A LOOK BACK AT 2017 AND A LOOK FORWARD TO 2018 IN THE WORLD OF INTELLECTUAL PROPERTY

As we say goodbye to 2017 and ring in 2018, we thought it would be a good idea to take a look back on some of the biggest game-changing decisions from last year in intellectual property and look forward to how they might affect you and the world in 2018. While there were many to choose from, we selected three – a patent case, a trademark case, and a copyright case.

PATENTS

Since the passage of America Invents Act (AIA) in 2012, there has existed a faster and cheaper alternative to the federal court system for attacking the validity of an issued U.S. Patent. An inter partes review is a trial proceeding conducted at the USPTO’s Patent Trial and Appeal Board to review the patentability of one or more claims in an issued patent under certain limited circumstances. A third party instituting an inter partes review must show that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within one year (much faster than the typical case in federal court).

The constitutionality of the inter partes review is under attack in the Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, which was argued before the U.S. Supreme Court in November 2017. The sole issue now being considered by the Supreme Court is whether inter partes review violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. A few years back (120 to be exact), in McCormick Harvesting Machine v. Aultman, the U.S. Supreme Court addressed this issue under similar circumstances, holding that “[t]he only authority competent to set a patent aside, or to annul it, or to correct it for any reason whatever, is vested in the courts of the United States, and not in the department which issued the patent.” Stay tuned to see if this “ancient” interpretation of the Constitution holds up in 2018.

TRADEMARKS

In Our September 2017 Blog and Newsletter, we reported to you on the death of disparagement in the world of trademarks. In Matal v. Tam, Supreme Court ruled that the United States Patent & Trademark Office (PTO) could not refuse registration of the name “The Slants” to an Asian-American dance rock band from Portland, Oregon on the grounds that the phrase constitutes a slur and is offensive to Asian-Americans. In doing so, the Supreme Court ruled that the trademark law barring disparaging terms infringes on free speech rights, and, as such is unconstitutional.

The issue was raised again last month in In re Brunetti, a decision by the U.S. Court of Appeals for the Federal Circuit. The Federal Circuit held that the “immoral” or “scandalous” marks provision of the Lanham Act is also facially invalid under the First Amendment. Brunetti
is the owner and founder of FUCT – a clothing brand that has been referred to as one of the pioneering brands of modern streetwear, often incorporating various elements and icons of pop culture alongside anti-government and anti-religious campaigns into their designs. It is worth noting that, in its opinion, the Federal Circuit concluded that strict scrutiny (high burden of proof), rather than intermediate scrutiny (intermediate burden of scrutiny as the name implies) is the applicable standard in assessing the issue because the law “regulates the expressive components of speech, not the commercial components of speech”. Even if the government concludes that the “immoral” or “scandalous” provision cannot be saved in light of Tam, there may be good reason to request review by the entire panel of the Federal Circuit or the U.S. Supreme Court on the proper level of scrutiny to be applied, particularly since federal trademarks are. by there very nature, “commercial”. Stay tuned!

COPYRIGHTS
Section 411 of the Copyright Act has long provided that “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made”. At present, there exists a split between the various Circuit Courts of the United States as to just exactly when such a registration or preregistration “has been made”. In the Fifth Circuit (Texas, Louisiana, Mississippi) and Ninth Circuit (California, Arizona, Nevada, Oregon, Washington, Idaho, Montana) this is considered to have occurred when the copyright holder delivers the required application, deposit, and fee to the Copyright Office. In contrast, the Tenth Circuit (Colorado, Utah, Wyoming, Kansas, Oklahoma, New Mexico) and Eleventh Circuit (Alabama, Georgia, Florida) require that the Copyright Office “act” on the application before registration or preregistration is considered to have been made. To complicate things further, our own Seventh Circuit (Indiana, Illinois, Wisconsin) has issued conflicting opinions on the issue.

With any luck, the U.S. Supreme Court will resolve this difference sometime in 2018. The loser of the 2017 decision of the Eleventh Circuit Court of Appeal in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC is requesting the U.S. Supreme Court review the case and resolve the split between the circuits once and for all. At the present time, the U.S. Supreme Court has not yet determined whether it will hear the case and has asked the U.S. Solicitor General to weigh in with his views on the issue. Hopefully, this is a sign that the Supreme Court is considering hearing the case, particularly for those of us situated in the Seventh Circuit where there is no clear answer to this question.

Do you have issues involving patents, trademarks, copyrights, or trade secrets, or want to know more about protecting your valuable intellectual property? If so, contact us to discuss how we can help you protect these valuable assets and make 2018 your most successful and profitable year ever. Happy New Year!

FOOTNOTE: Rick Martin holds a bachelor’s degree in Industrial Engineering from Purdue University – Boiler Up!, and a J.D. from Catholic University Columbus School of Law School in Washington, D.C. After working for large law firms in Texas, his fierce independence got the best of him and he decided to return to his Midwestern roots where he founded Martin IP Law Group.