exists to protect the creativity in these works, and &ldquo;[t]he majority&rsquo;s commercialism-trumps-creativity analysis&rdquo;, <i>id</i>. at 19, in determining transformative use &ldquo;will stifle creativity of every sort.&rdquo; <i>Id</i>. at 36.</div> <div>&nbsp;</div> <div>In response, the majority argued that &ldquo;the Court&rsquo;s decision, which is consistent with longstanding principles of fair use,&rdquo; would not &ldquo;snuff out the light of Western civilization&rdquo;, and that the dissent&rsquo;s &ldquo;single-minded focus on the value of copying ignores the value of original works.&rdquo; <i>Id</i>., majority slip op., at 36-37. In the majority&rsquo;s telling, &ldquo;the existing copyright law, of which today&rsquo;s opinion is a continuation, is a powerful engine of creativity.&rdquo; <i>Id</i>. at 37.</div> <div>&nbsp;</div> <div>While the Court in <i>Goldsmith</i>, as it did in <i>Google</i>, thus suggested that its opinion was consistent with settled copyright law, the exact effect of its opinion, and whether it instead, as the dissent suggests, represents a &ldquo;doctrinal shift,&rdquo; remains to be seen.</div> <div>&nbsp;</div> <div>We will continue to monitor the development of the fair use doctrine and provide further updates as courts throughout the country begin the task of interpreting and applying <i>Goldsmith</i>.</div> <div>&nbsp;</div>In the meantime, please feel free to contact our attorneys regarding issues raised by this case.<br /><br /><a href="" target="_blank">Charles R. Macedo</a> is a partner, <a href="" target="_blank">Olivia Harris</a> is an associate, and Thomas Hart is a law clerk at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of intellectual property law, including trademarks, copyrights and patents. They can be reached at <a href="mailto:[email protected]">[email protected]</a>, <a href="mailto:[email protected]">[email protected]</a> and <a href="mailto:[email protected]">[email protected]</a> respectively.<br type="_moz" /> Fri, 19 May 2023 00:00:00 +0000 Amster, Rothstein & Ebenstein's Max Vern Quoted in the Observer's February 23' Article on Hermès and Bored Ape Yacht Club Trademark Lawsuits Max Vern was quoted in the Observer's&nbsp;Trademark Lawsuits from Herm&egrave;s and Bored Ape Yacht Club Could Shape the Future of NFTs article.<br /><br />Max said &quot;The cases have made companies be more proactive in their trademark protection&rdquo;. &ldquo;They don&rsquo;t want entrepreneurial types trying to steal from them.&rdquo;<br /><br />Read the full article <a href="" target="_blank">here</a>. Wed, 08 Feb 2023 00:00:00 +0000 ARE Trademark Law Alert: Metabirkins NFTs Found to Infringe Hermès’ Trademark Rights Earlier today, a federal jury held artist Mason Rothschild liable to Herm&egrave;s International for trademark infringement, trademark dilution, and cybersquatting based on Rothschild&rsquo;s creation and online sale of the Metabirkins series of non-fungible tokens (&ldquo;Metabirkins NFTs&rdquo;). <em>See Herm&egrave;s International v. Rothschild</em>, No. 22-CV-00384 (SDNY filed Mar. 2, 2022).<br /><br />As we previously reported, Herm&egrave;s alleged in its complaint that the Metabirkins NFTs infringe its trademark rights in its popular Birkin bags and hamper its ability to market the bags online. Rothschild countered that his NFTs were artwork protected by the First Amendment and that trademark law should not give Herm&egrave;s control over his art. <br /><br />The jury&rsquo;s award of $133,000 is a win for Herm&egrave;s. That said, there is a good chance that Rothschild will file post-trial motions and/or an appeal. We will continue to follow and report on this case and other trademark matters in the federal courts that may affect our clients. If you have questions about how this jury verdict may impact your rights, please feel free to contact us.<br /><br /><em><a href="" target="_blank">Charles R. Macedo</a> and <a href="" target="_blank">Max Vern</a> are partners and <a href="" target="_blank">David P. Goldberg</a> is an associate at Amster, Rothstein &amp; Ebenstein LLP. Their practices specialize in all aspects of intellectual property law, including trademarks, copyrights and patents. They can be reached at <a href="mailto:[email protected]">[email protected]</a>, <a href="">[email protected]</a> and <a href="mailto:[email protected]">[email protected]</a> respectively.</em><br type="_moz" /> Wed, 08 Feb 2023 00:00:00 +0000 NYSBA Bright Ideas Publishes Article - Appeal of the Second Circuit’s ML Genius Holdings LLC v. Google LLC Decision May Resolve a Circuit Split on Copyright Act Preemption Tests The New York State Bar Association (NYSBA) publishes article written by ARE Partner <a href="" target="_blank">Doug Miro</a> and Associate <a href="" target="_blank">David Goldberg</a>. The article &quot;<a href="/images/file/BrightIdeas-2022-vol-31-no-2_8_5X11_WEB.pdf" target="_blank">Appeal of the Second Circuit&rsquo;s ML Genius Holdings LLC&nbsp;v. Google LLC Decision May Resolve a Circuit Split on&nbsp;Copyright Act Preemption Tests</a>&quot; was published in the NYSBA Bright Ideas, 2022, Vol. 31 No. 2.