One of the important benefits of United States trademark and copyright registration is the ability to seek the assistance of Customs and Border Protection (“CBP”) to prevent counterfeits from coming into the U.S. However, these protections are not automatic. This article discusses how intellectual property owners can take advantage of these protections.

Recording a copyright or trademark registration with CBP

Once a trademark or copyright registration certificate is issued by the U.S. Patent and Trademark Office or Copyright Office, the owner may record the registrations with CBP for monitoring and seizure of potentially counterfeit products. At the time of this article, the CBP filing fee is $190 for each class of goods covered by a trademark registration and $190 for each copyright registration. Once the registration is recorded, CBP contacts intellectual property owners or their designated representative for assistance when differentiating between counterfeits and genuine goods.

Recordation of a trademark registration lasts ten years. In contrast, recordation of a copyright registration lasts twenty years, unless the underlying copyright registration expires during that time. Recordation renewal for an unexpired recordation costs $80 for each class of goods covered by a trademark, and $80 for a copyright registration.

Other ways to work with the CBP

Along with recording its registrations, an intellectual property owner can improve the effectiveness of enforcement efforts by educating the CBP on genuine goods. For example, information about where genuine goods are manufactured, the location and identity of any authorized manufacturers/distributors/users of the mark, and the country of manufacture of suspected counterfeits, if known, should be provided to CBP.

1. Product Guide and Presentation to CBP

In addition to recording its registrations, an intellectual property owner can further educate CBP by submitting a product guide and providing information, sometimes in the form of a presentation to CBP on the owner’s goods. A product guide provides an overview of the company’s products and intellectual property, and is helpful in alerting CBP to the ways in which counterfeit products may be identified. The product guide is entered into CBP’s database and is available at all U.S. ports. An in-person presentation allows a company a further, fuller opportunity to interact with CBP.

1. e-allegations

Finally, CBP also has an online “e-allegations” form that anyone, including the public and rights holders, can use to submit specific allegations of infringing shipments and other trade violations. This information is provided to the appropriate office of CBP for investigation. Although the e-allegations system may be a convenient channel to address specific infringement, please note that CBP does not communicate with the initiator of an e-allegation in most cases about the status of the matter due to privacy and trade secret laws. This enforcement tactic should be combined with building relationships with appropriate agencies and as an adjunct to the right holder’s own ability to help itself by seeking judicial intervention including injunctive relief.

Please let us know if you would like to discuss these measures to protect your company’s brand.

By Suzanna M. M. Morales

In order to successfully challenge a trademark registration before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board, a party must first meet a threshold requirement that it has standing to oppose or petition to cancel the registration. Although the standing requirement is a relatively low hurdle, a recent decision shows that the requirement does have limits.

What is standing?

The Trademark Trial and Appeal Board (TTAB) decides oppositions to pending applications as well as petitions to cancel existing registrations. Before the TTAB reaches the substantive merits of the matter, an opposer or petitioner to cancel must demonstrate standing, which is defined as a “real interest” in the proceeding and a “reasonable basis for its belief of damage.” The “real interest” requires a “direct and personal stake” in the outcome of the proceeding. The plaintiff must have a “legitimate personal interest in the opposition,” though, importantly, the interest does not need to be greater than the interest of the general public.

Which brings us to goats…

Standing is generally not a difficult requirement to meet. But the U.S. Court of Appeals for the Federal Circuit denied standing to a would-be petitioner to cancel in Bank v. Al Johnson’s Swedish Restaurant & Butik, Inc., Case No. 2019-1880 (Fed. Cir. Dec. 9, 2019).

The registration at issue covered trade dress that the owner described in the records of the USPTO as “goats on a roof of grass” used in connection with restaurant services:

On October 12, 2018, Todd C. Bank, an individual, filed a petition to cancel the registration on the basis that the mark did not function as a trademark. In support, Bank claimed that the goat roof trade dress served the useful purpose of removing or reducing the restaurant owner’s need to mow the grass roof. Bank’s petition to cancel further claimed that the mark “is demeaning to” goats, which in turn was “offensive” to him and “denigrates” the value he places “on the respect, dignity, and worth of animals.”

However, a 2017 Supreme Court decision found unconstitutional the clause of the U.S. trademark law barring the registration of marks on the basis that they are disparaging to any person. Matal v. Tam, 137 S.Ct. 1744 (2017). The Federal Circuit in the Bank matter held that the disparagement clause was the only basis for Bank’s standing, and was no longer valid following the Tam decision. (Presumably, the disparagement clause as applied to goats was a novel issue, but the Federal Circuit did not address this question.)

