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T.C. Heartland L.L.C. v. Kraft Food Brands, L.L.C: Proper Patent Venue

On May 2017, the Supreme Court handed down one of the most significant patent law decisions of the last several years in T.C. Heartland L.L.C. v. Kraft Food Brands, L.L.C. This case directly impacts the proper venue in which to bring patent infringement cases, and therefore could drastically change the landscape of patent litigation as it stands. The main crux of this case dealt with the conflicting language between 28 U.S.C. §1400 and §1390. Pursuant to § 1400(b), a “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.” Pursuant to § 1391(c), a corporation is deemed to be a resident of “any judicial district in which such defendant is subject to the court’s personal jurisdiction…” A Federal Circuit case in the 1990’s, VE Holding Corp. v. Johnson Gas Appliance Co., held that §1391(c) applied to patent infringement actions. At this same time Congress amended the general venue statute of §1391(c) to read: “[f]or purposes of venue under this chapter, a defendant that is a corporation shall be deemed to reside in any judicial district in which it is subject to personal jurisdiction at the time the action is commenced.” The practical affect of this was to curb the pervasive practice of venue shopping in patent infringement cases. Certain districts, such as the Eastern District of Texas, have become famous for their overwhelmingly high number of patent infringement cases, expert judges, and specially designed local rules to create a quicker patent docket. Despite the defendants in these cases...

Design Patents and Damages

Design patents have recently found a prominent place in the news, being the basis of infringement in much publicized Apple v. Samsung. While this is an important piece of intellectual property protection, the contours of damages that can be sought based on infringement of a design patent can be confusing and easily misunderstood. Below is an outline of what damages can be sought for infringement of a design patent. Statutory Provisions Granting Damages Damages for infringement of a design patent can be found in both 35 U.S.C. §284 (the standard damages provision for all patents) as well §289 (the damages provision specifically for design patents). The standard patent damages provision of §284 allows the patent holder to recover no “less than a reasonable royalty for the use made of the invention by the infringer.” In practical terms, this refers to the patent holder’s lost profits; that is, but for the infringement, how much money would the patent holder have made. Upon a finding of willfulness, the judge is able to multiple this damage award by 3x. The design patent damage statute of §289 however speaks directly to allowing the patent holder to recover the infringer’s profits. Statute §289 states an infringer “shall be liable to the owner to the extent of his total profit, but not less than $250”. The Federal Circuit has ruled that a patentee can collect either of these damages theories, but not both. [Catalina Lighting, Inc. v. Lamps Plus, Inc., 295 F.3d 1277 (Fed. Cir. 2002)] Apportionment of Profits When making an accounting of an infringer’s profits under §289, there is a key question about...

Amazon Taking On Counterfeiters

In November of 2016 Amazon filed lawsuits against counterfeiters and infringers for the first time in its 20-year history. This follows on the heels of Amazon’s announcement in August of 2016 that they would be stepping up enforcement measures against counterfeit sellers. This move towards enhanced enforcement has been increasingly called for by Amazon users, both purchasers and sellers, who had to deal with a growing problem of counterfeit sellers with little to no recourse for addressing the issue.   Amazon’s problem with counterfeit sellers is nothing new, and has been growing in the last years. Many large retailers such as Apple, NFL, and Birkenstock have refused to sell their products through Amazon because of the inability to control counterfeit sellers of their items. To address this issue Amazon began taking increased enforcement measures in 2016, starting with an announcement in August. Amazon announced they would be stepping up fees for retailers who desire to sell brand-name products. For example, if a retailer seeks to sell Adidas, Nike, or Hasbro products they are required to pay between $1,000-1,500 non-refundable fee. This is in attempt to foil fly-by-night counterfeit seller operations, which usually open for a short time to sell counterfeit products, but disappear as soon as any complaints arise. No exact list of brands requiring said fees has been released, but it is safe to say Amazon is taking increasing efforts to restrict sales of products only through authorized retailers. While this is welcomed news to brands, this could be a serious impediment to third-party resellers who made their money from retail arbitrage, reselling products purchased a wholesale or...

