Friday, August 18, 2017

Best Practices for Coordinating With Customs


Jennifer Ko Craft (Member, Las Vegas) has written an article for the Nevada Lawyer Magazine (August 2017 edition) titled, Best Practices For Coordinating With Customs.  The article covers a variety of topics as well as stopping the infringement of clients trademark and copyright rights at the border. Please read the article on pages 24 – 26.

Ms. Craft is an “AV/Preeminent Attorney®” as rated by Martindale-Hubbell® member in the firm’s Intellectual Property and Media, Sports & Entertainment Departments. She practices primarily in the areas of domestic and international trademark and copyright prosecution, licensing and enforcement. Ms. Craft consults with clients in identifying various protectable aspects of the clients’ products, services and concepts, and in developing and managing their intellectual property portfolios. She also resolves trademark, copyright, and domain name disputes, including the resolution of disputes over contested trademarks before the Trademark Trial and Appeal Board and enforcing clients’ intellectual property rights on the Internet.  Please contact Jennifer in the Las Vegas office at 702-550-4441.

Tuesday, August 15, 2017

IP Litigation Blog Highlights Daniel Quick, Practice Department Manager

Our attorney Spotlight for this month’s IP Litigation blog is Daniel D. Quick (Member and Practice Department Manager: Commercial Litigation, Antitrust & Trade Regulation and ADR) in Troy. 

Dan Quick is the practice department manager for the Firm’s Canadian and U.S. Commercial litigation practice.  His practice regularly deals with intellectual property matters, and he is former chair of the American Bar Association’s Intellectual Property Litigation committee and has been recognized as an IP All Star.  

Mr. Quick has handled a number of matters involving Copyright, IP & Entertainment Litigation.  As lead counsel for Universal Music Group and related entities and associated artists (including Lady Gaga, Sheryl Crow, Mary J. Blige and Dr. Dre), Mr. Quick has prevailed in copyright claims, commercial disputes and defamation actions in Louisiana, Illinois, Indiana, Ohio and Michigan. Victories include dismissal of copyright infringement action and an award of over $500,000 in sanctions for “campaign of fraud” committed by plaintiffs and their counsel.  Mr. Quick also successfully prevailed on a motion for Motown-era songwriters against a major label in dispute regarding copyright recapture and assignment of songwriter agreements, resulting in a multi-million dollar settlement.  Mr. Quick was the counsel for Apple and Universal Music in a Michigan trial involving claims by Eminem copyright holders over royalties from iTunes downloads. And for Harley-Davidson, Mr. Quick defeated a plaintiff's claim for violation of right of publicity based upon alleged use of his likeness on a product. 

Mr. Quick also regularly litigates trade secret disputes and has written extensively on the topic.  Dan has successfully litigated numerous trade secret matters, including litigation against former employees in a two week federal court trial and the defense of the company and its top executive against claims by a former employer in the landmark case that established the "inevitable disclosure" doctrine in Michigan.  Mr. Quick is the author of Michigan Business Torts (the leading Michigan treatise) and the national Bloomberg BNA portfolio on Trade Secret litigation.
 

For a full and comprehensive review of Mr. Quick’s accomplishments, please click here. Mr. Quick may be reached in our Troy office at 248-433-7242.

Monday, August 14, 2017

IP News You Can Use: Case Trends and Day-to-Day Practical Advice Seminar

John Desmond (Member, Reno) and Jennifer Ko Craft (Member, Las Vegas) will discuss the latest news and top legal trends for recent IP-related litigation and what it means for business. They will also discuss the practical day-to-day ways to protect a company's IP assets, avoid legal pitfalls, and managing expenses while protecting IP assets.

Please make sure you register today for the seminar that takes place at the Dickinson Wright office in Reno, Nevada on Thursday, August 17, from 11:30 a.m. to 1 p.m.
The address is: 100 West Liberty, Suite 940, Reno, NV, 89501.

John P. Desmond is a member in the firm’s Reno office. He focuses his practice in the areas of commercial litigation and appellate work. He regularly represents and counsels clients in commercial and business litigation matters involving contract disputes, buy/sell agreements and disputes over intellectual property. He has also represented physician groups in regard to compliance and contractual matters. His representation of clients includes a significant number of matters before the Nevada Supreme Court and the Ninth Circuit Court of Appeals. 
 
Ms. Craft is an “AV/Preeminent Attorney®” as rated by Martindale-Hubbell® member in the firm’s Intellectual Property and Media, Sports & Entertainment Departments. She practices primarily in the areas of domestic and international trademark and copyright prosecution, licensing and enforcement. Ms. Craft consults with clients in identifying various protectable aspects of the clients’ products, services and concepts, and in developing and managing their intellectual property portfolios. She also resolves trademark, copyright, and domain name disputes, including the resolution of disputes over contested trademarks before the Trademark Trial and Appeal Board and enforcing clients’ intellectual property rights on the Internet.


Monday, August 7, 2017

John Blattner Featured on Small Talk with Mark S. Lee

By: John Blattner

John Blattner (Member, Ann Arbor) was recently featured on “Small Talk with Mark S. Lee” a weekly broadcast about entrepreneurship on Radio AM 1270 in Detroit, Michigan. 

John discussed issues faced by businesses in establishing and protecting brand identity and brand equity, including avoiding infringing other businesses’ trademarks and proactively protecting your own trademarks, as well a prominent recent cases regarding the Washington Redskins and the well-known Shinola brand. 

To listen to the podcast (John’s interview begins at the 32 minute mark), please click here.



Mr. Blattner's practice specializes in brand creation and protection law, including trademark counseling, clearance, registration, and enforcement. His pre-legal career in publishing, marketing, and nonprofit development enables him to bring real-world business experience into his practice, which includes U.S. clients doing business abroad, as well as global clients doing business in the United States. John also assists clients with copyright, internet, licensing, First Amendment, and antitrust matters.
His experience in IP enforcement includes trademark, copyright, patent, and antitrust litigation in state and federal courts; appellate litigation in state and federal courts of appeals, including the Federal Circuit; and opposition and cancellation proceedings before the Trademark Trial and Appeal Board. Please contact John in our Ann Arbor office at 734-623-1698.

