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ELECTRONIC NEWSLETTER


The Abelman Firm Intellectual Property Report

December 1, 2003

Volume 2, Issue 3

Topics

Calendar (See Below)

News

Trademarks and Unfair Competition

Patents

Domain Names and Other Internet Matters

Discussions

Calendar   top

November 12, 2003 American Conference Institute - The Master Class on Drafting a Legally Sound Opinion on Invalidity and Non-infringement. New York, NY.
November 12 - 15, 2003 INTA - INTA Leadership Meeting. Boca Raton, FL.
November 13 - 14, 2003 PLI - Communications Law 2003. New York, NY.
November 13 - 14, 2003 Computer Law Association - Computer Law Association 2003 Annual European Conference. Munich Germany.
November 17, 2003 Silicon Valley Seminars - Patents and the Patent Process. Washington, D.C.
November 17, 2003 WIPO - WIPO/WTO Symposium. Geneva, Switzerland.
November 20 - 21, 2003 PLI - Ninth Annual Institute for Intellectual Property Law. San Francisco, CA.
November 27, 2003 INTA - Roundtable on Important Procedural Changes Under the New European Regulation on Border Seizures. Munich, Germany.
December 1 - 2, 2003 INTA/WIPO - Worldwide Forum on Trademark Protection - The Madrid System for the International Registration of Marks. Geneva, Switzerland.
December 3 - 5, 2003 PLI - Fundamentals of Patent Prosecution. San Francisco, CA.
December 4, 2003 American Conference Institute - Pharma and Biotech Patent Due Diligence. New York, NY.
December 4, 2003 American Conference Institute - Pharma and Biotech Patent Valuation. New York, NY.
December 5, 2003 PLI - Ethics for Copyright and Trademark Lawyers. New York, NY.
December 8, 2003 USPTO - PTO Day. Washington, D.C.
December 8 - 9, 2003 American Conference Institute - Licensing Intellectual Property. San Francisco, CA.
December 9, 2003 INTA/Univ. of Akron School of Law - Madrid Protocol 101 (Live Feed Broadcast). Atlanta, GA; Boston, MA; Englewood, NJ; Los Angeles, CA; Mountain View, CA; New York, NY; Philadelphia, PA; Redmond, OR.
December 10, 2003 INTA/Univ. of Akron School of Law - Madrid Protocol 101 (Live Feed Broadcast). Akron, OH; Chicago, IL; Houston, TX; Minneapolis, MN; St. Louis, MO.
December 10, 2003 PLI - Ethics for Patent Lawyers Part II - Canons of Practice 6 - 9. Tele-seminar (Live Webcast).
December 11, 2003 INTA - TTAB 2003 - Forum for Advanced Trademark Practitioners. Crystal City, VA.
December 15 - 16, 2003 PLI - Understanding the Intellectual Property License 2003. San Francisco, CA.
December 15 - 16, 2003 American Conference Institute - Advance Corporate Counsel Forum On Advertising Law. New York, NY. 2004
January 3 - 8, 2004 Law Education Institute (LEI) - 2004 National CLE Conference. Aspen, CO.
January 22 - 23, 2004 PLI - Understanding the Intellectual Property License. Atlanta, GA.
January 26 - 27, 2004 American Conference Institute. New York, NY.
January 26 - 27, 2004 PLI - 43rd Annual Advanced Antitrust Seminar - Distribution and Marketing. San Francisco, CA.
January 26 - 27, 2004 PLI - 43rd Annual Advanced Antitrust Seminar - Distribution and Marketing (Video conference/video replay). Los Angeles, CA; Costa Mesa, CA.
January 27 - 29, 2004 8th Annual Drug Delivery Partnerships Conference. Beverly Hills, CA.
January 28 - 31, 2004 AIPLA - Mid-Winter Institute. La Quinta, CA.
January 31 - Feb. 4, 2004 Association of Corporate Patent Counsel - Mid-Winter Meeting. Las Croabas, P.R.
February 5 - 6, 2004 ALI-ABA - Trademark Dilution after Victoria's Secret. Washington, D.C.
February 11 - 13, 2004 LES - 2004 Winter Meeting - Licensing Converging Technologies - Bridging the Gap. San Francisco, CA.
February 23 - 24, 2004 INTA - Advance Trademark Symposium 2004. Charleston, SC.

