Since being founded in 1980, Abelman Frayne & Schwab has grown and established itself as a leading law firm specializing in the protection and enforcement of all forms of intellectual property in the United States and throughout the world. Our clients include major companies in virtually all areas of business, including apparel, alcoholic beverages, automotive, chemical, cosmetics, computers, electronics, entertainment, financial services, foods, hotel services, petroleum, pharmaceuticals, publishing, real estate, retail telecommunications, and toys. While many of our clients are Fortune 500 companies, we pride ourselves on being able to assist smaller companies and individuals in protecting and developing their intellectual property.
Alex Zinchuk joined Abelman Frayne & Schwab in 2005 as a patent agent. Prior to joining the firm, for 25 years Alex worked as a patent agent in several other patent law firms in Cleveland and in New York City. Alex concentrates his practice on patent prosecution in the mechanical and electrical fields.
Mr. Terranella specializes in U.S. and international trademark prosecution. Mr. Terranella is a member of the Trademark Office Practices Sub-committee of the International Trademark Association (INTA).
Frank Terranella joined the firm in 2000 as an associate attorney in the trademark department. Prior to joining the firm, Frank was a partner in a general practice firm for two years. One of his clients during this time was Ingersoll Rand, for whom he acted as trademark counsel. Prior to that, he was General Counsel of Blenheim Group, Inc., a trade show producer. During his five years there, Frank brought all trademark work in-house, registered scores of trademarks and advised on the proper use of trademarks in materials produced by the company.
Frank concentrates his practice on all aspects of U.S. trademark prosecution from search to registration to maintenance. He is very familiar with the workings of the USPTO and has assisted in solving trademark registration problems for many clients over the last 12 years.
Charlie Stein joined Abelman Frayne & Schwab in 2007 upon graduating law school. Prior to entering the intellectual property practice, he gained extensive experience as a licensed Professional Engineer in the electric utility, pulp and paper, and water and waste-water treatment industries.
Charlie concentrates his practice on patent prosecution, including U.S. and PCT applications and the management of foreign patent applications. He also has developed extensive experience in preparing opinions of counsel, including freedom to operate, noninfringement, and invalidity.
He has worked on matters involving a wide array of electrical and electro-mechanical technologies, including power converters, regenerative drives, static reactive power production, negative sequence current injection, wind turbine blade pitch, and low voltage ride through of turbine systems.
Theodore J. Pierson joined Abelman Frayne & Schwab in 2008 as an associate in the patent department. Prior to joining the firm, Mr. Pierson was an associate at a New Jersey law firm practicing in all areas of intellectual property prosecution and litigation.
Mr. Pierson largely devotes his practice to preparing and prosecuting patent applications in various fields of technology, with an emphasis in the mechanical arts and medical devices, including power tools, fitness equipment, catheters, ports, and tissue ablation devices. His experience includes all phases of domestic and foreign patent prosecution (including PCT prosecution).
Mr. Pierson has intellectual property litigation experience including discovery, legal research, and motion practice. He has represented clients in the federal courts within New Jersey. He has also been admitted to represent clients pro hac vice in courts located in other states, including federal courts in Virginia and Connecticut.
Mr. Pierson has prepared opinions of counsel for a variety of patent matters concerning infringement, validity, and patentability. He also has experience in performing due diligence on intellectual property portfolios for mergers and acquisitions.
Steven Hertzberg specializes in patent prosecution and related matters, including infringement investigations and opinions. Prior to entering the intellectual property practice, he gained extensive experience as an engineer in the aerospace and computer industries, and served as corporate counsel for ION Computer Systems, Inc..
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Erica Halstead joined Abelman Frayne & Schwab in 2008 as an associate attorney in the trademark department. Prior to joining the firm, Erica specialized in both foreign and domestic trademark practice at a NYC intellectual property boutique firm. Additionally, Ms. Halstead managed the trademark and copyright portfolio of an education-centric software company.
Erica concentrates her practice on U.S. trademark prosecution, policing, enforcement, clearance and counseling. This includes practice before the U.S. Trademark Trial and Appeal Board in both opposition and cancellation proceedings. Erica also has experience in negotiating and preparing Assignments, License and Co-existence Agreements.
Ralph joined Abelman Frayne & Schwab in 2008 as an associate attorney. Prior to joining the firm, Ralph was concurrently a sole practitioner and counsel for Reveo, Inc., and between 2001 and 2006 exclusively IP counsel and Vice President for Reveo, Inc., where he managed a large, technically diverse patent portfolio.
Ralph’s practice concentrates on patent preparation, prosecution and counseling, in the areas of chemical engineering, chemistry and petrochemical processing systems and controls.
