In This Issue:
Link at Your Own Risk: Navigating GPL Copyleft Obligations in Contemporary Modular Software Architectures By: Jonathan Berschadsky and Rhett A. Sexton The Jack Daniel’s Hangover: Defining “Trademark Use” & the Future of the Rogers Test in Light of the Supreme Court’s Decision By: Keehle Amicon, New York Law School Crayons, Contests, & Copyright: Contracting to use a Child’s Creative Work By: Kaelyn Timmins-Reed, Chapman University Dale E. Fowler School of Law Patenting to Infinity and Beyond: An Analysis of Potential Patent Protections for Commercialized Space Inventions By: Laura Ospina, Villanova University Charles Widger School of Law
Spring 2025
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President's Corner Link at Your Own Risk: Navigating GPL Copyleft Obligations in Contemporary Modular Software Architectures By: Jonathan Berschadsky and Rhett A. Sexton The Jack Daniel’s Hangover: Defining “Trademark Use” & the Future of the Rogers Test in Light of the Supreme Court’s Decision By: Keehle Amicon, New York Law School Crayons, Contests, & Copyright: Contracting to use a Child’s Creative Work By: Kaelyn Timmins-Reed, Chapman University Dale E. Fowler School of Law Patenting to Infinity and Beyond: An Analysis of Potential Patent Protections for Commercialized Space Inventions By: Laura Ospina, Villanova University Charles Widger School of Law Notable Trademark Decisions, October 2024 By: Scott Greenberg and Vrudhi Raimugia Historian's Corner Board Minutes NYIPLA Events Welcome New Members Upcoming Programs
PATRICE P. JEAN
Dear NYIPLA Community: I am writing to you as the Immediate Past President of the NYIPLA and I want to take a moment to thank all of you for your support and contributions during my term. We had an amazing year and here are some of the highlights. We submitted comments to the United States Patent and Trademark Office (USPTO) on three proposed rules concerning Terminal Disclaimer Practice to Obviate Nonstatutory Double Patenting; Director Review of Patent Trial and Appeal Board Decisions; and Patent Trial and Appeal Board Rules of Practice for Briefing Discretionary Denial Issues, and Rules for 325(d) Considerations, Instituting Parallel and Serial Petitions, and Termination Due to Settlement Agreement. Our Programs Committee in collaboration with our committee co-chairs have held numerous successful and well-attended events including our annual Trademark & Copyright Half-Day Program, Fall One-Day Patent CLE Seminar, practice area committee meetings, and our extremely popular IP Transactions Bootcamp. The NYIPLA Annual Second Circuit Summer Associate Moot Court CLE Program led by Past President Rob Rando continued to be a success and offered the opportunity for summer associates to argue IP cases on some of the most cutting-edge legal issues of our time in front of sitting judges. Our Young Lawyers Committee brought great programing and fun activities with workshops and networking events to engage the most recent members to enter our profession. We launched the new NYIPLA website, and we boosted our membership numbers to the highest levels seen in the past decade. Finally, it was a pleasure seeing many of you at our extremely successful 103rd Annual Dinner in Honor of the Federal Judiciary. Notably, none of the highlights listed above could have been possible without the hard work and dedication of my fellow Officers, NYIPLA Board Members, Committee Co-Chairs, and Feikje van Rein and her team at RRR Associations, LLC. I am so grateful to all of you and so proud of all that we accomplished this year. I am happy to report that the NYIPLA is moving forward with great strategic velocity. I am confident that I am leaving this organization in the very thoughtful and capable hands of our new President Abigail Struthers. I am looking forward to witnessing how our beloved organization evolves under her incredible leadership. I will continue my service to the NYIPLA as a Co-Chair of the Membership Committee. If by chance you are reading this and you are not a member or your membership has lapsed, now is a great time to join or re-join us. The NYIPLA is as strong as the members that make up this esteemed organization and we will be stronger with you. Please Join or Rejoin us! https://www.nyipla.org/nyipla/Membership.asp If you have not already joined a committee, I also strongly encourage you to take a look and sign up here. https://www.nyipla.org/nyipla/Committees.asp It was my greatest pleasure to serve you all as NYIPLA President this past year.
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Link at Your Own Risk: Navigating GPL Copyleft Obligations in Contemporary Modular Software Architectures By: Jonathan Berschadsky and Rhett A. Sexton
You’ve built a cutting-edge software product—but could a simple technical choice expose your proprietary code to open-source obligations? The GNU General Public License (GPL), one of the most widely used open-source licenses, requires developers to share their source code if their software is considered a “derivative work” of GPL-covered code. One common point of confusion—and controversy—is linking. In particular, dynamic linking allows your code to call functions from a GPL-covered library at runtime without physically merging the source code. To some developers, this may seem like a clean separation. But the Free Software Foundation (FSF) contends that dynamic linking still creates a derivative work, triggering the full scope of GPL obligations. Courts, however, have not definitively resolved this issue. This unresolved question carries serious implications. If you misjudge the legal effect of linking to GPL code, you might be forced to disclose proprietary source code, face legal risk, or compromise your commercialization strategy. This article unpacks the technical and legal dimensions of linking, examines how the GPL may apply, and provides practical guidance to help developers and businesses navigate this legal gray zone. Thinking about using GPL-licensed code? Before you do, make sure you understand the legal risks. A misstep could cost you more than you think. I. Understanding GPL and the Uncertainty of Dynamic Linking The GNU General Public License (“GPL”) is widely used to openly distribute software without concern for copyright infringement, provided its terms are followed. The GPL requires developers to make the source code available and to freely allow use, modification, and redistribution. Importantly, developers may incorporate GPL-covered code into their own software only if they agree to license the combined work under the same terms—ensuring that any derivative software remains equally open. One of the most debated issues surrounding the GPL involves the question of whether dynamic linking to GPL-covered code triggers the same obligations. Dynamic linking occurs when a program accesses code stored in separate files (such as shared libraries) at runtime, rather than including it in its own executable. Instead of embedding external functions directly, the program contains references to their locations, allowing the necessary code to be loaded as needed. From a legal standpoint, the central question is whether such interaction creates a “derivative work” under copyright law, which would require the linking software to also be licensed under the GPL. The FSF takes the position that even software dynamically linked to GPL-covered libraries constitutes a derivative work and must therefore be released under the GPL if distributed. However, this interpretation has not been definitively addressed by the courts, and legal scholars continue to debate the issue. As a result, interpretations vary widely, and the practical implications for developers remain uncertain. Despite the GPL being decades old, the issue is far from settled. In today’s development landscape—where open-source libraries are increasingly integrated into complex, modular systems—the question of how dynamic linking interacts with GPL obligations remains highly relevant. The growing use of microservices, plug-in architectures, and cloud-based applications has only increased the need for legal clarity. Developers face significant risk if they unknowingly incorporate GPL-covered components into proprietary software without understanding the potential consequences. The Lesser General Public License (LGPL) was introduced as a more permissive alternative to the GPL, offering greater flexibility for developers. It allows developers to dynamically link to LGPL-covered libraries without requiring the entire application to be released under the same license, as long as specific conditions are met. These include giving prominent notice that the LGPL-covered library is used, providing the necessary documentation (such as the GPL and LGPL license texts), and ensuring that users can modify and relink the LGPL-covered components. Additionally, developers must make sure that the software can be recombined or relinked with a modified version of the library, which can be achieved using certain mechanisms like shared libraries. This makes the LGPL a more suitable choice for developers working in proprietary environments: You may convey a Combined Work under terms of your choice that, taken together, effectively do not restrict modification of the portions of the Library contained in the Combined Work and reverse engineering for debugging such modifications, if you also do each of the following: [...] (Section 4, LGPL 3.0). The LGPL 3.09 defines a “Combined Work” as being “a work produced by combining or linking an Application with the Library. The particular version of the Library with which the Combined Work was made is also called the ‘Linked Version’”. This article focuses specifically on the legal and practical implications of dynamic linking to GPL-covered code—not LGPL-covered code—which remains one of the most ambiguous and high-stakes areas under open-source licensing. While the LGPL was introduced to permit more flexibility in linking, many widely used libraries are still licensed under the GPL, and misinterpreting the scope of its copyleft effect can expose proprietary code to significant legal risk. Ultimately, the question of whether linking to GPL-covered code creates a derivative work remains unresolved and depends on context-specific factors, such as the nature of the interaction between the components and how tightly they are integrated. While the FSF contends that dynamic linking to GPL code triggers the same obligations as direct inclusion, this has not been definitively settled by the courts, leaving significant legal ambiguity. Even with the LGPL, developers must comply with certain obligations, such as ensuring users can modify and relink the LGPL-covered components. Given this legal uncertainty, developers should evaluate licensing implications early in the development process and seek legal counsel when in doubt—not only to interpret the terms of the license, but also to assess potential legal risks and ensure that their licensing strategy aligns with their business objectives. This is especially critical in today’s rapidly evolving software landscape, where open-source libraries are increasingly integrated into complex, modular systems. II. Background/Current Landscape The GNU GPL is a widely used free software license. As of the time of this article, the GPL is in its third version (“GPLv3”).[1] The GPL is based on the idea that software should be free for all to use, study, share, and modify. Any modifications made and distributed must also be licensed under the GPL. As a result, the developer must allow others to freely use the modified software and make the source code available to all users that request.[2] As opposed to modification, linking software presents a more difficult determination. Under United States copyright law, a derivative work is defined as “a work based on one or more preexisting works, such as a translation, musical arrangement, dramatization, fictionalization, or any other form in which a work may be recast, transformed, or adapted.”[3] For example, “a work consisting of editorial revisions, annotations, elaborations, or other modifications, which, as a whole, represent an original work of authorship, is a “derivative work.”[4] In the context of software, determining what constitutes a derivative work has been a longstanding challenge for legal scholars and developers alike. These challenges have caused substantial confusion in determining whether and when software that interacts with GPL-covered code—through mechanisms such as dynamic linking, shared libraries, or plugin systems—constitutes a derivative work and thereby becomes subject to the GPL’s copyleft requirements. A review of relevant case law provides a framework for understanding how courts approach derivative works in software.[5] For example, the 9th Circuit Court of Appeals has held that “a work is not derivative unless it has been substantially copied from the prior work.”[6] Cases show that Courts often look to the following considerations: (1) the derivative work must incorporate the protected work in some way;[7] (2) the market impact of the new work on the original;[8] (3) an over-broad definition of a derivative work could have a chilling effect on the market for follow-up innovations;[9] and (4) the work must be substantially similar to the underlying work.[10] These considerations are applied to software that incorporates code from a copyrighted source. Depending on how the original code is integrated into the new software, the new software may be a derivative work. Moreover, the aspects of linking between the underlying work and the new software largely impacts whether the new software is legally derivative, such as whether the original program statically links or dynamically links to the GPL covered code. To better understand the legal implications of dynamic linking under the GPL, it is helpful to contrast it with static linking, a more straightforward and commonly accepted basis for determining when a derivative work is created. Both static and dynamic linking involve connecting separate pieces of code, but they do so in different technical ways—with potentially different legal consequences. Courts and commentators often compare the two to assess how closely linked components must be before GPL obligations are triggered. “Static linking” generally refers to the process of directly combining source code from multiple components into a single executable program.[11] In this case, new source files are added to an existing program, and the resulting binary includes code from both the original GPL-covered work and the developer’s additions. Because the original and new code are compiled together into a unified whole, the result is typically considered a derivative work under the GPL. As such, the combined work must be distributed under the same GPL terms, including the requirement to provide source code upon request.[12] By contrast, “dynamic linking” occurs when separate programs interact at runtime—such as when a proprietary application calls functions from a GPL-covered shared library without incorporating that library’s code into the proprietary software’s source or binary.[13] This runtime separation creates legal uncertainty: does such interaction create a derivative work and therefore trigger GPL obligations? The answer depends in part on the nature and degree of interaction between the two components. Courts have yet to provide definitive guidance on this distinction, leaving developers to navigate a gray area with significant legal implications.[14] Many legal scholars and software special interest groups disagree on the consequences of dynamically linking software. For example, the FSF maintains that dynamic linking to a GPL-ed library creates a derivative work, subject to the original license.[15] In support of this, the FSF has moved away from the term “derivative works” and instead uses the term “modified works” to convey the same principle.[16] The latest GPL defines “modifying” a work as adapting it in a way that requires copyright permission—beyond merely making an exact copy.[17] The resulting work is called a “modified version” of the original work.[18] The GPL defines “modified works” as follows: To “modify” a work means to copy from or adapt all or part of the work in a fashion requiring copyright permission, other than the making of an exact copy. The resulting work is called a “modified version” of the earlier work or a work based on the earlier work.[19] However, the scope of this definition remains ambiguous and is still widely debated. The FSF often leans toward the broadest interpretation, which could include dynamically linked software.[20] Other legal entities, such as the Freedom Law Center, have also analyzed whether dynamically linking imputes the GPL. The Freedom Law Center argues that the GPL licenses limit copyleft to the scope of copyright but do not differentiate between dynamic and static linking in early-binding programming languages.[21] It points out that when two software components are joined together to make one work (whether through dynamic linking, static linking, or plugin systems), the combination infringes copyright if it required permission from the component copyright holders and that permission was not obtained or was improperly handled.[22] It has explained: The GPL licenses, then, are explicit about limiting the scope of copyleft to the scope of copyright. They do not, however, as is sometimes suggested, do so in a way that distinguishes “dynamic” from “static” linking of program code in “early-binding” programming languages. It is occasionally suggested that a subroutine “dynamically” linked to GPL’d code is, by virtue of the linking alone, inherently outside the scope of copyleft on the main work. When two software components are joined together to make one work (whether a main and some library subroutines, two objects with their respective methods, or a program and a “plugin”) the combination infringes the copyright on the components if the combination required copyright permission from the component copyright holders, and such permission was either not available or was available on terms that were not observed.[23] Despite numerous opinions, the final determination of what constitutes a derivative work under the GPL will ultimately be made by judges and courts.