NEWS

Trademarks and Unfair Competition

Austria: Budvar AS Prevails in "BUD" Beer Dispute with Anheuser Busch   top

For decades, Anheuser Busch, the American manufacturer of BUDWEISER brand beer and Budvar AS, a Czech brewery, have litigated the rights to the trademark BUDWEISER and BUD.

In the most recent round, Budejovický Budvar v Rudolf Ammersin Gmbh, Budvar sought an injunction against Rudolf Ammersin GmbH (Ammersin), an Austrian company, prohibiting Ammersin from distributing in Austria beer produced by the brewery Anheuser-Busch Inc. under the mark AMERICAN BUD. Budvar alleged that BUD is a protected geographic designation in Austria for Czech beer pursuant to agreements between the Czech Republic and Austria. The agreements date to 1976, before Austria joined the European Union.

In a preliminary ruling in early 2001, the Austrian Supreme Court held that Ammersin's distribution of beer under the 'American Bud' mark infringes Budvar's rights and issued an interim injunction. However, the court referred to the European Court of Justice (ECJ) the question of the validity, under European Union law, of the agreements between Czech Republic and Austria establishing such rights.

On November 18, 2003, the ECJ ruled (C-216/01) that agreements between European Union member countries and non-member countries relating to the protection of designations of origin and geographical indications are applicable "even where those provisions prove to be contrary to the EC Treaty rules, on the ground that they concern an obligation resulting from agreements concluded before the date of the accession of the Member State concerned to the European Union".

The matter will now return to the Austrian court for a final decision.

European Union: 10 New States to Join May 1, 2004   top

On May 1, 2004 Cyprus, Czech Republic, Estonia, Hungary, Latvia, Lithuania, Malta, Slovakia, Slovenia, and Poland will join the existing fifteen member states of the Union.

Community trademark registrations and applications existing as of that date will automatically be extended to cover the new member countries. No action is necessary to effect the extensions. The extension to a new member country, however, may not be enforceable, for example, where there is an existing third party prior right or where the mark is descriptive in the language of that country.

Applications filed on or after May 1, 2004 will be examined on absolute grounds taking into account issues arising from the accession of the new member countries. The languages of the new member states will be considered when a mark is examined for descriptiveness.

France: Google France Found to Infringe in Sale of Keywords for Search Engine   top

Google is a popular internet search engine. Users can type in a word or phrase into Google's search box and Google will return a list of likely "hits". However, in addition to returning a list of hits, Google also posts links to companies and organizations that have paid Google to be associated with certain keywords. Google has a French affiliate, Google France, that provides the same services.

Google France sold as keywords "bourse des vols" and "bourse des voyages". These terms are registered trademarks of two French companies, Viaticum and Luteciel. Viaticum and Luteciel sued Google France for trademark infringement. A court in Nanterre, France, upheld the infringement claim and fined Google France 75,000 Euros. Google France is appealing.

In a related matter, French luxury goods manufacturer Louis Vuitton SA has also filed suit against Google France for trademark infringement alleging similar acts.

Madrid Protocol: Iran To Becomes Active Member On December 25, 2003   top

Iran will become an active member of the Madrid Protocol beginning December 25, 2003.

Madrid Protocol: Spanish Approved as Official Language   top

The Thirty-Fifth session of the Assembly of the Madrid Union held September 22-October 1, 2003 approved the addition of Spanish as a third official language of the Protocol to the Madrid Agreement Concerning the International Registration of Marks Madrid Protocol). The amendment takes force on April 1, 2004.

French remains the only official language of the Madrid Agreement Concerning the International Registration of Marks ("Madrid Agreement").

A new trade mark law was scheduled into force on August 20, 2003 in New Zealand. Among the provisions of the new law are:

Taiwan: New Trademark Law Comes Into Force   top

On November 28, 2003, a new trademark law came into force in Taiwan. As reported in our August 2003 Newsletter, among the changes in the new law are the broadening of the definition of a trademark to permit registration of color, sound and 3-D marks, the possibility of filing multi-class applications, the abolition of defensive and associated trademark registrations, elimination of the requirement of proof of use on renewal, and the introduction of a consent practice for non-identical marks.