Ralph has patent related experience in various technical fields, including chemical processing, electrochemical cells and components, semiconductor processing, liquid crystal devices, mechanical devices, agricultural systems, biotechnology, encoding security systems, computer software, and various consumer products.
Victoria Coleman joined Abelman Frayne & Schwab in 2011 as an associate attorney in the litigation group. Prior to joining the firm, Victoria was an Assistant District Attorney at the Bronx District Attorney’s Office in the Investigations Division where she prosecuted, among other things counterfeit, piracy and fraud crimes. She also participated in a global forum on anti-counterfeiting strategies at the United States Patent Trademark Office.
Victoria’s practice is focused on litigation cases involving patent, trademark, trade secret and copyright issues on both the plaintiff and defense side. As a member of the litigation group she strategizes to determine the best, most efficient method to obtain optimal results for clients. Victoria is involved in fact gathering, drafting pleadings, electronic discovery and preparing for trial and depositions. Victoria also assists in counseling clients to developing an IP protection program and determine the best way to protect their IP internationally.
Lori Cohen joined Abelman Frayne & Schwab in 1997 where she was an associate through 2002. After a hiatus, Lori returned to the firm in 2007. Prior to joining the firm in 1977, Lori was in house trademark counsel at Jordache Enterprises, Inc. where she was responsible for procuring, maintaining and enforcing rights in the well known Jordache trademarks throughout the world. Lori has also been associated with Hale and Dorr, now Wilmer Hale & Gibbons, where she practiced domestic and international trademark prosecution in industries including pharmaceuticals, wearing apparel, and technology.
Jay Cinamon joined Abelman Frayne & Schwab in 1986 after 20 years as a Senior Patent Attorney at International Paper Company. Jay is experienced in the preparation and prosecution of chemical, pharmaceutical, mechanical and design patent applications before the U.S. Patent and Trademark Office, the European Patent Office and various foreign patent offices, inter parties proceedings in the USPTO, and the preparation of infringement and validity opinions.
Aimee Allen primarily specializes in litigation and transactional work on commercial trademark matters, principally TTAB opposition and cancellation proceedings and USPTO trademark prosecution. She has additional expertise in copyright law and licensing for artists and arts organizations in music, photography, film, visual arts and related fields, as well as experience with the music industry licensing, publishing, and recording contracts.
Davis Toren is a contributor to the Encyclopedia of Patent Law and Law for Executives and Patentrecht In den USA, in addition to contributing articles to a variety of U.S. and German legal publications. Mr. Toren taught law at Newark College of Engineering and has lectured extensively, primarily in Germany, on intellectual property. He is fluent in German, Swedish, Danish, Norwegian and Hebrew.
Tom Spath joined Abelman Frayne & Schwab in 1995 as Of Counsel to continue the patent and trademark practice specialties he developed over the prior 25 years as a partner in two other intellectual property specialty firms in NYC.
Tom’s current practice is focused on patent preparation and prosecution in the U.S. Patent and Trademark Office, and in international practice in numerous jurisdictions including the EPO, China, and Japan.
Robert B. Smith’s practice specializes in patent prosecution, litigation, and counseling, primarily in mechanical and electrical engineering, advanced materials, and computer related technologies. He also has extensive experience in technology acquisition, opinion work, licensing, and trade secret litigation. In addition to district court litigation, he has argued a number of cases before the Court of Appeals for the Federal Circuit with a very high rate of success.
Mr. Smith’s practice has involved patents on communications satellites, tennis racquets and other sporting goods, microprocessor-based control systems, computer software, remote monitoring and control networks, medical devices, automobile engines and hybrid power plants, automobile transmissions, VVVF AC motor controls, automobile security devices, “smart” credit cards and credit card cryptography, plasma physics, elevators, razors, optics, diamond manufacture, aircraft jet engines, power plant equipment, optics, footwear, road paving machinery, hardware, tools, catalyst filters,telephone switching and communications equipment, optical devices for use in projector equipment, business methods, and wind turbines, as well as other areas.
Prior to joining Abelman Frayne & Schwab in 2009, Mr. Smith was a partner at the IP firm Brumbaugh, Graves, Donohue & Raymond. He subsequently practiced for 10 years at White & Case, and 10 years at Skadden, Arps, Slate Meagher & Flom.
Melvin Ortner has extensive experience in advising businesses and transactional matters including licensing, distribution, sourcing, real estate, and commercial agreements. Mel is experienced in advertising law and has successfully defended his clients’ promotional programs before the Federal Trade Commission. He also represents executives in employment and separation agreements.