Moreover, the Trademark Trial and Appeal Board held that the only viable claim in Bank’s opposition was that the goat roof trade dress was functional and the claim of standing based upon the disparaging nature of the goat roof trade dress did not apply to the functionality claim.

Finally, it should also be noted that Bank appeared as an attorney on behalf of another individual who challenged the same registration in 2011. Standing in that case was based upon the petitioner’s desire to take photographs of goats upon roofs, and the petition was later amended to allege, among other claims, that the petitioner “enjoys the look and smell of grass roofs.” The TTAB found that the petitioner did not have standing for either the original petition or the amended petition.

…and fairy tales

In contrast, a 2018 TTAB decision held that standing did exist for an opposer whose basis for standing was merely as a consumer. Curtin v. United Trademark Holdings, Inc., Opposition No. 91241083 (TTAB Dec. 28, 2018). In the RAPUNZEL case, the opposer alleged that she was a consumer in the marketplace for dolls and toy figures of fairy tales, as well as the mother of a young girl who purchases dolls, including fairy tale dolls. She claimed that registration of the mark RAPUNZEL for dolls would decrease the competition and increase the cost of goods associated with the character Rapunzel. (The opposer also happened to be a professor of trademark law, and was represented by a student legal clinic.)

The Board and the Federal Circuit have found that even challengers who were merely consumers may have an interest in preventing the owner of a mark from inhibiting competition and “maintain[ing] freedom of the public to use the language involved.”

Conclusion

Most oppositions and petitions to cancel are filed by competitors in the marketplace, and allege that the marks at issue cause a likelihood of confusion with the opposer’s or petitioner’s trademarks. However, the aforementioned cases are a reminder that, under certain circumstances, others may have legitimate interests in challenging registrations.

Recently, bipartisan legislation has advanced through Congress that would create a tribunal within the Copyright Office to address copyright claims that do not exceed $30,000 in value. There is nearly universal agreement that a small claims adjudication process is needed to address the inequities in the enforcement of copyrights for independent creators for whom litigation is prohibitively expensive. However, the specifics put forth in the legislation have also raised concerns as to how effective and susceptible to abuse this process will be.

The Copyright Alternative in Small-Claims Enforcement (CASE) Act

The CASE Act calls for creation of a “Copyright Claims Board” (CCB) within the Copyright Office, which consists of three “Copyright Claims Officers” who are assisted by several “Copyright Claims Attorneys.” Copyright Claims Officers would serve for a term of six years and adjudicate copyright claims, counterclaims and defenses brought before the CCB. Proceedings are to be conducted at the CCB’s Washington, D.C. offices and take place through “written submissions, hearings and conferences carried out through internet-based applications and other telecommunications facilities.”

Some important features of the CCB process include:

Permissible Claims: The CCB may adjudicate infringement claims and counterclaims under 17 U.S.C. § 106, as well as claims under 17 U.S.C. § 512(f) for misrepresentation in connection with a DMCA notice. The CCB may also adjudicate any legal or equitable defense available at law. Parties to a proceeding may be, but are not required to be, represented by counsel. A party may not recover more than $30,000 in any one CCB proceeding, exclusive of attorney’s fees and costs. The Act provides that separate regulations may be established by the Register for claims in which damages do not exceed $5,000, and may be considered by a single Copyright Claims Officer.

Registration Requirement: A claim may not be asserted before the CCB unless an application for registration, deposit and filing fee have been submitted to the Copyright Office. However, the CCB may not render a determination in a proceeding until a registration certificate has been issued by the Copyright Office. If a registration is denied, the proceeding shall be dismissed without prejudice. The bill directs the Register to establish regulations allowing the Copyright Office to expedite the registration of an unregistered work that is before the CCB.

Voluntary Participation/Opt-Out: Following service of a Notice and Claim, a respondent can opt out of the proceeding within sixty days. If a respondent timely opts out, the proceeding is dismissed without prejudice and the claimant may choose to file the claim in a federal district court. If a respondent does not opt out within sixty days, the proceeding is deemed active and the respondent will be bound by a determination.

Permissible Remedies: The CCB may award actual damages and profits under 17 U.S.C. § 504(b). Additionally, the CCB may award statutory damages under § 504(c) as follows: (1) For works with an effective date of registration within three months of the date of publication under 17 U.S.C § 412, statutory damages may not exceed $15,000 per work; (2) for works not timely registered under § 412, statutory damages may not exceed $7,500 per work or a total of $15,000 in any one proceeding. The CCB may not consider an infringer’s willfulness in awarding statutory damages, but may consider whether the infringer has agreed to cease or mitigate the infringing activity. Additionally, the CCB may include a requirement to cease conduct if the infringing party agrees to stop infringing activity or cease sending misrepresentative DMCA notices or counter-notices.