Friday, August 4, 2017

Jennifer Ko Craft (Member, Las Vegas) authored an article titled “Stopping Infringement Before It Happens"

Jennifer Ko Craft (Member, Las Vegas) authored an article titled “Stopping Infringement Before It Happens,” published in the Best Lawyers Summer Business Edition magazine.  The article discusses how you can stop the infringement of your client’s trademarks and copyrights before it happens by utilizing the enforcement arm of the U.S. Customs and Border Protection agency. 


Ms. Craft is an “AV/Preeminent Attorney®” as rated by Martindale-Hubbell® member in the firm’s Intellectual Property and Media, Sports & Entertainment Departments. She practices primarily in the areas of domestic and international trademark and copyright prosecution, licensing and enforcement. Ms. Craft consults with clients in identifying various protectable aspects of the clients’ products, services and concepts, and in developing and managing their intellectual property portfolios. She also resolves trademark, copyright, and domain name disputes, including the resolution of disputes over contested trademarks before the Trademark Trial and Appeal Board and enforcing clients’ intellectual property rights on the Internet. She may be reached in our Las Vegas office at 702-550-4441.

Tuesday, August 1, 2017

Jennifer Ko Craft (Member, Las Vegas) was quoted in Law.com for the article titled, “Slants' High Court Win Opens the Gate for 'Offensive' Trademark Bids”.

Jennifer Ko Craft (Member, Las Vegas) was quoted in Law.com for the article titled, “Slants' High Court Win Opens the Gate for 'Offensive' Trademark Bids”.  When the U.S. Supreme Court this week gave a green light to a rock band composed of Asian-American musicians that wanted to use the name “The Slants,” it struck down a portion of the 71-year-old Lanham Act that bars disparaging trademarks. 

“Last year, the U.S. Patent and Trademark Office commissioner issued a directive that all new applications denied solely based on Section 2(a) of the Lanham Act be suspended,” noted Jennifer Ko Craft, a trademark specialist and partner at Dickinson Wright in Las Vegas.  “That means not only will the decision in In re Tam help applicants who have been denied registration based on disparagement, but also applicants who have been denied registration based on their mark being immoral or scandalous, depending on what the Federal Circuit decides in In re Brunetti” she said.


Ms. Craft is an “AV/Preeminent Attorney®” as rated by Martindale-Hubbell® member in the firm’s Intellectual Property and Media, Sports & Entertainment Departments. She practices primarily in the areas of domestic and international trademark and copyright prosecution, licensing and enforcement. Ms. Craft consults with clients in identifying various protectable aspects of the clients’ products, services and concepts, and in developing and managing their intellectual property portfolios. She also resolves trademark, copyright, and domain name disputes, including the resolution of disputes over contested trademarks before the Trademark Trial and Appeal Board and enforcing clients’ intellectual property rights on the Internet. Ms. Craft may be reached in our Las Vegas office at 702-550-4441.




 
 
 
 
 

Thursday, July 27, 2017

Attorney John Krieger Quoted in "McCartney's Deal with Sony to Regain Beatles Tunes Seen as Blow for Artists' Rights"


John Krieger (Member, Las Vegas) was quoted in a Law.com article titled McCartney's Deal With Sony to Regain Beatles Tunes Seen as Blow for Artists' Rights,” published July 3rd.  The article discusses McCartney’s recent settlement with Sony/ATV over a dispute regarding the rights to the songs he wrote while he was a member of the Beatles.

“I think this serves as an affirmation that copyright law is intended to promote the artists and their art,” said attorney John L. Krieger, a copyrights specialist at Dickinson Wright in Las Vegas. “There have been others reaping the benefits of that art, and now a lot of artists will have their chance to see those benefits, if they live long enough.”  For the record labels, it’s a different story.  “They’re going to have to live with the fact that these older works, including some that are in catalogs they’ve paid a lot of money for, are fair game,” Krieger said. 
The article was also published in The Recorder and the New York Law JournalPlease click here to read the article.
 
 
Mr. Krieger is a member in the firm’s Intellectual Property and Entertainment & Sports Departments. He concentrates his practice on intellectual property litigation in both state and federal court; prosecuting and defending clients for claims including trademark infringement, copyright infringement, patent infringement, domain name, and anti-counterfeiting litigation; as well as trade secret misappropriation and unfair competition. He can be reached in our Las Vegas office at 702-550-4439.

Tuesday, July 25, 2017

Steven A. Caloiaro Has Joined the Firm’s Reno Office as Of Counsel

Steven is an intellectual property litigator with an emphasis on patent and trademark law. He has substantial experience in all phases of patent litigation, including fact and expert discovery, claim construction, summary judgment, and appellate briefs. He works with several clients in the emerging online gaming industry, serving as external IP counsel and managing large-scale patent portfolios, including multi-million dollar sales and licenses.

Steven works with several clients in the emerging online gaming industry, serving as external IP counsel and managing large-scale patent portfolios, including multi-million dollar sale negotiations. Steven provides strategic counsel on trademark protection, prepares and prosecutes trademark applications, enforces intellectual property rights, and litigates patent infringement matters. He also helps clients navigate proceedings before the United States Patent and Trademark Office (USPTO), including settling inter partes review cases before the Patent Trial and Appeal Board (PTAB).

As an undergrad, he worked for the Washoe County Commission, the United States Attorney’s Office, and a United States Senator. Steven also helped lead the University of Nevada to a National Collegiate Roller Hockey Association Championship. You may reach Steven in our Reno office at 775-343-7506. 

Thursday, July 20, 2017

Why High Court Is Right About Offensive Trademarks

By:  Jennifer Ko Craft (Member, Las Vegas)
and Shushan Sadjadi (Law Clerk, Las Vegas)

Jennifer Ko Craft (Member, Las Vegas) and Shushan Sadjadi (Law Clerk, Las Vegas) have co-authored an article titled “Why High Court Is Right About Offensive Trademarks” on Law360.com.  The article discusses the effects and possible new trade names that could be registered given the U.S. Supreme Court’s ruling in Matal vs. Tam. 



