“Any lawyer who advises companies that use questionnaires as a key element of their business needs to take into account both the protectability of the intellectual property that the clients create and the possibility that such content infringes protected content of others.”
Disclaimer: The author is counsel for Metabeauty, though not counsel in the case discussed below.
Along with cat memes, TikTtok videos and electoral manipulation, the Internet is enriching people’s lives with the instant quiz. Whether seeking to gauge one’s resemblance to a Game of Thrones character or satisfaction with an online purchase, the instant online quiz, questionnaire or survey is a powerful mechanism for businesses, governments and nonprofits to learn about potential customers, constituents and supporters. As with anything that can create value, a lawyer’s advice will eventually be sought to learn how to protect the client’s brands and works from appropriation and misuse by third parties. The protectability of a quiz as a species of intellectual property is now before the Southern District of New York in the case of Metabeauty, Inc. v. HelloAva, Inc., et. al., a lawsuit filed by my client Metabeauty, Inc. against a venture-backed online platform that recommends skincare and cosmetic products.
The Metabeauty Case
Hailed by various tech and beauty publications as an application of artificial intelligence to the beauty industry, Metabeauty argues in the lawsuit that Defendant HelloAva was in fact based on pioneering medical research conducted decades ago by the owner of Metabeauty, Dr. Leslie Baumann.
Dr. Baumann, a world-renowned dermatologist, established the scientific classification of skincare regimens to specific skin types using a taxonomic system she called the Skin Type Solution. A person wanting to figure out his or her skin type would answer a questionnaire which would yield a classification of one of 16 skin types, identified by a four-letter code.
Obtaining a patent for Metabeauty was difficult. At first glance, this may seem odd, since patents are the first line of defense for scientific innovation, but the Supreme Court has consistently prohibited any patenting of discoveries of the natural world or law of nature. The most recent leading case in medicine was decided only seven years ago, in Ass’n of Molecular Pathology v. Myriad Genetics, 569 U.S. 576 (2013), where the Supreme Court held that a patent of the two gene mutable gene sequence was invalid as a patent over a natural law or phenomenon. But that case has been extended – arguably wrongly – to cover many bona-fide diagnostic inventions and methodologies. In Roche Molecular Systems, Inc. v. Cepheid, 905 F.3d 1363 (Fed. Cir. 2018), the Federal Circuit upheld a summary judgment claim that a diagnostic invention of test for a specific gene sequence in tuberculosis bacterium that conferred resistance to a particular antibiotic. Unlike the Myriad patents at issue, which patented the sequence, the Roche patent disclosed specific tests for the drug-resistant gene. The Federal Circuit held that based on Myriad and Federal Circuit decisions which followed, the subject matter of the invention was directed to the gene sequence, as opposed to an inventive method for disclosing it.
In a concurring opinion, In re BRCA1- & BRCA2-Based Hereditary Cancer Test Patent Litigation, 774 F.3d 755, 758 (Fed. Cir. 2014), Circuit Judge O’Malley wrote that the Court should revisit this issue as to claims involving diagnostic innovations because the BRCA1 decision was based on a record that seemed to suggest that the Federal Circuit thought the chemicals that were patented already existed in nature, while the chemicals in Roche Molecular Systems were explicitly described as being a man-made invention. Nonetheless, the current status of the law in the Federal Circuit is hostile to patenting diagnostic systems. As the ongoing COVID-19 crisis demonstrates, it is critically important to foster scientific innovation in diagnostics. U.S. patent law, at least as applied in the last decade, discourages medical innovators from reaping the rewards of research and investment into diagnosis.
Dr. Baumann’s Skin Type Solutions diagnostic was thus unable to obtain patent protection; however, the key creative element of the system, Dr. Baumann’s questionnaire, is protected automatically by copyright. As for trademark, my fellow counsel obtained trademarks for several of the four-letter skin type classifications, based on the recognized use of these marks in Dr. Baumann’s skincare franchise business.