United States: Judge Reverses Cancellation of Redskins Trademarks   top

Frank Terranella, Associate, Abelman, Frayne & Schwab

A federal judge has overruled an administrative decision to cancel the trademark registrations of the Washington Redskins.

The Trademark Trial and Appeals Board (TTAB), a tribunal in the U.S. Patent and Trademark Office, had granted a petition brought by a group of Native Americans in 1992. The group sought to persuade the Washington, D.C. football team to change its name by taking away its trademark registrations. They seized on Section 2(a) of the Lanham Act, which prohibits the registration of trademarks that "may disparage" or bring people "into contempt, or disrepute." The TTAB agreed that the Redskins trademarks disparaged Native Americans and ordered the registrations canceled. The team appealed the decision by filing a complaint in the federal district court.

The team argued in its complaint that the Redskins trademarks were not disparaging to Native Americans. They also argued that the law permitting the cancellation of their trademarks was unconstitutional. Finally, the team claimed a laches defense--that the cancellation should be prohibited by the long delay in filing suit. The basic Redskins marks have been in use since the 1930s and were first registered beginning in 1967.

Ruling on a motion for summary judgment, Judge Colleen Kollar-Kotelly found that the TTAB had insufficient evidence for it to find the trademarks disparaging.

The TTAB had concluded that "it is only logical that in deciding whether the matter may be disparaging we look, not to American society as a whole, …but to the views of the referenced group." The TTAB had accepted a 1996 survey as evidence that the term "Redskins" was disparaging to Native Americans. The participants in the survey included about equal numbers of Native Americans and other Americans. The survey was conducted in just 12 states.

The judge agreed with the team that the survey was flawed in its sample size, selection process and geographical distribution. She found that its results (which included many who were not Native Americans) could not be extrapolated to show the feelings of the Native American population as a whole.

Kollar-Kotelly agreed with the TTAB that whether a trademark is disparaging or not must be judged by the meaning of the mark as used by the owner and whether that meaning is one that may disparage Native Americans. Both these determinations must be answered not in the present, the judge and the TTAB agreed, but as of the date of registration of the mark being challenged.

The judge disagreed with the TTAB that the evidence presented showed that the mark was disparaging either in 1967 when the first mark was registered or in 1990, when the last one was registered. The judge noted that the survey merely measured attitudes in 1996, when it was conducted. According to the judge, "the TTAB reached its decision to cancel the trademarks inferentially, by piecing together bits of limited, undisputed evidence from the record. …the inferences are predicated on assumptions that are not contained anywhere in the record."

Kollar-Kotelly said that the TTAB had improperly pointed to the images of Redskins fans dressed in mock Native American garb and the press discussing the team and using terms such as "on the warpath" to show that the word "Redskins" had retained its derogatory character. The judge dismissed reliance on these actions, writing, "Under the broad sweep of the TTAB's logic, no professional sports team that uses Native American imagery would be permitted to keep their trademarks if the team's fans or the media took any action or made any remark that could be construed as insulting to Native Americans. The Court cannot accept such an expansive doctrine; particularly when premised on a finding that is not supported by any substantial evidence."

In addition to reversing the TTAB due to lack of evidence that the trademarks were disparaging to Native Americans, the judge also agreed with the team that the cancellation action should be barred by the doctrine of laches. Kollar-Kotelly noted that if the cancellation action had been brought in 1967, it would have been easy for the Native Americans to collect evidence on whether the marks were disparaging. Today, such an undertaking is much more problematic.

The judge found undue delay in bringing the cancellation action and resulting prejudice to the team, which might have been more receptive to changing its name 35 years ago than it is today. According to the judge, the team is justified in relying on the failure of anyone to challenge their trademark registrations for all those years as evidence of their validity. The security that the lack of challenge created resulted in an investment of millions of dollars in marketing the name over the years. Cancellation of the marks at this late date would be unduly prejudicial to the team's rights, according to the judge, particularly since the Native Americans conceded that they had been aware of these trademarks for practically their entire lives.

