Category: Intellectual Property News

by Dennis Crouch

1. Vidal v. Elster.  Elster is seeking to register the mark TRUMP TOO SMALL, but was initially rebuffed because the law prohibits registration of a mark consisting of the name of a particular individual. 15 U.S.C. 1052(c).  On appeal though, the Federal Circuit found such a restriction unconstitutional — especially in this situation where the mark forms a criticism.  The court’s decision follows the logic of two recent Supreme Court cases on point: Tam (the SLANTS – disparaging marks) and Brunetti (FUCT – scandalous marks).  In its petition, however, the US Gov’t tries to distinguish those viewpoint cases from this one that arguably does not involve viewpoint discrimination. Question presented: “Whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”
2. Nike v. Adidas: This one is not yet a petition, but in an extension request, Nike indicated its plans to petition this case.  The basic issue is whether the IPR statute permits the Board to raise patentability issues sua sponte with regard to substitute claims. 

Continue reading Three New Supreme Court Cases: at Patently-O.

The Chamberlain Group v. Overhead Door Corp., 21-CV-00084 (E.D. Tex. 2023)

Overhead door won a jury verdict in this case back in March 2022.  However, Judge Gilstrap ordered a partial new trial because Overhead Door had failed to disclose key features of its products until just before trial. New Jury, New Verdict.  Second time around, the new jury found the asserted claims valid and not infringed — setting the royalty at $43 million.

U.S. Patent No. 8,587,404.

4. A movable barrier system with a moving-barrier imminent motion notification, the system comprising:

a movable barrier operator connected to close a movable barrier;

the movable barrier operator configured to receive a transmitter identification code from a transmitter as part of a communication from the transmitter triggered in response to a first user input at the transmitter, the communication comprising a command to close configured to effect closing of the movable barrier, the movable barrier operator also configured to determine whether to close the movable barrier in combination with operating a moving-barrier imminent motion notification in response to receipt of the command to close the movable barrier based at least in part on the transmitter identification code;

the movable barrier operator configured to determine whether to close the movable barrier without operating the moving-barrier imminent motion notification based at least in part on the transmitter identification code.

Continue reading Chamberlain Closes on Overhead Door at Patently-O.

Ryan Davis at IP360 is reporting that Rep. Darryl Issa is the new chair of the House Subcommittee on Courts, Intellectual Property, and the Internet. He was previously Chair 2015-2019.   Issa has been called-out by the group US Inventor for his previous failure to focus on their particular concerns.   He has not announced particular plans for the committee. Sen. Chris Coons is most likely to take over as chair of the parallel Senate Committee following Sen. Leahy’s retirement.

Continue reading Rep. Issa – House IP Leader at Patently-O.

It is hard for me to believe that the US Supreme Court is hearing the case of Jack Daniels vs Bad Spaniels. For those who don’t know, Jack Daniels is a form of Whiskey.  VIP Products makes and sells a squeaking dog toy known as “bad spaniels.” The setup here is a humorous parody, but JD is not laughing.

Jack Daniels sent a cease-and-desist letter to VIP who then filed a declaratory judgment action in Arizona. The district court sided with JD on both TM infringement and dilution and issued an injunction to stop ongoing sales and distribution.  (The excrementory references in Bad Spaniel also led to tarnishment conclusions).  On appeal though, the 9th Circuit identified the toy as an “expressive work” entitled to speech protections under the First Amendment of the US Constitution and ordered the lower court to apply an enhanced infringement analysis stemming from Rogers v. Grimaldi, 875 F.2d 994 (1989).  Under Rogers, the court needs to consider the expressive relevance of the accused work and whether it is “explicitly” misleading.  With regard to dilution, the appellate court found that the dog toy was not actually making commercial use of the JD mark. 

Continue reading Jack Daniels vs Bad Spaniels: Funny Jokes and Free Speech at Patently-O.

by Dennis Crouch

In a prior post, I mentioned that the Copyright Office had canceled the registration for “Zarya of the Dawn,” a book purportedly created mainly by AI.  That was in error apparently generated by the Office’s new Copyright Public Records System.    The attorney for the human author – Kristina Kashtanova – contacted me to point out the error and you can see that the errors have been corrected. The copyright is currently registered.