Ms. Craft is an “AV/Preeminent Attorney®” as rated by Martindale-Hubbell® member in the firm’s Intellectual Property and Media, Sports & Entertainment Departments. She practices primarily in the areas of domestic and international trademark and copyright prosecution, licensing and enforcement. Ms. Craft consults with clients in identifying various protectable aspects of the clients’ products, services and concepts, and in developing and managing their intellectual property portfolios. She also resolves trademark, copyright, and domain name disputes, including the resolution of disputes over contested trademarks before the Trademark Trial and Appeal Board and enforcing clients’ intellectual property rights on the Internet. She may be reached in our Las Vegas office at 702-550-4441.

Saturday, July 15, 2017

Nicole Meyer - Intellectual Property Litigation Attorney With Twenty Years of Litigation Experience


Nicole Meyer is an Intellectual Property Litigation Attorney with twenty years of litigation experience, and is located in Dickinson Wright’s Washington, D.C. office.  Her practice focuses on trademark and copyright litigation, including practicing in federal district and appellate courts across the country, as well as before the United States Patent and Trademark Office’s Trademark Trial and Appeal Board. 

 
Nicole has served as lead counsel in numerous trademark infringement and counterfeiting cases, including on behalf of Carhartt, Inc. and U.S. Lawns.  Since joining Dickinson Wright in 2000 from an IP boutique, Nicole has collaborated with attorneys throughout the Firm on a wide range of trademark, product configuration, domain name and copyright litigation matters for clients such as Carhartt, Inc., Casprini Gruppo Industriale, Urban Outfitters, Borders Group, Premio Foods, Studio Imports,  Dollar Rent A Car, Inc. and U.S. Lawns, Inc.

 
Nicole regularly appears in the Eastern District of Virginia and the District of Columbia, and is a member of the Intellectual Property committees of the D.C. and Virginia Bars.  Please contact Nicole Meyer in the Washington, D.C. office at 202-659-6924.

Wednesday, July 12, 2017

Three Questions from the Supreme Court’s Decision on “Offensive” Trademarks

By: John C. Blattner

Last week the Supreme Court ruled that the Trademark Office may not refuse federal registration to a trademark merely because the mark is “disparaging.” The decision has attracted a lot of media attention, much of it inaccurate, and has raised some questions worth considering.

The case (Matal v. Tam) involved a music group composed primarily of Japanese-American men who call themselves The Slants. They know that “slants” is a slur against Asian-Americans. Indeed, that is precisely why they chose the name. Their aim, as the Court summarized it, was “to help ‘reclaim’ the term and drain its denigrating force.”

The Slants applied to register their name as a trademark in the United States Patent and Trademark Office. Their application was denied under Section 2(a) of the federal Trademark Act, which provides that registration can be denied to a mark that:
Consists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage…persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute.

The Trademark Office found that the Slants trademark violated the “disparagement” clause of this provision.

The Slants appealed. The case eventually made its way to the United States Court of Appeal for the Federal Circuit, which in 2015 ruled that the disparagement clause was unconstitutional because it violated the First Amendment guarantee of free speech. The Trademark Office appealed that decision to the Supreme Court, which emphatically upheld the lower court ruling.

The decision raises a number of interesting questions. Here are three of them.

1. What impact will this decision have on the Redskins case?

In a well-known and widely-discussed case (Blackhorse v. Pro Football, Inc.), the Trademark Office cancelled registrations of six trademarks that included the controversial nickname used by the Washington, D.C., franchise of the National Football League. An appeal of that decision is currently pending in the United States Court of Appeals for the Fourth Circuit.

It would appear that the decision in the Slants case effectively resolves the Redskins case as well. The Redskins registrations were cancelled because they violated the disparagement clause – precisely the same statutory provision that the Supreme Court has now declared unconstitutional. It’s always risky to predict legal outcomes, and the Blackhorse petitioners may yet find a path to victory. But it’s highly likely that the football team will get its trademark registrations back.

2. Does this decision apply to other kinds of “offensive” trademarks?

No and yes.

First, an important clarification. Most news reports have said that the Supreme Court decision opened the door to all “offensive” trademarks. That’s not exactly correct. Technically the Slants decision invalidated only the disparagement clause of Section 2(a). It did not invalidate other portions of the statue. So as of today, the Trademark Act still bars registration of trademarks that are considered “immoral” or “scandalous.”

But the days of the “immoral or scandalous” clause are probably numbered. It is hard to think of any reason why the Supreme Court’s First Amendment analysis of disparaging marks wouldn’t apply to this clause as well. In fact, when the Federal Circuit first ruled the disparagement clause unconstitutional, the Trademark Office suspended consideration of all applications that involved offensive trademarks of any kind, including those deemed immoral or scandalous – a fairly clear signal that the Office recognized that the two clauses stand or fall together.

As it happens, there is a case now pending in the Federal Circuit that expressly challenges the constitutionality of the immoral or scandalous clause. The case (In re Brunetti) pertains to the Trademark Office’s refusal to register the mark FUCT. The Federal Circuit appears to have been awaiting the Supreme Court’s decision in the Slants case. Stay tuned.

3. So does the Slants decision really “open the floodgates” to more offensive trademarks?


Probably not, for at least a couple reasons.

For starters, keep in mind that the purpose of trademarks is to attract consumers and induce them to buy products. How many businesses are likely to think that they can accomplish these goals by adopting trademarks that insult or alienate large segments of their potential market? Some retailers already refuse to stock products with such names, and some trade organizations have adopted guidelines discouraging them.

To the extent that some businesses do want to use such trademarks, there has never been any impediment to using such trademarks with or without registration. And besides, many of them have already succeeded in registering their trademarks. The Trademark Office has been notoriously inconsistent in its application of Section 2(a); there are dozens of duly registered trademarks that would qualify as “offensive” in one way or another.

It is probably inevitable that there will be at some increase in the number of applications for disparaging, immoral, or scandalous trademarks in the wake of the Slants decision. But the fact that so many marks of this kind have already achieved registration undermines the notion that there is a huge backlog of them ready to flood the Trademark Office.

Trademarks and “The Thought that We Hate”


The Supreme Court’s First Amendment decisions are often controversial, because they typically protect someone’s right to say or do things that others find objectionable. But as the Court noted in its decision:

Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, any other similar ground is hateful; but the proudest boast of our free speech jurisdiction is that we protect the freedom to express “the thought that we hate.”

In the Court’s view, this is the price we pay for freedom of speech, in trademarks no less than in other areas.