Kollar-Kotelly made it clear that she was not ruling on whether the "Redskins" mark was disparaging to Native Americans. Her ruling was only that there was insufficient evidence before the TTAB for them to find that it was. That failure of evidence coupled with a very late filing adds up to a denial of the Native Americans' request to cancel the Redskins trademark registrations. Having ruled against cancellation, the court did not consider the team's constitutional challenges to the cancellation.

The Native Americans have already indicated that they will appeal the ruling, so we have not heard the last word on this issue.

The case is Pro-Football, Inc. v. Suzan Shown Harjo, et al. (D.C. District Court, No. 99-1385).


Patents

The Federal Circuit's Latest Festo Decision Outlines The Legal Standards Governing The Rebuttal Of A Presumption Of Prosecution History Estoppel    top

Anthony A. Coppola, Partner, Abelman, Frayne & Schwab

A recent decision of the Federal Circuit in the matter of Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. has provided general guidelines for the legal standards for attempting to rebut the presumption of prosecution history estoppel.

In a nutshell, prosecution history estoppel provides a legal limitation on the application of the Doctrine of Equivalents and precludes a patentee from expanding the claims of his or her patent to cover prior art or subject matter obvious in light of the prior art. Prosecution history estoppel applies in this context by excluding from the range of equivalents subject matter surrendered during prosecution of the application for the patent and may arise from matter surrendered as a result of amendments to overcome patentability rejections or as a result of argument to secure allowance of a claim.

On May 28, 2002, the United States Supreme Court affirmed the Federal Circuit Court of Appeal's holding that "[prosecution history] estoppel arises from any amendment that narrows a claim to comply with the Patent Act." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 122 S.Ct. 1831 (2002) (emphasis supplied). The petitioner (Festo) argued in the case that amendments made to comply with 35 U.S.C. § 112 (the part of the Patent Act that sets forth the required descriptive and disclosure requirements for a valid patent) should not determine whether an estoppel applies, reasoning that such amendments concern only the form of the patent and not its substance. The Supreme Court rejected this argument, stating that:

Estoppel arises when an amendment is made to secure the patent and the amendment narrows the patent's scope. If a § 112 amendment is truly cosmetic, then it would not narrow the patent's scope or raise an estoppel. On the other hand, if a § 112 amendment is necessary and narrows the patent's scope - even if only for the purpose of better description - estoppel may apply.

Festo, 122 S.Ct. at 1840.

By this, the Court made it clear that estoppel can arise from other actions besides just amending a claim to avoid prior art. In addition to addressing the issue of what actions may give rise to an estoppel, the Court addressed the issue of to what degree prosecution history estoppel proscribes application of the doctrine of equivalence. Responding to this question, the Court held that, when prosecution history estoppel applies to a particular claim amendment, it is to be presumed that the amendment bars the particular equivalent in question and that the burden is on the patentee to show that the amendment does not surrender the equivalent in question. (The Supreme Court holding reversed the Federal Circuit Court of Appeals, which had previously held that when estoppel applies, it was as a complete bar against any claim of equivalence for the element that was amended).

The Supreme Court outlined three ways by which a patentee could overcome the presumption:

The equivalent may have been unforeseeable at the time of the application; the rationale underlying the amendment may bear no more than a tangential relationship to the equivalent in question; or there may be some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question.

Id. at 1842.

The Court also ruled that when an estoppel applies, the patentee must demonstrate that:

at the time of the amendment one skilled in the art could not reasonably be expected to have drafted a claim that would have literally encompassed the alleged equivalent.

Id.

In affirming the Federal Circuit's holding of what may give rise to an estoppel and its rejection of the absolute bar to application of the Doctrine of Equivalents, the Court vacated and remanded the case back to the Federal Circuit. On September 20, 2002, the Federal Circuit issued an order requesting the parties and inviting amici to submit briefs on the issues of whether rebutting a presumption of estoppel is a question of law, fact or both, and what factors are encompassed by the criteria set forth by the Supreme Court in rebutting a presumption of estoppel.