Attorney’s fees: Attorney’s fees are only available upon a determination that a party pursued a claim or defense for harassing or other improper purpose or without reasonable basis in law or fact. An award of attorney’s fees and costs may not exceed $5,000 except in “extraordinary circumstances” showing a “pattern or practice of bad faith conduct.” Additionally, if a party is found to have pursued a claim or defense for harassing or other improper purpose or without reasonable basis in law or fact more than once in any twelve-month period, that party is barred from bringing a claim before the CCB for twelve months.

Reconsideration: A party may request that the CCB reconsider a determination based on clear error of law or material fact, or a technical mistake. If the CCB denies a request for reconsideration, a party may request review of the final determination by the Register of Copyrights. This review is limited to consideration of whether the CCB abused its discretion in denying reconsideration.

Enforcing A Determination: Where a party fails to pay damages or otherwise comply with relief, the claimant may, within one year of final disposition of the proceeding, apply to the U.S. District Court for the District of Columbia or “any other appropriate district court” for an order confirming the relief rewarded and reducing the relief to judgment. If the district court grants the order and enters judgment, the party who failed to pay damages must pay reasonable attorney’s fees and expenses incurred in obtaining the judgment.

Criticism of the CASE Act

Although the CASE Act is supported by a variety of sources, including industry associations, corporate copyright owners and artist advocacy organizations, it has also been criticized.

The legislation has been criticized on the basis that the opt-out procedure may result in respondents routinely opting out if they believe that a claimant can’t afford to litigate in federal court, thereby forcing the claimant to file in federal court or drop the claim. Reliance on the opt-out procedure may act as a deterrent to the filing of CCB claims by copyright owners with limited resources.

The CASE Act has also been criticized on the basis that it will empower “copyright trolls” seeking quick settlements based on the threat of statutory damages of up to $15,000 and emboldened by the fact that claims may be filed even without an issued copyright registration. Additionally, critics have charged that due process issues will arise where a respondent’s failure to opt out effectively waives his right to a jury trial and binds him to the determination of a Copyright Claims Officer, which is not appealable to any Article III court.

Currently the CASE Act has passed the House and awaits a full vote in the Senate. Given its bipartisan support, it seems likely that the CASE Act will eventually become law. Copyright owners whose claims fall within the jurisdiction of the CCB should consider it as a quicker and less expensive alternative to litigating in federal court. It remains to be seen whether the criticisms of the CCB will be borne out.

Introduction

In February of 2019, the U.S. Copyright Office introduced a new option for group registration of up to ten (10) unpublished works for a single application fee, which is currently $55.00. This is purely an administrative classification, and each work in a group registered using this option will be registered with the Copyright Office as though they were applied for individually. Photographers, please take note that this option does not replace the procedure currently in place for registering up to 750 unpublished photographs on the same application and for a single filing fee.

Are My Works Unpublished?

The Copyright Act, 17 U.S.C. § 101, defines “publication” as:

the distribution of copies or phonorecords of a work to the public by sale or other transfer of ownership, or by rental, lease, or lending. The offering to distribute copies or phonorecords to a group of persons for purposes of further distribution, public performance, or public display, constitutes publication. A public performance or display of a work does not of itself constitute publication.

Generally speaking, for copyright purposes, “publication” consists of offering a work for sale or widespread distribution. Examples of publication include, but are not limited to, selling prints of a painting or copies of a novel or musical recording. If you have questions about whether or not one of your works has been published, feel free to contact us.

Application Requirements

In order to take advantage of this group filing procedure, in addition to ensuring none of the works have been published, applicants must make sure that the following requirements are met:

• All works must be of the same type (Literary Work, Work of the Visual Arts, Sound Recording, Work of the Performing Arts, Motion Picture/AV Work)
• All works must have been completed in the same year;
• The author and claimant of each work must be the same;
• The applicant must provide a title for each work (though all works will be covered as if they had been registered on an individual basis, if there is a particular title you would prefer to have visible to the public, please note that in the Copyright Office’s public catalog, only the first title will be shown, (e.g., “Title 1 and 9 other unpublished works”)); and
• Applicants must submit deposits, i.e., copies of the works, in a format specified by the Copyright Office depending upon the type and nature of works.

If you have any questions about this filing procedure, or any other questions about protecting your copyrights, please do not hesitate to contact us.