If you would like a printable version of this Brandmarking newsletter, click here.


Mr. Blattner's practice: brand creation and protection law, including trademark counseling, clearance, registration, and enforcement. John's pre-legal career in publishing, marketing, and nonprofit development enables him to bring real-world business experience into his practice, which includes U.S. clients doing business abroad, as well as global clients doing business in the United States. He also assists clients with copyright, internet, licensing, First Amendment, and antitrust matters.

Mr. Blattner's experience in IP enforcement includes trademark, copyright, patent, and antitrust litigation in state and federal courts; appellate litigation in state and federal courts of appeals, including the Federal Circuit; and opposition and cancellation proceedings before the Trademark Trial and Appeal Board. John is a Member in our Ann Arbor office and he may be reached at 734-623-1698.

Monday, July 10, 2017

Mark Scott Speaks at AIPLA Webinar on June 21, 2017

Mark Scott (Member, Austin) spoke at a webinar titled “Tales from the Edge, Export Controls, Paris Priority Claims and Working Remotely:  Preventing Problems Before They Happen and Trying to Fix Them When Things Go Wrong” for the American Intellectual Property Law Association (AIPLA) on June 21st.  Mark discussed the unique interplay of export control regulations and foreign filing licenses issued by the patent and trademark office.  He also provided the AIPLA with a corresponding paper titled “The Intersection of Export Control Regulations and Foreign Filing Licenses: Can I Write a Patent Application on the Beach in Cabo?” 


Mark E. Scott is a Member at the Dickinson Wright Austin office. Electrical Engineer turned Patent Attorney, Mr. Scott assists businesses that produce innovative products and services with securing a competitive edge in the marketplace, protecting the fruits of innovation, and monetizing creations. In particular, Mr. Scott works with clients to obtain the patents and trademarks which protect and brand products and services. Mark may be reached at 512-770-4234.



Wednesday, July 5, 2017

Jennifer Ko Craft (Member, Las Vegas) was quoted on Law.com


Jennifer Ko Craft (Member, Las Vegas) was quoted on Law.com, published by American Law Media, in the article titled “NHL’s Vegas Golden Knights Making a Name for Themselves the Hard Way.”  The article discusses the National Hockey League’s new Las Vegas franchise and their ongoing trademark issues regarding their new “Golden Knights” name.  The U.S. Patent and Trademark Office (USPTO) is currently considering the NHL’s 1,347-page response to its December decision not to register two trademarks, “Vegas Golden Knights” and “Las Vegas Golden Knights” for hockey exhibitions, and another for apparel sales. The name and logo were too close to the registered trademark of The College of Saint Rose, a 4,211-student university in Albany, New York.  The article was published on June 19, 2017.

“USPTO examiners can be quite unyielding,” said attorney Jennifer Ko Craft, a partner at Dickinson Wright in Las Vegas and a trademark specialist.

“Even if there are others who have registered trademarks in similar situations in the past they cannot use past registrations to justify approving any present application. The Trademark Manual of Examining Procedure specifically prohibits it. Trademarks should be viewed as fluid. So, while these should get approved it’s hard to say that with certainty,” she said.
 


Jennifer Ko Craft is an “AV/Preeminent Attorney®” as rated by Martindale-Hubbell® member in the firm’s Intellectual Property and Media, Sports & Entertainment Departments. Ms. Craft can be reached in our Las Vegas office at 702-550-4441.

Wednesday, June 28, 2017

U.S. Supreme Court Holds Trademark Registrations Are Free to Disparage

By: Nicole Meyer (Member, Washington, D.C.)


Justice Alito’s summary opinion announced in Court Monday morning, in what has come to be known as the Slants case (Matel v. Tam, 582 U.S. ___ (June 19, 2017), was short and sweet but the trademark applications we can expect in the near future definitely will not be. The U.S. Supreme Court ruled Monday that the Federal Government’s ban on the registration of disparaging marks violates the First Amendment.  

The lead singer (Simon Tam) of a rock band called “The Slants” applied for federal trademark registration of the band name and, when his application was rejected, he challenged the constitutionality of the Lanham Act’s provision (15 U.S.C. §1052(a), a.k.a., “The Disparagement Clause”) barring registration for marks that “may disparage… persons, living or dead, institutions, beliefs or national symbols, or bring them into contempt, or disrepute.…”. The Disparagement Clause applies to marks that disparage the members of a racial or ethnic group.

Tam contested the denial of his application before the U.S. Patent and Trademark Office’s Trademark Trial and Appeal Board (TTAB). When he lost, he appealed his case to an en banc Federal Circuit that found the Disparagement Clause to be unconstitutional under the First Amendment’s Free Speech Clause. The Supreme Court granted certiorari and the Government argued before the high court, in part, that a federal trademark registration constituted government speech, not private speech and, therefore, was not subject to the Free Speech Clause. The Supreme Court disagreed, stating that “[t]he Federal Government does not dream up these marks, and it does not edit marks submitted for registration.” Moreover, the Court’s majority opinion stated, “if the federal registration of a trademark makes the mark government speech, the Federal Government is babbling prodigiously and incoherently.”  

All eight participating justices agreed on the key finding that the Disparagement Clause constitutes “viewpoint discrimination,” a decision that has not only Tam, but also the Washington Redskins organization, ecstatic. The Redskins had six federal registrations revoked in 2014 under the same clause. After losing their fight before the TTAB on a 2-1 decision (with the dissenting opinion by former DW colleague and current Administrative Judge Marc Bergsman), the Redskins current appeal before the U.S. Court of Appeals for the Fourth Circuit has been stayed pending the Supreme Court’s ruling in this case. The decision should now bring a conclusion to that quarter-of-a-century long dispute… and an in-flux of applications for derogatory marks.

 

Nicole Meyer’s practice covers all aspects of trademark, domain name and copyright law.  She focuses on domestic and foreign trademark counseling and worldwide portfolio management. She works with companies to develop and acquire intellectual property, including clearance and availability counseling, and the strategic acquisition, protection, promotion and enforcement of marks. She enjoys working with clients to develop cost-effective strategies for developing, maintaining and expanding their intellectual property portfolio.  Please contact Nicole in our Washington, D.C. office at 202-659-6924.
 