After careful consideration, and more than one year later, on September 26, 2003, the Federal Circuit decided those outstanding issues. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 2003 U.S. App. LEXIS 19867 (Fed. Cir. 2003). The Court ruled that the presumption of estoppel was a question of law to be determined by the Court, not a jury. The Court also set forth general legal standards that govern the rebuttal of a presumption of prosecution history estoppel. These legal standards expanded upon the three ways by which the Supreme Court indicated the presumption of estoppel could be overcome:

  1. The Unforeseeable Equivalent

    The first method by which to rebut of a presumption of surrender of an equivalent requires that a patentee show that an alleged equivalent would have been unforeseeable at the time of the amendment and thus beyond a fair interpretation of what was surrendered. This criterion presents an objective inquiry, asking whether the alleged equivalent would have been unforeseeable to one of ordinary skill in the art at the time of the amendment. The Federal Circuit explained that, usually, if the alleged equivalent represents later-developed technology (e.g., transistors in relation to vacuum tubes, or Velcro in relation to fasteners) or technology that was not known in the relevant art, then it would not have been foreseeable. In contrast, old technology, while not always foreseeable as applicable, would more likely have been foreseeable. Indeed, if the alleged equivalent were known in the prior art in the field of the invention, its application certainly should have been foreseeable at the time of the amendment. By its very nature, objective unforeseeability depends on underlying factual issues relating to, e.g., the state of the art and the understanding of a hypothetical person of ordinary skill in the art at the time of the amendment. Therefore, in determining whether an alleged equivalent would have been unforeseeable, a district court may hear expert testimony and consider other extrinsic evidence relating to the relevant factual inquiries.

  2. The Amendment Bore No More Than A Tangential Relation To The Equivalent

    The second presumption of surrender rebuttal criteria requires a patentee to demonstrate that the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question. In other words, this criteria asks whether the reason for the narrowing amendment was peripheral, or not directly relevant, to the alleged equivalent. Although the court stated it "could not anticipate the instances of mere tangentialness that may arise," it did indicate that "an amendment made to avoid prior art that contains the equivalent in question is not tangential -- it is central to allowance of the claim."

    The Federal Circuit further stated that the inquiry into whether a patentee can rebut the Festo presumption under the "tangential" criteria focuses on the patentee's objectively apparent reason for the narrowing amendment and whether the patentee has established a merely tangential reason for a narrowing amendment is for the court to determine from the prosecution history record without the introduction of additional evidence, except, when necessary, testimony from those skilled in the art as to the interpretation of that record.

  3. Some Other Reason For Not Describing The Equivalent

    The third presumption of surrender rebuttal criteria requires a patentee to establish some other reason suggesting that the patentee could not reasonably be expected to have described the insubstantial substitute in question. This category, described by the Court as "vague," was defined as thus being narrow by necessity. The Federal Circuit said that this third presumption is "available in order not to totally foreclose a patentee from relying on reasons, other than unforeseeability and tangentialness, to show that it did not surrender the alleged equivalent." Thus, the third criteria may be satisfied when there was some reason, such as the shortcomings of language, why the patentee was prevented from describing the alleged equivalent when it narrowed the claim. When at all possible, determination of the third rebuttal criteria should also be limited to the prosecution history record. For example, a patentee may not rely on the third rebuttal criteria if the alleged equivalent is in the prior art, for then there can be no other reason the patentee could not have described the substitute in question.

    Now that legal guidelines for overcoming the presumption of prosecution history estoppel have been established, it remains to be seen exactly what effect they will have in the federal courts and whether patentees will have any success in reclaiming that which they have presumably previously surrendered.


Domain Names and Other Internet Matters

Dominican Republic: .DM Register Reopens    top

The Dominican domain name registry will accept new domain name applications effective November 28, 2003. The Registry closed to new applications in 2001.

Hong Kong: .HK Top Level Domain Space Opens January 2004    top

The top-level extension .HK will open for registrations in January 2004. Currently, Hong Kong offers registration for .com.hk.

Spain: New Domains .com.es, .org.es, gob.es, .nom.es, and .edu.es to be introduced December 10, 2003    top

New domains .com.es, .org.es, gob.es, .nom.es, and .edu.es will become available on December 10, 2003. These domains will be offered on a first-come, first-served basis to parties claiming interests in or ties to Spain. Ownership of a Spanish trademark registration corresponding to the desired domain name will suffice to establish the necessary basis. Currently, the Spanish registry offers domains in the top-level space .es and restricts registration to companies and individuals with a presence in Spain.

