A Case Study in Protecting Internet Quiz IP

By Cyrus Sanai
July 10, 2020

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.

Internet Quiz - https://depositphotos.com/6241210/stock-photo-take-the-quiz-message.htmlAlong 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.

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Enter, Copyright

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.


Image Source: Deposit Photos
Copyright: fuzzbones
Image ID: 6241210

The Author

Cyrus Sanai

Cyrus Sanai is admitted to practice law in California, various federal courts and is an English solicitor (non-practicing). A UCLA School of Law graduate and Harvard University alumnus, Sanai practices in the areas of internet, international and intellectual property transactions and litigation. Sanai – whose first professional love is journalism – has also written for Slate, The Washington Post, Mirabella, the Chronicle of Higher Education, and has been published in various legal journals and treatises on issues such as international bankruptcy and stare decisis.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 14 Comments comments. Join the discussion.

  1. TFCFM July 10, 2020 10:13 am

    CS: “Unfortunately for companies engaged in the diagnosis of medical conditions, any diagnostic inventions will, under current law, receive a hostile reception from patent examiners.

    IMO, much depends on whether one’s alleged “invention” actually involve inventing something or merely categorizing the existing world. Here, it sounds as if the originator of the skin-classifying technique has simply thought of some (16?) categories of the existing world and how she would think about dividing the existing world among those sixteen categories. Nothing remotely technological is involved — this is merely a manner-of-thinking: about as an abstract a bit of subject matter as one can imagine.

    That the developer’s manner-of-thinking-about-skin might be helpful (an issue about which I have no informed opinion) is an entirely different question than the question of whether that manner-of-thinking ought to be eligible for patenting. Both under current law and under patent law as it has existed throughout US history (and earlier), such manners-of-thinking are not eligible for patenting.

    Creative expressions (e.g., literally copied questions) of concrete embodiments of the manner-of-thinking might justifiably be eligible for copyright protection, it seems to me. Non-functional aspects of such expressions might even merit trademark protection. Patents, however, seem like a clear “no” — at least for the generic skin-classification idea.

    (Patent eligibility might exist for particular methods involving an ordered series of ‘testing’ or ‘comparing’ steps, coupled with at lease one real-world ‘do something about it’ steps — e.g., test property X, compare X result with Y, and if X>Y, administer Z….)

  2. Pro Say July 10, 2020 12:29 pm

    Insightful treatise Cyrus — thanks.

  3. Anon July 10, 2020 7:04 pm

    TFCFM,

    Your post — yet again — sounds as if you would like to eliminate the word “discover” from patent law.

    As I have in the past, I refer you to writings already directed to this point and invite your reply to the merits thereof.

    (and, as in the past, I suspect that no such on the merits reply will be forthcoming from you)

  4. Benny July 13, 2020 2:33 am

    Anon,
    TFCFM has a valid point. I didn’t notice any “discovery” in the classification method. If you did, please point it out instead of just criticizing people without reference to facts.

  5. TFCFM July 13, 2020 9:41 am

    Anon: “as in the past, I suspect that no such on the merits reply will be forthcoming from you

    As in the past, your vague, one-sentence, nothingburger attempted-criticism merits nothing more serious than a single-sentence dismissal.

  6. Anon July 14, 2020 10:17 am

    Benny and TFCFM,

    Nether of your posts mean anything (and with a nod to TFCFM for AGAIN displaying the very insult that he would wield against someone else).

    Benny, TFCFM, simply does NOT have a valid point, and had you been paying attention, he has consistently run away from a point that Sherry Knowles has made, and to which I directed him (but he claimed that he never saw, could not understand, or both). TFCFM has in the past been taken to the woodshed for his false statements of wanting to engage, and his over-eagerness for dismissing anything that he may find inconvenient.

  7. TFCFM July 14, 2020 10:41 am

    … and Anon has been utterly unresponsive to his past claims that “somewhere, sometime, but he’s FAR too busy to repeat it” he might have written something that was relevant.

    Prepare to be shocked, but neither I nor others have undertaken the quest he suggests: to mine whatever nonsense he may have written in the past, divine which comment(s) to which he may be referring, relate that comment(s) to the present circumstance, and respond.

    Such is the plight of folks unable or unwilling to explain substantive positions they assert. (A closely related plight — watch to see if we see it here — is hand-waving about a distantly-related issue, coupled with a complaint that the subject declines to be distracted by the hand-waving.)

    Pathetic. If you’ve got a point to make, make it. Don’t merely allege that once-upon-a-time you had a point, and that someone else should labor to find and respond to it (if it ever existed).

  8. Anon July 14, 2020 4:17 pm

    TFCFM,

    I have been responsive – many times over.

    Each time though, you simply disappear (sometimes in a huff, sometimes just disappear without notice).

    What is clear on this present point is that it was not even “my own nonsense” that was put to you, but instead was the brief written by Sherry Knowles.

    Such is the plight of folks unable or unwilling to explain” — there you go again with accusations of things that describe your own tactics. It is interesting to note that the ‘other blog’ (Patently-O) suffered this for a period of 15 years before the poster there known as Malcolm Mooney finally disappeared this Spring.

    And to be certain, I am not the only regular poster here that has called you out for your tactics. I may have been the first, but by no means have I been the only.

  9. TFCFM July 15, 2020 11:08 am

    Get back to us when you have some substance, whether the substance is yours or Ms. Knowles’. Just get back to us with the substance, rather than with tales of how you supposedly once had substance.

    “You should be able divine what I’m thinking of,” is simply evasion.

  10. Anon July 15, 2020 8:04 pm

    It is simply not a matter of” tales of how I supposedly had substance.”

    At all.

    There is no “divine what I’m thinking of, thus no evasion (on my part).

    On your part, merely more of the same.

    You’ve spent more time and energy running away then it would take you to search this very blog for Miss Knowles brief on “Discovery.”

    That says more than your attempted insults.

  11. TFCFM July 17, 2020 12:32 pm

    Even assuming I could find Ms. Knowles’ brief, why should I care?

    If you had a point, you would have simply made it, rather than all the hand-waving about “Once upon a time somebody (maybe) wrote something (I won’t tell you what) that I believe to contradict what you just wrote.”

    Grow up. If you have a point, make your point. If you’ve got nothing, spare us your drivel.

  12. Anon July 19, 2020 7:34 am

    Why should you care?

    Because it is directly on point challenging your (lack of knowledge) position.

    Why indeed.

    Grow up?

    Coming from you, that’s a joke, right?

    Impress everyone again with your faux “I am here to engage” line (except when ANY such engagement goes against your desired narrative_.

  13. TFCFM July 20, 2020 10:34 am

    Drivel.

  14. Anon July 20, 2020 4:03 pm

    Yes, TFCFM, your posts are drivel.

    While I am sure that is not what you meant, that is the reality of the situation.

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