Thursday, June 22, 2017

“GIVING OFFENSE IS A VIEWPOINT”: SUPREME COURT HOLDS IT IS VIEWPOINT DISCRIMINATION TO DENY TRADEMARK PROTECTION FOR ALLEGEDLY OFFENSIVE MARKS

By: David N. Ferrucci

In a decision that is being heralded as a victory for First Amendment freedoms, the United States Supreme Court struck down the so-called disparagement provision of the Lanham Act, 15 U.S.C. §1052(a), on the basis that the law constitutes unlawful viewpoint discrimination.

 
In Matal v. Tam, 582 U.S. ___ (June 19, 2017), the Supreme Court was asked to determine the constitutionality of a Lanham Act provision prohibiting the registration of any trademarks that "may disparage … persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute." 15 U.S.C. §1052(a) (hereinafter, "Disparagement Clause" or "Lanham Act’s Disparagement Clause"). 
 
Tam involved a challenge to the denial of federal registration of the mark "THE SLANTS." Mr. Tam, lead singer of the Asian-American rock band "The Slants," chose the name to "reclaim" the derogatory moniker and to drain its denigrating force as a derogatory term for Asian persons. But when Mr. Tam sought to register the mark, the Patent and Trademark Office ("PTO") denied the application on the basis that it violated the Lanham Act’s Disparagement Clause.
 
The Federal Circuit found the Lanham Act’s Disparagement Clause unconstitutional. Specifically, it found that the clause constituted unlawful viewpoint discrimination in violation of the First Amendment.
 
In a 4-4 split decision (recently confirmed Justice Neil Gorsuch was not on the Court when the case was argued), the Justices unanimously agreed with the Federal Circuit that denying registration of a trademark based on the allegation that the mark disparages or offends certain groups, is unlawful viewpoint discrimination. As Justice Alito explained in the Court’s majority opinion (joined by Chief Justice Roberts, Justice Thomas, and Justice Breyer):

Our cases use the term “viewpoint” discrimination in a broad sense, and in that sense, the disparagement clause discriminates on the bases of “viewpoint.” To be sure, the clause evenhandedly prohibits disparagement of all groups. It applies equally to marks that damn Democrats and Republicans, capitalists and socialists, and those arrayed on both sides of every possible issue. It denies registration to any mark that is offensive to a substantial percentage of the members of any group. But in the sense relevant here, that is viewpoint discrimination: Giving offense is a viewpoint.

We have said time and again that the public expression of ideas may not be prohibited merely because the ideas are themselves offensive to some of their hearers.

Another aspect of the Court’s opinion that could have far reaching consequences for trademark rights in the commercial context is the Supreme Court’s holding that even if a trademark constitutes commercial speech—a category of speech entitled to lesser First Amendment protections—the speech still cannot be regulated simply on the basis that it offends. Specifically, the majority opinion found that even if the speech is deemed “commercial,” regulation targeting offensive speech fails the commercial speech test promulgated in Central Hudson Gas & Electric Corporation v. Public Service Commission of New York, 447 U.S. 557 (1980). “Under that test, government laws and regulations may significantly restrict [commercial] speech, as long as they also directly advance a substantial government interest that could not be served as well by a more limited restriction.” Sorrell v. IMS Health Inc., 564 U.S. 552, 583 (2011). The Court found that the disparagement provision failed the Central Hudson test because it served no substantial government interest and in any event, could not be narrowly tailored. Specifically, the Court held that protecting particular groups from offensive speech is not a substantial governmental interest:

As we have explained, the idea [that the Government has an interest in preventing speech expressing ideas that offend] strikes at the heart of the First Amendment. Speech that demeans on the basis of race, ethnicity, gender, religion, age, disability, or any other similar ground is hateful; but the proudest boast of our free speech jurisprudence is that we protect the freedom to express the thought that we hate.
 
Justice Kennedy’s concurrence (joined by Justice Ginsberg, Justice Sotomayor, and Justice Kagan) drove home this point and confirmed a line of thought developed in the Court’s 2011 commercial speech case, Sorrell v. IMS Health Inc., 564 U.S. 552 (2011), that regulations aimed at certain viewpoints are not lawful simply because they purport to regulate commercial speech:

“Commercial speech is no exception,” the Court has explained, to the principle that the First Amendment “requires heightened scrutiny whenever the government creates a regulation of speech because of disagreement with the message it conveys.” Sorrell v. IMS Health Inc., 564 U. S. 552, 566 (2011) (internal quotation marks omitted). Unlike content based discrimination, discrimination based on viewpoint, including a regulation that targets speech for its offensiveness, remains of serious concern in the commercial context. See Bolger v. Youngs Drug Products Corp., 463 U. S. 60-72 (1983).

To the extent trademarks qualify as commercial speech, they are an example of why that term or category does not serve as a blanket exemption from the First Amendment’s requirement of viewpoint neutrality.

The Court’s apparent growing unease with the expansion of the Court’s commercial doctrine to encompass all forms of speech, not just traditional advertisements, is a welcome development for commercial speakers. Far too often courts have used the various commercial speech tests to sweep within its ambit speech otherwise worthy of full First Amendment protection.
 
Click here for a printable pdf version of this article.

David N. Ferrucci is a member in Dickinson Wright’s Phoenix office. Prior to attending law school, Mr. Ferrucci studied journalism and strategic communication at the University of Missouri, where he wrote his master’s thesis on the Supreme Court’s commercial speech doctrine. He can be reached at 602.889.5337 or dferrucci@dickinsonwright.com.
 
 
 

The content is informational only and does not constitute legal or professional advice. We encourage you to consult a Dickinson Wright attorney if you have specific questions or concerns relating to any of the topics covered in here.


 

 


 
 

Tuesday, June 20, 2017

Barth deRosa and Jon Redway named 2017 Washington, D.C. Super Lawyers

We are pleased to announce and our heartiest congratulations to Barth X. deRosa (Member, Washington, D.C.) and Jonathan Redway (Member, Washington, D.C.) named 2017 Washington, D.C. Super Lawyers! Super Lawyers is a listing of outstanding attorneys from more than 70 practice areas who have attained a high degree of peer recognition and professional achievement.