The strength of intellectual property is being put to the test in the HelloAva litigation. The complaint alleges HelloAva copied large portions of Metabeauty’s quiz published in The Skin Type Solutions book. When first investigating the matter, Metabeauty’s attorneys compared words from The Skin Type Solutions to the summaries of skin types that HelloAva included on its website. We used plagiarism detectors to compare the wording, both to see what percentage of words were duplicated word-for-word, and what important language had been cut out. We thus learned that some sections on the HelloAva website were exact duplicates of sections written by Dr. Baumann, while other sentences removed vital and possibly life-saving references to sunscreen, a person’s best protection against skin cancer. This literal copying of creative questions and descriptions eliminated the defense that the similarity of the quizzes was purely functional or scènes à faire. Even rewriting quiz questions does not absolve one of copyright infringement.
In Educ. Testing Servs. v. Katzman, 93 F.2d 533 (3rd Cir. 1986) (“ETS”), the entity which creates and administers the SAT and LSAT sued the testing preparation company The Princeton Review for including questions both directly copied and rewritten in a different language and publicly releasing questions from the SAT for its test preparation program. The ETS Court acknowledged that copyright liability could rest on “recognizable paraphrases.” The ETS decision did not make a finding that the Princeton Review’s paraphrased questions constituted infringement; instead, it ruled that even though the directly copied questions were only a couple of hundred words, that was a sufficient quantity of copying to merit a preliminary injunction being upheld. The Court rejected the idea that explicit copying of even a handful of quiz questions was “fair use” given that the integrity of the entire SAT and its outcome can depend on a handful of questions. Fair use has consistently been rejected in later published decisions involving ETS and the publisher of the MCAT.
Turning to Trademarks
Metabeauty also alleges various species of trademark infringement arising from HelloAva’s use of the four-letter skin-type classifications that are the result of taking the quiz. Acronyms, even comprised of descriptive words, are not excluded from trademark protection “the acronym or initialism is readily understood by relevant purchasers to be “substantially synonymous” with the merely descriptive wording it represents.” USPTO, Trademark Manual of Examining Procedure §1209.03(h) (2018). “A mark consisting of an abbreviation, initialism, or acronym will be considered substantially synonymous with descriptive wording if: (1) the applied-for mark is an abbreviation, initialism, or acronym for specific wording; (2) the specific wording is merely descriptive of applicant’s goods and/or services; and (3) a relevant consumer viewing the abbreviation, initialism, or acronym in connection with applicant’s goods and/or services will recognize it as an abbreviation, initialism, or acronym of the merely descriptive wording that it represents.” Id., citing, In re Thomas Nelson, Inc., 97 USPQ2d 1712, 1715 (TTAB 2011); Modern Optics Inc. v. The Univis Lens Co., 234 F. 2d 504, 506, 110 USPQ 293, 295 (C.C.P.A. 1956). Metabeauty did not trademark acronyms that describe the services of the Skin Type Solution quiz; it trademarked several of the four-letter skin type classification that the Skin Type Solutions quiz yields as results. These skin type classifications were found by the PTO to be sufficiently associated with the Skin Type Solutions services as to merit protection.
In collecting information about how HelloAva used the registered marks in advertising, we did a deep dive into HelloAva’s Facebook content. Facebook has added a number of transparency features, including access to all ads placed by the owner of a Facebook Page or Group. We learned the date on which HelloAva had first started running ads on the site and on Instagram, as well as which ads they started running after we informed them we were concerned about their infringements. Examining HelloAva’s Facebook and Instagram content led us to discover interviews their principals had done with Cheddar, as well as promotional videos for investors, where we found more instances of unauthorized uses of Metabeauty trademarks. This use of the marks has since diminished, but not ceased.
Get on Top of the Issues
Any lawyer who advises companies that use questionnaires as a key element of their business needs to take into account both the protectability of the intellectual property that the clients create and the possibility that such content infringes protected content of others. Unfortunately for companies engaged in the diagnosis of medical conditions, any diagnostic inventions will, under current law, receive a hostile reception from patent examiners. However, copyright and trademark protections are still available. Due to the transparency of Internet advertising, nearly every potentially infringing use of a trademark or portion of a copyrighted work can be captured and employed to establish a prima facie case, and once catalogued, dated, measured and enumerated, the volume of uses can be presented to counter the knee-jerk defense of fair use; and when it comes to quizzes, the case law has established that even copying a handful of questions will result in liability and close paraphrases are not protective. It is particularly important where there has been foundational scientific or technical innovation in the field. Getting on top of this issue may determine whether in the questionnaire evaluating your competence you resemble Phoenix Wright or Lionel Hutz.
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