United States: .pro Professional Domain Name Registry Opens December 10, 2003    top

The .pro domains will become available for live registration on a first-come first-served basis on December 10, 2003. These domains are only available to organizations or individuals that qualify as a member of the relevant approved professional bodies. The current profession-specific domains are .law.pro (Legal services), .cpa.pro (accounting services), and .med.pro (medical services).


Discussions

Stents and Men's Bathing Costumes: A Cautionary Tale   top

Marsha G. Ajhar, Partner, Abelman, Frayne & Schwab

There are three occasions in the life of a trademark registration during which the owner is required to attest to the goods and/or services for which the mark is being used:

  1. When an application is filed based on use pursuant to Section 1(a) of the Trademark Act, 15 U.S.C. ' 1051(a), or an Amendment to Allege Use/Statement of Use is filed in connection with an application based on intention to use pursuant to Section 1(b) of the Trademark Act, 15 U.S.C. '1051(b);
  2. When a Section 8 or combined Section 8 and 15 Declaration of Use is filed between the fifth and sixth year following the date of registration, 15 U.S.C. '' 1058, 1065; and
  3. When an application for renewal of the mark is filed pursuant to Section 9 of the Trademark Act, 15 U.S.C. ' 1059.

Especially in instances where the identification of goods and/or services in the application or registration is extensive, there is a temptation to treat the signing of the Declaration attesting to use as little more than a tedious, clerical inconvenience and sometimes the necessary inquiry into the nature of the use of the mark (or not) is not made. This failure can have dire consequences and result in the cancellation of any resulting or subsisting registration.

For example, in Medinol Ltd. v. Neuro Vasx Inc., 67 USPQ2d 1205 (TTAB 2003), a recent case decided by the Trademark Trial and Appeal Board ("the Board" or "TTAB"), Medinol petitioned to cancel Neuro Vasx's registration for the mark NEUROVASX for "medical devices, namely, neurological stents and catheters" alleging that "Registrant is not using, and has never used, the mark NEUROVASX on or in connection with stents." Petitioner further alleged that Registrant's misrepresentation as to the nature of its use of its mark in its Statement of Use was made knowingly and constituted fraud in the procurement of the subject registration.

Registrant Medinol argued to no avail that "[a]t the time the Statement of Use was prepared, the fact that the goods identified in the Notice of Allowance also included "stents," in addition to catheters, was apparently overlooked." The Board was not sympathetic, observing that

"[t]here were only two goods identified in the notice of allowance; the mark was either in use on both, or it was not. Respondent signed its statement of use under penalty of fine or imprisonment, or both... and [knowing] that such willful false statement may jeopardize the validity of the application or any resulting registration....' Statements made with such degree of solemnity clearly are -- or should be-- investigated thoroughly prior to signature and submission to the USPTO. Respondent will not now be heard to deny that it did not read what it had signed." Id. at 1209.

The Board further noted that the identification of goods, including "stents" was printed on the Certificate of Registration but Registrant did not seek to amend the identification to delete stents until after the proceeding was filed by Medinol nearly two years later." Id. at 1210. Finding that Registrant's failure to correct the misstatement and seek correction prior to the filing of the petition for cancellation clearly supported the finding that the misstatement in its Statement of Use was intentional. Id.

Accordingly, Registrant's attempt to salvage its registration by requesting the Board to grant a Petition for Cancellation in Part by deleting stents from the list of goods of the registration was denied. The NEUROVASX registration was canceled in its entirety on grounds of fraud.

A similar result was reached in an earlier case involving the fraudulently filing of a combined Section 8 and 15 Declaration to maintain a subsisting registration for the mark LEONARD for "dresses, pants, skiwear, tennis wear, coats & raincoats for women, scarves and bathing costumes for men and women, ties." Mister Leonard, Inc. v. Jacques Leonard Couture Inc., 23 USPQ2d 1064 (TTAB 1992). The LEONARD registration had been asserted in an opposition proceeding against the published mark MR. LEONARD and the Applicant responded by filing a petition to cancel the LEONARD registration on which Opposer had based its opposition. It was established through discovery conducted in the course of the opposition that the asserted LEONARD mark had not been in use for "men's bathing costumes" at the time Registrant's President signed the Section 8 and 15 Declaration.