Before joining Abelman Frayne & Schwab in 2003, Mel was the Vice President and Chief Counsel of Sara Lee Branded Apparel. Prior to that he was the Vice President and General Counsel of Playtex Apparel. In these capacities Mel was responsible for the management of high profile litigations. Today he serves on the board of directors of several corporations.
In the civic arena, Mel served two terms as an elected Trustee in the Village of Great Neck, where he also served as Deputy Major and Chairman of the Planning Board.
Jerry Dainow maintains a practice in all fields of intellectual property law with an emphasis on prosecution, licensing and counseling. He has been involved in diverse technical and commercial areas including medical and dental devices, complex mechanical and structural engineering, manufacturing equipment, engines, toys, appliances, designs and trademarks.
Jennifer Waitman joined Abelman Frayne & Schwab in 1998 as an associate attorney in the trademark department. Jennifer concentrates her practice on international trademark prosecution, litigation, cancellation and opposition procedures, counterfeit goods prosecution and the management of trademark portfolios. Her international trademark experience includes drafting of settlement and license agreements and analysis of trademark clearance reports.
Victor Tannenbaum is a founding member of the firm and specializes in licensing and distribution agreements, assignments, contracts, mergers and acquisitions, and changes in ownership, all with respect to intellectual property on a worldwide basis.
Julie Seyler joined Abelman Frayne & Schwab in 1988 as an associate attorney in the trademark department. Prior to joining the firm, Julie was an attorney with the United States Trademark Office, prosecuting trademark applications as well as preparing briefs and oral arguments before the Trademark Trial and Appeal Board.
Julie concentrates her practice on trademark counseling, prosecution and and inter party proceedings before the Trademark Trial and Appeal Board. Her experiences includes analyzing the registrability of trademarks, preparing oppositions and cancellations and following such cases through to final briefs and oral arguments before the TTAB.
Michael Schwab has been with the firm since 1997 and is a partner. Mr. Schwab specializes in trademark and copyright counseling, litigation and counseling on regulatory and other issues in the beverage alcohol, dietary supplement and food industries. His practice includes all aspects of a domestic and international trademark practice, including advising, searching the availability of marks, filing and prosecuting trademark applications, handling contested oppositions, cancellations and litigations, managing worldwide trademark portfolios, enforcing trademark rights, including gray market goods, anti-counterfeiting, and monitoring and preventing infringing third party trademarks, internet and related domain name use and advertising compliance.
Mr. Schwab also negotiates, drafts and interprets license and other agreements, monitors licensee compliance and manages intellectual property due diligence in connection with corporate mergers and acquisitions.
In the beverage alcohol, dietary supplement and food fields Mr. Schwab counsels clients on a wide variety of issues including federal, state, local and international regulatory compliance, international and domestic distribution agreements, federal alcoholic beverage label approval and state brand registrations, advertising compliance, trade practices and customs and international trade matters.
Jeffrey Schwab is a founding member of the firm. He is a patent attorney specializing in intellectual property litigation, licensing, Alternative Dispute Resolution (“ADR”), and advertising law. Mr. Schwab has written various articles on intellectual property licensing and has been a guest lecturer on intellectual property protection at major corporations, universities and bar associations. He was Chairman of the New York Intellectual Property Law Association subcommittee on ADR for 3 years. He has been lead counsel in a number of jury cases resulting in multi-million dollar awards for the Firm’s clients. He is an AV rated attorney by Martindale Hubbell, and have been selected for listing for 2013 Top-Rated Lawyers in Intellectual Property by American Lawyer Media and Martindale Hubbell.
Caridad Piñeiro Scordato joined Abelman Frayne & Schwab in 1980 as a clerk, attended law school at night and then worked as an attorney for a number of years before becoming a partner of the Firm in 1994.
Caridad specializes in international trademarks, computer and new media law, publishing and literary law, and international litigation. She has represented a broad range of clients in the pharmaceutical, entertainment, publishing, automotive, alcoholic beverage and food industries.
In the area of publishing and literary law, Caridad brings the unique experience and insights of being a New York Times and USA Today bestselling author, with knowledge of the inner workings of the industry.
As the Firm’s Managing Partner for IT, Caridad also has hands-on knowledge and experience in the computer and new media law areas.
Caridad is fluent in Spanish and has a working knowledge of Italian, French and Portuguese. With those language skills she has assisted clients in a number of important overseas due diligence, litigations, and negotiations.
Marie Anne Mastrovito joined Abelman Frayne & Schwab in 1999 as an associate attorney in the trademark department. Prior to joining the firm, Marie Anne was a Trademark Examining Attorney with the United States Patent and Trademark Office and served as a Staff Attorney with the law firm of Jones Day Reavis and Pogue assisting in unfair competition litigation.