 
Barth was named for Intellectual Property for the sixth year in a row, focusing his practice in the areas of business technology, copyrights, intellectual property litigation, and trademarks. Barth has successfully prosecuted over 3,000 trademark applications to registration before the U.S. Patent and Trademark Office, has prosecuted over 345 proceedings before the U.S. Trademark Trial and Appeal Board, and has provided availability reviews and recommendations for over 8,500 trademarks. 

J
on was named for Intellectual Property Litigation. He is Co-Chair of DW’s Intellectual Property Litigation Team and regularly works with businesses and individuals on cases involving patent and trademark infringement, the seizure of counterfeit goods, misappropriation of trade secrets, copyright infringement, as well as business torts and various regulatory matters. 
Please feel free to contact Barth deRosa in our Washington, D.C. office at 202-408-5955. Jon Redway may also be contacted in our Washington, D.C. office at 202-659-6946.  

Thursday, June 15, 2017

IP Litigation Attorney Highlights John Krieger – Experienced in Extensive IP Litigation

John Krieger is a member in the firm’s Intellectual Property and Entertainment & Sports Departments. He concentrates his practice on intellectual property litigation in both state and federal court; prosecuting and defending clients for claims including trademark infringement, copyright infringement, patent infringement, domain name, and anti-counterfeiting litigation; as well as trade secret misappropriation and unfair competition.  

John has extensive experience litigating cases involving the infringement of intellectual property rights over the Internet, and has successfully shut down websites containing infringing material, secured the transfer of infringing domain names for his clients, and counseled clients in defensive domain name registration strategies to protect their intellectual property in the U.S. and around the world. He has summarily defeated challenges to jurisdiction and obtained numerous preliminary and permanent injunctions against third party infringers.  
 
John has also litigated matters involving the infringement of trademarks, trade dress and copyrights, as well as counterfeit goods, at international Las Vegas trade shows, including obtaining emergency seizure orders and permanent injunctive relief. He has filed numerous opposition and cancellation proceedings on behalf of clients before the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office. Mr. Krieger has sought or defended the full spectrum of remedies including actual, statutory, and punitive damages; temporary restraining order; preliminary injunctions; permanent injunctions; and contempt hearings. 

Learn more about John Krieger and feel free to contact John in our Las Vegas office at 702-550-4439.
 


 

Monday, June 12, 2017

John Krieger Gives Presentation at the American Intellectual Property Association (AIPLA) Spring Conference

John Krieger (Member, Las Vegas) was invited to give a presentation at the American Intellectual Property Association (AIPLA) Spring Conference on May 17th, in San Diego, CA.  Jeff’s Trademark/ Copyright session topic was, “A Constant Battle: Trademarks in the Media and Entertainment Industries.” AIPLA was pleased to welcome nearly 500 IP practitioners​ from around the globe. Attendees took part in two and a half days of CLE education, committee meetings, and social events.

Please feel free to contact John Krieger (Member, Las Vegas) at 702-550-4439.

Monday, June 5, 2017

Outstanding News and Congratulations to 5 of DW Attorneys on Being Selected to the 2017 IP Stars!

We are very pleased to announce that the firm has been recognized for its Intellectual Property expertise in Michigan and five attorneys within the firm were named 2017 IP Stars by Managing Intellectual Property.  The firm’s Patent Filing and Prosecution practice received a “Highly Recommended” rating and the Trademark practice received a “Recommended” rating. In addition to the firm’s rankings, Attorneys John S. Artz (Member, Troy), is ranked as an IP Star for Patent and Trademark.  Fred W. Hathaway (Member, Washington, D.C.) is ranked as an IP Star for Trademark.
William H. Honaker (Member, Troy) is ranked as an IP Star for Patent and Trademark.  Daniel D. Quick (Member and Practice Department Manager: Commercial Litigation, Antitrust & Trade Regulation and ADR, Troy) is ranked as an IP Star for Trademark. And Mark Scott (Member, Austin) is ranked as an IP Star in Patent and Trademark.

Outstanding news and congratulations on being selected to the 2017 IP Stars!

John S. Artz is a Member in the firm’s Troy, Mich. office and is ranked as an IP Star for Patent and Trademark. He has been lead counsel for many companies in intellectual property and commercial litigation matters. He is co-chair of the firm’s Intellectual Property Litigation practice and focuses on patent, trade secret, trademark and copyright litigation. He also actively counsels clients on patent and trademark prosecution as well as clearance matters. Mr. Artz is a past president of the Michigan Intellectual Property Law Association and is currently co-chair of the Intellectual Property
Section of the Federal Bar Association for the Eastern District of Michigan.

Fred W. Hathaway is a Member in the firm’s Washington, D.C. office and is ranked as an IP Star for Trademark. His practice is focused on domestic and international trademark counseling, clearance and prosecution, trademark litigation before the TTAB, and trademark and domain name disputes and litigation. He is a member of the American Intellectual Property Association, the American Bar Association’s Intellectual Property Law Section, and the Adjunct Professor Special Interest Group of the International Trademark Association.

William H. Honaker is a Member in the firm’s Troy, Mich. office and is ranked as an IP Star for Patent and Trademark. He has extensive knowledge and expertise in all aspects of patent, trademark, trade secret and copyright matters including litigation in a broad range of technologies/industries. He evaluates patents, trademarks, and copyrights on behalf of clients along with advising clients on the protection of inventions, trademarks and copyrightable subject matter. He is the former Chairman of the State Bar of Michigan’s Intellectual Property Law Section and is a member of the American Intellectual Property Law Association and the International Trademark Association.


Daniel D. Quick is the Practice Department Manager for the firm’s Commercial Litigation, Antitrust & Trade Regulation, and Alternative Dispute Resolution Practice Groups and a Member in the firm’s Troy, Mich. office. He is ranked as an IP Star for Trademark. He served as lead counsel for Universal Music Group and related entities and associated artists in copyright litigation, commercial disputes and defamation actions in several states. He also served as lead counsel in a variety of other copyright, trade secret and patent litigation matters. Mr. Quick is the former chair of the American Bar Association’s Intellectual Property Litigation Committee and is currently the chair of the Intellectual Property Subcommittee of the Commercial & Business Litigation Committee.


