Tuesday, September 29, 2009

Glenn Beck v. glennbeckrapedandmurderedayounggirlin1990.com

What do you do when someone uses your trademark as the basis for a domain name? One avenue of protection is to institute a dispute pursuant to the Uniform Domain-Name Dispute-Resolution Policy (UDRP).

Enter Glenn Beck. A couple of weeks ago (according to Beck's complaint), someone registered the domain name: glennbeckrapedandmurderedayounggirlin1990.com. Beck hopes to terminate this registration by way of the UDRP proceeding. To do so, he must prove 3 things:
1) The domain name at issue is identical or confusingly similar to a trademark in which Beck has rights;
2) The registrant does not have any rights in the domain name; and
3) The registrant registered the domain in bad faith.

The respondent has remained anonymous, but is represented by Marc Randazza, the Editor-in-Chief of the Legal Satyricon blog.

Here's how the 2 sides have presented their arguments on those issues:

Domain name is identical or confusingly similar to a trademark in which Beck has rights

Beck does not currently have a federal trademark registration for "Glenn Beck." The U.S. Patent and Trademark Office has accepted his Intent-To-Use trademark application, but has not yet acted on Beck's statement of use (which will permit the ITU application to mature into a federal trademark registration). Beck also relies on his common law rights in the mark.

The respondent offers 3 arguments in reply. First, personal names are not protected under the UDRP. Second, Beck has not registered rights. And third, Beck has not presented sufficient evidence of common law rights. Respondent concedes that Beck's common law rights "may" exist, but faults Beck for failing to properly evidence them.

The registrant's rights in the domain name

Beck argues that, at best, the domain name is a "protest" site, but is misleading the public regarding the nature, origin and affiliation of the Website. Beck further argues that any notion that respondent has rights in the domain is undermined by the "plainly defamatory" name.

In response, the domain name owner explains that the domain name is an internet meme, which is
a phrase used to describe a catchphrase or concept that spreads quickly from person to person via the Internet, much like an esoteric inside joke.
After identifying various other memes, the response argues "This is the price of celebrity -- you just might wind up in a meme, and you might not deserve it." (emphasis in original).

The Glenn Beck meme is, apparently, a play on Gilbert Gottfried's roast of Bob Saget where Gottfried repeatedly joked that "Bob Saget raped and killed a girl in 1990."

Because Beck uses the same style of Gottfried (the formula argued by the respondent is: Outrageous Accusation + Celebrity + Question as to why the celebrity does not deny the accusation == Confirmation of the falsity of the accusation and laughter), the respondent concludes "Quite simply, Beck's shtick is simply a cheap imitation of Gilbert Gottfried, sans the humor."

This meme grew, finally resulting in registering of the domain name.
Beck has tried to paint himself as a "babe in the woods" who has fallen victim to a vicious character attack. In reality, Beck is an accomplished and deliberate manipulator of public opinion, and it is absurd to suggest that he himself does not understand the nature and function of Respondent's website. Given his long history of using the Gottfried Technique, Beck must have recognized that the respondent has merely presented Mr. Beck with a mirror. If Beck does not like what he sees, the Respondent is not to blame.
The respondent concludes this section by arguing that the domain is merely a criticism website.

Motives in registering the domain

Beck basis his bad faith argument on 2 points: (1) Respondent must have known about Beck before registering the domain; and (2) the domain itself is defamatory. Beck explains that respondent is using the domain "to damage Mr. Beck's reputation, tarnish his trademark rights, and disrupt his business activities."

The response relies upon the argument discussed above, namely that the site is criticism and an internet meme.


This case is interesting to me, as UDRP proceeding usually arise when the domain registrant blatantly seeks to profit from its registration, typically by trying to sell the domain name back to the mark holder. This case has none of that flavor, and will be interesting to see how Beck's defamation arguments hold up.


Monday, September 28, 2009

Waive doctrine of equivalents in the 1st litigation, you can't resurrect in the 2nd substantially similar litigation

Ron Nystrom was awarded U.S. Patent 5,474,831 entitled "Board for use in constructing a flooring surface." This wood-flooring board is shaped to shed water from the upper surface, while still maintaining a comfortable surface on which walk.

In 2001, he sued Trex for infringement. Trex's allegedly infringing product consisted of a plastic and sawdust mixture, which was compressed and then hardened into a decking board shape.

