Fordham IP Conference Day 2 - live

The final trade mark panel of the day had enough intrigue – and swear words – to keep the attention of the audience who may have been feeling tired after a long day of sessions. The Disparaging, Scandalous and Immoral Trademarks session discussed trade mark law and the First Amendment.

Magdalena Berger from Platz gave an overview of the Redskins and Slants cases. She noted that in In Re Tam the Federal Circuit said trade marks are so much more than just commercial source identifiers. It said The Slants is expressive speech, because Tam was trying to reclaim the term.

Berger noted the state of play at the moment: the disparagement provision in 2(a) is unconstitutional in the Federal Circuit, the USPTO is bound by it but has not yet registered The Slants, and no writ of cert has yet been submitted to the Supreme Court yet. The Redskins case is in the Fourth Circuit, where the Circuit is not bound by the Federal Circuit. The case is still at the briefing stage.

Professor Megan Carpenter from the Texas A&M University School of Law discussed an empirical analysis of Section 2(a) rejections based on scandalousness. She said the standard for immorality is that it should be analysed in the context of thinking of the day. “But it is not really being applied how you would likelihood of confusion,” she said. “We don’t treat this provision the same. We should just toss it out.”

Carpenter revealed that the evidence used by examiners in these rejections were dictionary only 70% of the time 

“But dictionary definitions fail to give the context we talk about with trade mark law,” she said. “It really does a disservice. Vulgar is also in many ways a lessor standard than scandalous.”

She added that when examiners did include context in the evidence it was “done in a Catch 22 sort of way”.  

She added: “The impact is significant – applicants don’t often respond to refusals on this basis – only 20.26% of the time. And only two times was the decision overturned when applicant did respond.”

Fordham’s Hugh Hansen noted one reason for the low response level. “With smut they can just change their name. They aren’t doing it for free speech reasons, that’s why they don’t oppose.”

Lee Rowland, senior staff attorney at the American Civil Liberties Union, discussed the Redskins case. 

“The most effective brief is the Redskins appellate brief at the Fourth Circuit. It makes the point this program serves no government purpose – none!” she said. 

After turning the air blue by giving some examples of terms that had been registered, Rowland added that the way disparaging marks are treated by the USPTO is “just a butt covering method for the USPTO using Urban Dictionary”. 

Hansen said the Redskins “made the correct decision to go to the district court rather than the Federal Circuit”. But he noted that now the case is in Virginia rather than the DC circuit it is likely the judge will follow the Federal Circuit’s thinking. “There is nothing to be gained for this district judge to get involved,” he said. “The media onslaught would be immense on this judge.” 

Hansen canvassed the panel for predictions on the Redskins case. Professor Christine Haight Farley from the American University Washington College of Law predicted the Fourth Circuit will affirm. But Rowland thought it will overturn, as did Carpenter. “The Federal Circuit has given them cover,” said Rowland. 

Hansen said: “In this case I think there is a good chance they’ll pass because they will not get criticised if they defer to the Federal Circuit. I think that covers them.”

There was broad agreement that if it is reversed the Supreme Court will grant cert. “The DOJ will have a sh*tfit if they don’t,” predicted Rowland, who believes the Supreme Court would reverse if it took the case on.

  

On a US trade marks update session this morning, Professor Marshall Leaffer of the Maurer School of Law at the University of Indiana discussed two rulings last year involving the TTAB. 

In B&B, the Supreme Court held that when the usages adjudicated by the Trademark Trial and Appeal Board are materially the same as those before a district court, issue preclusion should apply.

In Newbridge, the Federal Circuit reversed a TTAB refusal to register the mark “Newbridge Home” for silverware, jewellery and kitchen goods on the ground it is geographically descriptive. Leaffer was sarcastic about the TTAB’s conclusion that Newbridge is a place generally known to the public because it is the largest town in Country Kildare, it is the 17th largest town in Ireland, and is referenced on a number of websites – “it has a Wikipedia entry!” he proclaimed. 

Discussing B&B, Laura Popp-Rosenberg of Fross Zelnick Lehrman & Zissu commented: “I would be much more inclined to go the district court route. If you think the case is going to go far, I would recommend a court action rather than an oppositions proceeding.” 

Susan Richey, deputy chief administrative trade mark judge at the USPTO, gave an overview of the USPTO’s post-registration proof of use pilot programme, which randomly selected for participation 500 registrations for which Section 8 or 71 declarations of use were filed. The final report on this was published in August last year. 

In just over half of the registrations selected for the pilot, the trade mark owners failed to meet the requirement to verify the previously claimed use on particular goods and/or services. Goods and/or services were deleted in 175 of the registrations, or 35%, of the registrations queried under the pilot. In another 78 registrations, or 16%, the trade mark owner failed to respond to the requirements of the pilot and any other issues raised during examination of the underlying maintenance filing, resulting in cancellation of the registration. Accordingly, of the 500 registrations selected for the pilot, 253 registrations, or 51%, were unable to verify the previously claimed use in their Section 8 or 71 declarations. 