<br /><br /><a href="/images/file/BrightIdeas-2022-vol-31-no-2_8_5X11_WEB.pdf" target="_blank">Read the full article.</a> Thu, 08 Dec 2022 00:00:00 +0000 US Supreme Court Lanham Act case will hopefully return US trademark law to more stable foundations - World Trademark Review World Trademark Review posts article by Amster, Rothstein and Ebenstein's <a href="" target="_blank">Charles Macedo</a> and <a href="" target="_blank">David Goldberg</a> on the Court Lanham Act case.<br /><br />&quot;The US Supreme Court recently granted certiorari in a case that will hopefully settle conflicting Court of Appeals decisions on the cross-border reach of the Lanham Act, notes this week&rsquo;s opinion.&quot;<br /><br /><a href="" target="_blank">Read the full article</a>&nbsp;(subscription required).<br /><br /><a href="/images/file/WTR%20opinion%2026%20Nov%202022.pdf" target="_blank">PDF version</a> Sat, 26 Nov 2022 00:00:00 +0000 US Supreme Court to review a false dichotomy in Amgen v Sanofi - IAM IAM features article by&nbsp;<a href="" target="_blank">Charles R Macedo</a>, <a href="" target="_blank">Darren Haber</a>, <a href="" target="_blank">Yangfan Xu</a> and <a href="" target="_blank">Gary J. Gershik</a> of Amster, Rothstein&amp; Ebenstein LLP.<br /><br />&quot;Saturday Opinion: In its petition for certiorari, Amgen painted a picture of a Federal Circuit run amok. However, the dichotomy presented by Amgen in its petition for certiorari is a false one...&quot;<br /><br />Read the <a href="" target="_blank">full article here</a>&nbsp;(subscription required).<br /><br /><a href="/images/file/IAMopinion.pdf" target="_blank">PDF version</a><br type="_moz" /><br /><br /><br /><br /><br type="_moz" /><br /> Sat, 26 Nov 2022 00:00:00 +0000 ARE USPTO Alert: USPTO Adopts Shorter Deadline to Respond to Office Actions for Trademark Applications <p class="MsoNormal"><span style="font-family:">On November 17, 2021, the United States Patent and Trademark Office (USPTO) published a final rule implementing provisions of the Trademark Modernization Act of 2020 (TMA).</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">One important new aspect of the rule, which applies to most trademark Office Actions issued on or after December 3, 2022, cuts the deadline to respond to Office Actions in half, from six months to only three months.&nbsp; However, the rule allows for a three-month extension (of course with an extra government fee).&nbsp; This is similar to the way the USPTO deals with Office Actions for patent applications.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">The new response time applies to most application filing bases, including use in commerce section 1(a), intent to use section 1(b), foreign application section 44(e), and foreign application section 44(d).&nbsp; In these situations, trademark applicants can request a single three-month extension to respond for a $125 fee.&nbsp; This would bring the total available response time back to six months.&nbsp;</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">There are two notable exceptions to this new policy.&nbsp; An applicant cannot request an extension of time if the application was filed as a Madrid Protocol section 66(a) application.&nbsp; For those foreign-based applications, the response period will remain at six months.&nbsp; Similarly, extensions are not available if the Office Action was issued before December 3, 2022, which also will automatically enjoy the full six months.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">The USPTO intends to accomplish two things by shortening the response time.&nbsp; Specifically, the USPTO hopes to: (i) decrease the time it takes to get a registration; and (ii) provide the flexibility to request additional time to respond to more complex Office Actions.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">The shortened response time (without paying the extra fee) will have significant real-world effects for trademark practitioners and their clients.&nbsp; For example, Applicants will have less time to report and decide how to respond to an Office Action, including whether to submit written arguments based on a cited mark or marks, whether to oppose or cancel the cited mark(s), and/or whether to seek a co-existence agreement with the owner(s) of the cited mark(s).&nbsp;</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">It is important to note that this new response period applies to pending trademark applications only.&nbsp; It will not apply to post-registration office actions for things like renewals. &nbsp;Changes to the post-registration response period will be implemented on October 7, 2023, and we will report again once we learn what is in store there.