Generic Fair Use

... where pop culture meets intellectual property law

Category: Patent

No, Gene Simmons is not going to get a Trademark Registration for the “Devil Horns” hand gesture. No.

On June 9, 2017, Gene Simmons – the bass player and lead tongue of the classic rock band KISS – filed an application to register a trademark. This by itself is not newsworthy. Gene Simmons has previously sought to register hundreds of words, slogans, and logos he has identified as his personal trademarks. What caught everyone’s attention this time was the subject matter: Gene Simmons asserts that the “devil horns” hand gesture is a trademark that he owns. Yes. A hand gesture. A gesture seen at every single live music event today.

Without belaboring the point, Gene Simmons is not going to acquire a registration for this alleged trademark. This hand gesture is not a trademark. Nor would it belong to Gene Simmons even if it were a trademark.

At the risk of giving too much attention to a frivolous application, here are a few reasons why this application is going to fail.

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Deep in the TC Heartland of Texas: Supreme Court Reverses 25 Years of Patent Venue Practice

June 5, 2017

Marshall, Texas is a town of less than 25,000 residents in East Texas.[1] It is closer to Shreveport, Louisiana than it is to Dallas or to Houston. Nevertheless, since the late 1990s, Marshall has become the epicenter for a series of high-profile patent litigation cases. In 2015, there were nearly 6,000 patent infringement cases filed in the United States. At least 1,500 of these filings ended up before Judge Rodney Gilstrap,[2] a judge for the Eastern District of Texas, in the Marshall, Texas division. This was no accident.

As of last month, however, this may all be subject to change.

On May 22, 2017, in TC Heartland LLC v. Kraft Foods Group Brands LLC, the United States Supreme Court addressed a dispute regarding the patent venue statute and unanimously held that civil actions for patent infringement may only 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. Prior to TC Heartland, patent owners could choose to file suit in most any state given that most corporations made or sold products nationwide. This allowed certain courts to set up shop as patent “rocket dockets” which encouraged litigators to choose their venue.

This is how one judge in Marshall, Texas came to oversee, on average, nearly a quarter of all patent infringement cases filed in the United States. Now that TC Heartland is the rule of the land, there are three primary issues to address and explore: (1) how did Marshall, Texas become a “rocket docket” for patent cases?; (2) what rule did the Supreme Court actually change?; and (3) what is likely to happen now?

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President Donald Trump and Intellectual Property: what can he claim as his?

April 20, 2017

In a world of fake news, clickbait, and alternative facts, there is a bit of comfort in knowing at least one undeniable fact. Donald J. Trump is enthusiastic about stamping the TRUMP name on most any goods or services and reaping the benefits of the ancillary trademark rights. He first sought trademark registration for a Trump-branded product in 1985 and has since sought to register in excess of 300 other trademarks with the United States Patent and Trademark Office, including the now ubiquitous MAKE AMERICA GREAT AGAIN® mark, which was registered on August 16, 2016.[1] While he often files applications through his various corporate entities, the fact remains: Donald Trump loves him some trademark rights.

This may elicit a few questions though. First, can a sitting POTUS own trademark rights? Also, what about other intellectual property rights: patents, copyrights, trade secrets? Can a U.S. President acquire, assert, enforce, or use with impunity certain types of intellectual property?

I shall do my best to answer these, though I will try to avoid addressing in detail the emoluments clause elephant in the room. For now.

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A ‘Golden’ Opportunity to Talk About Team Names and Trademark Rights

On December 8, 2016, ESPN’s website ran with the scandalous headline “Patent office denies Golden Knights trademark” regarding the new Las Vegas NHL franchise’s recently chosen moniker.[1] The article subsequently provided a detailed analysis of all the supposed ways in which “Golden Knights” allegedly could not be a trademark that belonged to the NHL team. As you may have gathered, I am writing this article to clarify that misconception.

There are numerous statements and implications in that article that are dangerously misleading. Trademark law is quite nuanced. But ESPN continues to attack it with a sledge hammer. If nothing else, it provides me a good opening to discuss some of these nuances in trademarks and how they may apply to professional and college sports teams’ nicknames.

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In the poker game of life, the USPTO is the rake.

No new card games are patent-eligible without the invention of a new deck

On October 26, 2010, two enterprising individuals from New Jersey filed a patent application with the United States Patent and Trademark Office for a “Blackjack Variation.”[1] The Smiths sought to acquire patent rights to a new casino game they called “Pacific Rim Blackjack.” It appears that these inventors created a card game variant that merges the concepts of blackjack with Baccarat. The application claims that “casinos are in constant need of new games of chance to retain and attract patrons.” Additionally, the patent application asserts that existing games of chance such as blackjack, Three-Card Poker™, Baccarat, and Pai Gow are “popular” but “suffer from drawbacks.”