Marie Anne concentrates her practice in the field of trademark prosecution and the representation of clients in Opposition and Cancellations actions and ex parte appeals before the U.S. Trademark Trial and Appeal Board. In addition, Marie Anne has represented clients in successful appeals to the United States Court of Appeals for the Federal Circuit.
Marie Anne is also experienced in trademark clearance and investigations, preparing cease and desist letters, drafting and negotiating coexistence agreements, and assignment of marks.
Peter Lynfield joined the firm in 1980. He has been a partner since 1986. Peter concentrates his practice on U.S. and International trademark, copyright, unfair competition and related matters counseling and litigation.
He has advised clients in various industries, including automotive products, pharmaceuticals, veterinary pharmaceuticals and products, fragrances and cosmetics, beverages, real estate development, pet food music labels and groups, charitable fundraising, food additives, television and film production, personal care products, international human rights organizations and health care facilities.
Peter’s practice includes representing clients in the selection and adoption of trademarks in all countries; searching, availability, registrability and related opinions; preparation, filing and prosecution of trademark applications in all countries of the world; oppositions, litigations and related actions involving trademarks, copyrights, trade dress, unfair competition, dilution and counterfeiting worldwide.
His practice also includes negotiating and drafting license agreements related to all forms of intellectual property; conducting due diligence, opinions and negotiating agreements in connection with the IP aspects of acquisitions, such as purchase and sales agreements, license agreements, IP security agreements, assignments; recordal of assignments and security agreements worldwide; acquiring domain names through negotiations and alternative dispute resolution procedures; advising clients on issues relating to compliance with U.S. sanctions administered by the Office of Foreign Assets Control.
Norman Hanson joined Abelman Frayne & Schwab in 2011 as a partner. Prior to joining the firm, for 12 years Norman was a partner at Fulbright & Jaworski, a partner at Felfe & Lynch for 6 years and an associate for 8 years, and an associate at Cooper & Dunham for 2 years.
Norman’s practice focuses on patent prosecution, interferences, and counseling, in the areas of biotechnology, biochemistry, chemistry, and pharmaceuticals.
He has drafted over 400 patent applications, and has served as lead or associate counsel in approximately 15 interferences. His litigation experience includes deposition practice in the biotechnological and chemical arts, document review and preparation of pleadings. He has argued before the Court of Appeals for the Federal Circuit and was prevailing counsel in Bosies v. Benedict, 27 F. 3d 539 (1994), and In re Gangadharam, 889 F. 2d 1011 (1989).
Anthony DiFilippi joined Abelman Frayne & Schwab in 1995 as an associate attorney in the litigation department. Anthony concentrates his practice on patent, trademark and copyright litigation and counseling. His litigation experience includes analyzing patents and technical issues, preparing pleadings and briefs, taking and defending depositions of fact witnesses, assisting technical experts in their preparation of expert reports, conducting and defending depositions of expert witnesses, and examining witnesses at trial.
Anthony Coppola joined Abelman Frayne & Schwab in 1996 and concentrates his practice in patent, trademark and copyright litigation, patent prosecution, intellectual property licensing, and transactional matters. He has successfully litigated cases in the areas of patent infringement, trademark infringement, theft of trade secrets, trademark counterfeiting and product liability in various jurisdictions throughout the United States.
Anthony’s technical background has allowed him to analyze clients’ technologies and establish their freedom to operate. He has prepared comprehensive opinions of counsel and successfully negotiated favorable licenses and settlements in numerous patent and trademark disputes.
Joseph Catanzaro is experienced in all aspects of Intellectual Property and specializes in patent practice, including preparing, filing and prosecuting patent applications, appeals, interferences and related Patent office matters; preparing, filing and prosecuting international patent applications; patentability, right-to-use and due diligence investigations and opinions; patent licensing and related matters.
Ned Branthover is the author of “Federal Dilution Act: Famous Marks Get Greater Protection”, Japanese Trademark Journal and has lectured on Developments in Trade Dress Protection Since Two Pesos v. Taco Cubana to the Westchester & Fairfield Corporate Counsel Association, 1995. He has also been a lecturer on trademark matters at the INTA Annual Meetings 1996-1999.
Michael Aschen practices intellectual property litigation and counseling. Michael devotes the majority of his time to litigating cases before the U.S. district courts. His litigation experience includes analyzing patents and technical issues, preparing pleadings and briefs, taking and defending depositions of fact witnesses, assisting technical experts in their preparation of expert reports, conducting and defending depositions of expert witnesses, and bench and jury trials.
Michael has litigation experience in wide array of industries including entertainment, television, automotive, professional sports, petroleum, consumer products, apparel, jewelry, Internet, alcoholic beverages, publishing, finance, printing, telecommunications, magnetics, pet products, semiconductors, fertilizers, industrial piping, hardware, and retail.