[24] The legal landscape around derivative works and software remains unsettled, and much remains undecided. Consequently, the question of whether dynamic linking creates a derivative work is not as straightforward as the FSF suggests. This ambiguity poses a significant challenge for developers. Whether the GPL applies to a piece of software can drastically impact how that software is commercialized and distributed. Developers may avoid using any GPL-covered code to mitigate the risks of accidental incorporation. Additionally, proprietary code may be unintentionally subjected to GPL obligations, leading to costly legal fees and potential litigation to clarify its status. Even though there is no definitive answer as to when the GPL applies to derivative works, developers can mitigate some of the uncertainty by considering certain factors early in the software development process. Taking a proactive approach—by analyzing how GPL-covered code is incorporated—can help prevent inadvertent licensing issues and protect proprietary code from being subjected to unintended GPL obligations. III. Assessing Derivative Work Status Under the GPL Before evaluating whether a program may trigger obligations under the GPL, developers must understand how their software interacts with GPL-covered components. Not all forms of interaction result in a derivative work—and the distinction can make the difference between maintaining proprietary rights and being required to open source one’s own code. Two key forms of interaction often examined are aggregation and linking. While both involve distributing or combining software with GPL-covered components, they are not treated equally under the GPL. Aggregation generally refers to distributing separate programs together without combining them into a single program, while linking—whether static or dynamic—can involve deeper functional integration that may trigger the GPL’s copyleft provisions. In evaluating these scenarios, developers should consider several factors, including: whether the GPL-covered code is merely packaged with the proprietary software or functionally intertwined; the degree and nature of the integration (e.g., how the components communicate and whether they depend on each other to operate); and whether the proprietary program can function independently of the GPL-covered component. These considerations are critical because, depending on the level of integration, developers may be obligated to disclose source code, permit redistribution, or allow others to commercialize their work. Failure to properly assess the way GPL-covered code is incorporated into a proprietary project can have significant legal and commercial consequences. a. Aggregation vs. Linking Typically, many commentators view aggregating software with a GPL covered program as not creating a derivative work. Software that is “aggregated” is distributed together but remaining separate and independent programs.[25] Accordingly, merely including a GPL program with proprietary software in a packaged product does not create a single “combined work” for legal purposes. This applies if the plug-in and proprietary software are independent and communicate in a way that does not create a single combined program (for example, via separate processes without direct linkage). In such cases, a developer can distribute both while maintaining the proprietary nature of their own original program. The GPL even allows developers to distribute original works with GPL covered works.[26] In the eyes of the GPL, the works are not derivative, even if distributed on the same medium, since they are separate programs and do not sufficiently interact.[27] Further, distributing a proprietary program alongside a GPL-licensed plug-in without significant functional integration may be treated as mere aggregation rather than forming a combined work. Aggregated works, where the proprietary code and GPL-licensed code do not form a single program, generally do not invoke GPL obligations for the proprietary program.[28] Rather than focus on a medium of distribution for aggregate software, the FSF places emphasis on the mechanism of communication and the semantics of the communication.[29] For example, programs that are in separate executable files with no other linking are likely merely aggregated.[30] Accordingly, aggregated programs without additional linking linked do not form a single work. The original work is not derivative and can be distributed without being covered by the GPL, which is widely accepted in the industry.[31] b. Level of Integration In contrast, code that depends on GPL‑covered software may be deemed a single combined work.[32] A primary consideration is whether the proprietary program depends on the GPL‑licensed plug‑in to function. If the plug‑in provides essential functionality—such as directly invoking its functions for critical tasks—it suggests a tightly coupled relationship, potentially making them inseparable for legal purposes. As a result, such strong integration is more likely to cause the proprietary code to be treated as a derivative work of the GPL code. Indicators of this include shared code, direct function calls, required dependencies, and other interactions showing the code was explicitly written to interoperate with the GPL component. Conversely, if the proprietary application and the GPL‑covered component interact loosely, such as through standardized interfaces or network communications without strong interdependence, they are more likely to remain separate works.[33] Loose coupling is evidenced by factors including communication through standard interfaces, independent functionality, and the ability to substitute other programs, all of which support the conclusion of loose coupling. Such loose coupling to the GPL code is less likely to result in the original work being held as legally derivative. c. Use of Shared Memory Another technical factor that can influence whether software components are considered a single work is the use of shared memory for communication.[34] Shared memory allows multiple processes to access a common memory space, enabling fast, low-level data exchange.[35] While it is often used to enhance performance, its legal implications under the GPL are ambiguous. If a proprietary application and a GPL-covered component use shared memory to exchange complex internal data structures, coordinate execution, or otherwise tightly integrate functionality, such interaction may be viewed as more than mere aggregation or loose coupling.[36] The FSF has emphasized that the semantics of communication—rather than the mechanism alone—are central to determining whether a single work has been created. Thus, while shared memory is technically distinct from linking, the way it is used could support a finding of strong integration, potentially triggering GPL obligations. Developers relying on shared memory to interface with GPL-covered components should carefully assess the nature and degree of that integration, especially if one component cannot function independently of the other. “Using shared memory to communicate with complex data structures is pretty much equivalent to dynamic linking.”[37] d. Nature of Integration If the proprietary program heavily relies on the GPL-licensed dynamic link library (DLL) for core functionality (e.g., calling its functions directly or through dependency to perform essential operations), it is more likely that the two form a single work under the GPL.[38] In this case, distributing the proprietary program together with the DLL could trigger the GPL’s requirements for the entire combined distribution. In contrast to a strong reliance on the GPL covered code, if the proprietary program merely loads and executes the GPL-licensed DLL without tight integration (e.g., the DLL functions as an optional plug-in that provides added functionality, but the main program can operate without it), the situation is similar to the original scenario described above. This loose coupling suggests that the two are not a “single work,” and the proprietary code would not necessarily fall under the GPL. A critical question here is whether the proprietary program would function fully and independently if the GPL-licensed DLL were replaced or removed. If not, and if there is a strong dependency, distributing the combined work may require releasing the proprietary program’s source code under the GPL. The FSF has distinguished aspects on the nature of integration through its GNU FAQs stating, pipes, sockets and command-line arguments are communication mechanisms normally used between two separate programs. So, when they are used for communication, the modules normally are separate programs. But if the semantics of the communication are intimate enough, exchanging complex internal data structures, that too could be a basis to consider the two parts as combined into a larger program.[39] Based on the potential scope of consequences, these factors should be primary considerations for developers when deciding if GPL code can be freely incorporated in one’s own code. Aggregating code as opposed to linking can avoid the GPL covering the developer’s code. Further, the nature and level of integration greatly affect if the GPL is imputed to the original code. e. Case Law Illustrations Some court cases illustrate how the nature and level of integration affect whether a derivative work is created. The court in Oracle Int’l Corp. V. Rimini found code that was only interoperable with the copyrighted source code was not enough to show a derivative work was created.[40] The court found derivative works needed something more than mere interoperability with only the protected code.[41] Instead, the original code must incorporate the copyrighted work and not just a modification or extension.[42] Further, the court stated incorporation of the copyrighted work can include nonliteral elements such as “the program architecture structure, sequence and organization, operational modules, and user interface.”[43] Similarly, the game genie was held not to create a derivative work when used to alter Nintendo’s copyrighted works.[44] The game genie was capable of altering different features of Nintendo’s video games such as increasing the number of lives or giving abilities not normally obtainable in Nintendo’s video games.[45] Since game genie merely enhanced the audiovisual displays that originated from Nintendo’s game cartridges, no derivative work results.[46] The court found the game genie did not incorporate Nintendo’s copyrighted work in some concrete or permanent form.[47] However, the court in Micro Star v. Formgen Inc. reached a different conclusion. There, a distributed CD included hundreds of levels for a popular video game known as Duke Nukem.[48] The levels were edited versions from the game’s included level build feature.[49] Further, the distributed CD with the levels only contained MAP files that referenced the source art library of the original game. Thus, the CD did not contain the original copyrighted artwork of the game but merely accessed the copyrighted source code of the art library.[50] The court found this activity formed an infringing derivative work.[51] The MAP files described the copyrighted audiovisual displays in a permanent or concrete form since the MAP files referenced the original source art files.[52] While an important case, it is important to note that the court reached this conclusion because the MAP files on the CD infringed the creative work’s story, and not just the code.[53] In the Court’s view, the levels were seen as closely resembling a sequel, for which the copyright owner has exclusive rights, and fell squarely within the definition of a derivative work.[54] It still remains unclear how linking between code that is decoupled from an artistic work might be analyzed under the derivative work framework. Further examples applying the above factors are provided in the next section. f. Practical Examples i. Examples Likely to Trigger GPL Obligations ii. Examples Likely Not Subject to the GPL i. Examples that are more likely to be subject to the GPL license 1. Tightly Integrated Components A proprietary software application directly calls functions and relies heavily on a GPL-licensed plug-in for core functionality, such as graphics rendering or database management may impute the GPL license on the proprietary software. The proprietary application would not function or offer its intended capabilities without this specific plug-in. The integration is strong and involves direct calls to the GPL-licensed library’s functions or APIs. The components work closely together, such that they form a combined program, triggering the “derivative work” obligations under the GPL. In this case, distributing the combined work would likely require making the source code for the entire work available under the GPL. 2. Combined Program A proprietary application that dynamically links with a GPL-licensed DLL (e.g., using dlopen or equivalent) to access specific functionality (e.g., data processing or cryptographic services) may form a derivative work. The proprietary software expects this library to be present and directly interacts with it through its API. Even though dynamic linking may seem like a looser coupling compared to static linking, the proprietary software’s dependency and interaction with the GPL library can create a combined program. When distributed together, the GPL obligations can apply to the whole. 3. Statically Linked Components A proprietary application includes a GPL-licensed library that is statically compiled into the executable, meaning that the library code is incorporated directly into the proprietary program at build time. Because the GPL-licensed code becomes an inseparable part of the distributed binary, the entire application is likely viewed as a single work under the GPL, requiring compliance, such as source code distribution under the GPL. ii. Examples that are less likely to be subject to the GPL license 1. Loosely Coupled Components A proprietary program communicates with a GPL-licensed program over a network interface or through standardized file formats, without linking to or incorporating the GPL-licensed code. In this case, the proprietary program and the GPL-licensed software are independent works that interact with each other through defined protocols, much like two separate applications communicating via HTTP. As they remain independent, the GPL’s requirements may not extend to the proprietary program. 2. Plug-In Architecture with Separation Proprietary programs that have a plug-in architecture that can load various plug-ins, including some that are GPL-licensed likely does not require a GPL license for the proprietary code. The proprietary software does not depend on any specific GPL plug-in and can function without it. If the plug-in and the proprietary program are sufficiently independent and can be used separately, they may not form a single work. The key is whether the plug-in and the main application function as separate entities or form a tightly coupled, combined work. 3. Aggregation on the Same Medium A proprietary software package and a GPL-licensed library distributed on the same medium (e.g., bundled in the same installer or package) but do not interact in a way that forms a single program (e.g., one is a word processor, the other is a separate spreadsheet application) likely does not result in the GPL covering the proprietary software. Merely placing two programs on the same distribution medium does not automatically make them a single work. If they are independent and do not rely on each other to function, they likely remain separate works. IV. Conclusion Imagine building an innovative proprietary application only to discover that a routine engineering choice—dynamically linking to a GPL‑licensed library—could force you to open‑source your entire codebase. That’s because dynamic linking may be viewed as creating a single “combined work,” bringing your proprietary software under the full scope of GPL’s copyleft requirements. If treated as a derivative work, you must comply with all GPL obligations: allow free use, provide source code, and grant redistribution rights. Yet this isn’t an automatic outcome. While some assume any dynamic link to GPL code instantly triggers these obligations, no court has definitively ruled that dynamic linking always creates a derivative work. Instead, each integration must be evaluated against critical factors: Aggregation vs. Integration: Simply shipping your proprietary binary alongside a GPL library (“mere aggregation”) is less risky than tight integration where your code calls GPL functions for core functionality. Degree & Nature of Coupling: Direct function calls, shared data structures, mission‑critical dependencies, or custom interfaces written specifically for the GPL component suggesta single work. Looser interactions—standard APIs, microservice endpoints, or replaceable plugins—favor separation. Functional Dependency: If your application cannot operate without the GPL module, that dependency strengthens the case for copyleft applying. By analyzing these factors early in the development lifecycle, you can avoid inadvertent GPL entanglements and the heavy consequences of unintended open‑sourcing. Heavy integration of GPL code can lead to a loss of control over your proprietary software—and potentially derail your commercialization strategy. Best Practices Design for Loose Coupling: Use plugin architectures, networked microservices, or well‑defined APIs that let you swap in non‑GPL alternatives. Audit Dependencies Early & Often: Map out every open‑source component during design to catch GPL‑licensed surprises well before release. Seek Legal Counsel Up Front: Engage an attorney experienced in open‑source licensing at the project’s outset to interpret obligations, assess risks, and align your licensing strategy with business objectives. By combining thoughtful architecture, proactive risk assessment, and timely legal advice, you can leverage the power of open‑source libraries—GPL or otherwise—while keeping your proprietary innovations under your control. [1] GNU General Public License, GNU Operating System, June 2, 2007, Version 3, https://www.gnu.org/licenses/gpl-3.0.en.html [2] Rob Ellis, Open Source, Dynamic Linking and Licensing Consideration for Developers, Media Tech Law, April 25, 2014, p. 2. [3] 17 U.S.C. § 101. [4] Id.; see also Rob Ellis, at p. 2. [5] Rob Ellis, at p. 2–3. [6] Oracle Int’l Corp. v. Rimini St., Inc., 123 F.4th 986, 995 (9th Cir. 2024) [7] Rob Ellis, at. p. 3. [8] Id. [9] Id. [10] Id. at p. 3, 5. [11] See Joseph A. Chern, Testing Open Source Waters: Derivative Works Under GPLv3, Chapman Law Review, Vol. 13:137, February 6, 2010, p. 146. [12] Rob Ellis, at p. 4, 5. [13] See Joseph A. Chern, at p. 146. [14] Joseph A. Chern, at p. 137–138, 142; Rob Ellis, at p. 5. [15] Joseph A. Chern, at p. 137. [16] Id. 143, n. 53, 144. [17] Id. at p. 144. [18] Id. [19] Id. at p. 144, n. 65. [20] Id. at p. 145. [21] Eben Moglen & Mishi Choudhary, Software Freedom Law Center Guide to GPL Compliance, 2nd Edition, Software Freedom Law Center, October 31, 2014, p. 4. [22] Id. [23] Id. [24] Joseph A. Chern, at p. 144, n. 65. [25] Frequently Asked Questions About the GNU Licenses, GNU Operating System, update date: October 15, 2024, https://www.gnu.org/licenses/gpl-faq.en.html [26] Id. [27] Id. [28] Id. [29] Id. [30] See Id. [31] See Id. [32] Id. [33] Id. [34] Id. [35] Id.; see also Joseph A. Chern, at p. 159. [36] Frequently Asked Questions About the GNU Licenses. [37] Id. [38] See Id. [39] Frequently Asked Questions About the GNU Licenses. [40] Oracle Int’l Corp. v. Rimini St., Inc., 123 F.4th 986, 996 (9th Cir. 2024). [41] Id. [42] Id. [43] Id. at 995 (quoting SAS Inst., Inc. v. World Programming Ltd., 64 F.4th 1319, 1326 (Fed. Cir. 2023)). [44] Lewis Galoob Toys, Inc. v. Nintendo of Am., Inc., 964 F.2d 965, 969 (9th Cir. 1992). [45] Id. at 967. [46] Id.at 968. [47] Id.at 969. [48] Micro Star v. Formgen Inc., 154 F.3d 1107, 1109 (9th Cir. 1998). [49] Id. [50] Id. at 1110. [51] Id. at 1112. [52] Id. at 1111-12. [53] See Id. at 1112. [54] Id.