The TTAB delivered a stern message:

knowingly provides false material information to counsel for the prepraration of a Section 8 and/or 15 affidavit. ... Accordingly, we find that as a matter of law, registrant committed fraud on the PTO in connection with the Section 15 portion of its combined Section 8 and 15 declaration...

Id. at 1066.

The Board further noted that "an applicant or registrant is under a duty to correct material, false statements made to the PTO when their falsity becomes known." Id.

The LEONARD registration also was canceled in its entirety on grounds of fraud.

These two cases, as well as similar others, illustrate why a careful review of goods and services listed in a pending application or registration should be conducted prior to signing any sworn statement to the Patent and Trademark Office ("PTO") attesting to use and/or continued use. It would also be prudent to exercise some hindsight and review any subsisting registrations for possible oversights or other errors in the identification of goods and/or recitation of services and to correct any statement the PTO might deem false, or file a new remedial application, rather than run the risk of maintaining a flawed registration. This is particularly true for any mark(s) that could be asserted in litigation. Year's end is a good time to take stock of all, including stents, men's bathing costumes and the goods or services for which your mark is used.

Confidentiality in Litigation: A Severe Form of Copyright   top

Alan J. Hartnick, Partner, Abelman, Frayne & Schwab

Copyright protects expression, but certain matters are exempt from copyright by reason of public policy and therefore are part of the public domain. An example is "the law," in which it is self-evident that the public must have access and the right to know. As stated in the recent Veeck case, "'the law,' whether articulated in judicial opinions or legislative acts or ordinances, is in the public domain and thus not amenable to copyright."1.

Litigation involves expression. Briefs are expressive speech. Can you copyright a brief? Certainly a brief is an "original works of authorship." Most lawyers would believe that a brief is part of the public domain and would not object to use by others. Courts require legal papers to function. Another issue is who owns the brief: the client or the lawyer.

One important lawyer has placed a copyright notice on his court filings.2. As to such practice, Professor Stephen R. Barnett of University of California's Boalt Hall School of Law states, "When you file a brief, you dedicate it to the public for use in litigation. There is a tradition of copying the briefs freely."

Litigation involves, among other things, the trial, arguments, briefs, witnesses, motions and various documents obtained through discovery, and some of which documents are used in the trial. As to certain documents, a protection order3. may be sought, thereby restricting access to such documents.

Protective orders can be long and detailed. Often they contain the following language:

"If CONFIDENTIAL or HIGHLY CONFIDENTIAL materials are to be filed with the Court in connection with any proceedings herein, they shall be filed with the Clerk of the Court in sealed envelopes prominently marked with the caption of the case and the following notice:

THIS ENVELOPE CONTAINS CONFIDENTIAL DOCUMENTS SUBJECT TO A PROTECTIVE ORDER AND IS NOT TO BE OPENED NOR THE CONTENTS THEREOF TO BE DISPLAYED OR REVEALED EXCEPT AS DIRECTED BY THE COURT.

The Clerk of the Court is directed to maintain the confidentiality of any documents and transcripts of testimony filed in accordance with the above. Where possible, only CONFIDENTIAL portions of the filings with the Court shall be under seal."

At the point of trial, we are in the realm of the intersection of privacy, trade secrets copyright and confidential information, all of which may impinge on the public's right to know, and the media's right under the First Amendment.

The protection sought by sealing goes beyond the denial of the right to reproduce, the essence of copyright, and is a denial of access. The only copyright analogy is the circumvention of copyright protection systems, in which, in Chapter 12 of the Copyright Act, there is a prohibition of access to the technological measure.

Sealing a judicial record essentially gives more than copyright protection to those who sought it. The tension is between a private trial as opposed to a public tax supported system. Can litigators obtain a more severe form of "copyright" protection?

