In this week’s edition of Other Barks: A well-known patent monetization firm jumps back into the brokered patent market in 2016’s fourth quarter. A federal judge in New York allows arguments over whether American movie star Marilyn Monroe has become too generic for any trademark rights to continue. Sony files a patent infringement lawsuit over set-top boxes. Forever 21 files a declaratory judgment action calling Adidas a trademark bully. Cher wins a copyright dismissal over claims her 2013 album cover was infringing. The Supreme Court gears up to hear oral arguments in a case that examines the limits of the patent exhaustion doctrine. Plus a very busy week on Capitol Hill.
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- This Week on Capitol Hill – Tuesday and Wednesday were the busiest days this week on Capitol Hill with a long list of hearings in either house of Congress on both days. The improper use of technology was a focus during a 10 AM hearing on Tuesday of the U.S. Senate Committee on Armed Services, which looked at impropriety in Marine usage of the Marines United website. Also at 10 AM on Tuesday, the U.S. Senate Committee on Energy & Natural Resources convened a hearing to receive testimony on opportunities to improve the nation’s energy infrastructure. At 2:30 PM on Tuesday, the surface transportation subcommittee of the U.S. Senate Committee on Commerce, Science, & Transportation held a hearing focused on improving truck safety on the nation’s highways. Today, the Senate commerce committee convenes a hearing at 10 AM to look at innovation, integration, successes and challenges in unmanned aircraft system development. At 10:30 AM, the education subcommittee of the U.S. Senate Committee on Appropriations will meet to discuss STEM education and preparing today’s students for tomorrow’s careers. At 3:30 PM, the airland subcommittee of the Senate armed services committee will hold a hearing examining all arms warfare of the 21st century. Over in the House, the House Committee on Rules held a series of hearings at 5 PM Tuesday to discuss H.R. 1367, a bill to improve the hiring authority of the Secretary of Veterans Affairs and to discuss H.R. 1259, the VA Accountability First Act of 2017. Today at 10 AM, the energy subcommittee of the House Committee on Energy and Commerce will hold a hearing to examine opportunities and challenges in expanding hydropower generation. Today at 1 PM, the digital commerce subcommittee of the House energy and commerce committee will hold a hearing looking at industry disruption by advanced materials and production. At 3:30 PM today, the emerging threat subcommittee of the House Committee on Armed Services will hold a hearing to examine crafting an information warfare and counter-propaganda strategy for the emerging security environment. The House is also very busy on Thursday and that day kicks off with a 10 AM hearing of the biotechnology subcommittee of the House Committee on Agriculture which will look at agricultural research supported by the next farm bill. Also at 10 AM, the House Committee on Transportation and Infrastructure will convene a hearing to discuss 21st century infrastructure needs of the national preparedness system. Another 10 AM hearing will be held by the House Committee on Natural Resources to identify innovative infrastructure ideas for the National Park Service and Forest Service.
- Sony Takes on Arris in Patent Battle Over Set-Top Boxes – On Friday, March 10th, Japanese tech conglomerate Sony Corporation (NYSE:SNE) filed a patent lawsuit against Suwanee, GA-based telecommunications equipment maker ARRIS International (NASDAQ:ARRS) over the use and sale of cable and satellite products including set-top boxes and gateways. Sony is asserting five patents which it alleges are infringed by equipment manufactured by ARRIS and provided to telecom firms including Comcast (NASDAQ:CMCSA) and DirecTV. The suit is filed in the U.S. District Court for the Northern District of Georgia (N.D. Ga.). (Link to official complaint in Sony Corporation et. al. v. ARRIS International et. al.)
- Intellectual Ventures Back in Brokered Patent Market – On Friday, March 10th, legal publication Bloomberg BNA published an article which reported that Bellevue, WA-based IP monetization firm Intellectual Ventures (IV) had re-entered the U.S. market for brokered patents during the fourth quarter of 2016. Data provided by the Richardson Oliver Law Group indicates that IV acquired 172 assets during 2016’s fourth quarter; IV acquired zero patents during 2015’s fourth quarter. IV’s patent purchasing activity has slowed significantly in recent years, from 4,679 assets bought during 2014 down to 1,777 assets in 2015 and 180 assets in 2016. (Link to Bloomberg BNA article on IV’s patent asset acquisitions)
- Forever 21 Files Complaint for Declaratory Judgment Against Trademark “Bully” Adidas – On March 3rd, Los Angeles-based Forever 21, Inc. filed a complaint for declaratory judgment of non-infringement of trademarks against German design company Adidas AG (ETR:ADS) and its American subsidiary. Forever 21 filed the complaint in response to claims of trademark infringement over the use of stripes on clothing apparel from Adidas, which Forever 21’s complaint calls a “bully” in the trademark assertion realm. “Forever 21 has decided that enough is enough,” the complaint reads. “Forever 21 is not infringing any Adidas trademark and has not breached any agreements with Adidas. This matter is ripe for a declaratory judgment.” (Link to official complaint in Forever 21, Inc. v. Adidas America, Inc. et. al.)