The Jack Daniel’s Hangover: Defining “Trademark Use” & the Future of the Rogers Test in Light of the Supreme Court’s Decision By: Keehle Amicon, New York Law School
I. INTRODUCTION Jack Daniel’s is one of the most well-known names in whiskey.1 The 150-year-old liquor emerged from prohibition and World War II as a rock and roll music staple that thrust the whiskey into the spotlight.2 Aside from its appeal behind the bar, Jack Daniel’s has manifested beyond the bottle in the form of branded merchandise,3 song lyrics,4 and even virtual reality experiences.5 So it would be no surprise to find the whiskey that graced the hands of Frank Sinatra and Axl Rose6 to now be gracing the jaws of your canine… right? Enter VIP Products LLC (“VIP”), a dog-toy company that makes and sells squeaky rubber chew toys.7 In 2014, VIP released the “Bad Spaniels” dog toy, a squeaky chew toy that clearly resembles a bottle of Jack Daniel’s with a few key changes that associate the whiskey with dog excrement.8 Jack Daniel’s was not amused. The parties soon found themselves in court,9 with Jack Daniel’s accusing VIP of trademark infringement10 and VIP claiming Bad Spaniels was protected by the First Amendment.11 The case made its way to the Supreme Court in Jack Daniel’s Properties v. VIP Products LLC,12 where the Court was tasked with deciding whether the Bad Spaniels toy was entitled to an application of the Rogers test.13 The Rogers test is a defendant’s dream and a plaintiff’s nightmare.14 Born from the clash of an actress and the unauthorized use of her name in a movie title, the Second Circuit created the two-prong Rogers test to protect First Amendment interests in trademark law.15 However, over the course of three decades, Rogers has been applied to factual scenarios that extend the doctrine well beyond its limits16 and provide defendants with a quick avenue for dismissal.17 Despite the doctrine’s good intentions, the Rogers test fails to adequately balance a brand owner’s trademark rights under the Lanham Act and an alleged infringer’s freedom of expression rights under the First Amendment.18 In Jack Daniel’s, the Supreme Court imposed a significant limitation on the doctrine, holding that the Rogers test does not apply if the alleged infringer uses the mark as a trademark.19 However, the decision left unanswered what constitutes “trademark use” and when the inquiry should apply.20 II. LEGAL BACKGROUND A trademark is any word, phrase, symbol, design, or a combination of such elements that identify a business’s goods or services.21 The primary function of a trademark is to help consumers distinguish one brand’s goods from competitors’ goods in the marketplace.22 Under the Lanham Act,23 a brand owner can voluntarily register its trademark with the United States Patent and Trademark Office (USPTO).24 A trademark is eligible for federal registration with the USPTO if (1) the mark is used in commerce25 and (2) the mark is distinctive.26 a. Likelihood of Confusion The Lanham Act allows a trademark owner to bring a federal cause of action for trademark infringement against a party using a mark in a similar way to its own.27 To bring a trademark infringement claim, the plaintiff must show (1) the plaintiff has a valid trademark; (2) the plaintiff owns the mark; and (3) the defendant’s use of the mark creates a likelihood of confusion,28 meaning the defendant’s use of the mark is “likely to cause confusion, or to cause mistake, or to deceive.”29 A trademark registration with the USPTO is prima facie evidence of a valid trademark and trademark ownership, thus satisfying the first and second elements of a trademark infringement claim.30 The likelihood of confusion element is the “bête noir of trademark law—the thing that stands directly opposed to the law’s twin goals of facilitating consumers’choice and protecting producers’ good will.”31 The likelihood of confusion test is a fact-sensitive, multi-factor inquiry that aims to predict a consumer’s perception of a good in the marketplace.32 Each circuit has developed its own set of factors for assessing likelihood of confusion, but there is significant overlap in the factors across jurisdictions.33 The six most common likelihood of confusion factors are: (1) the strength of the plaintiff’s trademark; (2) the degree of similarity between the plaintiff’s and defendant’s marks; (3) the degree of relatedness between the plaintiff’s and defendant’s goods; (4) the defendant’s intent in using the mark; (5) evidence of actual consumer confusion; and (6) consumer sophistication in the marketplace.34 b. The Rogers Test In a trademark infringement suit, a defendant can argue that its use of the plaintiff’s mark in an expressive work is protected by the First Amendment.35 To address First Amendment concerns in trademark law, most circuits have adopted the Rogers test,36 a two-prong test developed in the Second Circuit’s 1989 decision, Rogers v. Grimaldi.37 In Rogers, the defendants produced and distributed “Ginger and Fred,” a film that followed two fictional Italian cabaret dancers, Pippo and Amelia, who imitated the famous dancing duo Ginger Rogers and Fred Astaire.38 Once the film was released in the United States, Ginger Rogers sued the producers and distributors of the film for, inter alia, trademark infringement, alleging that the defendants “creat[ed] the false impression that the film was about her or that she sponsored, endorsed, or was otherwise involved in the film[.]”39 The court rejected the actress’s trademark infringement claim, holding that titles of artistic works have an expressive element that implicate First Amendment values and “pose[] only a ‘slight risk’ of confusing consumers about either ‘the source or the content of the work.’”40 In this, the Second Circuit developed a two-prong test to evaluate when the use of a mark in an expressive work falls within the purview of the First Amendment rather than the Lanham Act: if the alleged infringer’s use of the mark is part of an expressive work (the “threshold inquiry”), then the defendant is entitled to First Amendment protection unless (1) the use has no artistic relevance to the underlying work (the “first prong”) or (2) the use is explicitly misleading as to the source or content of the work (the “second prong”).41 Three decades later, Rogers has gone beyond its intended use of safeguarding First Amendment rights in trademark law to finding in favor of virtually every defendant who raises the defense.42 In practice,“just about everything” satisfies the threshold inquiry of Rogers,43 and anything “above zero” satisfies the level of artistic relevance required for the first prong.44 As a result, much of the Rogers inquiry turns on the second prong which, unfortunately for plaintiffs, offers no reprieve for the defendant-friendly test.45 The “explicitly misleading” standard varies across the circuits,46 ranging from the Second Circuit’s “particularly compelling” showing under the likelihood of confusion factors to the Ninth Circuit’s inquiry into whether the defendant affirmatively created a false impression of affiliation with or endorsement from the plaintiff.47 Regardless of what circuit the parties find themselves in, courts are quick to dismiss a trademark infringement case following an application of the Rogers test at the motion to dismiss or summary judgment phase.48 Accordingly, as the Tenth Circuit noted in its refusal to adopt the Rogers test, courts that suspect abuse of Rogers are forced to contort the doctrine in an awkward application of precedent to achieve a just result.49 III. JACK DANIEL’S: THE SUPREME COURT’S DECISION In 2023, the Supreme Court placed a significant limitation on the application of the Rogers test in Jack Daniel’s. The case involves an unlikely pairing: Jack Daniel’s, the iconic whiskey brand and owner of the recognizable Jack Daniel’s trademarks,50 and VIP, a company that makes and sells chewable, squeaky dog toys under the name “Silly Squeakers.”51 VIP’s Silly Squeakers mostly consist of dog toys mimicking popular beverage brands such as Dos Perros (cf. Dos Equis), Smella Arpaw (cf. Stella Artois), and Doggie Walker (cf. Johnnie Walker).52 VIP owns registered trademarks in each of those names as well as in the product line name, Silly Squeakers.53 In 2014, VIP added the “Bad Spaniels” toy to its product line.54 The toy evoked the distinctive size, shape, and label of a Jack Daniel’s bottle with a few unsavory changes that associate the whiskey with dog excrement.55 For example, the dog toy’s label replaces “Jack Daniel’s” with “Bad Spaniels” and inserts “The Old No. 2 On Your Tennessee Carpet” for “Old. No. 7 Brand Tennessee Sour Mash Whiskey” in similar graphic form.56 Also, in lieu of “40% alc. by vol. (80 proof),” the small print at the bottom of the dog toy’s label claims “43% poo by vol.” and “100% smelly.”57 The Bad Spaniels packaging included a cardboard hangtag featuring the Silly Squeakers and Bad Spaniels product logos along with the disclaimer, “This product is not affiliated with Jack Daniel Distillery.”58 Shortly after the Bad Spaniels toy was released, Jack Daniel’s sent VIP a letter demanding VIP to stop selling the product, claiming that consumers would believe that Jack Daniel’s created or endorsed the dog toy.59 In turn, VIP sued Jack Daniel’s in the United States District Court for the District of Arizona, seeking a declaratory judgement that Bad Spaniels did not infringe the Jack Daniel’s trademarks.60 Jack Daniel’s counterclaimed for trademark infringement.61 At summary judgement, VIP argued that the Rogers test—not the likelihood of confusion test— should apply, and that Jack Daniels’ infringement claim failed under Rogers.62 The District Court rejected VIP’s arguments, reasoning that Rogers did not apply because VIP used Jack Daniels’ trademarks “to identify the source of its own products.”63 Accordingly, at a bench trial, the District Court found that Bad Spaniels would likely cause consumers to be confused about the source of the toy.64 The Ninth Circuit reversed on appeal, finding that the infringement claim should be assessed under the Rogers test, and remanded the case to the District Court.65 On remand, the District Court granted summary judgement to VIP on the infringement claim.66 The Ninth Circuit affirmed, and the Supreme Court granted certiorari to determine whether the Rogers test or the likelihood of confusion test applied.67 In its decision, while the Court refused to take a position on the merit of Rogers, the Court deemed that the doctrine is “cabined” in that its application has been limited to cases involving “non-trademark uses.”68 In this, the Court held that the Rogers test does not apply “when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.”69 To illustrate this point, the Court provided a hypothetical: Suppose a filmmaker uses a Louis Vuitton suitcase to convey something about a character (he is the kind of person who wants to be seen with the product but doesn’t know how to pronounce its name). Now think about a different scenario: A luggage manufacturer uses an ever-so-slightly modified LV logo to make inroads in the suitcase market. The greater likelihood of confusion inheres in the latter use, because it is the one conveying information (or misinformation) about who is responsible for a product. That kind of use “implicate[s] the core concerns of trademark law” and creates “the paradigmatic infringement case.” So the Rogers test—which offers an escape from the likelihood-of-confusion inquiry and a shortcut to dismissal—has no proper application.70 Additionally, the Court reasoned that, since most trademarks have some expressive element, any expressive value proffered by an alleged infringer’s use of the mark cannot be shielded by an application of the Rogers test.71 Rather, the Court found that free expression interests are accounted for in the likelihood of confusion inquiry.72 Thus, the Rogers test does not apply when an alleged infringer uses a mark as an indication of source, regardless of any expressive value.73 Applying this to the case at bar, the Court found that VIP admitted to using the Bad Spaniels trademark as a source identifier.74 VIP alleged in its complaint that, though unregistered, it owns and uses the Bad Spaniels trademark for its dog toy and intended to use the mark to identify VIP as the source.75 Outside of the complaint, the Court pointed to additional evidence of VIP’s intent to use Bad Spaniels as an indicator of source.76 First, looking at the product’s marketing, the Court found that the Bad Spaniels and Silly Squeakers product logos on the toy’s hangtag served the same source-identifying function.77 Second, VIP’s practice of registering some—though not all—of its beverage-themed dog toys under the Silly Squeakers line was an “admission that it is using the Bad Spaniels (née Jack Daniel’s) trademarks as trademarks, to identify product source.”78 Accordingly, the Court remanded the case with instructions to apply the likelihood of confusion test.79 IV. JACK DANIEL’S AFTERMATH & PROPOSED FRAMEWORK Despite the Court’s “narrow” holding,80 the impact of Jack Daniel’s on the future of the Rogers test is undeniable.81 Indeed, Justice Gorsuch’s concurrence, with Justice Thomas and Justice Barrett joining, stated, “I write separately only to underscore that lower courts should handle Rogers… with care. … [W]e necessarily leave much about Rogers unaddressed… and lower courts should be attuned to that fact.”82 This concession highlights the ambiguity in how the Jack Daniel’s inquiry fits into the Rogers test and what constitutes “trademark use” under the Jack Daniel’s inquiry.83 To attempt to resolve these questions, this Note proposes a revised Rogers framework that eliminates the threshold inquiry of the Rogers test, replaces the first prong of the Rogers test with the Jack Daniel’s inquiry, and, only if the first prong fails, reviews the second prong of Rogers.84 Moreover, this Note introduces a methodology for analyzing the Jack Daniel’s inquiry by synthesizing relevant definitions under the Trademark Manual of Examining Procedure (TMEP)85 and recent case law applying the Rogers test in light of Jack Daniel’s. a. Eliminate the Threshold Inquiry of the Rogers Test To begin, this Note’s proposed framework eliminates the threshold inquiry of the Rogers test.86 As the Supreme Court made clear in Jack Daniel’s, “trademarks are often expressive, in any number of ways[,]” and “few cases would…get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter.”87 Indeed, recent lower court decisions applying Jack Daniel’s have largely replaced the threshold inquiry with the Jack Daniel’s inquiry.88 Therefore, the threshold inquiry of the Rogers test serves no purpose in the post-Jack Daniel’s landscape and should be discarded.89 b. Replace the First Prong of the Rogers Test with the Jack Daniel’s Inquiry Next, the first prong of Rogers should be replaced with the Jack Daniel’s inquiry of whether the alleged infringer used the trademark as a designation of source. Given the extremely low showing required to satisfy the first prong, courts have been “liberal and consistent” with finding that the alleged infringer’s use of the mark is artistically relevant to the underlying work.90 In this, the first prong serves no real purpose in the Rogers test and should be replaced with the Jack Daniel’s inquiry. To address the Jack Daniel’s inquiry, lower courts should ascertain the alleged infringer’s intent in using the mark: did the alleged infringer intend to use the