Mark Scott is a Member in the firm’s Austin office and is ranked as an IP Star in Patent and Trademark. He focuses his practice in the areas of intellectual property, including patents, copyrights and trademarks. He assists businesses that produce innovative products and services with securing a competitive edge in the marketplace, protecting the fruits of innovation, and monetizing creations. He is a member of the American Intellectual Property Law Association, the Texas Bar Association’s Intellectual Property Section, and the Austin Bar Association.

Managing Intellectual Property’s IP Stars 2017 is the most comprehensive and authoritative guide to leading IP firms and lawyers. Managing Intellectual Property’s researchers in London, New York and Hong Kong collected market information, analyzed it and ranked firms in tiers, based on the feedback received from thousands of practitioners. To learn more, click here

Thursday, June 1, 2017

Dickinson Wright recognized for our practices in Michigan, Arizona, Nevada, and Tennessee


On May 26th, Chambers & Partners released their ChambersUSA 2017 Guide. Dickinson Wright was once again recognized for our practices in Michigan, Arizona, Nevada, and Tennessee. Thirty-five of our attorneys were recognized as “Leaders in their Fields” with an additional four lawyers being noted as “Recognized Practitioners.” This is quite an honor and we congratulate all of our practices and attorneys who were included this year, including for the first time as “Leaders in their Field” for Intellectual Property, John S. Artz and John C. Nishi.

Congratulations to all of our groups and recipients of Chambers designations!

Wednesday, May 31, 2017

Moving Forward After TC Heartland v. Kraft Foods

By: Russell Franks and Franklin Smith 

The Supreme Court’s recent opinion in TC Heartland, LLC v. Kraft Foods Group Brands, LLC, overturns almost three decades of Federal Circuit jurisprudence on the issue of  where a patent holder may properly file suit. In a unanimous decision authored by Justice Thomas, the Court held that a corporation “resides” only in its state of incorporation for purposes of determining proper venue under 28 U.S.C. § 1400(b). As a result, a patentee seeking to sue a domestic corporation may only do so in (1) where the alleged infringer resides (i.e., its state of incorporation) or (2) in a venue the alleged infringer has committed an infringing act and has a regular and established place of business. See 28 U.S.C. § 1400(b). This departs from previous precedent allowing an alleged infringer to be sued in any district where a company was subject to personal jurisdiction (i.e., any district where it had committed an infringing act was a “residence” under the statute for venue purposes). The previous rule permitted a cottage industry to spring up in districts viewed as patentee friendly, such as the notorious Eastern District of Texas. The Supreme Court’s ruling will render many patentee’s hopes of filing in the Eastern District of Texas a relic of the past.  

In TC Heartland, a patentee (Kraft Foods) brought suit against a competitor (TC Heartland) in the District of Delaware. TC Heartland, an Indiana corporation, challenged venue as improper by calling into question the term “resides” in 28 U.SC. § 1400(b).  The District Court held that the venue was proper on the basis that the allegedly infringing material was shipped into the state of Delaware, which was TC Heartland’s only connection to the state.  Following the traditional approach set forth in the Federal Circuit’s 1990’s VE Holding Corp. v. Johnson Gas Appliance Co., the District Court broadly construed “resides” based on the general venue statute, 28 U.S.C. §1391(c). This essentially provided that proper venue lies in any Court that holds personal jurisdiction. Because TC Heartland’s shipping of product into the state conferred personal jurisdiction, venue properly lied in Delaware. On appeal, the Federal Circuit affirmed the District Court’s ruling, holding its decision in VE Holding Corp. remained good law. The Supreme Court granted certiorari on the issue of where proper venue lies for a domestic corporation in a patent infringement action, i.e., where a domestic corporation “resides”. In reversing the Federal Circuit’s opinion, the Supreme Court held that “residence” as recited in the patent venue statute is limited to the state of incorporation.  In other words, the number of Courts that have proper venue over an allegedly infringing company has been substantially restricted. 

While it is too early to see the full effects of the Supreme Court’s holding in TC Heartland, we expect to see a few things.  First, many alleged infringers will seek to dismiss or transfer their venue based on this new standard.  Second, expect to see more patent infringement suits brought in the common states of incorporation and states that have recognized industries.  For example, there will likely be a greater number of cases brought in Delaware, a common state of incorporation, as well as in technological hubs like Northern California and Michigan with the automobile industry.  One thing is certain; the holding in TC Heartland will affect the flexibility that patent holders previously had with respect to choosing the jurisdictions viewed as most favorable. 

 Read the Opinion here.

Russell Franks is an Associate Attorney (IP Practice) in the Troy Office. Russell may be reached at 248-433-7574.
Franklin Smith is an Associate Attorney in the Troy Office. Franklin's Practice expertise covers Intellectual Property & Trade Secrets Litigation, Intellectual Property, Patents and Trademarks. Franklin's telephone number is 248-433-7393.


For docketing purposes of patent & trademark matters only, please add the appropriate email of dwpatents@dickinsonwright.com or dwtrademarks@dickinsonwright.com to any emails being sent to our office. Thank you.

Monday, May 29, 2017

Derek Crownover quoted in the New York Times Music Section

Derek Crownover (Member and Entertainment Law Practice Leader, Music Row) was recently quoted in the New York Times Music Section article, “Paramore Bounces Back With Old Faces and a New Sound.”  Derek Crownover, along with Hugh Howser (Member, Nashville), Dustin Kovacic (Associate, Music Row), Cam Caldwell (Of Counsel, Music Row) and John Krieger (Member, Las Vegas) represented Jeremy Davis, former founding member of the Grammy-award winning band Paramore, in concurrent state and federal litigation with the band and its managers and business managers over claims of implied partnership, fiduciary duty breaches, breaches of contract and copyright authorship. The article briefly discusses the litigation and Mr. Davis’s claims, quoting Derek to clarify the current status of the case.

Since the article was posted, Mr. Davis has settled his claims with all parties and continues to expand into new ventures as a solo musician and producer.


Please feel free to contact our attorneys.  In our Music Row office: Derek Crownover can be reached at 615-577-9602, Dustin Kovacic may be reached at 615-57-9608 and  Cam Caldwell can be contacted at 615-577-9610.  Hugh Howser is located in our Nashville office and his telephone number is 615-780-1102.  John Krieger may be contacted in our Las Vegas office at 702-550-4439.   