GIFs and Copyright: With Money Comes the Laws

GIF’s, or short looping video clips, ubiquitously populate the Internet and have quickly become a new form of communication unto themselves. Usually these short looping videos borrow clips from popular television shows, movies, or video of cultural figures, or in other words, copyright protected materials. For the most part copyright holders of these borrowed-from properties have ignored the possible infringements of these GIFs because most are seen as “fair use” (not to mention the sheer volume to police). A key element of “fair use” however is the commercial nature of the work in question. Up until now the vast majority of GIFs created by individuals were not commercial in nature, however that may be beginning to change with a $72 million round of funding raised this week by the Internet’s main GIF creating and search engine GIPHY. GIFs just became big business, and with money always come laws. When assessing whether something is protected under “fair use” four factors are looked at: 1) Amount and substantiality of the portion taken; 2) Purpose and character of your use; 3) Nature of the copyrighted work; and 4) Effect of the use upon the potential market. GIFs are normally seen as “fair use” because of a few key features. First, they are usually very short, favoring fair use because a very unsubstantial portion of the larger copyrighted work is used. Second, the purpose of the GIFs is usually satirical or parodic, favoring fair use because the meaning is different than that of the original work. Third, the nature of GIFs is normally to alter the original video in some way, (looping, speeding...

How Much Use Is Enough?: CAFC Clarifies Use In Commerce Requirement

One of the primary requirements for trademark registration is that the mark is “Use in Commerce”, or that the mark was used in commerce in connection with a good or service for which it is being registered. The exact definition of the extent of “use” required was vague however. With a recent ruling in Christian Faith Fellowship v. Adidas AG, the Court of Appeals Federal Circuit (CAFC) has helped to clarify the contours of this requirement, giving potential trademark applicants more detailed guidance on important registration requirements. This case began with the Christian Faith Fellowship Church (“Church”) selling hats embroidered with the phrase “ADD A ZERO” in early 2005. The Church then applied for trademark registrations for the phrase “ADD A ZERO” in connection with two clothing-based classifications. In their trademark application the Church cited to actual use in commerce of the mark (the sales of hats in 2005), rather than intent to use. At the time the trademark examiner deemed the application sufficient and granted registration of the mark “ADD A ZERO”. The issue of this case stemmed from Adidas filing of a trademark application for the mark “ADIZERO”, in connection with clothing-based classifications, in 2009. Based on a likelihood of confusion with the Church’s “ADD A ZERO” mark, the USPTO refused registration of Adidas’s mark. In response, Adidas sought to cancel the Church’s mark on the grounds they had failed to use the mark in commerce before registration (something the Church had claimed they did as part of their application). The Lanham Act defines a mark as “used in commerce” when “the goods are sold or transported...

Cheering for Copyright: The Supreme Court Hears Consequential Dispute over Cheerleader Uniforms

In a case heard by the Supreme Court on October 31st this year, Star Athletica, LLC v. Varsity Brands, Inc., basic premises of copyright law was up for dispute. At the heart of this case is a dispute between two manufactures of cheerleading uniforms, Star Athletica and Varsity Brands. Varsity Brands accused Star Athletica of essentially copying their cheerleading uniforms and selling them at a lower price. For their side of the argument, Star Athletica counters that the cheerleading uniforms are not protectable by copyright because they are functional rather than expressive. For that matter, Star Athletica claims the Supreme Court should adopt a precedent where all garments are exempt from copyright protection. This argument revolves around a basic premise of copyright law that says copyright protection is only offered for expressive content of work, not functional ideas or objects. This principal was instantiated in Mazer v. Stein, which involved a statuette of a woman that was intended for, and was used as, the base of a lamp.   The Court held that the Copyright Act protected the expression of the statuette, but not the idea of using a statuette as a lamp base. Therefore, others could make statuettes used as bases of lamps, however they could not copy that exact expression of a women as a lamp base that was protected by copyright. This same principal is at issue in the present case. Star Athletica argued there should be a blanket presumption against copyright protection for garments. According to their argument, if the design features on a garment cannot be conceived of separate and apart from the garment itself,...