Michael has also argued numerous appeals before the United States Courts of Appeal for the Second, Sixth, Ninth, Eleventh and Federal Circuits.
Michael provides clients with counseling regarding the development of patent portfolios, has prepared opinions of counsel, identified and resolved potential infringement disputes, and counseled clients regarding licensing opportunities.
Larry Abelman is a founding member of the firm. Mr. Abelman is well known for his expertise in international and domestic trademark protection and litigation, licensing and distributorship agreements, entertainment and media law.
Since Abelman Frayne & Schwab was founded in 1980, the Firm has grown and established itself as a leader, both in the United States and overseas, in the protection and enforcement of all forms of intellectual property. Our clients include major corporations in virtually all industries, including apparel, alcoholic beverages, automotive, chemical, cosmetics, computers, electronics, entertainment, financial services, foods, hotel services, petroleum, pharmaceuticals, publishing, real estate, retail, telecommunications, and toys. For more information on the Firm’s areas of expertise, please click on the Practice Areas link in the menu bar above.
Our attorneys have wide ranging experience in many specialties including patents, trademarks, copyrights, licensing, contracts, mergers and acquisitions, entertainment, new media law, and Internet law. For more information on our attorneys, their areas of expertise, and contact information, please click on the Attorneys link in the menu bar above.Home
On November 24, 1874, the U.S. Patent Office issued U. S. Patent No. 157,124 entitled, “Improvement in Wire Fences” to Joseph F. Glidden of DeKalb. Ill. The patent disclosed the creation of what came to be referred to as “barbed wire.”
Despite being considered a revolutionary invention for its time as a means for cattle farmers to protect their livestock, the ‘124 patent (or “the Barbed Wire Patent”) was at the core of one of the most famous (or infamous) U.S. Supreme Court patent decisions of all time.
In 1887, the assignee of the patent (Washburn & Moen Mfg. Co.) initiated a suit for patent infringement against the Beat-Em-All Barb-Wire Co. The defendant asserted that the patent was invalid because it lacked novelty and had been in use for many years before Mr. Glidden filed his patent application.
At trial, twenty-four witnesses testified on behalf of the accused infringer and stated that they had seen a barbed wire fence in use approximately 14 years before Glidden filed his application. The 24 witnesses testified that they had seen barbed-wire exhibited by a man named Morley at an 1858 or 1859 county fair at Delhi in Delaware County, Iowa. The defendant asserted that this fact provided sufficient evidence of prior use by a third party so that Glidden’s patent should be held invalid.
The district (original/lower) court found that it was unlikely that all twenty-four witnesses were lying and declared the patent invalid stating that “[N]ot only is there an entire lack of evidence to show that such a nefarious plan had been undertaken, but no motive can be conceived of, that would induce so large a number of well-known persons to engage in such a conspiracy.”).
However, the case was appealed and made its way up to the U.S. Supreme Court. Despite the testimony of the twenty-four witnesses and the credibility determinations made by the district court, the Supreme Court in its 1892 decision reversed the district court’s invalidity finding, noting:
[T]he very fact . . . that almost every important patent, from the cotton gin of Whitney to the one under consideration, has been attacked by the testimony of witnesses who imagined they had made similar discoveries long before the patentee had claimed to have invented his device, has tended to throw a certain amount of discredit upon all that class of evidence, and to demand that it be subjected to the closest scrutiny.
The result of the decision was that the use of oral testimony to invalidate a patent without any corroborating documentation became extremely suspect. Later court decisions used the Barbed-Wire Patent case as precedent to develop a list of factors for evaluating the credibility of oral statements made by witnesses to establish prior use or prior invention of a patent. In essence, today, a person can be found guilty of committing murder based solely upon eye-witness testimony but it is virtually impossible for eye-witness testimony alone to be sufficient to invalidate a patent.
Make some Intellectual Property History this week!By: Anthony A. Coppola and Frank Terranella, partners Abelman, Frayne & Schwab
On June 17, 2014, Hawaii Sea Spirits, LLC (“HSS”), the producer of OCEAN ORGANIC vodka, filed a Complaint in the United States District Court for the Western District of Kentucky against our client, McLain & Kyne, Ltd. (“McLain”), the producer of JEFFERSON’S OCEAN AGED AT SEA small batch Kentucky bourbon. The Complaint alleged that the JEFFERSON’S OCEAN AGED AT SEA trademark infringed HSS’ OCEAN trademark.
Nearly four months after filing its Complaint, on October 6, 2014 HSS filed a motion for a preliminary injunction and two days later District Judge Charles R. Simpson III granted HSS’ motion for the expedited resolution of its motion. An evidentiary hearing was scheduled for October 14, 2014.