Richey said that, despite receiving a lot of criticism, foreign filers are not the only problem when it comes to proof of use. She noted that 45% of registrations on a Section 1(a) basis (based on use in commerce) were unable to verify previously claimed use in Section 8 or 71 declarations. 

The USPTO is looking into what the next steps are.  “Random audits will become part of the practice,” noted Richey. 

Daniel Bereskin of Bereskin & Parr was asked whether foreign filers get treated worse during the application process in the US. “It is not a level playing field at the moment,” he said. “But the situation is far worse in Europe. It is a problem that is global in nature. One way to address it is to allow third parties to attack trade marks that are not in use.” 

Paul Maier, director of the EU Observatory on Infringements of IP Rights, gave an overview of The New Transit Provision of Reg 2015/2424 on the EU Trademark. Rights holders have criticised the new provision as being insufficient by the right holders. Others have said it is not compatible with the TRIPS–WTO provisions. Transit is one of the main problems in the fight against trade in counterfeits. The subject of the transit provision was one of the most controversial ones during the negotiations of the new regulation. 

Maier concluded: “I think it will be good improvement, and it is a necessary measure. But the next steps are important.”

He said these steps are the guidelines by DG Taxud and the need for training of customs authorities to make sure they can deal with the provision. 

Marcus von Welser, of Vossius & Partner had some criticisms. “It should have been a customs provision not a trade mark provision,” he said.  He also said there is legal uncertainty about what is the country of final destination.

Gareth Dickson of Cooley gave a presentation on domain names and the UDRP. He noted the UDRP is an administrable, contractual procedure that is very popular (although “the end of last year dropped a bit but we’ll see if that was just a blip”), and is predictable. 

He said trade mark protection through UDRP is stable and effective. Passing off is also a viable option in London since the Yoyo.email decision.

He said UDRP serves as a model for other dispute resolutions. But there could be improvements. Dickson noted that UDRP review is infrequent. “It is 20 years since UDRP came into use; now is a good time to make sure still fit for purpose,” he said. 

He suggested a focus on curative rather than preventable measures, to be administered by a third party. He said the industry has shown that RPMs can be innovative, and is looking into how to resolve copyright issues.

Matthew Dean Stratton, corporate counsel at Elsevier, spoke about global anti-piracy strategies in the digital era. On takedown notices, he commented: “We believe there is scope for improvement through legislation that is pro-tech, pro-innovation and that has respect for free speech principles.”

He later added: “At the moment pirates are winning. We have no doubt tweaks are necessary.”

Maier believed that voluntary cooperation practices are something for the future. “You can’t solve this problem through litigation,” he said. “Takedown notices are very much ineffective – they reopen the same site under a different address in seconds.”

Laura Popp-Rosenberg of Fross Zelnick Lehrman & Zissu assessed the ability to have injunctions granted in trade mark cases. 

The eBay decision in 2006 and Winter decision in 2008 shifted the landscape over whether injunctions are appropriate in trade mark cases. 

Popp-Rosenberg said there is still a lot of chaos in the court about whether trade mark cases should be shaped by these cases that did not involve trade marks. She noted trade mark law is different form patent and copyright law, trade marks are different from patents and copyrights, and eBay/Winter are not on their face inconsistent with the application of presumption. 

The result is that it is harder to get preliminary injunction. Another upshot is forum shopping – “Stay out of the 9th Circuit if you have irreparable harm case and get to the 5th Circuit if you can,” Popp-Rosenberg said.  She also noted inconsistent results and a potential lack of remedy.

On this last point she gave an example of the recent case Active Sports v Old Navy. The plaintiff won but they got no money and no injunction. “So what kind of win is that?” she said. She noted, however, that if Old Navy continues using the Active mark it runs the risk of being a wilful infringer.

She also noted the La Quinta v Quinta Real case, in which the Ninth Circuit vacated a permanent injunction against a Mexican hotel chain’s use of its trade mark in the US, finding the district court must conduct a further assessment of the equities in connection with issuing an injunction.  

“This is a case that sort of keeps me up at night and I hope it doesn’t catch fire,” said Popp-Rosenberg. “You it could be a situation where you look at one solution in the US – no use – but they could say, for example, let’s co-exist in the UK.”

9.00 am: Sir Robin Jacob talks about his career in IP. When he started, "IP was asleep" around the world, then litigation took off. He adds that he believes the European Patent Convention is the best patent law in the world, and adds that there is a common law in Europe - but not common procedures. When parallel cases reach different conclusions in Europe, that is due to different evidence not different law, he says.

He's less enthusiastic about trade mark law, saying he doesn't understand why smells should be registered as trade marks: "Perfume companies will want to register them and, frankly, that stinks!"

Asked to reflect on his career, Klaus Grabinski says the most interesting role is being a first instance judge. He agrees with Jacob that "material law" on patents is the same across Europe, and says the UPC will further that harmonisation, as different national practices are merged. 