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">More information is available at the&nbsp;</span><a href=""><span style="font-family:">USPTO website</span></a><span style="font-family:">.</span><span style="font-family: Arial, sans-serif;">&nbsp;</span></p> <p class="MsoNormal"><span style="font-family:">We will continue to monitor and report on USPTO developments and developments in this area of trademark law. &nbsp;In the meantime, please feel free to contact us to learn more.<o:p></o:p></span></p> <p class="MsoNormal"><b><span style="font-family:">About the Authors<o:p></o:p></span></b></p> <p class="MsoNormal">Douglas A. Miro and Chester Rothstein are partners, and Christopher Lisiewski is an associate at Amster, Rothstein &amp; Ebenstein LLP. &nbsp;Their practices specialize in intellectual property issues, including litigating patent, trademark, and other intellectual property disputes. &nbsp;The authors may be reached at&nbsp;<a href="mailto:[email protected]"><span style="font-family:">[email protected]</span></a>,&nbsp;<a href="mailto:[email protected]"><span style="font-family:">[email protected]</span></a>, and&nbsp;<a href="mailto:[email protected]"><span style="font-family:">c[email protected]</span></a>.&nbsp;</p> Tue, 22 Nov 2022 00:00:00 +0000 NFTs, Cryptocurrency & the Metaverse | A new dimension for IP Charles Macedo, Max Vern and David Goldberg co-author article for The Trademark Lawyer on Trademark issues in the Metaverse; &quot;examining recent cases of conflict between platform owners over trademark infringement and conflicts involving NFTs to provide a US perspective on handling trademarks in the metaverse.&quot;<br /><br />Read the <a href="/images/file/Amster%20Rothstein_NFT_PDF.pdf" target="_blank">full article here.</a> Fri, 04 Nov 2022 00:00:00 +0000 Practical Law Practice Note by Charles R. Macedo on Appealing Patent Trial and Appeal Board Final Written Decisions This Practical Law Practice Note by Charley Macedo discusses procedural and strategic considerations involved in appealing final written decisions of the Patent Trial and Appeal Board (PTAB) in inter partes review (IPR), post-grant review (PGR), and covered business method (CBM) patentability challenges under the Leahy-Smith America Invents Act (AIA).<br /><br />The article also explores grounds, timelines and practical considerations for requesting rehearing of a final written decision before the PTAB and appeal to the U.S. Court of Appeals for the Federal Circuit.<br /><br /><br /><a href="/images/Appealing Patent Trial and Appeal Board Final Written Decisions(w-006-9741).pdf" target="_blank">Appealing Patent Trial and Appeal Board Final Written Decisions</a> Thu, 07 Sep 2023 00:00:00 +0000 Charley Macedo Publishes Updated Practical Law Practice Note on Understanding PTAB Trials: Key Milestones in IPR, PGR and CBM Proceedings<br> <a href="" target="_blank">This Practical Law Practice</a>&nbsp;Note by Charley Macedo discusses key milestones in post-grant patentability challenges at the U.S. Patent and Trademark Office under the Leahy-Smith America Invents Act (AIA). It reviews typical timelines and procedures at key milestones in inter partes review (IPR), post-grant review (PGR) and covered business method (CBM) patentability challenges before the Patent Trial and Appeal Board (PTAB).<br /><br /><a href="" target="_blank">Click here to read the full article.</a> Fri, 22 Jul 2022 00:00:00 +0000 NERDS Candy <img src="/images/image/NERDS.png" width="750" height="422" alt="" />&nbsp; Tue, 08 Dec 1998 00:00:00 +0000 ecotribe Stainless Steel Straws & Travel Cases Set - Twin Set &nbsp;<img src="/images/image/Ecotribe%20-%20Straws.jpg" width="750" height="971" alt="" /> Tue, 07 May 2019 00:00:00 +0000 Charles Macedo Quoted in IPWatchdog's Article on the American Axle U.S. Supreme Court Denial <a href="" target="_blank">Charles Macedo</a> was quoted in IPWatchdog&rsquo;s American Axle Denied: Patent Stakeholders Sound Off on SCOTUS&rsquo; Refusal to Deal with Eligibility article.<br /><br />Charley said &quot;It is disappointing to see the Court deny certiorari in this case. All factors suggest this is a case that should be heard: 1. The decisions below were seemingly contrary to Supreme Court precedent in Diehr; 2. The panel and appellate court were significantly divided; 3. Many amici argued that the Court should take it, including not just the NYIPLA, in our brief, and other IP bar associations, but even a member of Congress and former Chief Judge of the Federal Circuit and former director of the USPTO; and 4. The government, after a year of deliberation, wrote a compelling brief that the decision below was wrong and certiorari should be granted. If this is not a case for the Supreme Court, then it may instead have to become a subject of legislation.&quot;<br /><br /><a href="" target="_blank">Read the full article here.</a> Tue, 05 Jul 2022 00:00:00 +0000