On October 14th, after hearing testimony from HSS’ Chief Marketing Officer and McLain’s Managing Director, as well as argument by counsel, the Court denied HSS’ motion for a preliminary injunction from the bench.
The Court did so after undertaking the eight factor balancing test set forth in Therma-Scan, Inc. v. Thermoscan, Inc., 295 F.3d 623, 630 (6th Cir. 2002). First addressing the strength of the senior user’s mark factor, the Court concluded that because the term OCEAN described an ingredient in HSS’ vodka, it was descriptive, i.e., the mark is conceptually weak. The Court next found that HSS’ sales, marketing, advertising and promotion were insufficient to have resulted in significant consumer awareness of the mark, i.e., it is commercially weak as well. The Court, therefore, ruled that OCEAN was a weak mark and that this factor favored a finding of no likelihood of confusion.
The Court then turned to the relatedness of the goods factor and concluded that, although the products were related in a broad sense, because they did not compete for the same customers this factor also favored a finding of no likelihood of confusion.
On the similarity of the marks factor the Court compared the marks used on the products and concluded that other than the word OCEAN, the JEFFERSON’S OCEAN AGED AT SEA and OCEAN VODKA marks were quite different. He also found that the use of the JEFFERSON’S house mark significantly distinguished the two marks. The Court noted that this was an important factor and that in this case it weighed strongly against a finding of likelihood of confusion.
The Court next addressed the actual confusion factor, noted that this can be the best evidence of likelihood of confusion, and found that HSS had not submitted any evidence of consumers of JEFFERSON’S OCEAN AGED AT SEA bourbon actually being confused about its origin.
On the purchaser care and sophistication factor, the Court noted that price was an important consideration and ruled that because JEFFERSON’S OCEAN AGED AT SEA bourbon sold for between $80 and $100, purchasers would carefully consider their purchase and be likely to know who produced the product. This factor, therefore, favored a finding of no likelihood of confusion.
The Court then found that McLain clearly had no intent to trade on HSS’ reputation, and that HSS’ evidence of an intention to expand its product line was not persuasive and, therefore, irrelevant.
Judge Simpson then ruled that “… these factors, taken as a whole, militate in favor of the court’s conclusion that there is not a likelihood of confusion here.”
The Court next ruled that since there was no likelihood of confusion, HSS would not suffer any irreparable harm and the public was not being misled. As for the balance of harm to the parties, the Judge determined that the substantial damage that McLain would incur if enjoined weighed heavily against the issuance of an injunction.
On October 17, 2014, HSS filed a stipulation voluntarily withdrawing its complaint and on October 21st, the Court entered an Order dismissing the case.
Michael Aschen, Esq., Partner, Abelman, Frayne & Schwab
Michael Schwab, Esq.
On April 29, 2014, the United States Supreme Court lowered the burden required for a prevailing party to recovery attorney’s fees in certain patent litigations. In two unanimous decisions the Court set aside Federal Circuit precedent defining a framework for evaluating “exceptional cases” (Octane Fitness LLC v. ICON Health & Fitness, Inc) and the standard used by appellate courts when reviewing a district court’s decision regarding an award attorney’s fees (Highmark, Inc. v. Allcare Health Management System, Inc.) under 35 U.S.C. § 285.
Prior to 1946, the Patent Act did not authorize an award of attorney’s fees to a prevailing party in a patent litigation. The “American Rule” governed and each litigant was required to pay its own attorney’s fees. In 1946, a discretionary fee shifting provision was added to the law. It is presently expressed in 35 U.S.C. § 285 which states that “the Court in exceptional cases may award reasonable attorney’s fees to the prevailing party.”
In Brooks Furniture Manufacturing, Inc. v. Dutailer Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005) the Federal Circuit defined a two pronged test for determining “exceptional cases” under 35 U.S.C. § 285. Attorney’s fees could be imposed only if the litigation was both (1) brought in subjective bad faith, and (2) objectively baseless. The Federal Circuit also found that the question of whether a litigation was objectively baseless to be a mixed question of law and fact which should be reviewed by an appellate court de novo.
In Octane, a larger company that never commercialized the patent in suit brought an infringement action “as a matter of commercial strategy.” The District Court found non-infringement to be self-evident to anyone who visually inspected the accused devices, but refused to award attorney’s fees on the basis that the two prongs of the Brooks Furniture test were not satisfied. The Federal Circuit affirmed.