Rian Kalden discusses some new trends, such as the emergence of competition law in FRAND cases: "The traditional approach doesn't work so well any more." Another is the stress on fundamental rights, which have to be balanced in copyright case. "In the past you just had an exclusive right, and if it was infringed you would get an injunction. Nowadays all these other rights come in."

She adds that it is a "problem" that the CJEU judges are not specialists, and that referrals don't always deliver good answers. 

Maria Eugénia Martins de Nazaré Ribeiro has a chance to respond: she is a judge in the General Court, and a former legal secretary at the CJEU. She notes that in 78% of cases, General Court decisions are upheld by the higher court. "I have a vision of trade mark law based on the cases I have done, and the case law, but I don't consider myself a trade mark expert."

The newest judge on the panel, Henry Carr, discusses his career, the development of UK patent law, and the role played by judges, before Koji Hasegawa gives a perspective from Japan (he was hand-picked by the Supreme Court to attend Fordham).

A Fordham regular, Annabelle Bennett, reveals she has just stepped down as a judge in Australia and is open to offers for work! (She also says she's worried that, now she's no longer a judge, no one will laugh at her jokes.) Asked about cases in Hong Kong, she defers to Lord Hoffmann - who sits as a judge there. "There's never a hint of any form of political interference," he says in response to a question.

Bennett says Australian courts will pay attention to law and judgments in other countries, including on patentability. 

UK judge Colin Birss reflects on his time at the Patents County Court (now IPEC): "You get more cases done, and you can make a difference." But he adds that it is now very busy, and needs more judges. He also explains the role of the Copyright Tribunal. Birss loves IP law, but also reveals a surprising passion for insolvency law, having handled a Formula 1 case last year, which was reported on Sky Sports News.

He says it was an "unexpected and weird, weird experience" when he became a judge, and was subject to public scrutiny (he memorably ruled in a designs case between Apple and Samsung). "I've learned to stop looking and stop caring ... You have to develop a thick skin." But he does reveal that when he received the "unexpected" invitation to become a High Court judge, he thought "Wow" and went out and bought a bottle of Champagne. "Judges are human beings," he concludes - not systems. "You have to divorce yourself from your feelings, which can be difficult."

Finally we get to the US judges. Federal Circuit Chief Judge Sharon Prost says she has maintained her caseload since becoming Chief: "I love my cases!" 

"You've got a lot of responsibility, but very little authority," she says, saying the Chief's role is to keep the Court running smoothly. She also confirms that, contrary to what many people think, all cases are assigned to panels randomly. 

Hansen wants to talk about US Supreme Court Justice Breyer, but Prost has no comment. Diane Wood of the Seventh Circuit has a similar response to questions about Judge Posner: "He loves a good debate and is happy to put something out there that people will react strongly to."

The Seventh Circuit punches above its weight, especially in areas such as antitrust, says Wood. What does she think of the Supreme Court? "They are the highest court in our system."

Pauline Newman denies there is a "crisis" at the Federal Circuit, when it's put to her that she is writing a lot of dissents. "The cases that reach us tend to be really close on the facts." There is commonality on the main points, but differences of opinion "around the edges", she says. "On our Court we feel an obligation to speak out because we're the only national court .. it's important to the nation that we have a uniform approach to the policy, particularly on patent law." Dissents can help that process, she adds.

To a packed but silent room, Newman also talks about writing opinions and the role of law clerks. Kathleen O'Malley talks about her respect for the US system, and says she will look at overseas cases. "But parties don't generally cite [overseas cases]. That might be something we would like to see more of."

7.30 am: Patricia Martone of the Law Office of Patricia A Martone argued that when politics drives patent law, bad things happen. This was followed by BSA’s Aaron Cooper giving an overview of recent patent legislation in Congress.

The panel discussion featured some debate on the Patent Trial and Appeal Board and the effect of the America Invents Act. 

The Federal Circuit’s Kathleen O’Malley noted the high amount of appeals from PTAB proceedings. “We get a lot of arguments saying, ‘As a matter of policy you shouldn’t allow this.’ Unfortunately that’s not our job,” she said. “We may think that it doesn’t make intuitive sense, but we can’t do anything about that. We have to apply the law.”

Patricia Martone of the Law Office of Patricia A Martone said the IPR system been purposely structured with no appellate review of institution and criticised other aspects of the PTAB.

“The only reasonable solution is more legislation,” she said, noting in particular the area of what can be appealed such as the institution decision. She added: “My view is you should use the same claim construction as in district court.”

Federal Circuit chief judge Sharon Prost noted that the Supreme Court hearing the Cuozzo v Lee case could provide some certainty from which Congress could build legislation.

“For those who cringe at the Supreme Court getting involved in patent issues, they are about to hear Cuozzo. It is probably a good thing for the system for them to do that sooner rather than later. And Congress will be in better positon to act,” said Prost.