mark as a designation of source? The thrust of this inquiry is to identify the alleged infringer’s motive for using the plaintiff’s mark.91 As such, this Note’s proposed methodology for assessing the Jack Daniel’s inquiry preserves the First Amendment concerns addressed in Rogers while preventing defendants from abusing the doctrine by crying “artist.”92 An alleged infringer’s intent can be shown through explicit or implicit evidence. Explicit evidence of intent includes a defendant’s admission of planning to use the mark as an indicator of source93 or a trademark application or registration for the defendant’s mark with the USPTO.94 This evidence alone would be sufficient to satisfy the Jack Daniel’s inquiry. In the absence of explicit evidence, courts should weigh the following three factors to determine if there is implied intent: (1) whether the alleged infringer is using the mark in connection with a single good or work or with a product line or series of goods or works; (2) the prominent inclusion of either party’s marks on the alleged infringer’s packaging, website, or promotional materials for the good or work; and (3) whether the alleged infringer’s good or work is conceivably related to the plaintiff’s goods so as to put the parties in competition with each other. First, it should be determined whether the alleged infringer95 is using the mark in connection with a single good or work or with a product line or series of goods or works. The TMEP defines a single creative work as a work “in which the content does not change, whether that work is in printed, recorded, or electronic form.”96 Books, sound recordings, films, and theatrical performances are usually single works.97 A single creative work is not registrable as a trademark “unless the title has been used on a series of creative works.”98 The TMEP defines a series as “a type of work in which the content changes with each issue or performance[,]” such as magazines, “books with a second or subsequent edition in which the content changes significantly,” computer software, and coloring books.99 Given the trademark registration requirements, it naturally follows that a defendant’s use of a mark in a series of creative works would be indicative of intent to use the mark as a designation of source and should thus be subject to the Lanham Act.100 The facts from Hermès International v. Rothschild101 are helpful in illustrating this factor in practice. In Hermès, Mason Rothschild, a “marketing strategist,” created and released one hundred NFTs depicting a blurry, furry version of the French luxury fashion brand Hermès’ iconic Birkin handbag.102 The MetaBirkins were available for purchase on Rothschild’s website, “www.metabirkins.com,” and collectively sold for over $1.1 million.103 Shortly after Hermès sent Rothschild a cease and desist letter, Hermès sued Rothschild for, inter alia, infringing on its Birkin trademarks.104 Rothschild asserted a First Amendment defense.105 Finding that the Rogers test was the appropriate standard for review,106 the court instructed the jury that the first prong was satisfied as a matter of law and that “Rothschild’s works entitled him to total First Amendment protection…unless Hermès proved that Rothschild intentionally misled consumers into believing that Hermès was backing its products[.]”107 The jury found Rothschild liable for trademark infringement under the Rogers test, determining that Rothschild intentionally used Hermès’ marks “to defraud consumers into believing, by his use of variations on Hermès’ trademarks that Hermès was endorsing his lucrative MetaBirkins NFTs.”108 Under the first proposed factor of intent, Rothschild’s one hundred MetaBirkins NFTs would likely qualify as a series of works under the TMEP definition and would thus be evidence of implied intent. However, before Rothschild’s MetaBirkins project, Rothschild made a single NFT that depicted a fetus inside of a transparent Birkin bag called “Baby Birkin.”109 In the case of the Baby Birkin, since the work would likely qualify as a single work under the TMEP, the first proposed factor of intent would not be satisfied. Accordingly, whether the alleged infringer used the mark in connection with a single good or work or with a product line or series of goods or works is indicative of intent.110 Second, intent can be shown through the prominent111 inclusion of either party’s marks on the alleged infringer’s packaging, website, or promotional materials for the good or work.112 To register a trademark, the TMEP requires applicants to submit a specimen showing the mark affixed to the good’s packaging, displays, hangtags, labels, or an associated product listing for the good to demonstrate that the mark is being used in commerce.113 The Jack Daniel’s decision identified that this type of evidence is indicative of trademark use, finding that VIP’s packaging of the dog toy—namely, the Bad Spaniels’ hangtag featuring the Silly Squeakers and Bad Spaniels logos—served as a designation of source.114 Vans, Inc. v. MSCHF Product Studio, Inc.115 exemplifies this point. In Vans, MSCHF, an art collective, created and sold a shoe called the “Wavy Baby” that was, in essence, a “wobbly” version of the footwear and apparel company Vans’ “Old Skool” shoe.116 The Wavy Baby sneakers featured “the Old Skool black and white color scheme, the side stripe, the perforated sole, the logo on the heel, the logo on the footbed, and the packaging.”117 Vans sued MSCHF for, inter alia, trademark infringement, and MSCHF raised a First Amendment defense.118 The court found that the Rogers test did not apply because MSCHF sought to benefit off Vans’ good will by creating a shoe that evoked the Vans marks.119 Thus, the court found that the likelihood of confusion factors applied.120 Under the second proposed factor of intent, MSCHF’s use of its logos on the shoe and its packaging would be indicative of intent to use the mark as a designation of source. Even though the Wavy Baby shoes did not use the Vans logo per se, like with Jack Daniel’s, the fact that MSCHF’s shoes evoked the Vans marks would be sufficient to satisfy the second factor.121 Therefore, whether the alleged infringer prominently included either party’s marks on its packaging, website, or promotional materials for the good or work supports a showing of intent. Third, whether the alleged infringer’s good or work is conceivably related to the plaintiff’s goods so as to put the parties in competition with each other supports a showing of intent. As the web of related goods is ever evolving, this factor should be treated as a sliding scale: evidence of identical goods would be more persuasive than goods that are somewhat or not at all related. For example, in Vans, the fact that Vans and MSCHF both sold sneakers would be clear evidence of intent to use the mark as an indicator of source under this factor. On the other hand, the TMEP offers guidance for goods that are not inherently identical. The TMEP examines relatedness of goods in terms of whether “the goods… [are] related in some manner and/or the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that they emanate from the same source.”122 Under the TMEP, evidence such as news articles or internet searches showing the goods are used together by purchasers or advertisements showing that the goods are advertised together is sufficient proof that the goods are related.123 The concept of relatedness of goods is discussed in Mar Vista Entertainment, LLC v. THQ Nordic AB,124 where THQ Nordic AB (“THQ”), a Swedish video game publisher known for its 3D survival horror game franchise “Alone in the Dark,” counterclaimed against Mar Vista Entertainment (“Mar Vista”) for infringing on its trademark by releasing a horror film titled “Alone in the Dark.”125 The opinion explained that “[i]n the entertainment industry, it is common practice for movies to be based on popular video games,” and THQ had in fact licensed the rights for two “Alone in the Dark” horror films, one of which was loosely based on the plot of the video game.126 Responding to Mar Vista’s First Amendment defense, the court found that the Rogers test did not apply because THQ sufficiently alleged in its first amended counterclaim that Mar Vista intended to mislead consumers to believe that the film was based on the“Alone in the Dark” video games or created by the same source.127 Assessing Mar Vista under the third factor, the entertainment industry’s custom of creating films based on video game plots—as well as THQ’s previous licenses to create films based on its video game—would be sufficient to show that the goods are related. Therefore, whether the alleged infringer’s good or work is conceivably related to the plaintiff’s goods so as to put the parties in competition with each other serves as an indication of intent. c. Apply the Second Prong of the Rogers Test If the court determines that the alleged infringer intended to use the mark as an indication of source under the Jack Daniel’s inquiry, then the First Amendment inquiry ends and the court should evaluate the claim under the likelihood of confusion standard. However, if the court finds that the alleged infringer did not intend to use the mark as a trademark, then the court should proceed to the second prong of Rogers to determine whether the defendant’s use of the mark was explicitly misleading as to the source of the work. V. CONCLUSION While the Rogers court correctly found that First Amendment rights should be insulated from trademark infringement claims, the Supreme Court appropriately limited the reach of Rogers in Jack Daniel’s. That said, lawyers and lower courts alike have wrestled with how and when the Jack Daniel’s inquiry should apply. This Note’s proposed methodology for evaluating the Jack Daniel’s inquiry enables courts to navigate the interplay between trademarks and the First Amendment by grounding the original Rogers court concerns within the context of trademark law. Just as Frank Sinatra and Jack Daniel’s proved to be an iconic pair, as demonstrated by this Note’s proposed framework, the First Amendment and the Lanham Act can complement each other when balanced in a fair and viable test. 1 See Born to Make Whiskey, JACK DANIEL’S, https://www.jackdaniels.com/en-us/our-story (last visited Nov. 26, 2024) (describing the fame of Jack Daniel’s whiskey); Clay Risen, Jack Daniel’s Tweaks Its Brand, From Bland to Exclusive, THE NEW YORK TIMES (Oct. 12, 2023), https://www.nytimes.com/2023/10/12/dining/drinks/jack-daniels-whiskey-rebrands.html (providing an overview of the Jack Daniel’s brand). 2 See Born to Make Whiskey, supra note 1 (giving an overview of the Jack Daniel’s 150-year history). 3 See Jack Daniel’s Store, https://store.jackdaniels.com/ (last visited Nov. 26, 2024) (selling Jack Daniel’s merchandise). 4 See TiKToK, GENIUS, https://genius.com/Kesha-tik-tok-lyrics (last visited Nov. 26, 2024) (providing the lyrics to “TiK ToK” by Ke$ha which includes the line “Before I leave, brush my teeth with a bottle of Jack”). 5 See Jack Daniel’s Tennessee Honey Presents Art, Beats & Lyrics., Jack Daniel’s, https://www.jackdaniels.com/en-us/vault/art-beats-lyrics (last visited Nov. 26, 2024) (detailing the Jack Daniel’s immersive virtual reality experience, “The Verse”). 6 See Clay Risen, supra note 1 (identifying music icons Frank Sinatra and Axl Rose as Jack Daniel’s devotees). 7 See Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140, 148 (2023) (outlining VIP’s business). 8 See id. at 149–50 (describing the Bad Spaniels toy). 9 See id. at 150 (noting that Jack Daniel’s sent VIP a cease and desist letter before VIP initiated court proceedings, seeking a declaratory judgment that the Bad Spaniels toy did not infringe the Jack Daniel’s marks). While this case involves claims for both trademark infringement and trademark dilution, id., this Note only discusses the trademark infringement claim. 10 See id. at 150–51 (identifying that Jack Daniel’s counterclaimed against VIP for trademark infringement). 11 See id. at 151 (detailing VIP’s First Amendment argument for the trademark infringement claim). A defendant can raise a First Amendment defense in a trademark claim which allows for an application of the Rogers test instead of the standard likelihood of confusion test. See id. (describing the First Amendment defense in the context of VIP’s arguments). 12 599 U.S. 140 (2023) 13 See id. at 152–53 (defining the issue of the case as “[s]hould [Jack Daniel’s] have had to satisfy the Rogers threshold test before the case could proceed to the Lanham Act’s likelihood-of-confusion inquiry?”). When an expressive work is involved, the “Rogers test requires dismissal of an infringement claim at the outset unless the complainant can show one of two things: that the challenged use of a mark ‘has no artistic relevance to the underlying work’ or that it ‘explicitly misleads as to the source or the content of the work.’” Id. at 151. 14 See id. at 157 (stating that the Rogers test is “an escape from the likelihood-of-confusion inquiry and a shortcut to dismissal”); see also Amy (Salomon) McFarland, The Last Dance? The Future of the “Rogers Test” After the Jack Daniel’s Decision, THE NATIONAL LAW REVIEW (Mar. 28, 2024), https://natlawreview.com/article/last-dance-future- rogers-test-after-jack-daniels-decision (observing that an application of the Rogers test in trademark infringement claims usually results in favor of the defendant at the motion to dismiss or summary judgment stage). 15 See Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989) (describing the First Amendment concerns that informed the creation of the Rogers test). The FirstAmendment of the United States Constitution protects the right to freedom of expression, granting individuals the right to express themselves through words or symbolic actions without government interference or regulation. See First Amendment, CORNELL LAW SCHOOL, https://www.law.cornell.edu/wex/first_amendment (last visited Nov. 27, 2024) (explaining the First Amendment). 16 See Stouffer v. Nat’l Geographic Partners, LLC, 400 F. Supp. 3d 1161, 1178–79 (D. Colo. 2019) (giving a rationale for its refusal to adopt the Roger stest). 17 See JackDaniel’s, 599 U.S. at 157 (recognizing that the Rogers test offers “a shortcut to dismissal”); see also McFarland, supra note 14 (same). 18 See, e.g., Stouffer, 400 F. Supp. 3d at 1177–79 (acknowledging the need to limit the Lanham Act in light of First Amendment concerns but refusing to adopt the Rogerstest as the method to address those concerns). 19 See Jack Daniel’s, 599 U.S. at 153 (holding that the Rogers test does not apply “when an alleged infringer uses a trademark in the way the Lanham Act most cares about: as a designation of source for the infringer’s own goods.”). 20 See id. at 165 (J. Gorsuch concurring) (“we necessarily leave much about Rogers unaddressed.”). 21 Id. at 145; see also What is a trademark?, USPTO, https://www.uspto.gov/trademarks/basics/what-trademark (last visited Nov. 27, 2024) (defining a trademark). For the purposes of this Note, only goods will be discussed. 22 See Jack Daniel’s, 599 U.S. at 145–46 (identifying the primary function of trademarks); see also What is a trademark?, supra note 21 (same). 23 The Lanham Act, codified as 15 U.S.C. § 1051, was enacted by Congress in 1946 and serves as the “core federal trademark statute.” Jack Daniel’s, 599 U.S. at 145; see also Lanham Act, CORNELL LAW SCHOOL, https://www.law.cornell.edu/wex/lanham_act (last visited Nov. 27, 2024) (giving an overview of the LanhamAct). 