Thursday, May 25, 2017

Dickinson Wright Austin Office Celebrates World IP Day


The Austin office hosted a reception celebrating World IP Day on May 3rd at Westwood Country Club, in Austin, TX.  Attendees were treated to interesting presentations by UT’s Austin’s 2016 Emerging Inventor of the Year, Dr. Hal Alper, who discussed his metabolic hijacking research and Dr. Nanshu Lu, who was recognized by MIT as one of the world’s top 35 innovators under the age of 35, who discussed her research in the field of wearable electronics. Distinguished UT Professor Bone also chimed in on the role of intellectual property law in innovation and a regional representative from the USPTO spoke on the World IP Day initiative. Alison Frey (Member, Austin) organized and emceed the event. It was a well-attended event, drawing people from both the legal and business communities, and even local students. A great time and plenty of fun was had by all!

Monday, May 22, 2017

3 Steps to Protect Trade Secrets Under the DTSA

Nashville Attorney Autumn Gentry recently wrote “3 Steps to Protect Trade Secrets Under the DTSA,” for Inside Counsel.
 
The Defend Trade Secrets Act (DTSA), which went into effect last year, was a breath of fresh air for many companies that rely on trade secrets as part of their business model.
 
Under the DTSA, a business’s or individual’s trade secrets — such as copyrights, patents and trademarks — are federally protected. This federal protection allows a business to file a private civil lawsuit if a trade secret that is related to a product or service used in, or intended for use in, interstate or foreign commerce is misappropriated.
 
Prior to the DTSA, trade secrets law was a state issue, and most states adopted some version of the Uniform Trade Secrets Act (UTSA) to protect their local businesses. However, the interpretation of these laws varied greatly from state to state.
 
The DTSA adopts many provisions from the UTSA, such as injunctive relief to prevent actual or threatened misappropriation; actual damages; and exemplary damages and attorneys’ fees for willful and malicious misappropriate. 
However, unlike the UTSA, the DSTA also:
  • Provides businesses access to federal courts, regardless of the amount in controversy;
  • Permits ex parte seizures where injunctive relief is clearly shown to be inadequate;
  • Grants whistleblowers who disclose trade secrets to the government immunity from civil and criminal liability in certain situations;
  • Mandates that notice about whistleblower immunity be included in any new or updated employment agreement that governs the use of a trade secret or other confidential information.
 
In order to be protected by the DTSA, businesses or individuals must demonstrate that they have taken steps to keep their trade secrets private.
 
To read the complete article, please click here (subscription needed).
 
Autumn Gentry is an attorney with the Nashville office of Dickinson Wright, PLLC. She focuses her practice in commercial law and litigation. Autumn can be reached at 615-620-1755
 
 
 
 
 
 
 
 
 

 

Monday, May 15, 2017

IP Litigation Attorney Highlights Michelle Alamo - Focused on Complex Business and Patent Litigation

Michelle L. Alamo, a member in Dickinson Wright PLLC’s Detroit office, focuses on Complex Business and Patent litigation in federal courts in Michigan and elsewhere, as well as the International Trade Commission (ITC).  Her practice includes patent infringement, antitrust, RICO, Federal false claims, ERISA, government investigations, class actions, and e-discovery matters involving the automotive, telephone, construction, and insurance industries.   

Michelle’s unique expertise with Section 337 Investigations before the ITC includes successfully trying two Section 337 case to conclusion in 2014 along with her Dickinson Wright IP colleagues.    

An electrical engineer by background, complex litigation is a natural fit for Michelle.  She is also Committee Chair of DRI’s Intellectual Property Litigation Committee. 


Outside of the legal arena, Michelle is a three-time Ironman and is currently training for her fourth Ironman to be held in Lake Placid, New York.

 
Please feel free to contact Michelle Alamo (Member, Detroit) at 313-223-3875.

Wednesday, May 10, 2017

A Powerful Weapon Against Infringing Imports

By: Jonathan Redway

Jonathan Redway (Member, Washington, D.C.) wrote an article titled "A Powerful Weapon Against Infringing Imports," which was published in Today's General Counsel.  The article focused on Section 337 of the Tariff Act of 1930 and how it remains the single most powerful and reliable weapon a company can use to protect its United States intellectual property against infringing imports. Under Section 337, the U.S. International Trade Commission conducts investigations into allegations of certain unfair practices in import trade. Mr. Redway also explains the effectiveness and advantages of Section 337 Enforcement Proceedings when it comes to intellectual property.  Read the entire article here.


Jon is a nationally recognized trial lawyer with extensive experience handling a wide variety of complex civil and intellectual property cases. Jon regularly works with businesses and individuals on cases involving patent and trademark infringement, the seizure of counterfeit goods, misappropriation of trade secrets, copyright infringement, as well as business torts and various regulatory matters. Jon may be reached in our Washington, D.C. office at 202-659-6946.

Friday, May 5, 2017

10 Years Of KSR: A Shift In Patent Drafting

By  John S. Artz, Franklin Smith and Russell Franks

Sunday marked 10 years since the U.S. Supreme Court issued its ruling in KSR International Co. v. Teleflex Inc., rejecting the test that was used by the U.S. Patent and Trademark Office, patent attorneys and district courts for determining if a patent is too obvious. This weeklong Law360 Expert Analysis series explores the decision's effect on obviousness analysis and the patent landscape.

 

In the Patent Act of 1790, U.S. lawmakers struggled to provide a concise, objective standard of patentability, and it wasn’t until 30 years later that the U.S. Supreme Court first weighed in through dicta on the issue of “inventiveness” — or modern day “obviousness.”[1] It remains a mystery whether or not the Supreme Court justices were aware of the rabbit hole they were entering. Since then, lawmakers have attempted to both understand and provide clear guidance when analyzing whether a potential invention is obvious. Unfortunately, efforts to define obviousness have often resulted in further confusion.

Read the entire insightful article here.

John S. Artz (Member, Troy) and co-chairs the Intellectual Property Section of the Federal Bar Association for the Eastern District of Michigan. John may be reached at 248-433-7262.  Franklin M. Smith (Associate, Troy) may be reached at 248-433-7393 and Russell F. Franks (IP Law Clerk, Troy) may be reached at 248-433-7574.