The Supreme Court reversed finding the Brooks Furniture test to be unduly rigid and an impermissible encumbrance on the discretion granted to district courts under 35 § 285. According to the Supreme Court an “exceptional” case is “simply one that stands out from the others with respect to the substantive strength of a party’s litigation position.” Under this standard a district court should determine whether a case is “exceptional” using its discretion on a case by case basis “considering the totality of the circumstances.” The Supreme Court also reversed Federal Circuit precedent that required a litigant to establish an entitlement to attorney’s fees by “clear and convincing evidence.” The Supreme Court found this standard to be too burdensome holding that 35 § 285 requires a “simple discretionary inquiry” and that it does not impose a “specific evidentiary burden, much less a higher one.”
In Highmark the Supreme Court again reversed the Federal Circuit, this time with respect to the de novo standard of review established for an appellate court to determine an exceptional case under 35 § 285. The Supreme Court held that an appellate court should review a district court’s determination under 35 § 285 based on an abuse of discretion standard of review.
The Octane and Highmark decisions are likely to have a dramatic impact not only on non-practicing entities, but on patent litigation in general. There is now less predictability about how a district court will decide if a case is “exceptional” and a greater likelihood that a request for an award of attorney’s fees will be granted.
By Julie Seyler
How does the law determine what is considered to be the fair use copying of another artist’s work? How close can the copier come to the original without being deemed an infringer?
In Patrick Cariou v. Richard Prince, the renowned appropriation artist Richard Prince used complete and partial images from a series of photographs taken by Patrick Cariou of landscapes and portraits of Rastafarians living in Jamaica to create his own series of 30 paintings and collages titled Canal Zone. Cariou’s planned gallery exhibition was cancelled and Prince sold his work for upwards of $2,000,000.
Cariou sued for copyright infringement. Prince defended on the ground that his appropriation of Cariou’s photographs fell within the fair use exception of the Copyright Act of 1976. The District Court for the Southern District of New York agreed with Cariou. Cariou v. Prince, 784 F. Supp. 2d 337, 349 (S.D.N.Y. 2011).
The Second Circuit Court of Appeals did not. It reversed the lower court’s finding of infringement as to 25 of Prince’s works finding them to be transformative as a matter of law and vacated and remanded the case back with respect to the other 5.
The Court affirmed that when reviewing claims of copyright infringement the standard of fair use is broad and the creation of art should be encouraged. Further it admonished the District Court for imposing a standard that the secondary work “comment on the original artist or work or popular culture”. Rather the Court held that the primary determinative factor is whether the secondary work is transformative in nature such that it imbues the original with a new meaning, a new expression, a new message, a different character.
The Court looked to Article 1, Section 8, clause 8 of the U.S. Constitution and quoting from its decision in Castle Rock Entm’t, Inc. v. Carol Publ’g Grp., Inc., 150 F.3d 132, 141 (2d Cir. 1998), asserted that the “ultimate test of fair use … is whether the copyright law’s goal of ‘promoting the Progress of Science and useful Arts’ … would be better served by allowing the use than by preventing it.” Castle Rock, 150 F .3d at 141.
Turning to a consideration of the fair use exception set forth in the statute, the Court reviewed each factor separately. However, its finding that 25 of Prince’s collages and paintings were transformative as a matter of law under the first factor (which focuses on the purpose and character of the use) impacted its analysis on factors 2, 3 and 4.
I. The purpose and character of the use. Is it commercial or educational?
Citing Castle Rock, supra; Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 578-79 (1994); Harper & Row, Publishers, Inc. v. Nation Enters., 471 U.S. 539,560 (1985); Blanch v. Koons, 467 F.3d 244, (2d Cir. 2006); Pierre N. Leval, Toward a Fair Use Standard, 103 Harv. L. Rev. 1105, 1107 (1990), the Court stated that the law directs that the following issues be considered in assessing this factor:
If so, the use of the copied work may well be deemed fair.
The Court examined Prince’s work with this framework in mind and documented the differences between his paintings and collages and Cariou’s photographs. The Court found substantive differences in appearance, composition and materials:
|Photographs from Yes Rasta||James Brown Disco Ball|
|In the Court’s view:|
|The photographic portraits were” serene and deliberately composed”
The landscapes were intended to reveal the “natural beauty of Rastafarians and their surrounding environs”.
|The work was characterized as “crude and jarring”; “hectic and provocative”; “a post-apocalyptic screenplay”|
|The work consisted of black-and-white photographs||The work incorporated color, distorted human and other forms and settings|
|The photographs were compiled in a 9½ x 12″ book.||The paintings measure between ten and nearly a hundred times the size of the photographs.|
|The composition, presentation, scale, color palette, and media are fundamentally different and new compared to the photographs|
Thus from the Court’s interpretation of the statute and the case law, the issue is not whether one appropriates the work of another but, when appropriated, whether it transformed the old sufficiently such that new information, new aesthetics, new insights and understandings are conveyed.