24 See Jack Daniel’s, 599 U.S. at 146 (stating that mark owners can voluntarily register their trademarks). 25 See Lanham Act, supra note 23 (providing the two basic requirements fortrademark registration). Amark is used in commerce if the mark is affixed to goods that are sold or transported out of state. See Application filing basis, USPTO, https://www.uspto.gov/trademarks/basics/ application-filing-basis (last visited Nov. 27, 2024) (explaining the use in commerce requirement); see also TMEP § 901.01 (May 2024) (defining use in commerce as “the bona fide use ofa mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”). To show that the mark is being used in commerce, applicants must submit a specimen with their trademark application thats hows their mark affixed to the good’s packaging, displays, hangtags, labels, or an associated product listing for the good. See Application filing basis, USPTO, https://www.uspto.gov/trademarks/basics/application-filing-basis (last visited Nov. 27, 2024) (click on the linked text for “specimen”) (detailing the evidence required forproving a mark is used in commerce); see also TMEP § 901.01 (May 2024) (listing acceptable specimen). 26 See Lanham Act, supra note 23 (providing the two basic requirements for trademark registration). A mark is distinctive if it allows consumers to easily distinguish the owner’s mark from other goods or services in the marketplace. See Strong trademarks, UPSTO, https://www.uspto.gov/trademarks/basics/strong-trademarks (last visited Nov. 27, 2024) (click on the linked text for “inherently distinctive”) (defining a distinctive mark and the qualities of a strong trademark). 27 See Jack Daniel’s, 599 U.S. at 147 (relaying that, under the Lanham Act’s federal cause of action for trademark infringement, “the owner of a mark sues someone using a mark that closely resembles its own.”). 28 See Lanham Act, supra note 23 (listing the three elements of a trademark infringement claim). 29 See Jack Daniel’s, 599 U.S. at 147 (quoting §§ 1114(1)(a), 1125(a)(1)(A)) (calling the likelihood of confusion standard the statutory “keystone”). 30 See Jack Daniel’s, 599 U.S. 140, 146–47 (2023) (citing Iancu v. Brunetti, 588 U.S. 388, 391 (2019)) (identifying the benefits of a federally registered trademark in a trademark infringement claim); Why register your trademark?, USPTO, https://www.uspto.gov/trademarks/basics/ why-register-your-trademark (last visited Nov. 27, 2024) (noting a benefit of federal trademark registration is the “[l]egal presumption that [the brand owner] own[s] the trademark and ha[s] the right to use it”). 31 Jack Daniel’s, 599 U.S. at 147. 32 See 1 Gilsonon Trademarks § 2A.05 (2024) (giving a general explanation of the likelihood of confusion test). 33 See 1A Gilson on Trademarks § 5.02 (2024) (stating that the circuits’ likelihood of confusion factors “overlap[], [are] closely related and, frequently, identical.”); see also Andrew C. Michaels, Confusion in Trademarked NFTs, STANFORD JOURNAL OF BLOCKCHAIN LAW & POLICY (Jan. 2, 2024), https://stanford-jblp.pubpub.org/pub/confusion- trademarked-nfts/release/1 (identifying that there are roughly six “core” likelihood of confusion factors shared across the circuits). 34 See Andrew C. Michaels, supra note 33 (listing the six most common likelihood of confusion factors); see also 1A Gilson on Trademarks § 5.02 (2024) (providing each circuit’s likelihood of confusion factors). 35 See Jack Daniel’s, 599 U.S. at 151 (outlining VIP’s argument at the District Court level that the Bad Spaniels toy was part of an expressive work and was thus protected by the First Amendment); see also Taylar E. Green, Commentary: The Rogers Test Dances Between Trademark Protection Under The Lanham Act And Freedom of Speech Under The First Amendment, 112 THE TRADEMARK REPORTER 843, 848 (2022), https://www.inta.org/wp-content/uploads/public-files/resources/the-trademark-reporter/TMR-Vol-112-No-05-Green.pdf (explaining the purpose and application of the Rogers test). 36 See Taylar E. Green, supra note 35, at 848 (“To prevent conflict between the First Amendment and the Lanham Act, the Second Circuit in Rogers v. Grimaldi adopted a two-prong test”). 37 875 F.2d 994 (2d Cir. 1989). See generally id. (creating the two-prong test to protect First Amendment interests in trademark infringement claims). “[T]he Third, Fifth, Sixth, Ninth, and Eleventh Circuits, and federal district courts within the Seventh and Tenth Circuits[,]” have adopted the Rogers test. Lynn M. Jordan and David M. Kelly, Another Decade of Rogers v. Grimaldi: Continuing to Balance the Lanham Act with the First Amendment Rights of Creators of Artistic Work, 109 THE TRADEMARK REPORTER 833, 834–35 (2019), https://www.inta.org/wp- content/uploads/public-files/resources/the-trademark-reporter/vol109_no5_a1_jordan_kelly.pdf. 38 See Rogers, 875 F.2d at 996–97 (summarizing the facts of the case). 39 See id. at 996–97 (describing the cause of action for trademark infringement). 40 See Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140, 153 (2023) (quoting Rogers, 875 F.2d at 999–1000) (explaining the Rogers holding). 41 See Rogers, 875 F.2d at 999 (stating the two-prong test “[i]n the context of allegedly misleading titles using a celebrity’s name”); Jack Daniel’s, 599 U.S. at 153–54 (providing the Rogers test threshold inquiry and two prongs); see also Amy (Salomon) McFarland, supra note 14 (same). 42 See Lynn M. Jordan and David M. Kelly, supra note 37, at 871 (“Nearly every case applying Rogers has done so on either a motion to dismiss or on summary judgment.”); Amy (Salomon) McFarland, supra note 14 (noting that cases involving Rogers are usually dismissed at the motion to dismiss or summary judgement phase). 43 See Jack Daniel’s, 599 U.S. at 157–59 (stating that, given that trademarks are almost always expressive, “few cases would even get to the likelihood-of-confusion inquiry if all expressive content triggered the Rogers filter.”); see also Massimo B. Capizzi, Ninth Circuit Provides Further Guidance on Trademark Lawsuits Involving “Expressive Works”, PROSKAUER: MINDING YOUR BUSINESS (Feb. 23, 2024), https://www. mindingyourbusinesslitigation.com/2024/02/ninth-circuit-provides-further-guidance-on-trademark-lawsuits-involving-expressive-works/ (explaining how the Rogers test is broadly applied because “just about everything” qualifies as an expressive work). 44 See Amber Grant, NOTE: “Free” Speech: Reframing the Rogers Test to Adequately Balance Rights in a Rapidly Evolving Digital Era, 76 FED. COMM. L.J. 399, 405 (2024) (providing that the standard for artistic relevance is anything “above zero”); see also Taylar E. Green, supra note 35, at 850 (describing how courts have been “liberal and consistent” in finding the first prong satisfied); Lynn M. Jordan and David M. Kelly, supra note 37, at 840 (“Very few cases have ever held that there was no artistic relevance.”). 45 See Amber Grant, supra note 44, at 412 (“the rights of trademark owners are solely within the ‘explicitly misleading’ prong as the First Amendment will almost always prevail on the ‘artistic relevance’prong.”). 46 See Lynn M. Jordan and David M. Kelly, supra note 37, at 845 (identifying that the second prong of Rogers is inconsistent in application across the circuits); Taylar E. Green, supra note 35, at 852 (same). 47 See Anthony J. Dreyer, Shay Dvoretzky, Jordan Feirman, et. al., Supreme Court Sharply Limits Applicability of Rogers v. Grimaldi Test for Trademark Infringement, SKADDEN, ARPS, SLATE, MEAGHER & FLOM LLP (June 8, 2023), https://www.skadden.com/insights/publications/ 2023/06/supreme-court-sharply-limits-applicability (stating the standard for evaluating the second prong of Rogers in the Second and Ninth Circuits). 48 See Lynn M. Jordan and David M. Kelly, supra note 37, at 871 (explaining that the Rogers test usually leads to quick dismissal of a trademark infringement claim); see also Amy (Salomon) McFarland, supra note 14 (same). 49 See Stouffer v. Nat’l Geographic Partners, LLC, 400 F. Supp. 3d 1161, 1178–79 (D. Colo. 2019) (describing the “square-peg/round-hole problem” that have led other circuits to “analytically messy” decisions under Rogers). 50 Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140, 144 (2023) (describing Jack Daniel’s). Jack Daniel’s owns trademarks in “Jack Daniel’s,” “Old No. 7,” the arched “Jack Daniel’s” logo, the stylized white filigree (i.e., twirling white lines), and the Jack Daniel’s distinctive square bottle. See id. at 148 (listing the Jack Daniel’s marks). 51 See id. at 148–49 (identifying VIP’s business). 52 Id. 53 Id. at 149. 54 Id. VIP did not apply to register “Bad Spaniels” as a trademark, but its complaint alleged that it owns and uses the Bad Spaniels trademark. Id. 55 See id. at 149–50 (describing how the Bad Spaniels toy mimicked a Jack Daniel’s bottle). 56 Id. 57 Id. at 150. 58 Id. at 150. 59 See id. at 144, 150 (laying out the contents of Jack Daniels’ cease and desist letter). 60 See VIP Prods., LLC v. Jack Daniel’s Props., No. 14-2057, 2016 U.S. Dist. LEXIS 133387, at *3–4 (D. Ariz. Sept. 27, 2016) (listing VIP’s claims). 61 See Jack Daniel’s, 599 U.S. at 150–51 (explaining the procedural history). 62 See id. at 151 (providing VIP’s arguments). 63 See id. (stating the District Court’s decision). 64 See id. at 151–52 (noting the District Court’s holding under the likelihood of confusion test). 65 See id. at 152 (explaining the Ninth Circuit’s decision). 66 See id. (providing the District Court’s decision after the Ninth Circuit remanded). 67 See id. (detailing the issues on appeal for the Supreme Court’s review). 68 See id. at 155–56 (giving its view of Rogers). 69 Id. at 153. 70 Id. at 157 (citationomitted). 71 See id. at 157–58 (stating that Rogers would “take over much of the world” if it applied whenever use of a trademark contained expressive content). 72 See id. at 159 (“When a mark is used as a mark (except, potentially, in rare situations), the likelihood-of-confusion inquiry does enough work to account for the interest in free expression.”). 73 See id. at 153 (dismissing VIP’s argument that the Rogers test should apply because Bad Spaniels was parodying Jack Daniel’s, reasoning that any expressive value added by the parody could “make a difference” in the application of the likelihood of confusion test). 74 See id. at 159–60 (agreeing with the District Court’s initial decision that VIP used the Bad Spaniels trademark as a source identifier). 75 See id. at 160 (pointing out the allegations in VIP’s complaint that showed VIP conceded the point of trademark use). 76 See id. (“In this Court, VIP says the complaint was a mere ‘form allegation’—a matter of ‘rote.’ But even if we knew what that meant, VIP has said and done more in the same direction.”). 77 See id. (identifying that the logos on the Bad Spaniels hangtag served a source-identifying function). 78 Id. 79 See id. at 163 (summarizing the Court’s decision). 80 See id. at 153 (describing the decision as the “narrower path” in refusing to take a stance onthe merit of Rogers). 81 See, e.g., Bruce Isaacs, Is Rogers v. Grimaldi dead? No! but…, DAILY JOURNAL (June 14, 2023), https://www.dailyjournal.com/articles/ 373282-is-i-rogers-v-grimaldi-i-dead-no-but (explaining the impact of the Rogers test); Amy (Salomon) McFarland, supra note 14 (same). 82 Jack Daniel’s, 599 U.S. at 165 (Justice Gorsuch concurring). 83 See, e.g., Anthony J. Dreyer, Shay Dvoretzky, Jordan Feirman, et. al., supra note 47 (identifying the questions left unanswered from the Jack Daniel’s decision); Bruce Isaacs, supra note 83 (same); Amy (Salomon) McFarland, supra note 14 (same). 84 Despite some indication that Rogers may not survive another review by the Supreme Court, see, e.g., Jack Daniel’s, 599 U.S. at 165 (Justice Gorsuch concurring), this Note supports the notion that First Amendment protections in trademark law should exist. That said, this Note sees the Jack Daniel’s decision as an opportunity to update the Rogers test to better balance trademark law with First Amendment concerns. 85 The TMEP “provide[s] trademark examining attorneys in the USPTO, trademark applicants, and attorneys and representatives for trademark applicants with a reference work on the practices and procedures relative to… register[ing] marks in the USPTO. The Manual contains guidelines…which Examining Attorneys are required or authorized to follow in the examination of trademark applications.” TMEP, Foreword (May 2024). “Trademark examining attorneys review trademark applications for compliance with the Lanham Act for the purpose of determining registrability in the United States.” Become a trademark examining attorney, USPTO, https://www.uspto.gov/jobs/become- trademark-examining-attorney (last visited Nov. 29, 2024). Considering that the TMEP is a primary source of guidance for determining whether a trademark should be registered with the USPTO, the source is valuable for defining the Jack Daniel’s inquiry. 86 See Jack Daniel’s, 599 U.S. at 161 (“There is no threshold test working to kick out all cases involving ‘expressive works.’”). 87 Id. at 159–60. 88 See, e.g., Punchbowl, Inc. v. Aj Press, LLC, 90 F.4th 1022, 1031 (9th Cir. 2024) (“To the point that our precedents previously held that Rogers applies when an expressive mark is used as a mark—and that the only threshold for applying Rogers was an attempt to apply the Lanham Act to something expressive—the Supreme Court has now made clear that this is incorrect.”); Davis v. Amazon.com, Inc., No. 21-02090, 2023 U.S. Dist. LEXIS 197341, at *13 (C.D. Cal. Nov. 2, 2023) (“Following Jack Daniel’s, the threshold inquiry for this Court is whether the disputed title is a source identifier such that the holding of Jack Daniel’s applies to bypass Rogers.”); Homevestors of Am., Inc. v. Warner Bros. Discovery, Inc., No. 22-1583, 2023 U.S. Dist. LEXIS 227404, at *4 (D. Del. Dec. 21, 2023) (finding that “[t]he Magistrate Judge correctly followed Jack Daniel's in conducting an initial source identification inquiry to determine whether the Rogers test should apply.”); Down to Earth Organics, LLC v. Efron, No. 22-06218, 2024 U.S. Dist. LEXIS 60825, at *9 (S.D.N.Y. Mar. 31, 2024) (stating that the threshold inquiry to determine whether Rogers applies is if the defendant used the plaintiff’s marks as a designation of source); Sajahtera, Inc. v. Kitross Apparel Los Angeles, LLC, No.23-8005, 2024 U.S. Dist. LEXIS 113163, at *7–8 (C.D. Cal. June 10, 2024) (holding that the defendant’s work fell squarely within the bounds of the Jack Daniel’s decision, rendering Rogers inapplicable to the case at bar). 89 Under this Note’s reimagined Rogers test, it is worth nothing that if an alleged infringer is raising a First Amendment defense in a trademark infringement claim, it is presumed that the alleged infringer’s good or work has some expressive value. See Jack Daniel’s, 599 U.S. at 158–59 (noting that, since trademarks are often expressive, not all expressive content should trigger the Rogers filter). 90 See Taylar E. Green, supra note 35, at 849–50 (describing the first prong of the Rogers test). 