After claim construction, Nystrom conceded that he could not prove infringement. The court entered summary judgment of non-infringement, and Nystrom appealed. Nystrom was able to reverse one of the claim constructions, and attempted to prove liability through the doctrine of equivalents. But because he had moved for summary judgment of non-infringement, the district court held that he had waived his right to rely on the doctrine of equivalents. Again he appealed, but the Federal Circuit per curiam affirmed.

Shortly thereafter, Nystrom sued Trex again (and also named Home Depot and Snavely Forest Products as defendants). His allegations this time pertained to Trex's next generation wood board, which Trex sold after the first sued had originated. Nystrom based his entire infringement argument on the doctrine of equivalents. Trex sought summary judgment on the basis of res judicata because the boards at issue in this second suit were "essentially the same" as in the first.
“In its simplest construct, res judicata precludes the relitigation of a claim, or cause of action, or any possible defense to the cause of action which is ended by a judgment of the court. This aspect of res judicata, known in modern parlance as ‘claim preclusion’, applies whether the judgment of the court is rendered after trial and imposed by the court or the judgment is entered upon the consent of the parties.” Foster v. Hallco Mfg. Co., 947 F.2d 469, 476 (Fed. Cir. 1991) (citations omitted). ...

For claim preclusion in a patent case, an accused infringer must show that the accused product or process in the second suit is “essentially the same” as the accused product or process in the first suit. Foster, 947 F.2d at 480. “Colorable changes in an infringing device or changes unrelated to the limitations in the claim of the patent would not present a new cause of action.” Id. Where an accused infringer has prevailed in an infringement suit, “the accused devices have the status of noninfringements, and the defendant acquires the status of a noninfringer to that extent.” Young Eng’rs, Inc. v. U.S. Int’l. Trade Comm’n, 721 F.2d 1305, 1316 (Fed. Cir. 1983).
Defendants conceded material differences in the boards at issue in the first suit and those at issue in the second, but argued that the 2 claim limitations at issue in the first suit were in all material respects the same as those at issue in this later suit. The Court presented the issue as follows:

This case thus presents a slightly new angle on claim preclusion. It asks whether the accused infringer may assert claim preclusion when the sole claim limitations at issue in the first suit remain unchanged in the second suit. This court has previously emphasized that the focus for claim preclusion should be on “material differences” between the two accused devices, see Foster, 947 F.2d at 480, but has not addressed directly whether the focus of the “material differences” test is on the claim limitations at issue in each particular case.

Turning to that question, this court has already determined in the earlier case that Trex I boards do not infringe the ’831 patent. That judgment applies to both literal infringement and, as a result of Nystrom’s waiver, infringement by equivalents. For Nystrom to succeed on his infringement claim against the Trex II boards, he will have to prove infringement of each claim limitation. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 812 (Fed. Cir. 2002) (“To prove infringement, the patentee must show that the accused device meets each claim limitation either literally or under the doctrine of equivalents.”). The only claim limitations at issue in the first suit were “board” and “manufactured to have.” The constructions for these terms in this suit are the same as the constructions in the first suit. The bases of noninfringement in the first suit were these constructions. If, therefore, the accused device of the second suit remains unchanged with respect to the corresponding claim limitations at issue in the first suit, then Nystrom has no remaining avenue to pursue his claims now. In essence, Nystrom would be attempting to prove infringement of the same claim limitations as to the same features of the accused devices. As such, this case presents the exact situation that res judicata seeks to prevent. Res judicata thus bars this second attempt to adjudicate the same issues.

* * *
In sum, Nystrom made a tactical decision in his initial suit to forego any infringement theory based on the doctrine of equivalents. That choice did not pay off. Given that the Trex II boards remain materially identical to the Trex I boards with respect to the pertinent claim limitations at issue, this court cannot under res judicata permit Nystom to have a second bite at the apple.