Due to the applicants’ unprovoked attack on the greatness that is Pai Gow poker, the USPTO rejected the patent application in whole. Well, okay, the patent examiner and later the Patent Trial and Appeal Board (PTAB) actually rejected the application on grounds that the alleged invention is “abstract” and therefore not patent eligible subject matter. The inventors appealed this decision and on March 10, 2016, the Federal Circuit affirmed.[2] Though the interesting part of the decision is not the rejection of the application itself – it was the Federal Circuit’s rationale and hints at the types of card games that might actually be patentable.

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The force is strong with Star Wars intellectual property

Star Wars: The Force Awakens opens on December 18, 2015.  It will be the biggest movie of the year.  It will also likely be the most infringed copyrighted work of the year (and 2016, too).  It will be the seventh official full-length Star Wars movie to be released in theaters since 1977.  Though I recently re-watched the prequels and I would prefer to act as if they did not exist.  No matter what revisionist history might try to argue.

Since the original movie, Star Wars Episode IV: A New Hope, George Lucas has not been shy about protecting his intellectual property rights.  It is practically a running joke that any reference to Star Wars will expose you to a lawsuit from Lucasfilm or Disney.  (The Walt Disney Company bought Lucasfilm for $4,000,000,000 in October 2012 and immediately announced plans for a new set of Star Wars movies using the same characters and settings.)

To demonstrate just how sincere the creator of the Star Wars universe is about protecting his creation, his characters, the movies, the settings, the concepts and the ancillary names, brands and logos – the following is a summary of the notable issues relating to Star Wars intellectual property.

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Patents, Copyrights and Trademarks Made Simple

[originally published November 5, 2015 at www.law-dlc.com]

Did you know that the Framers of the United States Constitution solidified the rights to copyrights and patents more than two years before the protection of freedom of speech?[1]  It is true.  The Constitution, signed on September 17, 1787, included the following specific provision:

Congress shall have the power to … promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.[2]

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Is Your Halloween Costume an Infringement?

[originally published on October 28, 2015 at www.law-dlc.com]

Halloween is on a Saturday this year.  I am anxious to see people of all ages walking around in full costume.  What a wonderful time of year.  Halloween is fun – and it brings out the creative side in almost everyone.  People will be dressed as superheroes, villains, cartoon characters, pop culture icons, scary monsters, and more.  But most of these costumes you will see represent characters that were created by someone else.

Is your Halloween costume infringing someone else’s intellectual property rights?

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Laches (Copyright) is Dead! Long Live Laches (Patent)!

[originally published October 2, 2015 on www.law-dlc.com]

In 2014, the United States Supreme Court effectively killed a long-standing affirmative defense to copyright infringement, the defense of “laches.”  See Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (U.S. 2014).  Laches is essentially an alleged infringer’s defense to a “gotcha!” tactic by a rights holder who has delayed for many years in bringing suit to enforce those purported rights.  Laches is based on equitable principles that a substantially long delay in enforcing legal rights is likely to prejudice the adverse party.[1]  It is the judicial system’s way of saying “hey! That’s not fair!  We are not going to let you do that.”  Laches is available as a defense in many types of proceedings, not just intellectual property matters, but the intangible nature of IP rights lends itself more favorably to successfully invoking “laches” as a defense.

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What if Intellectual Property Rights Were Enforced in the World of “The Princess Bride”?

[originally published September 25, 2015 on www.law-dlc.com]

Have you ever watched a movie and wondered whether something cool in it could be patented?  Many movies, however, are set outside the United States.  Some are set in fantasy lands that would not recognize our system of laws.  Yet – what if?  What if, for example, the mythical country of Florin happened to adopt the laws of the United States as it applies to intellectual property rights?  Yes, Florin.  The homeland of Buttercup.  You know – The Princess Bride. What if the cowardly Prince Humperdinck recognized and enforced patent, trademark, copyright and trade secret concepts as seen in that movie?  Inconceivable, you say?  But what would that look like and what would be some examples?

[If you have never seen The Princess Bride, kindly stop reading and go watch it.  Now.  I do not think I can be friends with anyone who does not like this movie.]

I will skip the kissing parts and go right into the action and adventure.  Pirates are cool, right?  To the land of Florin we go!

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