91 See, e.g., Stouffer v. Nat’l Geographic Partners, LLC, 400 F. Supp. 3d 1161, 1179 (D. Colo. 2019) (identifying that discerning the defendant’s motive for using the plaintiff’s mark is the appropriate question to ask in evaluating First Amendment rights in trademark law); Hermès Int’l v. Rothschild, 678 F. Supp. 3d 475, 484 (S.D.N.Y. 2023) (defining the “explicitly misleading” prong of Rogers as both “objectively misleading” and “intentionally misleading”). See also Taylar E. Green, supra note 35, at 861 (“The Rogers test fails to fairly balance the plaintiff’s use and the defendant’s use of the mark by failing to take into account the defendant’s inten tand actual confusion.”); Amber Grant, supra note 44, at 412 (proposing to add an element assessing the defendant’s intent to the original Rogers test). For the purposes of this Note’s proposed framework, whether the alleged infringer intended to invoke itself or the brand owner as the source of the good or work is irrelevant. See Mar Vista Entm’t, LLC v. THQ Nordic AB, No. 23-06924, 2024 U.S. Dist. LEXIS 119473, at *9 (C.D. Cal. July 8, 2024) (“the Court does not read Jack Daniel's as reaching only junior users who use a trademark as a source identifier to signal that they (the junior user) are behind the goods.”). 92 See Taylar E. Green, supra note 35, at 852 (quoting Parks v. LaFace Records, 329 F.3d 437, 456 (6th Cir. 2003)) (emphasizing the Sixth Circuit’s “sagacious” observation that “the First Amendment cannot permit anyone who cries ‘artist’ to have carte blanche when it comes to naming and advertising his or her works.”). 93 See Jack Daniel’s Props. v. VIP Prods. LLC, 599 U.S. 140, 159–60 (2023) (finding that VIP’sadmission to using Bad Spaniels as a trademark was sufficient to show intent to use the mark as a source indicator). 94 See, e.g., Punchbowl, Inc., 90 F.4th at 1031 (holding that the defendant’s applications for the marks “Punchbowl News” and “Punchbowl Press” with the USPTO were indicative of trademark use); Activision Publ’g, Inc. v. Warzone.com, LLC, No. 21-03073, 2024 U.S. Dist. LEXIS 66820, at *8 (C.D. Cal. Apr. 11, 2024) (finding that the counterclaim-defendant’s registration of the mark “WARZONE” with the USPTO qualified as trademark use). 95 This proposed factor only examines whether the alleged infringer — not the brand owner—is using the mark in connection with a product line or series of goods or works. Compare Jack Daniel’s, 599 U.S. at 160 (finding that VIP’s use of the Jack Daniel’s marks for its Bad Spaniels toy did not warrant First Amendment protection), with Mar Vista Entm’t, LLC, 2024 U.S. Dist. LEXIS 119473, at *10 (holding that, since the plaintiff’s use of its mark was part of a registerable series, the defendant’s use of the plaintiff’s mark in the title of its single work was not protected by the First Amendment). 96 TMEP § 1202.08(a) (May 2024). 97 See id. (providing examples of single creative works). 98 TMEP § 1202.08 (May 2024) (emphasis added). See also Trademark refusal: Title of a single creative work, USPTO, https://www.uspto.gov/ trademarks/laws/title-single-work-refusal-and-how-overcome-refusal (last visited Nov. 30, 2024) (explaining the difference between a single work and a series of works). 99 TMEP § 1202.08(b) (May 2024). 100 See Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 92 (2d Cir. 2020) (citation omitted) (defining trademark use to include “the degree to which ‘defendants…try[] to create, through repetition…a[n] association between [themselves] and the [mark].’”). 101 678 F. Supp. 3d 475 (S.D.N.Y. June 23, 2023). 102 See Hermès Int’l v. Rothschild, 654 F. Supp. 3d 268, 273–74 (S.D.N.Y. 2023) (providing the factual background of the case). 103 See id. at 274 (explaining the distribution of the one hundred MetaBirkins NFTs and their collective sale total). 104 See id. at 275 (providing the procedural history of the case). 105 See id. at 275–76 (discussing whether Rogers should apply). 106 See id. at 276 (“it is the Rogers test that still applies here”). 107 See Hermès Int’l v. Rothschild, 678 F. Supp. 3d 475, 481, 484 (S.D.N.Y. June 23, 2023) (providing the jury instructions). 108 See id. at 485 (outlining the jury’s verdict). 109 See Hermès, 654 F. Supp. 3d at 273 (detailing Rothschild’s Baby Birkin project). 110 By reframing the Rogers court’s concerns of protecting titles of artistic works within the context of the TMEP, this proposed factor still allows First Amendment protection for titles of single artistic works that are otherwise unregistrable trademarks. See Rogers v. Grimaldi, 875 F.2d 994, 998 (2d Cir. 1989) (“Though First Amendment concerns do not insulate titles of artistic works from all Lanham Act claims, such concerns must nonetheless inform our consideration of the scope of the Act as applied to claims involving such titles.”). Therefore, this factor should be allotted the most weight in the implied intent analysis. 111 For this proposed factor, the alleged infringer’s use of the plaintiff’s mark should riseabove a “merely informational matter” which “is not registerable because consumers would perceive such matter as merely conveying general information about the goods or services or an informational message, and not as a means to identify and distinguish the applicant’s goods or services from those of others.” TMEP § 1202.04 (May 2024). The “prominence” inquiry would thus turn on “how the proposed mark would be perceived by the relevant public.” Id. 112 See Tiffany & Co. v. Costco Wholesale Corp., 971 F.3d 74, 92 (2d Cir. 2020) (citation omitted) (defining trademark use as the use of a mark “on the product ‘itself, on its packaging, or in any other advertising or promotional materials related to [the] product[.]’”). 113 See TMEP § 904 (May 2024) (stating that trademark applicants must submit a specimen showing their mark is used in commerce). While promotional materials are only an acceptable specimen for trademarks used in connection with services, recent case law has found an alleged infringer’s use of a mark in its promotional materials as indicative of trademark use. See, e.g., Activision Publ’g, Inc. v. Warzone.com, LLC, No. 21-03073, 2024 U.S. Dist. LEXIS 66820, at *9–10 (C.D. Cal. Apr. 11, 2024) (holding that Rogers did not apply where the counterclaim- defendant repeatedly referred to its new video game using the counterclaim-plaintiff’s mark in a press release and made the counterclaim-plaintiff’s mark the prominent word in the title of video game on its website). 114 See Jack Daniel’s Props., Inc. v. VIP Prods. LLC, 599 U.S. 140, 160 (2023) (explaining how the marketing of the Bad Spaniels product qualified as trademark use). 115 88 F.4th 125 (2d Cir. 2023). 116 See id. at 129–130 (describing the facts of the case). 117 Id. at 130. 118 See id. at 133–34 (giving the procedural history of the case). 119 See id. at 138–39 (finding that the WavyBaby evoked many of the Old Skool trademarks that acted as a source identifier). 120 See id. at 139 (determining that the likelihood of confusion test applied). 121 See id. at 138 (comparing Wavy Baby to Bad Spaniels and finding that “MSCHF’s design evoked myriad elements of the Old Skool trademarks and trade dress.”). 122 TMEP § 1207.01(a)(i) (May 2024). 123 See TMEP § 1207.01(a)(vi) (May 2024) (giving examples of evidence showing relatedness of goods). 124 No. 23-06924, 2024 U.S. Dist. LEXIS 119473 (C.D. Cal. July 8, 2024). 125 See id. at *2–3 (providing the facts of the case). 126 Id. at *3. 127 See id. at *6–8 (identifying paragraphs in the first amended counter claim that showed Mar Vista used the mark as a source identifier).
Crayons, Contests, & Copyright: Contracting to use a Child’s Creative Work By: Kaelyn Timmins-Reed, Chapman University Dale E. Fowler School of Law
Introduction From crayon drawings on a parent’s refrigerator to an award-winning short film by a fourteen-year-old, children and young people under the age of eighteen are constantly creating, and society encourages them to create.[1] Though children have no affirmative legal “right to create,” the United Nation’s Convention on the Rights of the Child states that, subject to certain restrictions, children “shall have the right to freedom of expression; this right shall include freedom to seek, receive and impart information and ideas of all kinds . . . either orally, in writing or in print, in the form of art, or through any other media of the child’s choice.”[2] The legislative history behind the Convention suggests that it was intended to recognize a core concept of contemporary childhood—that a child “is not only an object of care and concern but also a subject whose rights should be respected.”[3] One member of the committee for the adoption of the Convention on the Rights of the Child noted, “[g]enuine effort should be made to seek out the positive aspects of youthful expression and channel it to useful ends.”[4] Companies and organizations try to seek out these positive aspects through contests or other use of minors’ copyrights. For example, Google holds an annual “Doodle for Google” contest, inviting students in kindergarten through twelfth grade to submit artwork using the letters in the Google logo.[5] Google holds the contest as “an opportunity to experience the creativity, thoughtfulness and talent of younger generations.”[6] However, the “Doodle for Google” contest entry form contract, which the entrant and the parent or guardian must sign, gives Google wide latitude to use and potentially profit from designs made by minor entrants.[7] This could produce unfair results for minor creators. Another precarious example of a minor-company interaction is Cooley v. Target Corp. (the “Target Case”). Inthat case, a 14-year-old minor diagnosed with autism, N.O.C., had posted several of his multi-color crayon designs on social media.[8] Target employees then reached out to N.O.C. via Instagram to say that his artwork “caught [their] eye.”[9] Target invited N.O.C. to a company workshop aimed at empowering young creative voices.[10] A few months later, Target began selling merchandise bearing designs similar to N.O.C.’s artwork.[11] N.O.C. and his mother sued Target, alleging infringement.[12] Though the court did not find infringement, this case sheds light on the potential issues that arise when minors and companies interact.[13] When minor creators and companies interact, there is a risk that companies will exploit minors’ creativity, as seen in the Target Case. Minors of this generation are “digital natives,” and their online presence makes them more vulnerable to copyright infringement.[14] With technology and the internet, children are creating and disseminating visual and graphic works, often unaware of how to protect their copyright ownership.[15] For example, there are nonprofit programs that prompt children to create stories, art, choreography, and screenplays, but no one to instruct the children (or their parents or guardians) on how to protect these copyrightable works.[16] There are also online classes that teach today’s minors how to design websites and create graphic designs, but these classes do not include resources that teach minors how to protect their creations.[17] Additionally, much of the current legislation surrounding children and their internet usage involves protecting their online privacy or preventing commercial sexual exploitation rather than protecting minors’ creative works.[18] Compounding this issue is minors’, parents’, and guardians’ lack of copyright knowledge. Minors and those supporting them may not understand the significance of whether a company licenses or owns a minor’s copyright. These minor-company interactions also present risks for companies. As seen in the Target Case, companies wishing to work with minor creators face the potential peril of costly litigation and bad publicity.[19] And while some companies seeking to work with a minor’s copyrighted work may require the minor to contractually grant the company an irrevocable license to use the work,[20] making a license contract with a minor remains risky because of the infant contract doctrine.[21] The infant contract doctrine is the common law rule that minors can void a contract for goods or services that are not necessities.[22] The purpose of the doctrine was “the protection of minors from foolishly squandering their wealth through improvident contracts with crafty adults who would take advantage of them in the marketplace.”[23] In many states today, minors can disaffirm, or void, their contracts.[24] Companies have tried to get around this doctrine by having a parent or guardian sign the license contract,[25] or by contractually providing that the artwork is a “work made for hire.”[26] Both of these approaches create challenges because neither license contracts nor “work made for hire” contracts are immune to disaffirmance under the infant contract doctrine, and there are inconsistencies in how courts approach cases involving minors and copyright—especially when contracts are involved. The variability among courts as to when and how minors are allowed to disaffirm contracts produces inconsistent results in copyright cases involving minors. Companies need a workable solution to allow them to control the underlying copyright. Otherwise, the risks associated with working with minors will be too great. The goal of this Note is to shed light on often-overlooked minors as creators, explain how minors interact with copyright law, and lend solutions for minor-company collaboration. Part I of this Note examines the copyright law undergirding minor-company interactions. Part II suggests three solutions: first, it builds upon a previously proposed solution for Congress to amend the Copyright Act to allow minors to terminate their license agreements sooner.[27] Second, Part II argues “work made for hire” contracts involving minors below working age should be unenforceable. Finally, Part II suggests informal solutions for minors, parents, and companies. I. Children and Copyright Law A. Copyright Overview and Registration Under the Copyright Act, as soon as an idea is fixed in a tangible form of expression, it is subject to copyright protection.[28] The United States Copyright Office, in a pdf written for a child audience, explicitly declares that “even a child’s original fingerpainting” is subject to copyright protection.[29] This makes sense because (1) authorship and ownership of a copyright immediately vest with the creator of the work (unless it is a “work made for hire,” discussed below) whether or not the work is registered and (2) the standards of creativity and originality that are necessary for a work to be copyrightable are very low.[30] Though the Copyright Act does not explicitly state that authors of copyrighted works can be minors, it defines authors as natural persons, and the Copyright Office grants copyright registration to minors.[31] Copyright is accessible to minors in that artistic works need not be registered with the United States Copyright Office to receive protection; however, registration “enhance[s] the protections of copyright.”[32] A situation in which a person does not own the copyright in a work they have made is when the work is “made for hire.”[33] Under the “work made for hire” doctrine, the authorship of a work (the copyright) automatically vests in the employer of the author, if the author (1) created the work during the scope of employment or (2) contractually agreed that the work was “made for hire.”[34] As the Supreme Court has noted, classifying a work as “made for hire” is profoundly significant because it has implications not only for copyright authorship and ownership but also the copyright duration[35] and termination rights, discussed in greater detail below.[36] Under the first category of works created during the scope of employment, Congress envisioned a traditional employer-employee relationship in which the employee surrenders authorship of the work in exchange for a regular salary and other employment benefits.