The TTAB recently issued a decision in a joint cancellation and opposition proceeding finding that the mark HAMPTONS GLOW and Design was likely to cause confusion with S&G Hampton Sun, LLC’s registered HAMPTON SUN trademarks.  As a result, S&G Hampton Sun’s request to cancel the HAMPTONS GLOW and Design registration and to sustain S&G Hampton Sun’s opposition to an additional pending application for the HAMPTONS GLOW and Design mark was granted by the TTAB.  S&G Hampton Sun, LLC was represented in this matter by Robert L. Powley, Keith E. Sharkin and David A. Jones.

In another decision, the TTAB found in favor of Lupin Pharmaceuticals Inc., the owner of the registered trademark LUPIN. The TTAB held that the Applicant’s mark LUPPIN for education and support group services relating to the disease Lupus was likely to cause confusion with Lupin’s house mark LUPIN for pharmaceutical preparations. In view of the similarity of the parties’ respective marks and the close relatedness of the parties’ goods and services, the TTAB refused registration of the mark LUPPIN. Robert L. Powley, Thomas H. Curtin, and Suzanna M. M. Morales represented Lupin in this matter.

Our firm has extensive experience in litigating inter partes proceedings before the TTAB, including oppositions and cancellations. If you have any questions about TTAB matters, please contact our firm.

(Attorney advertising. Prior results do not guarantee a similar outcome.)

Notwithstanding the efforts of Congress, intellectual property owners have been left with little redress against infringement by state actors. In 1999, the Supreme Court struck down two statutes that eliminated the states’ sovereign immunity to patent infringement claims and false advertising claims under the Lanham Act.  Following these decisions, lower courts have consistently held the Copyright Remedy Clarification Act (CRCA) to be similarly unconstitutional, and the Department of Justice has declined to defend the law. On June 3, 2019 the Supreme Court granted certiorari in Allen v. Cooper, and will consider whether CRCA is a valid Congressional abrogation of the States’ sovereign immunity to copyright infringement liability.

The Copyright Remedy Clarification Act (CRCA)

In 1988, Congress designated the Register of Copyrights to assess the extent of the clash between the Eleventh Amendment and federal copyright law. Following receipt of the Register’s report, which warned of “dire financial and other repercussions” if states retained immunity to copyright lawsuits, Congress passed CRCA in 1990.  CRCA, set forth at 17 U.S.C. § 511, provides that the states are not immune to suits in federal court arising from violations of the Copyright Act.

Rejection of the Patent Act and Trademark Remedy Clarification Act by the Supreme Court

In 1992, Congress enacted both the Patent Remedy Act (PRA) and the Trademark Remedy Clarification Act (TRCA), which similarly nullified the sovereign immunity of states to patent and trademark infringement claims.  In 1999, the Supreme Court ruled that Congress was not empowered to abrogate the states’ immunity to claims filed under the Patent Act and Section 43(a) of the Lanham Act.  Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627 (1999) (Patent Act); Coll. Sav. Bank v. Fla. Prepaid Postsecondary Educ. Expense Bd., 527 U.S. 666 (1999) (Lanham Act).

In each case, the Supreme Court considered the Commerce and Patent Clauses of the Constitution, as well as the Fourteenth Amendment, which empowers Congress to enact legislation implementing the constitutional ban on state deprivation of “property” without due process of law. In both decisions, the Supreme Court held that, under Seminole Tribe of Fla. v. Florida, 517 U.S. 44, 55 (1996), Congress had no authority to abrogate state sovereign immunity under its Article I powers (i.e., the Commerce Clause and the Patent Clause).  In the patent case, the Supreme Court confirmed that patent rights are property for the purposes of the Due Process Clause.[1]  Citing City of Boerne v. Flores, the Supreme Court held that that for Congress to invoke § 5 of the Fourteenth Amendment, it must identify conduct that transgresses the Fourteenth Amendment’s substantive provisions, and must tailor its legislative scheme to remedying or preventing such conduct.  521 U.S. 507, 519-20 (1997).   Applying this test requires examination of (1) the nature of the injury to be remedied; (2) Congress’s consideration of the adequacy of state remedies to redress the injury; and (3) the scope of the legislation.  The Supreme Court found that Congress had identified no pattern of infringement by states, had barely considered the availability of state remedies and had drafted the legislation with the broadest scope possible (i.e., all states amenable to suit in federal court for every kind of patent infringement for an indefinite duration) without support in the record.