In Jessup v. Luther,4. the intervenor newspaper moved to unseal a settlement agreement. In a brilliant opinion by Judge Richard A. Posner, he reviewed the interest of secrecy in a judicial record:

"The general rule is that the record of a judicial proceeding is public. Press-Enterprise Co. v. Superior Court, 464 US 501, 509-10 (1984); United States v. Ladd, 218 F3d 701, 704 (7th Cir. 2000) ....Not only do such records often concern issues in which the public has an interest, in which event concealing the records deserves the values protected by the free-speech and free-press clauses of the First Amendment, but also the public cannot monitor judicial performance adequately if the records of judicial proceedings are secret. Union Oil Co. v. Leavell, 220 F3d 562, 567-68 (7th Cir. 2000); United States v. Eppinger, 49 F3d 1244, 1252-53 (7th Cir. 1995). These considerations, however, support a strong presumption rather than an absolute rule .... When there is a compelling interest in secrecy, as in the case of trade secrets, the identity of informers, and the privacy of children, portions and in extreme cases the entirety of a trial record can be sealed. Citizens First National Bank v. Cincinnati Ins. Co., 178 F3d 943, 945 (7th Cir. 1999) .... The interest in secrecy is weighed against the competing interests case by case. Central National Bank v. United States Dept. of Treasury, 912 F2d 897, 900 (7th Cir. 1990) ...."

Judge Posner held:

"Documents in judicial files are presumptively open to the public and neither the magistrate judge nor any of the parties has given us any reason to think the presumption might be rebutted in this case. The order of the district court is therefore reversed with directions to grant the relief sought by the intervenor."

Some judges restrict protective orders in favor of supporting the concept of an open court. Judges are now likely to limit secrecy in open court rather than for the purposes of discovery. South Carolina's 10 active federal judges have unanimously voted to ban secret legal settlements, stating that such agreements made the court complicit in hiding the truth about hazardous products, inept doctors and sexually abusive priests. Michigan has a similar rule, which unseals secret settlements after two years.5. The Second Circuit is considering a change of policy.

We live in an age of information, so that clients regard anything of business value, whether formal trade secrets, copyrighted works, confidential or commercial information or not. Settlement agreements, like most arbitration awards and discovery materials, are private documents, and there is no judicial decision.6. But there can be no guarantee of secrecy if there is an open trial.

To litigate and to preserve bonafide confidential information settlement agreements and trade secrets may require a protective order and sealing. These matters are very different from confidentiality provisions that forbid victims to talk about their experiences. Certainly the use of a copyrighted work in a legal document does not dedicate it to the public. As Judge Morris E. Lasker observed:7.

"Without determining whether defendants in fact took the language in question from transcripts of trials or opinions, I find unpersuasive the contention that the use of such material, of originally copyrighted (as is undisputed here), is rendered innocent by inclusion in legal transcripts or opinions. To hold that such originally copyrighted material becomes somehow dedicated by use in the courts would permit the unraveling of the fabric of copyright protection. If defendants' theory were accepted, James Joyce's "Ulysses," for example, would lie within the public domain merely because the United States prosecuted the book, unsuccessfully at that, a generation ago. Defendants cite no authority to support the position, and I find it without merit."

Litigants and their clients must heed the admonishment that the request for a protective order or sealing must show that a defined and serious injury will result from lack of secrecy, and that the court's response should be as narrow as possible.8. Only in that way may the judicial public domain be preserved. I suggest that it is the lawyer's duty to advise the client of the need for restraint. A very tough job!

Endnotes

  1. Veeck v. Southern Building Code Congress Int'l. Inc., 293 F3d 791, 796 (5th Cir. 2002).
  2. Intellectual Property Strategist, Dec. 2001 at p. 9.
  3. Rule 26(c), F.R.C.P.
  4. 277 F3d 926, 927 (7th Cir. 2002).
  5. The New York Times, Sept. 2, 2002 at pp. A1 and A13.
  6. Jessup, note 4, at 927.
  7. Marvin Worth v. Superior Films Corp., 319 FSupp 1269, 1270 (S.D.N.Y. 1970)
  8. Moore's Federal Practice 3D, §26.102(1) at 26-246.


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