[37] It would be unusual for a minor to be a traditional employee under the first category because of child labor laws.[38] However, it is not uncommon for companies to contractually require minors to agree that their work is “made for hire” under the second category.[39] Assuming the minor is the copyright owner, defending a copyright is logistically challenging for minors. Registration of a copyright is a prerequisite to suing an alleged copyright infringer.[40] Minors may register their own copyrights, provided they can pay the required filing fee “by credit card, debit card, bank account, or deposit account,” which they may not have access,[41] orminors may appoint “a parent, guardian, or other qualified agent” to register the copyright on their behalf.[42] Once a work is registered or in the process of registration, a copyright holder may sue an alleged infringer for an unauthorized exercise of the copyright holder’s right, such as copying, using, or disseminating the copyrighted work.[43] The Federal Rules of Civil Procedure dictate that minors bringing suit must be represented by an adult, so a minor will need a parent, guardian, or other representative to bring the suit on his or her behalf.[44] Thus, unlike an adult copyright holder, a minor whose work has been infringed is at the mercy of caring adults in her life.[45] After meeting these logistical hurdles, minors seeking to defend their copyright must confront differing state laws regarding minors and copyright—and the extent to which the Copyright Act preempts state law.[46] The legislative history for the Copyright Act unequivocally states that the legislative intent is to preempt state law.[47] However, Professor David Nimmer explains that because the Copyright Act is silent on contractual issues such asgrants of licenses and contractual “work made for hire,”[48] “the vast bulk of copyright issues must be resolved under state law.”[49] Sometimes, courts start by analyzing state law aspects of a case rather than copyright issues, creating differing results for minors under state infant contract laws. For example in I.C. ex rel. Solovsky v. Delta Galil USA (the “T-shirt Design Case”), the district court analyzed the second-grader’s disaffirmance claim, a contract formation issue, before reaching her copyright infringement claim.[50] Furthermore, in A.V. ex rel. Vanderhye v. iParadigms, LLC, (the “Turnitin Case”), a district court within the Fourth Circuit failed to use the two-prong test to determine whether the state’s infant contract law was preempted by the Copyright Act; instead, the court simply began its analysis of the state law claims before reaching its copyright analysis.[51] Because of these inconsistencies, the outcomes of copyright cases involving minors hinge not on the Copyright Act, as was intended by Congress, but on states’ varying infant contract laws.[52] Despite Congress’s intent, cases involving minors and copyright are anything but uniform. B. Copyright Act Section 203 To counteract the disparities in bargaining power between creators and publishers, the Copyright Act authorized a copyright holder to recapture her copyright in narrow circumstances.[53] In his treatise on copyright, Professor Nimmer notes: “From its earliest manifestations, copyright law has struggled to deal with the equitable and efficient division of value and control between creators and the enterprises that distribute their works.”[54] Before the advent of the internet, publishers were the only ones who could disseminate copyrighted work.[55] To offset the financial risk of disseminating the work, these publishers would often pay a low fee in exchange for the copyright owner’s full assignment of the copyright to the publishers forever.[56] At the time of assignment, it was impossible to determine the work’s value.[57] But years later, a book manuscript licensed for one dollar could be a bestseller, grossing hundreds or thousands of dollars.[58] For decades, copyright law sought to protect copyright holders by allowing them to recapture their rights after several decades and guard against these “unremunerative” or unprofitable transfers.[59] Today, this recapture or termination provision is codified in section 203 of the Copyright Act.[60] Essentially, if a copyright owner transfers, assigns, or licenses her copyright, her surviving family member may send notice to the transferee after thirty-five years that they are terminating the copyright.[61] This allows her to make a fairer transfer of the work if she initially received a low license fee.[62] The plain language of section 203 clearly states it cannot be contractually waived at the time the initial license is made; this is significant because every copyright holder was intended to have this section 203 termination right.[63] Section 203 is even more important for minor creators because of the wide gap in bargaining power between minors and companies. Though the legislative history of section 203 does not expressly contemplate minor creators, this Note argues that the congressional intent to protect against disparities in bargaining power is even stronger when it comes to minor creators.[64] In fact, for minor creators, the section 203 termination right is in addition to the right to disaffirm a contract under the infant contract doctrine; nothing in the section was “intended to change the existing state of the law of contracts concerning the circumstances in which an author may cancel or terminate a license, transfer, or assignment.”[65] However, minors who create “works made for hire” do not have this section 203 termination right. Section 203 only applies to transfers, and “works made for hire” are not transfers.[66] This means minors with work for hire contracts are excluded from Congress’s intended section 203 protection. II. SOLUTIONS Minor creators and companies need clearer, less risky, and more effective outcomes when working together. To that end, Congress and the Supreme Court should provide guidance on how to reconcile copyright and contract law claims. In the meantime, accepting this has not yet happened, this Part suggests three solutions. First, Congress should amend section 203 to allow minors to terminate their license agreements sooner than thirty-five years after the transfer. Second, under common law, courts should find most “work made for hire” contracts involving minors unenforceable to ensure the minor’s authorship of the copyright. Finally, this Part suggests informal solutions for minors and companies to work together in good faith. A. Expand Protection of Minors by Amending Section 203 Section 203 was intended as a “practical compromise . . . recognizing the problems and legitimate needs of all interests involved.”[67] In addition to protecting copyright holders, section 203 protects companies; even if the copyright holder elects to terminate after thirty-five years, the company-transferee retains the right to utilize the work and any derivative works the company produced prior to termination.[68] For example, assume the second-grader in the T-shirt Design Case was the copyright holder and the entry form provided that she contractually assigned her copyright to the clothing company and it was not a “work made for hire.” If the second-grader terminated the license after thirty-five years, the clothing company could argue the t-shirts and merchandise based on the design were derivative works. The clothing company could not produce any more merchandise, but it could safely sell any previously produced merchandise as lawful derivative works. If the merchandise were still profitable, the clothing company might wish to enter into a new license agreement with the (now-adult) second-grader, and the parties could strike a more fair and remunerative balance. Section 203 is a clear sign of Congress’s intent to strike a balance between copyright holders and the distributors of the works, but thirty-five years is too long for a minor to wait.[69] In her law review article published over a decade ago, Professor Julie Cromer Young suggested that Congress amend section 203 to allow minors to terminate their transfer or license agreements “within a five-year window after the execution of the transfer, if the author has not yet reached the age of majority, or within five years of the author’s attaining the age of majority if the author would not in fact attain that age within the five-year period.”[70] Professor Young also proposed that when the minor terminates the agreement in this way, the company-transferee must cease using derivative works.[71] There are several issues with this solution. First, this proposal seeks to cut through the confusion of copyright act preemption and state contract law gap-fillers by amending the Copyright Act directly.[72] However, courts have still been able to erode the effectiveness of section 203 by allowing state contracts to interfere with termination rights, despite the section’s plain language that termination rights exist notwithstanding “any agreement to the contrary.”[73] For example, courts have held contract renegotiations extinguish termination rights.[74] Amending section 203 alone will not impact how courts decide cases involving termination rights. Second, because section 203 does not apply to “works made for hire,” amending the section would still leave minors with “work made for hire” contracts unprotected.[75] Finally, Professor Young’s solution would make companies even less likely to work with minors. If a minor could not only terminate an agreement with a company within five years but also bar a company from using any previously produced derivative works, it would be too risky for companies to invest in working with minors. Companies would be uncertain of how much time they would have under the license or transfer agreement before a minor chose to terminate, and they would not be able to utilize derivative works after termination. Professor Young’s solution is perhaps too favorable to minors. Consequently, this Note, like Professor Young’s article, would support allowing a minor to terminate a transfer or license sooner than thirty-five years. However, this Note would propose greater certainty for companies by allowing a minor to terminate after five years of execution or after five years of reaching majority.[76] This would benefit the company-transferee by providing at least five years of certainty in which the license contract could not be disaffirmed. This solution would also allow minors to have more control over their copyrights as well as the opportunity to renegotiate with more bargaining power, just as Congress intended. Additionally, unlike Professor Young’s proposal, this Note would keep section 203(b)(1) undisturbed, allowing a company to continue to utilize previously made derivative works.[77] This would enable companies to safely invest in utilizing minors’ art, which serves the purpose of channeling minors’ creativity. However, it is important to note that Congress has not acted to amend section 203 in the decade since Professor Young suggested her solution. Accordingly, this Note suggests other solutions that can be employed concurrently. B. Do Not Let Second-Graders “Work” “Work made for hire” contracts involving minors under legal working age should not be enforced because there is no employment quid pro quo. As previously discussed, in codifying the “work made for hire” doctrine, Congress intended a quid pro quo: employers get authorship and ownership in employees’ works in exchange for providing a salary and benefits to employees.[78] With an organization like Youth Communication, the “work made for hire” doctrine fits; minors of legal working age are commissioned and paid to write stories for a publication.[79] In cases like this, the “work made for hire” contract should be enforced.[80] However, in the T-Shirt Design Case, there was no employment quid pro quo: the second-grader was obviously not of working age, and in exchange for her design, she received a mere $100. The second-grader neither had a traditional employment relationship with the company nor did she meet the factors set out in case law to fall within the scope of employment.[81] For example, apart from the second-grader drawing her design on the company’s entry form, the company had no right to control the second-grader’s work.[82] The court in the T-Shirt Design Case did not consider whether there was an employer-employee relationship to properly support a “work made for hire;” instead, whether the design was a “work made for hire” hinged on contract formation issues.[83] It is unfair to ask a minor below working age to make the same cost-benefit analysis a working adult would be asked to make. A second-grader is not equipped to determine whether $100 is a fair trade for her t-shirt design. It is also logically inconsistent for society to bar some minors from working (e.g., minors under the age of 16 in some states) yet enforce “work made for hire” contracts for those same minors.[84] Therefore, Congress should amend the Copyright Act to provide that “work made for hire” contracts can only be entered into by individuals of working age. Alternatively, under common law, courts should find unenforceable—or readily allow disaffirmance of—"work made for hire” contracts entered into by minors below working age. These solutions would keep authorship and ownership of the copyright with the minor creator and channel contracts involving such copyright into license or transfer agreements, which allow for a section 203 termination right.[85] C. Informal Solutions While minors and companies wait for legislatures and courts to act, they can take steps to work together in good faith. Itis important for minors to control, register, and defend their own copyright.[86] To that end, parents, guardians, educators, and the community can inform themselves about copyright law and teach minors about their rights under copyright law.[87] Parents and guardians can show older minors how to register their works with the United States Copyright Office, and parents of younger minors or minors with disabilities can register works on their behalf. Because minors will need assistance from an adult representative to sue an infringer, parents, guardians, and other adults in a minor’s life can listen to children and be ready to represent them when their rights have been infringed. Companies can compensate minor copyright holders more fairly, give them more control over their copyright, and communicate clearly. For example, the nonprofit Youth Communication shares unanticipated profits with minor writers even though it owns the copyright in the works as “works made for hire.”[88] Both Youth Communication and the nonprofit Kids in the Spotlight allow minors informal control of their copyright by letting them license their works to third parties or use them in other projects.