Judge Rader's Additional Views -- Claim Vitiation

Judge Rader endorsed the panel's opinion, but wrote separately to address claim vitiation:
In Warner-Jenkinson, the Supreme Court adopted this court’s established “all-elements” rule. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 39 n.8 (1997) (“[U]nder the particular facts of a case, . . . if a theory of equivalence would entirely vitiate a particular claim element, partial or complete judgment should be rendered by the court . . . .”). “Informed by this guidance, we have held that in certain instances, the ‘all elements’ rule forecloses resort to the doctrine of equivalents because, on the facts or theories presented in a case, a limitation would be read completely out of the claim — i.e., the limitation would be effectively removed or ‘vitiated.’” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc., 469 F.3d 1005, 1017 (Fed. Cir. 2006). Nonetheless, this court has also warned that an overly broad application of the all elements rule may improperly “swallow the doctrine of equivalents entirely” and limit infringement to “a repeated analysis of literal infringement.” Ethicon Endo-Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1317 (Fed. Cir. 1998).
Ironically, the Supreme Court adopted this vitiation limitation on the doctrine of equivalents at a point near the time that this court had learned of its internal inconsistency. Claim vitiation limits the doctrine of equivalents. The doctrine of equivalents, by definition, acknowledges that a specific claim limitation is not expressly found in the accused product or process. Claim vitiation proceeds from the same acknowledgment that a specific claim limitation is missing from the accused product or process. The doctrine of equivalents permits a finding of infringement, despite the missing limitation, because the deficit is not substantial. Claim vitiation bars infringement because the same deficit is substantial. In other words, claim vitiation, by definition, simply rewinds and replays the doctrine of equivalents test for substantiality of a missing claim limitation. Thus, a finding of insubstantial difference to show equivalency obviates any further vitiation analysis—the wholly insignificant equivalent, by definition, would not vitiate the claim. On the other hand, a finding of substantial difference renders vitiation unnecessary. Thus, the vitiation doctrine is really subsumed within the test for equivalents itself. In other words, the all elements rule is simply a circular application of the doctrine of equivalents.
While the tests for equivalents and vitiation are coterminous, the Supreme Court’s Warner-Jenkinson decision did create one difference: the identical equivalents and vitiation tests are made by different decision makers. “The determination of equivalency is a question of fact . . . .” Upjohn Co. v. Mova Pharm. Corp., 225 F.3d 1306, 1309 (Fed. Cir. 2000). Conversely, this court has instructed—as required by Warner-Jenkinson—that application of the all elements rule is a question of law. See Panduit Corp. v. HellermannTyton Corp., 451 F.3d 819, 826 (Fed. Cir. 2006) (“The determination of infringement under the doctrine of equivalents is limited by two primary legal doctrines, prosecution history estoppel and the ‘all elements’ rule, the applications of which are questions of law.”). The problem with this conflict is apparent. Judges decide vitiation; juries decide equivalents. Although the tests are the same, the testers are different, which could produce different results in application of the same rules.
This case can serve to illustrate this situation. Trex argued to the district court that a finding of equivalents on a product comprised of forty to fifty percent wood would necessarily vitiate the claim language requiring the board to be “made [entirely] from wood.” The district court agreed and barred Nystrom from pursuing an infringement theory based on equivalents. Would the result be different, however, if the accused device was comprised of fifty-five or sixty percent wood? Seventy percent? Should this question be resolved by a jury, by a judge, or by both?

Friday, September 4, 2009

Microsoft can continue to sell Word (including Custom XML) during appeal

As reported previously (and extensively), Microsoft lost a patent infringement case brought by i4i in Texas regarding Microsoft Word's use of custom XML. The Court ordered Microsoft to stop selling infringing copies within a certain time frame. Microsoft appealed, and has asked the Federal Circuit to stay the injunction.

Yesterday, the Federal Circuit granted Microsoft's Emergency Motion to Stay Permanent Injunction Pending Appeal. I do not yet have a copy of this Order, but Patently-O quotes from it:
Without prejudicing the ultimate determination of this case by the merits panel, the court determines based upon the motion papers submitted that Microsoft has met its burden to obtain a stay of the injunction.
Looking at the Court's docket, the following schedule has been set:
8/25/2009 Appellant Principal Brief Filing Date
9/8/2009 RED BRIEF
9/23/2009 Oral Argument Date / Calendared

Stay tuned...

  • Patently-O's coverage (link)
  • CNET story (link)
  • My prior coverage
  • Microsoft files appeal brief (link)
  • Parties agree no bond is needed (link)
  • Microsoft files emergency motion to stay (link)
  • Microsoft Word + Custom XML = no more? (link)

Wednesday, September 2, 2009


Inca Textiles sought a federal trademark registration for "INCA MAMA" for use with maternity apparel. Problem is, INCA GIRL (below) was already registered as a mark for use with clothing.

The Examining Attorney refused registration arguing that INCA MAMA was likely to be confused with INCA GIRL. The TTAB affirmed, and Inca Textiles appealed to the Federal Circuit.