Rejection of CRCA In The Lower Courts

Following Seminole Tribe and the Fla. Prepaid decisions, the Fifth Circuit held that the CRCA was an improper abrogation of states’ sovereign immunity against copyright infringement claims. Chavez v. Arte Publico Press, 204 F.3d 601, 608 (5th Cir. 2000). The Court found that when enacting the CRCA, Congress had failed to identify any significant pattern of state copyright infringement, had barely considered the existence and adequacy of state remedies, and had made no attempt to confine the reach of the Act to limit to certain types of infringement, or limit to states with questionable remedies or high incidences of infringement.  Since 2000, a number of federal courts have followed Chavez, but no court has upheld the CRCA against a constitutional challenge without reversal on appeal.

In 1999, Attorney General Janet Reno wrote to Congress that, in light of the Florida Prepaid decisions, the “current legislative record will no longer support the constitutionality” of CRCA  – a position also adopted by later administrations. Accordingly, CRCA has not been defended by the Department of Justice since 1999.

Allen v. Cooper: Factual and Procedural Background

In 1996, the wreck of the “Queen Anne’s Revenge” – the flagship of the pirate known as Blackbeard – was found off the coast of North Carolina. The North Carolina Department of Natural and Cultural Resources undertook a process to recover, preserve and archive the wreckage based on its historical and archeological interest.  Frederick Allen is a documentary filmmaker who was hired to document the Department’s recovery process with the understanding that he would maintain the rights to his footage.   After the Department posted several of Allen’s copyrighted videos on its website, Allen brought a copyright infringement suit against the Department and several state officials, including Governor Roy A. Cooper, in the U.S. District Court for the Eastern District of North Carolina.  The Department moved to dismiss on the basis that North Carolina has sovereign immunity from copyright claims.  On March 23, 2017, the District Court granted the motion in part, holding that although Congress could not abrogate state sovereign immunity using its Article I powers, it could so under Section 5 of the Fourteenth Amendment, and that the legislative record contains ‘sufficient evidence of infringement of copyrights by states” to justify this result.

The Fourth Circuit reversed on July 10, 2018, holding that under Seminole Tribe, Congress could not abrogate state sovereign immunity using its Article I powers, nor was CRCA valid under Section 5 of the Fourteenth Amendment.  The Court held that Congress had relied only on its Article I powers in enacting CRCA, not Section 5, and thus CRCA could not be justified based on Section 5.  The Court further held that, regardless, CRCA was not valid legislation under Section 5 because the legislative record failed to show “widespread and persistent deprivation of constitutional rights.”  Instead, the Court observed that the record showed “at most a dozen incidents of copyright infringement by the states” and was therefore “analogous” to the legislative record in Florida Prepaid that was held to be inadequate (showing ten patent infringement suits against the states). Finally, the Court held that Congress’s imposition of “sweeping liability for all [copyright infringement]” was “wholly incongruous” with the “sparse” record of infringement by the states, and had similarly been found overbroad in Florida Prepaid.  North Carolina thereafter filed its Petition for Certiorari on January 4, 2019, which was granted on June 3, 2019.

The Parties’ Arguments Regarding Congress’s Article I Power

Allen relies on Central Virginia Community College v. Katz, 546 U.S. 356 (2006), in which the Supreme Court ruled that state sovereign immunity for adversary proceedings in bankruptcy should be abrogated based in part on its finding that “States had agreed in the plan of the Convention not to assert any sovereign immunity defense they might have” in proceedings brought pursuant to bankruptcy law. Id. at 377.  Allen argues that the Supreme Court should, following Katz, disregard the Florida Prepaid cases and look to whether the states surrendered sovereign immunity in the plan of the Convention.  Allen argues that sovereign immunity was not surrendered because the Intellectual Property Clause was inserted into Article I without significant debate or opposition, and that it was “indispensable to this Plan that the States surrender their sovereign immunity” in order to secure “uniform protection for [patents and copyrights] throughout the United States.”

In response, Cooper argues that Florida Prepaid cases control and Allen has not given any reason why Congress’s abrogation powers should be greater for copyrights than for patents. Cooper distinguishes Katz as having relied on two considerations unique to bankruptcy law: first, while bankruptcy jurisdiction is in rem, jurisdiction over copyright claims is in personam, which “does not implicate States’ sovereignty to nearly the same degree as other kinds of jurisdiction,” Katz, 546 U.S. at 362, and second, that unlike the Copyright Clause, the Bankruptcy Clause has a unique Constitutional history that showed that the states had agreed in the plan of the Convention to relinquish their sovereign immunity (namely, to address the “rampant injustice” resulting from States’ refusal to respect each other’s bankruptcy discharge orders, id. at 377).

