Other Barks & Bites for Wednesday, February 8th, 2017

Today in Other Barks & Bites: Kylie Minogue reports victory in a trademark opposition filed against Kylie Jenner, but the electronic records of the U.S. Patent and Trademark Office are cause for confusion. Also, the estate of Dr. Seuss supports its copyright infringement claims against a New York City playwright and all 12 districts of the Federal Reserve System seek invalidation of two patents on electronic fraud-proof payment systems, plus Netflix, Beyoncé and our weekly updates on what is happening on Capitol Hill and on Wall Street.

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• This Week on Capitol Hill – On Tuesday, February 7th, the U.S. Senate Committee on Armed Services held a closed hearing to receive a briefing on cyber threats. Also on Tuesday, the U.S. House Committee on Science, Space, & Technology held a hearing on improving the regulatory practices of the Environmental Protection Agency (EPA). At 10 AM today, the U.S. Senate Committee on Environment & Public Works will hold a hearing which will examine ways to modernize the infrastructure of the United States.

• Netflix, SoundCloud and Others Targeted for Infringing Digital Data Processing Patent – On Wednesday, February 8th, intellectual property monetization firm Blackbird Technologies filed a trio of patent infringement suits in the U.S. District Court for the District of Delaware (D. Del.), each of which asserted a single patent covering a digital data distribution technology. The suits target cloud-based on-demand entertainment services providers Netflix, Inc. (NASDAQ:NFLX), SoundCloud Ltd and MUBI, Inc. The suits allege that offline listening/viewing services offered by these entertainment providers infringe upon the asserted patent, which claims a method of processing a request for data which involves downloading data to an output device. (Link to Blackbird Tech v. Netflix) (Link to Blackbird Tech v. SoundCloud) (Link to Blackbird Tech v. Mubi) (Link to U.S. Patent No. 7174362, titled Method and System for Supplying Products from Pre-Stored Digital Data in Response to Demands Transmitted via Computer Network)

• Media Reports Unconfirmed Victory in “Kylie” Trademark Case – On Saturday, February 4th, British news outlet The Daily Mail reported that Australian singer-songwriter Kylie Minogue had prevailed in a trademark opposition proceeding against American reality TV personality Kylie Jenner to prevent her from trademarking the standard character mark “KYLIE” for use in commerce. While that headline has gained traction in the mainstream media, the Trademark Electronic Search System (TESS) continues to list three “KYLIE” trademarks owned by Kylie Jenner Inc. as live: U.S. Trademark Serial Nos. 87260390, 86584742 and 86584756. In addition, the party representing Minogue formally withdrew their opposition of the ‘742 trademark in late January and the case was dismissed without prejudice by the Trademark Trial and Appeal Board (TTAB). (Link to decision to dismiss opposition without prejudice in “KYLIE” opposition proceeding)

• Beyoncé Files Trademark Application to Capitalize on Daughter Blue Ivy Carter’s Brand – Fresh off the news of American pop mogul Beyoncé’s announcement of her pregnancy, some media outlets have also been reporting on a trademark application filed in January 2016 by BGK Trademark Holdings, a company holding other trademarks for the pop music star. If registered, it would cover the standard character mark “BLUE IVY CARTER” across 14 trademark classes for its use on goods and services such as baby teething rings, baby carriages, diaper bags, fragrances, cosmetics, playing cards, online retail stores and online video games. Back in 2012, Beyoncé and rapper husband Jay Z lost a bid to trademark “Blue Ivy” to a Boston-area wedding planner who had secured the mark a few years earlier. (Link to U.S. Trademark Serial No. 86883293)

• All 12 Federal Reserve Bank Districts Named as Plaintiffs in Patent Suit Against Bozeman Financial – On Wednesday, February 1st, a patent infringement suit was filed in the U.S. District Court for the Northern District of Georgia (N.D. Ga.) naming all 12 districts of the Federal Reserve System as plaintiffs seeking an action for declaratory judgement of noninfringement of two patents owned by Florida-based Bozeman Financial, Inc. Bozeman attempted to assert the patents against at least the Federal Reserve Bank of Atlanta, alleging that their electronic payment systems infringed upon patents covering positive pay systems for fraud detection. (Link to official complaint filed for Federal Reserve Bank of Atlanta et. al. v. Bozeman Financial LLC) (Link to U.S. Patent No. 6754640, titled Universal Positive Pay Match, Authentication, Authorization, Settlement and Clearing System) (Link to U.S. Patent No. 8768840, same title as ‘640 patent)

• Dr. Seuss Estate Backs Copyright Infringement Claims in S.D.N.Y. – Late last December, New York City-based playwright Matthew Lombardo filed a lawsuit in the U.S. District Court for the Southern District of New York (S.D.N.Y.) in response to a cease-and-desist letter sent by Dr. Seuss Enterprises targeting a one-woman play which is set in an alternate version of the How the Grinch Stole Christmas! Universe. On Monday, February 6th, Law360 reported that the Seuss estate filed a response to the S.D.N.Y. lawsuit in which the estate claims that it has an “absolute right” to protect its IP; Lombardo’s suit alleges that the Seuss estate committed tortious interference which led to the cancellation of a planned run of the play. (Link to Law360 docket tracker for Lombardo et. al. v. Dr. Seuss Enterprises L.P.)