View this post on Instagram

A post shared by Kris Kashtanova (@kris.kashtanova)

That said, the Copyright Office has initiated a cancellation process for the work.  In a responsive filing, her attorney Van Lindberg walks through her creation and makes the case that all aspects of the book, even computer generated images, are copyrightable.

In addition to the copyrightability of the Work as a whole, each individual picture is itself the result of a creative process that yields a copyrightable work. Kashtanova could extract any single image from the Work and submit it to the Office and correctly assert her authorship of that image.

Unlike the “autonomously generated” picture known as “A Recent Entrance to Paradise,” all the images in the Work were designed by Kashtanova.

Continue reading Copyright and AI – Zarya of the Dawn at Patently-O.

by Dennis Crouch

In a prior post, I mentioned that the Copyright Office had canceled the registration for “Zarya of the Dawn,” a book purportedly created mainly by AI.  That was in error apparently generated by the Office’s new Copyright Public Records System.    The attorney for the human author – Kristina Kashtanova – contacted me to point out the error and you can see that the errors have been corrected. The copyright is currently registered.

View this post on Instagram

A post shared by Kris Kashtanova (@kris.kashtanova)

That said, the Copyright Office has initiated a cancellation process for the work.  In a responsive filing, her attorney Van Lindberg walks through her creation and makes the case that all aspects of the book, even computer generated images, are copyrightable.

In addition to the copyrightability of the Work as a whole, each individual picture is itself the result of a creative process that yields a copyrightable work. Kashtanova could extract any single image from the Work and submit it to the Office and correctly assert her authorship of that image.

Unlike the “autonomously generated” picture known as “A Recent Entrance to Paradise,” all the images in the Work were designed by Kashtanova.

Continue reading Copyright and AI – Zarya of the Dawn at Patently-O.

by Dennis Crouch

In 2022, the Federal Circuit held that an invention is only eligible for a US patent if a human conceived of the invention. Thus, no patents for invention wholly conceived by artificial intelligence.  Thaler v. Vidal, 43 F.4th 1207 (Fed. Cir. 2022).  Thaler’s petition for writ of certiorari to the US Supreme Court would have been due last week, but Thaler was able to obtain an extension with the petition now being due March 19, 2023.  Thaler’s main attorney throughout this process has been Professor Ryan Abbott. The team recently added appellate attorney and Supreme Court expert Mark Davies to the team, and so it should be a great filing when it comes.  The motion for extension explains that the case presents a fundamental question of how the law of inventorship should apply “to new technological methods of invention.”

Specifically, this case arises from the Federal Circuit’s denial of a patent to an invention created by an artificial intelligence (AI) system, holding that an AI system is categorically unable to meet the definition of “inventor” under the Patent Act. The questions presented in Dr. Thaler’s petition will have a significant impact on Congress’s carefully balanced scheme for protecting the public interest in promoting innovation and ensuring the United States’ continued international leadership in the protection of intellectual property.

Continue reading An Update on AI Inventorship and Authorship Cases at Patently-O.

In re General Motors Co. (Fed. Cir. 2022)

Without much pretense, the Federal Circuit has rejected GM’s petition to the Federal Circuit seeking transfer of its case out of the Western District of Texas.  In 2021, Intellectual Ventures (IV) sued GM for infringement of twelve different patents — all focusing on features of GM’s OnStar service.  GM wanted the case to moved up to Michigan on convenience grounds, but Judge Albright Refused.  In particular, Judge Albright noted that GM has a major IT Innovation Center in WD Tex (Austin) that includes potential witnesses.  On mandamus, the Federal Circuit refused to disturb this holding.

In the short opinion, Judge Stark found Judge Albright’s findings reasonable and relevant. In particular, the court noted the following:

GM employees in the Western District of Texas with relevant and material information;

Electronic evidence in Michigan can be accessed by GM from its offices in the Western District;

The Western District (and not Michigan) has the power to compel one of the inventors to testify; and

The Western District has a strong local interest  because of GM’s significant presence, including many who devlop/sell the accused products.

Continue reading Mandamus Reasonably Denied at Patently-O.