The Parties’ Arguments Regarding Section 5 of the Fourteenth Amendment

Allen argues that the Fourth Circuit erred by disregarding evidence of state copyright infringement in the legislative record. Allen claims that the CRCA legislative record was “substantially more expansive” that the record examined in connection with the Patent Remedy Act, because the Patent Remedy Act found ten examples of patent infringement cases against states in the last 110 years, while the CRCA found twelve examples of copyright infringement actions against states in the past ten years, and because the Fourth Circuit ignored “extensive testimony and evidence Congress received on the inadequacy of states’ remedies for copyright infringement.”  Allen further argues that CRCA should be distinguished from the Patent Remedy Act because copyright infringement involves “intentionality” not present in patent infringement – namely, to infringe, a defendant must copy the plaintiff’s work, and the act of independent creation, unlike with a patented work, does not infringe. Thus, Allen argues, it is less likely a state would infringe a copyright inadvertently.

Cooper argues that because Congress relied solely on its Article I power in enacting CRCA, consideration of Congress’s power to enforce due process under the Fourteenth Amendment is irrelevant. Cooper further argues that the Fourth Circuit was correct in its finding that the CRCA legislative record did not show a “widespread pattern” of constitutional violations and that Congress failed to tailor the scope of abrogation to reflect its record.  Cooper argues that the legislative record did not identify any constitutional violations at all, because copyright infringement only constitutes a constitutional violation when it violates due process, and to commit a due process violation a defendant must infringe a copyright intentionally (citing Florida Prepaid, 527 U.S. at 645).  The legislative record did not identify any copyright infringement cases involving willful infringement of state actors.

Possible Outcomes and Alternative Remedies

The Florida Prepaid cases were decided along conventional political lines, with the “conservative” justices in the majority.  In Katz the results were similar, although Justice O’Connor crossed over to create the majority that upheld Congress’s abrogation of state sovereign immunity to the bankruptcy laws.  Both Justice Thomas and Chief Justice Roberts dissented in Katz and have likely not changed their views.  Both Justice Ginsburg and Justice Breyer joined the majority in Katz and dissented in Florida Prepaid, and have likely not changed their views either. If this case is similarly decided along political lines, it will most likely result in a 5-4 decision upholding the Fourth Circuit’s decision that the CRCA was not a valid waiver of sovereign immunity.  However, it would only take one “conservative” justice to switch sides in order to distinguish or overrule Florida Prepaid.

If the Supreme Court rules that the CRCA is unconstitutional and upholds state sovereign immunity against copyright claims, what redress do copyright owners have when a state entity is infringing? One possible option is for the copyright owner to file an inverse condemnation claim in state court, seeking just compensation for an unconstitutional “taking” of his property under the Fourteenth Amendment.  However, it is unsettled as to whether a copyright can be protected from government takings.  In a recent decision, the Court of Appeals for the First District of Texas held that a copyright cannot give rise to a viable constitutional takings claim, but acknowledged that there was scarce authority and legal scholars are split on the issue. University of Houston System v. Jim Olive Photography, No. 01-18-00534-cv (Tex. Ct. App. 1^st Dist. 2019).  Following this decision, it remains highly uncertain whether an inverse condemnation claim is an effective means for copyright owners to enforce their copyrights against state actors.

Copyright owners may also seek relief pursuant to Ex Parte Young, 209 U.S. 123 (1908), under which private citizens may sue state officials in their official capacities in federal court for prospective relief from ongoing violations of federal law.  However, a plaintiff is limited to injunctive relief and an action may only be maintained for continuing violations – once a violation has ceased, the claim is moot. Ex Parte Young has not been extended to allow claims for retrospective relief. Green v. Mansour, 474 U.S. 64, 68 (1985).

Conclusion

A decision upholding CRCA will subject the states and state-run institutions to copyright infringement liability, and will likely force the states to implement more stringent policies and procedures concerning the use of copyrighted materials. Additionally, states may quickly find themselves named as defendants in copyright litigation where copyright owners have been aware of their ongoing infringing conduct but did not file suit earlier based on the apparent unenforceability of CRCA.  Conversely, a decision striking down CRCA will likely do little to change the status quo, under which CRCA has been effectively unenforceable for decades.