Consequently, the artist’s intent in using the original work is not the determinative factor. Rather the Court indicated that the law dictates that the focus of the inquiry is how the work in question appears to the reasonable observer. Campbell, 510 U.S. at 582; Leibovitz v. Paramount Pictures Corp., 137 F.3d 109, 113-14 (2d Cir. 1998).
Further once it is determined that the new work is transformative, the fact that it generated substantial commercial benefit to the secondary user does not appear to carry much weight:
This factor must be applied with caution because, as the Supreme Court has recognized, Congress “could not have intended” a rule that commercial uses are presumptively unfair. Campbell, 510 U.S. at 584 Instead, “[tjhe more transformative the new work, the less will be the significance of other factors, like commercialism, that may weigh against a finding of fair use.” Id. at 579. Although there is no question that Prince’s artworks are commercial, we do not place much significance on that fact due to the transformative nature of the work.
2. The effect of the use upon the potential market for the value of the copyrighted work
Although the gallery Cariou had lined up for a show of his copyrighted photographs cancelled it when it learned of Prince’s show at another gallery, the Second Circuit, unlike the District Court, was not persuaded that this contributed to a finding of infringement:
Contrary to the district court’s conclusion, the application of this factor does not focus principally on the question of damage to Cariou’s derivative market. We have made clear that “our concern is not whether the secondary use suppresses or even destroys the market for the original work or its potential derivatives, but whether the secondary use usurps the market of the original work.” Blanch, 467 F.3d at 258; NXIVM Corp. v. Ross Jnst., 364 F.3d 471, 481-82 (2d Cir. 2004).
Usurpation occurs only where the target audience for the secondary work and the nature of the work is the same as the original. It follows that the “more transformative the secondary use, the less likelihood that the secondary use substitutes for the original,” even though “the fair use, being transformative, might well harm, or even destroy, the market for the original.” Castle Rock, 150 F.3d at 145.
Reviewing the evidence and testimony, the Court determined Prince’s work did not usurp the market for Cariou’s work. The Court pointed out that:
The Court concluded that this fair use factor weighed in Prince’s favor.
3. The nature of the copyrighted work
This factor includes a consideration of whether the work is expressive or creative; factual or informational; published or unpublished. The Court noted that Prince’s work was creative and had been published, factors that weigh against a finding that the use had been fair. However, because the work had been deemed transformative this factor was not given great weight either.
4. The amount and substantiality of the portion used in relation to the copyrighted work as a whole.
The Court noted that Prince had lifted certain photographs in their entirety but again the transformative nature of the work was more important. However the Court found that 5 of Prince’s collages bore a closer resemblance to the original
The Court detailed the alterations made by Prince, but concluded they were minimal. The case was remanded to determine whether the changes to those artworks presented a “new expression, meaning, or message.” Campbell, 510 U.S. at 579. More to follow.
By: Michael J. Schwab, Esq.
On March 19, 2013, in a 6 to 3 decision the Supreme Court held that the first sale doctrine under the Copyright Act applies to copyrighted works legally made aboard. Kirtsaeng v. John Wiley & Sons, No. 11-697, (U.S. Mar. 19, 2013).
Copyright law grants the copyright owner a number of rights including the exclusive right “to distribute copies or phonorecords of the copyrighted work to the public for sale or transfer of ownership, or by rental, lease or lending.” The first sale doctrine, also known as the “exhaustion” doctrine, is an exception to this right of distribution. Under the doctrine once the owner of a physical work subject to copyright sells or transfers that work, his interest in the material object is exhausted, and the buyer is generally permitted to resell, rent, gift or destroy the work without violating the copyright owner’s rights.
The case arose out of Kirtsaeng’s importation and resale in the United States of Wiley text books which were printed and purchased by Kirtsaeng (or his friends and family) in Thailand. Wiley sued claiming that Kirtsaeng’s unauthorized importation and resale of the text books infringed Wiley’s copyrights. Kirtsaeng argued that the books were lawfully produced and acquired legitimately, and that the first sale doctrine permitted him to import and resell them without Wiley’s permission.
The District Court held that the first sale doctrine did not apply to goods manufactured abroad. The jury found that Kirtsaeng willfully infringed Wiley’s U.S. copyrights and awarded it $600,000 in damages. The Second Circuit affirmed.
The Supreme Court reversed after concluding that the phrase “lawfully made under this title” did not impose a “geographic limitation” on the Copyright Act and that the first sale doctrine, therefore, permits the importation and resale of copies made and acquired abroad.
The decision will have a significant impact on how copyright holders produce and distribute their works abroad.