First, the Court explained the well-settled law:
In determining whether there is a likelihood of confusion between two marks, the marks are analyzed with the guidance of the factors identified in In re E. I. DuPont de Nemours & Co., 476 F.2d 1357, 1361 (CCPA 1973). Not all of the DuPont factors may be relevant to any given case, and only those factors implicated by the evidence and the particular mark need be considered. In re Dixie Restaurants, Inc., 105 F.3d 1405, 1406 (Fed. Cir. 1997). Doubts as to the likelihood of confusion are resolved in favor of the prior user of a mark. See Hewlett-Packard Co. v. Packard Press, Inc., 281 F.3d 1261, 1265 (Fed. Cir. 2002) (resolving doubts about likelihood of confusion against the newcomer).
The Court then discussed some DuPont factors:
  • Similarity in sight, sound, connotation, and commercial impression
    • even though INCA GIRL was a composite mark, the INCA GIRL words were still dominant portion, and in some instances the only part of the mark shown

  • similarity/dissimilarity and nature of the goods/services
    • INCA MAMA = maternity clothes; INCA GIRL = women's clothing; thus, it's close enough

  • similarity/dissimilarity of respective trade channels
    • INCA MAMA's focus on brick & mortar sales, as opposed to INCA GIRL's web sales, was not persuasive

Decision affirmed.

Tuesday, September 1, 2009

Intellectual Property law -- "That's Hot!" -- Paris Hilton case against Hallmark can proceed

What better way to attract more attention to one's blog than to include the words "Paris Hilton." She's no stranger to our civil legal system -- read about her bff, Judge Moreno, down in the Southern District at the Southern District of Florida Blog.

Yesterday, the Ninth Circuit permitted Paris Hilton's dispute against Hallmark to go forward and decided that "California law allows a celebrity to sue a greeting card company for using her image and catch-phrase in a birthday card without her permission." Judge O'Scannlain, writing for the panel, begins as follows:
Paris Hilton is a controversial celebrity known for her lifestyle as a flamboyant heiress. As the saying goes, she is "famous for being famous."
Hallmark created a birthday card, whose front cover read: "Paris's First Day as a Waitress." Inside, an oversized photo of Hilton's head is saying "Don't touch that, it's hot." Hilton sued for misappropriation of publicity under California law, false designation under the Lanham Act, and federal trademark infringement.

Trademark Infringement

Hilton has a federal trademark registration No. 3,209,488 for the mark "THAT'S HOT" for use with apparel. Hallmark sought to dismiss the trademark infringement count because greeting cards are not apparel (and it argued its use was fair use). Hilton did not address these arguments at the trial level, and therefore abandoned her infringement claim.

False Endorsement

Hallmark also sought dismissal of this count, but was not successful. Facts would determine whether the work was a parody and whether it was a fair use. As such, dismissal would not be appropriate. The Ninth Circuit dismissed this portion of the appeal because it determined it did not have jurisdiction to hear it.

The Court rejected Hallmark's argument that the greeting card was, as a matter of law, protected free speech and sent the matter back to the trial court to proceed through litigation.

"interactive channels" is patent eligible

David Schrader invented a method for getting advertising feedback on "interactive channels." He described interactive channels in the context of "...the Internet and World Wide Web, Interactive Television, and self service devices, such as Information Kiosks and Automated Teller Machines (ATMs)."

He claimed:

A method for obtaining feedback from consumers receiving an advertisement from an ad provided by an ad provider through an interactive channel, the method comprising the steps of:
creating a feedback panel including at least one feedback response concerning said advertisement; and
providing said feedback panel to said consumers, said feedback panel being activated by a consumer to provide said feedback response concerning said advertisement to said ad provider through said interactive channel.
The Examiner rejected the claims as failing to claim patent-eligible subject matter under 35 U.S.C. § 101. (The Examiner also rejected the claims for obviousness, but that analysis is not discussed in this post.) The applicant appealed these rejections to the Board of Patent Appeals and Interferences, which addressed the § 101 issue briefly.

After explaining that the test for determining patentable subject matter for a process is Bilski's machine or transformation test (i.e. whether the claimed process is (1) tied to a particular machine or apparatus; or (2) transforms a particular article into a different state or thing), the Board found:
We will not sustain the rejection of claims 1-12 under 35 U.S.C. § 1because one of ordinary skill in the art would understand that the claimed “interactive channels” constitutes patent eligible subject matter under § 101 because the Specification unequivocally describes interactive channels as part of an overall patent eligible system of apparatuses which include "...the Internet and World Wide Web, Interactive Television, and self service devices, such as Information Kiosks and Automated Teller Machines (ATMs)."
§ 101 rejection reversed (although obviousness rejections were sustained).