[1] In the Lanham Act case, the Court found that the right to be free from a competitor’s false advertising claims regarding its own products was not a property right protected by the Due Process Clause. College Savings Bank, 527 U.S. at 672-73

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The Trademark Act, 15 U.S.C. § 1502, sets forth several categories of marks that will be refused registration by the U.S. Patent & Trademark Office (“PTO”). In particular, § 1502(a) prohibits registration of marks consisting of “matter which may disparage . . . a person,” as well as marks “consist[ing] of or compris[ing] immoral, deceptive, or scandalous behavior.”  In 2017, the Supreme Court ruled that the statute’s prohibition of “disparaging trademarks” violated the First Amendment because it discriminated on the basis of viewpoint. Matal v. Tam, 582 U.S. __ (2017).  On June 24, 2019, in Iancu & Brunetti, 588 U.S. ___ (2019), the Supreme Court ruled on the portion of § 1502(a) that prohibits “immoral” or “scandalous” marks, holding that this provision also violates the First Amendment because it disfavors certain ideas.

Mr. Brunetti’s Proposed Trademark

Erik Brunetti founded a clothing line that uses the trademark “FUCT.”   When Mr. Brunetti applied for a federal trademark registration for his mark, both the PTO Examining Attorney and the Trademark Trial and Appeal Board (“Board”) rejected it as unregistrable under § 1502(a).   The standard applied by the PTO in evaluating potentially “immoral” or “scandalous” marks is whether “a substantial composite of the general public would find the mark “shocking to the sense of truth, decency or propriety”; “giving offense to the conscience or moral feelings”; “calling out for condemnation”; “disgraceful”; “offensive”; “disreputable”; or “vulgar.” In re Brunetti, 877 F.3d 1330, 1446 (Fed. Cir. 2017).   The PTO Examiner found the mark was “totally vulgar” and therefore unregistrable, and the Board found it additionally to be “highly offensive” and having “decidedly negative sexual connotations.”  The Board found further that Brunetti’s website and products contained “extreme nihilism” and “anti-social behavior” and that in this context, the mark communicated “misogyny, depravity and violence” and was “extremely offensive.”  Following rejection by the Board, Brunetti then challenged the “immoral and scandalous” bar in the U.S. Court of Appeals for the Federal Circuit, which found it violated the First Amendment.  The Supreme Court thereafter granted certiorari.

BONG HITS 4 JESUS: the PTO’s Viewpoint-Based Treatment of Immoral or Scandalous Marks

Writing for the majority, Justice Kagan identified the key inquiry as whether the “immoral or scandalous” criterion was viewpoint neutral or viewpoint-based. She had little trouble in concluding that the criterion was impermissibly viewpoint-based.  In particular, she pointed to a number of examples where the PTO has refused to register marks espousing “immoral” or “scandalous” views of certain subjects while allowing marks that express more accepted view of the same subjects.  For example, in regard to the subject of recreational drug use, the PTO refused registration of YOU CAN’T SPELL HEALTHCARE WITHOUT THC (for pain relief medication), MARIJUANA COLA and KO KANE (for beverages), while allowing D.A.R.E. TO RESIST DRUGS AND VIOLENCE and SAY NO TO DRUGS – REALITY IS THE BEST TRIP IN LIFE.  In regard to trademarks associating religious references, the PTO refused AGNUS DEI (for safes) and MADONNA (for wine) while allowing PRAISE THE LORD (for a game) and JESUS DIED FOR YOU (on clothing).  The PTO similarly refused the mark BONG HITS 4 JESUS on the basis that Christians would be morally outraged by a statement that connects Jesus Christ with illegal drug use.

Rejection of the Government’s Statutory Limitation Argument

Justice Kagan rejected the government’s argument that the statute could be subject to a limiting exception that would limit the prohibition to “marks that are offensive [or] shocking to a substantial segment of the public because of their mode of expression independent of any views they may express,” which would effectively limit the refusals to marks that are “vulgar” (i.e., “sexually explicit or profane”).  Justice Kagan held that the statute “covers the universe of immoral and scandalous” – not merely the “mode” of expression, and that limiting the statute in the proposed manner would not be interpreting it but rather creating a new statute.  Consequently, she held that both the “immoral” criterion and the “scandalous” criterion violated the First Amendment.  Her majority opinion was joined by Justices Thomas, Ginsburg, Alito, Gorsuch and Kavanaugh.

Concurring in part and dissenting in part, Justice Sotomayor agreed that the term “immoral” could not be saved, but argued that the term “scandalous” could be limited in the manner proposed by the government. Her opinion was joined by Justice Breyer, and Chief Justice Roberts wrote a separate opinion concurring in part and dissenting in part in which he expressed the same view.  Justice Alito wrote a concurring opinion in which he invited Congress to enact a more precise statute that singles out “vulgar terms that play no real part in the expression of ideas.”