- S.D.N.Y. Order Dismisses Counterclaims in Suit Over Marilyn Monroe Trademarks – On Monday, March 13th, an opinion and order filed by a federal judge in the U.S. District Court for the Southern District of New York (S.D.N.Y.) dismissed several counterclaims raised in a suit challenging the validity of trademarks covering the likeness of Marilyn Monroe. The counterclaims arose from a trademark infringement case filed by the Monroe estate and allege that the estate is attempting to monopolize a name which has become generic. The judge found that the counterclaimants asserted few factual allegations to support its case, leading to dismissal of the counterclaims, but some fact-intensive issues regarding whether the Monroe name is generic remain in the case. (Link to opinion and order filed in A.V.E.L.A., Inc. v. The Estate of Marilyn Monroe, LLC et. al.)
- MormonLeaks Responds to DMCA Takedown Letter from LDS Church – On Monday, March 13th, Las Vegas-based law firm Randazza Legal Group sent a letter to the Church of Jesus Christ of Latter-day Saints (LDS) in response to a Digital Millennium Copyright Act (DMCA) takedown notice sent by the LDS Church to non-profit media organization MormonLeaks. The LDS Church sought to take a PowerPoint presentation about the inner workings of the church offline and Randazza noted that this allows MormonLeaks to bring a claim against the church under 17 U.S.C. Section 512(f) for misuse of the DMCA. Randazza proposed that legal aggression on either side should stop, noting the LDS Church’s reasonable and positive reaction to the Broadway musical The Book of Mormon. (Link to DMCA response sent by Randazza to the LDS Church)
- Cher Wins Dismissal of Copyright Lawsuit Filed Over 2013 Album Cover – On Thursday, March 9th, news outlet Reuters reported that American singer and actress Cher won the dismissal of a lawsuit filed by Brooklyn typography designer Moshik Nadav over typeface used on the cover of Cher’s 2013 studio album Closer to the Truth. Nadav’s suit alleged that Cher’s album production team copied elements of critically acclaimed logos designed by Nadav making the images “substantially similar or virtually identical.” According to Reuters, Nadav’s suit was dismissed without prejudice so Nadav may be able to pursue similar charges against Cher in the future. (Link to Reuters article on dismissal of lawsuit against Cher) (Link to official complaint in Moshik Nadav et. al. v. Genesh Productions LLC et. al.)
- German Minister Announces Hate Speech Law Affecting Social Media – On Tuesday, March 14th, Germany’s Minister of Justice and Consumer Protection Heiko Maas announced proposed legislation which is designed to punish social network providers that the German government feels aren’t responsive enough in taking down hate speech posted to their networks. A prepared statement from Maas indicates that the law could create a fine of up to 50 million euros ($53 million USD) for companies that breach their obligations to remove speech which is criminal under European law. Reports of a year-long study on hate speech in social networks indicate that Facebook and Twitter are well below Germany’s statutory obligations to remove 70 percent of flagged content within 24 hours. (Link to German federal government website including Haas remarks)
- SCOTUS to Hear Arguments in Case on Exhaustion of Patent Rights – Next Tuesday, March 21st, the U.S. Supreme Court will hear oral arguments in Impression Products, Inc. v. Lexmark International, Inc., a case which will look at whether a conditional sale that transfers title to a patented item while specifying post-sale restrictions on the article’s resale avoids application of the patent-exhaustion doctrine and permits the enforcement of post-sale restrictions through infringement remedies. The case stems from Impression Products acquisition of printer cartridges which were first manufactured and sold by Lexmark International and then resold by Impression in the United States after they were refilled. (Link to Federal Circuit decision in Lexmark International, Inc. v. Impression Products, Inc.) (Link to preview of oral arguments published by SCOTUSblog)
- NASA Completes Another Successful Test of Orion’s Parachutes – On Wednesday, March 8th, the National Aeronautics and Space Administration (NASA) completed its latest test of parachutes for the agency’s Orion spacecraft, the vehicle which agency planners are hoping will bring man to Mars during the 2030s. The successful test was the second of eight tests which will certify the Orion parachutes as safe for human spaceflight; this most recent test looked at how the parachutes performed in terms of emergency abort capabilities, such as when a mission is aborted after launch. (Link to NASA announcement of successful Orion parachute test)
- This Week on Wall Street – It’s another light week for earnings reports from the world’s patenting giants. Today, Redwood City, CA-based computer tech firm Oracle Corporation (NYSE:ORCL) is expected to report earnings for the third quarter of its 2017 fiscal year; Oracle placed 57th in 2015 among companies earning U.S. patents, earning 731 U.S. patents that year according to statistics published by IPO. Chinese online advertising holding company Tencent Holdings (HKG:0700) will report its earnings for 2016’s fourth quarter today as well. Tencent’s subsidiary Tencent Technology (Shenzhen) placed 255th in 2015 by earning 127 U.S. patents that year. On Thursday, software company Adobe Systems Incorporated (NASDAQ:ADBE) of San Jose, CA, will report earnings for the first quarter of 2017. Adobe took in 319 U.S. patents in 2015, placing 115th that year.