• Mintz Levin Achieves Second Victory in IPR Proceedings on Behalf of FootBalance – On Friday, February 3rd, the Patent Trial and Appeal Board (PTAB) issued a final written decision in an inter partes review (IPR) proceeding which upheld all seven claims which were challenged in the IPR. The IPR targeted a patent which was being asserted by Finnish footwear maker Footbalance Systems against California-based Zero Gravity Inside. Footbalance was represented by Mintz Levin Cohn Ferris Glovsky and Popeo PC, a firm which also successfully argued that PTAB shouldn’t institute an earlier IPR filed against the same patent. The IPR case numbers IPR2015-01769 and IPR2015-01770 can be accessed for free via the online PTAB End to End (E2E) service. (Link to official complaint in Footbalance System v. Zero Gravity Inside) (Link to U.S. Patent No. 7793433, titled Individually Formed Footwear and a Related Method)

• Bloomberg Law to Host Panel Discussions on IP Policy Under President Trump – Last Friday, Bloomberg announced that it would be hosting a pair of panel discussions featuring insiders from the IP industry to explore intellectual property-related issues that will likely arise during the course of the Trump Administration. Speakers at the event will include Dana R. Colarulli, director of the U.S. Patent and Trademark Office’s (USPTO) Office of Governmental Affairs; Rob Stein, VP of governmental regulations & regulatory affairs at InterDigital; Peter Harter, founder of The Farrington Group (and IPWatchdog contributing author); and Kevin Jakel, founder and CEO of Unified Patents. The event will take place at the San Francisco offices of Bloomberg L.P. on February 9th from 3:30 PM to 5:30 PM. (Link to the registration page for Bloomberg Law’s 2017 Outlook on Intellectual Property event)

• Senate Democrats Ramp Up Effort to Secure Net Neutrality Rules at FCC – On Tuesday, February 7th, high-ranking Democrats on Capitol Hill convened a press conference during which they vowed to push back against Republican efforts to curtail net neutrality rules passed by the Federal Communications Commission (FCC) under the Obama Administration. Coverage of the press conference from The Hill quotes Sen. Ed Markey (D-MA) as vowing that he’ll personally oppose legislative efforts to overturn net neutrality rules at the FCC, noting at the potential for such reforms given the GOP majority both on Capitol Hill and at the FCC.

• U.S. Copyright Office Adjusts Registration Records Rule on Personally Identifiable Information – On Thursday, February 2nd, the Federal Register printed a final rule from the U.S. Copyright Office on the removal of personally identifiable information (PII) from registration records made by authors and claimants seeking copyright registration. Under the new rule, copyright registrants can ask that PII requested or otherwise collected during the course of registering a copyright be changed or removed from the records. One comment leading to an adjustment of the rules came from the National Center for Transgender Equality (NCTE), which argued that a transgender individual who requests a PII change should have the ability to remove the original PII from the record to protect that individual from potential discrimination. (Link to Federal Register publishing final rule on PII from U.S. Copyright Office)

• Fed. Cir. Remands Apple/Samsung Design Patent Case to District Court – On Tuesday, February 7th, the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) remanded the ongoing design patent case between Apple Inc. (NASDAQ:AAPL) and Samsung Electronics (KRX:005930) back to the U.S. District Court for the Northern District of California (N.D. Cal). Fed. Cir.’s written decision notes that it was remanding the case to N.D. Cal. for further proceedings which may or may not include a new damages trial. Apple had requested further panel review while Samsung wanted the case remanded to N.D. Cal. along with the guarantee for a new damages trial. (Link to Fed. Cir.’s written decision in Apple v. Samsung)

• This Week on Wall Street – On Tuesday, February 7th, Toshiba Tec Corporation (TYO:6588), a subsidiary of U.S. patent giant Toshiba Corp. (TYO:6502) focused on the development of point-of-sale (POS) and radio-frequency identification (RFID) systems, released financials for the nine months ending December 31st, 2016, which showed a 7.5 percent decline in net sales to 364.8 million yen, although operating income was up 220 percent to 10.5 million yen compared to the same period in 2015. Overall, Toshiba earned 1,954 U.S. patents during 2016, the 13th-highest total of patents earned last year according to IFI CLAIMS. Today will see an earnings report for 2016’s fourth quarter from British drugmaker GlaxoSmithKline (NYSE:GSK), a company ranked 233rd for U.S. patents earned during 2015 by the Intellectual Property Owners Association (IPO). Thursday will see 2016 fourth quarter earnings from Japanese automaker Nissan (TYO:7201), 122nd overall in 2015 with 278 U.S. patents, and 2017 first quarter earnings from California-based visual computing developer NVIDIA (NASDAQ:NVDA), which placed 112th in 2015 with 325 U.S. patents.