Justice Sotomayor speculated that the floodgates were now open and the PTO will be besieged with applications for highly offensive trademarks. Whether this happens remains to be seen, but in the event that this becomes a significant problem in the eyes of the public or the government, then Congress may see fit to take Justice Alito up on his invitation and take a second try at legislating against “vulgar” marks.

By Fritz Klantschi
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On June 10, 2019 the United States Supreme Court in Return Mail, Inc. v. United States Postal Service, 868 F.3d 1350 (“Return Mail v. USPS”) held that the federal government is not a “person” able of instituting AIA review proceedings.

Background

The decision centered around Section 18(a)(1)(B) of the America Invents Act (“AIA”), concerning Covered Business Method (CBM) patents, and reads “[a] person may not file a petition for a transitional proceeding with respect to a covered business method patent unless the person or the person’s real party in interest or privy has been sued for infringement of the patent or has been charged with infringement under that patent” (emphasis added). Return Mail, Inc. had sued the U.S. Postal Service in the U.S. Court of Federal Claims (“USCFC”) alleging infringement of its patent, and, in turn, the USPS challenged Return Mail’s patent under the AIA. A prior blog post on this site discussed the background of the case in further detail.

Supreme Court Decision

Justice Sotomayor delivered the opinion of the Court in a 6-3 decision. The Court held that, unless there is an express definition of the term “person” in the patent statutes, the courts must proceed with the presumption that the government is not a person, absent an affirmative showing to the contrary.

The USPS made three arguments that the Court addressed.

1. 1. The USPS argued that AIA post-issuance review proceedings must include the government because other references in the patent statutes appear to do so. The Court however found that at least 18 references to “persons” in the Patent Act and the AIA showed no clear trend that the term “person” included the government.

1. 2. Next, the USPS argued that, because the government has a longstanding history with the patent system, Congress must have intended to allow the government access to the AIA post-issuance reviews. The USPS and the dissent by Justice Breyer both noted that since 1981 the Patent Office treated federal agencies as “persons” who may request an ex parte reexamination. The majority however countered that they might take account of this “executive interpretation” if they were determining whether Congress meant to include the government as a “person” for purposes of the ex parte reexamination procedures. The Court also noted, even assuming the government may petition for ex parte reexamination, there are differences between an ex parte reexamination and an AIA proceeding such that there are good reasons why Congress might have authorized the government to request a “hands-off” ex parte reexamination but not be a party to a full-blown adversarial proceeding of an AIA review proceeding. The Court found there to be no “settled” meaning of the term “person” with respect to the AIA review proceedings and the Manual of Patent Examining Procedures (“MPEP”) does not justify putting aside the presumptive meaning of “person.”

1. 3. Finally, the USPS argued that it must be a “person” because, like other infringers, it is subject to civil liability and can assert a defense of patent invalidity. The Court held however that, unlike a private party, the government faces lower risks in an USCFC trial because it cannot be subject to an injunction and there are legal limits on the damages that can be ordered. Since the USPS faces a lower risk, the Court found it is reasonable for Congress to treat federal agencies differently, even though the burden of proof for invalidity is greater at the USCFC (clear and convincing standard) than for an AIA proceeding (preponderance of the evidence). Also, excluding federal agencies from using the AIA review proceedings avoids the “awkward situation” of having a civilian patent owner defend its patent against one federal agency overseen by another government agency, the PTAB.

Conclusion

The Court held that a federal agency, such as the USPS, is not a person who may petition review under the AIA post-issuance proceedings. The decision of the U.S. Court of Appeals for the Federal Circuit was therefore reversed and the case remanded.  It can be argued, however, that it would be more efficient for the PTAB to hear validity claims in cases where a federal agency is sued for patent infringement, as opposed to the USCFC, which is the only court in which the government can be sued for patent infringement.  Congress may decide to amend the AIA to include the federal government as a “person” and address the estoppel provisions of the AIA to include the USCFC along with the ITC and civil actions.

The Return Mail decision does not address the ability of government contractors petitioning the PTAB to institute an AIA review proceeding to protect their interests. Government contractors have done so in the past.  Whether a government contractor can intervene will depend, in part, on whether the government contract that procured the alleged infringing product included a patent indemnity clause.

Finally, the language the Court used with respect to ex parte reexaminations may foreshadow the prospect that the federal government is not a person under 35 U.S.C. §301(a) which provides that “[a] person at any time may cite to the Office in writing . . .  prior art . . . which that person believes to have a bearing on the patentability of any claim of a particular patent,” and therefore cannot request an ex parte reexamination proceeding.