[89] Finally, both organizations keep an open line of communication with program alumni, which fosters transparency about how the copyrights are used and how potential profits can be shared with the creators. CONCLUSION Cases involving contracts and minors’ copyrights have varying outcomes in different courts, leaving potential for minors to be creatively and financially exploited, as well as companies to be harmed. Congress and state legislatures can create more certain, fairer outcomes for minors and companies by amending the Copyright Act. Companies and organizations can work with parents, guardians, and minor creators to find informal solutions that allow minors more control of their copyright. Consequently, minors and companies will find it more predictable and fairer to work together to channel minors’ creativity and further business goals. [1] See, e.g., Tierra Carpenter, Teenage Award-Winning Director Kalia Love Jones Signs Deal for Animated Series, WishTV (Feb. 22, 2022, 05:25 PM), https://www.wishtv.com/news/allindiana/teenage-award-winning-director-kalia-love-jones-signs-deal-for-animated-series/ [https://www. perma.cc/GVW4-F24W]. See also Jane M. Spinak, They Persist: Parent and Youth Voice in the Age of Trump, 56 Fam. Ct. Rev.308, 318–19 (2018). [2] G.A. Res. 44/25 art. 13 (Nov. 20, 1989). [3] Off. of the U.N. High Comm’r for Hum. Rts., Legis. Hist. of the Convention on the Rts. of the Child, at I-xxxvii, U.N. Doc. ST/HR/PUB/07/1, U.N. Sales No. 07.XIV.3 (2007) [hereinafterU.N. Legis. Hist.]. [4] U.N. Legis. Hist., supra note 3, at 265. [5] See How It Works, Doodle for Google, https://doodles.google.com/d4g/how-it-works [https://perma.cc/5DC4-ZYFC]. [6] See Selly Sallah, The Doodle for Google Student Contest Turns 15, Google (Feb. 28, 2023), https://blog.google/products/search/the-doodle-for-google-student-contest-turns-15/ [https://perma.cc/J9WA-PVQY]. [7] See Contest Rules, Doodle for Google, https://doodles.google.com/intl/en_us/d4g/rules/ [https://perma.cc/X5HW-G7H7]. [8] See Plaintiff’s First Amended Complaint at 2–3, Cooley v. Target Corp., 2022 U.S. Dist. LEXIS 175623 (D. Minn. Sept. 28, 2022) (No. 8:20-cv-00876-DOC-JDEx). [9] Id. at 3; see also Tiffany Hu, Target Beats Copyright Suit Over Autistic Teen’s Artwork, Law360 (Sept. 29, 2022), https://www.law360.com/articles/1535082/target-beats-copyright-suit-over-autistic-teen-s-artwork [https://perma.cc/R4J8-43ZP]. [10] See Plaintiff’s First Amended Complaint, supra note 8, at 3. [11] See id.at 4; see also Hu, supra note 9. [12] See Hu, supra note 9; see also Plaintiff’s First Amended Complaint, supra note 8, at 4. [13] See Hu, supra note 9. [14] See Andrea M. Matwyshyn, Generation C: Childhood, Code, and Creativity, 87 Notre Dame L. Rev.1979, 1979–81(2012). [15] See, e.g., Julie Cromer Young, From the Mouths of Babes: Protecting Child Authors from Themselves, 112W. Va. L. Rev.431, 432 (2010) (“[T]he minor author is often all too willing to expose the work to infringement by publishing . . . the copyrightable work online . . . .”). [16] See, e.g., Spinak, supra note 1, at 318–19. For example, Youth Communication’s Represent Magazine and YouthComm Magazine hire teenagers to write articles, blog posts, and poetry about their real-life experiences. Youth Stories, Youth Commc’n, https://youthcomm.org/youth-stories/ [https://perma.cc/7BNZ-TUWN] (last visited Sept. 14, 2023); see also Telephone Interview with Keith Hefner, Founder and Senior Advisor, Youth Commc’n (Jan. 28, 2023) [hereinafter Hefner Interview]. Additionally, Kids in the Spotlight(KITS) is a Los Angeles-based nonprofit that runs programming for foster youth ages 12–17 to write scripts and make films. Telephone Interview with Tige Charity, CEO, Kids in the Spotlight (Feb. 16, 2023) [hereinafter Charity Interview]. Though Youth Communication and KITS staff informally support program participants, there is no formal legal advising. See Hefner Interview, supra; see also Charity Interview, supra. [17] See Matwyshyn, supra note 14, at1979–81; see also Cornell Cooperative Extension for Madison County, Canva for Kids with Courtney, Episode 1: Making a Poster, YouTube (Apr. 14, 2020), https://www.youtube.com/watch?v=Q4_RZV0eMo8 [https://perma.cc/JL3E-MSNE]; Modern Website Design with Wix Class, Create&Learn, https://www.create-learn.us/cloud-computing/wix [https://perma.cc/6Q2F-L5XD] (last visited Sept. 14, 2023). [18] See, e.g., Erin Carpenter, How Social Media is Affecting the Lives of Minors Including Current Legal Safeguards and Their Weaknesses, 5 Child & Fam. L.J.75, 77–80 (2017) (exploring minors’ pervasive social media usage and content creation and cautioning the hazards of “pedophiles[] and child pornographers”). See also Emily DiRoma, Kids Say the Darndest Things: Minors and the Internet, 2019 Cardozo L. Rev. De Novo 43 (2019) (discussing the federal Children’s Online Privacy Act and California’s “Online Eraser Law”). [19] For example, after Target’s run-in with N.O.C., an article was published entitled “Target Beats Copyright Suit Over Autistic Teen’s Artwork.” See Hu, supra note 9. [20] Contest Rules, supra note 7. [21] See, e.g., 1 Henry Campbell Black, Treatise on the Rescission of Contracts and Cancellation of Written Instruments § 306 (1916) [hereinafterBlack on Rescission] (“An adult who enters into a contract with an infant [someone who has not reached the legal age of majority] does so at his own risk and remains bound by the contract unless the infant elects to disaffirm it.”). [22] See Victoria Slade, The Infancy Defense in the Modern Contract Age: A Useful Vestige, 34 Seattle U. L. Rev. 613, 614, 617 (2011); see also Restatement (Second) of Contracts § 14 (Am. L. Inst. 1981). [23] Halbman v. Lemke, 99 Wis. 2d 241, 245 (Wis. 1980). [24] See, e.g., Cal. Fam. Code § 6710 (West). [25] See, e.g., Contest Rules, supra note 7 (requiring parent or guardian signature). [26] See, e.g., I.C.ex rel.Solovsky v. Delta Galil USA, 135 F. Supp. 3d 196, 207 (S.D.N.Y. 2015). [27] See Young,supra note 15. [28] See, e.g., U.S. Copyright Off., Circular 1: Copyright Basics, 1 (rev. Sept. 2021) [hereinafter Circular 1]. [29] See U.S. Copyright Off., Copyright for Kids (Jan. 2021). [30] See Circular 1, supra note 28, at 1; see also I.C. ex rel. Solovsky v. Delta Galil U.S.A, 135 F. Supp. 3d 196, 213–15 (S.D.N.Y. 2015) (holding a second-grader’s simple hi/bye smiley face design was sufficiently original to survive a motion to dismiss). [31] See 17 U.S.C. § 201(a); see also Who Can Register?, U.S. Copyright Off., https://www.copyright.gov/help/faq/faq-who.html [https://perma.cc /DVP6-AM3L] (last visted Sep. 8, 2023). Thus far, only a monkey has been found to be outside the definition of an author for copyright purposes. See Susannah Cullinane, Monkey Does Not Own Selfie Copyright, Appeals Court Rules, CNN (Apr. 24, 2018, 9:27 AM), https://www.cnn.com/2018/04/24/us/monkey-selfie-peta-appeal/index.html[https://perma.cc/9M44-3TDB]. [32] See Circular 1, supra note 28, at 4. [33] See, e.g., U.S. Copyright Off., Circular 30: Works Made for Hire 1 (rev. Mar. 2021) [hereinafter Circular 30]. [34] Id.; see also David Nimmer, 1 Nimmer on Copyright§ 5.03 (2023) [hereinafter 1 Nimmer] (explaining the statutory requirement that a work under category two be “specially ordered or commissioned” and the courts’ abandonment of requiring those “talismanic words” in “work made for hire” contracts). [35] Compare Circular 30,supra note 33, at 4 (“The term of copyright protection in a “work made for hire” is 95 years from the date of publication or 120 years from the date of creation, whichever expires first.”) with Circular 1, supra note 28, at 4 (“In general . . . the term of copyright is the life of the author plus seventy years after the author’s death.”). [36] See Cmty. for Creative Non-Violence v. Reid, 490 U.S. 730, 737 (1989). [37] See 133 Cong. Rec. 12,957 (1987) (statement of Sen. Cochran); see also 132 A.L.R. Fed. 301 § 2[a] (1996) (“The rationale behind the “work for hire” doctrine is that when an employer hires an employee to create a copyrightable work, the fruits of the employee’s endeavors properly belong to the employer.”). [38] See, e.g., U.S. Dep’t of Lab., Wage and Hour Div., Child Lab. Bull. No. 101, Child Labor Provisions for Nonagricultural Occupations Under the Fair Labor Standards Act3 (2016) [hereinafter Child Labor]. [39] See, e.g., I.C. ex rel. Solovsky v. Delta Galil U.S.A., 135 F. Supp. 3d 196, 207–08 (S.D.N.Y. 2015). See also Contest Rules, supra note 10. [40] See 17 U.S.C. § 411. [41] See U.S. Copyright Off., Compendium of U.S. Copyright Off. Pracs. § 405.2 (3d ed. 2021) [hereinafter Compendium].; see also id. (“[T]he U.S. Copyright Office will accept applications submitted either by or on behalf of a minor.”); see also Circular 2: Copyright Registration, U.S. Copyright Off.2 (rev. May 2022). [42] Compendium, supra note 41, § 405.2. [43] See 17 U.S.C. § 411. [44] See Fed. R. Civ. P. 17; see also Cooley v. Target Corp., No. 20-2152, 2022 U.S. Dist. LEXIS 175623, at *2 (D. Minn. Sept. 28, 2022). However, the Copyright Act is clear that the minor, not the adult representative, is the one with standing to sue. See 17 U.S.C. § 501(b). [45] But see Fed. R. Civ.P. 17(c)(2) (directing courts to appoint a guardian ad litem to represent a minor who does not have an adult to represent her). [46] See Who Can Register?, supra note 31 (“Minors may claimcopyright, and the Copyright Office issues registrations to minors, but state laws may regulate the business dealings involving copyrights owned by minors.”). [47] See H.R.Rep. No.94–1476, at 5746 (1976) (“[S]ection 301 is intended to be stated in the clearest and most unequivocal language possible, so as to foreclose any conceivable misinterpretation of its unqualified intention that Congress shall act preemptively, and to avoid the development of any vague borderline areas between State and Federal protection.”). [48] See, e.g., U.S. Copyright Off., Circular 16A: How to Obtain Permission1 (rev. Mar. 2021); see also Circular 30, supra note 33, at 1. [49] David Nimmer, 3 Nimmer on Copyright § 10.03 (2023) (citation omitted) [hereinafter 3 Nimmer]. [50] See I.C. ex rel. Solovsky v. Delta Galil USA, 135 F. Supp. 3d 196, 207 (S.D.N.Y. 2015). In that case, a second-grader submitted a t-shirt design to a children’s clothing company as part of a school-sponsored contest. Id. at 202–03.To enter the contest, both the second-grader and her mother signed the clothing company’s entry-form agreement, which provided that the t-shirt design constituted a “work made for hire” (meaning ownership of the copyright would immediately vest with the clothing company rather than with the second-grader), see supra Part I.A., and alternately assigned the second-grader’s copyright to the clothing company. See I.C. ex rel. Solovsky, 135 F. Supp. 3dat 207–08. The second-grader’s simple “hi/bye” t-shirt design won the contest. Id. at 203. The second-grader received a $100 gift card, but she received none of the profits from national sales of the t-shirts, socks, purses, headphones, and other merchandise bearing the t-shirt design. Id. at 203–04. The court did not allow the second-grader to disaffirm the contract under state law on the infant contract doctrine, reasoning that allowing the second-grader to disaffirm in this case would run counter to the underlying policy of the doctrine. See id. at 209–10. [51] See A.V. v. iParadigms Ltd. Liab. Co., 544 F. Supp. 2d 473, 480–84 (E.D. Va. 2008), aff’d in part, rev’d in part sub nom. A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009). In that case, a group of minor high school students did not want to agree to the software company Turnitin’s license agreement, which allowed Turnitin access to use and archive their essays for its anti-plagiarism software. See A.V. ex rel. Vanderhye v. iParadigms, LLC, 562 F.3d 630, 634–35 (4th Cir. 2009). The agreement granted Turnitin a “non-exclusive, royalty-free, perpetual, world-wide, irrevocable license” to use the essays. Slade, supra note 26, at 620. But in order to submit their essays and receive a grade from their school, the students had to agree. A.V. ex rel. Vanderhye, 562 F.3d at 635. The students later sued Turnitin for copyright infringement. Id. at 633–34. When Turnitin asserted that the students had agreed to the license agreement, the students unsuccessfully attempted to void the contract under the infant contract doctrine. Id. at 636 n.5; see also A.V. v. iParadigms Ltd. Liab. Co., 544 F. Supp. 2d 473, 480–81 (E.D. Va. 2008),aff’d in part, rev’d in part sub nom.A.V.ex rel.Vanderhye v. iParadigms, LLC, 562 F.3d 630 (4th Cir. 2009). The court resolved the case by finding Turnitin’s use of the essays constituted fair use, rendering Turnitin not liable for copyright infringement. A.V. ex rel. Vanderhye, 562 F.3d at 645. In his comment on this case, Michael G. Bennett notes that in terms of copyright law, the case “represents a profound legal defeat for the student plaintiffs” because the court prioritized protecting educators from plagiarism above protecting minors’ creative expression. Bennett, supra note 107, at 15. [52] See, e.g., 42 Am. Jur. 2d Infants § 45 (2023). [53] See S. Rep. No. 94–473, at 108–10 (1975); see also 3 Nimmer, supra note 49, § 11.07[A] (“[F]or almost as long as copyright has existed, there has been concern about creators getting the short end of the stick in their dealings with distributors.”); 17 U.S.C. § 203. [54] 3 Nimmer, supra note 49, § 11.07[A]. [55] See id. [56] See id. [57] See H.R. Rep. No. 94–1476, at 124 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5740. [58] See id. [59] Id.; S.Rep. No. 94–473, at 108–09 (1975). [60] 17 U.S.C. § 203. [61] Id. [62] See S. Rep. No. 94–473, at 108. [63] 17 U.S.C. § 203(a)(5) (“Termination of the grant may be effected notwithstanding any agreement to the contrary . . . .”); Notices of Termination,U.S. Copyright Off., https://www.copyright.gov/recordation/termination.html#:~:text=Section%20203%20applies%20to%20grants, before%20or%20after%20that%20date [https://perma.cc/QD46-M983] (last visited Oct. 26, 2023) (“Section 203 applies to grants executed by the author on or after January 1, 1978, regardless of whether the copyright in the author's work was secured before or after that date.”). [64] See Young, supra note 15, at 459–60. [65] H.R. Rep. No. 94–1476, at 128 (1976), as reprinted in 1976 U.S.C.C.A.N. 5659, 5743. [66] 17 U.S.C. § 203(a). The “employee” who creates a “work made for hire” is seen as never holding the copyright to begin with, so they cannot have transferred it to someone else.SeesupraSection I.A. [67] H.R. Rep. No. 94–1476, at 124. [68] See id. [69] See, e.g., 3 Nimmer, supra note 49, § 11.07. [70] Young, supra note 15, at 459. [71] Id. [72] See id. at 458–59. [73] 17 U.S.C. § 203(a)(5).See 3 Nimmer, supra note 49,§ 11.07. The Second Circuit’s decision in Penguin Group (USA) Inc. v. Steinbeck, 537 F.3d 193 (2d Cir. 2008) imports the different legal regime of state law, such that federal termination becomes inoperative when publishers have engaged in re-granting, rescission, or novation that meet an ill-defined and inherently subjective “fairness test.” Id. § 11.07[D][3] (“The availability of termination rights, federally granted property interests, is made to turn on whether there has been a superseding agreement under state contract law.”). [74] See 3 Nimmer, supra note 49, § 11.07[D][2]–[3] (explaining the circuit split over “whether and in what circumstances a renegotiated grant extinguishes the right to terminate the original transfer”). [75] See 17 U.S.C. § 203(a). [76] This Note’s proposal assumes that the Supreme Court or Congress resolves the erosion of section 203 discussed above. [77] See 17 U.S.C. § 203(b)(1). [78] See 133 Cong. Rec. 12,957–58 (1987) (statement of Sen. Thad Cochran). [79] See Hefner Interview, supra note 16. [80] On the other hand, with an organization likeKids in the Spotlight (KITS), a Los Angeles-based nonprofit that runs programming for foster youth ages 12–17 to write scripts and make films, “work made for hire” may not serve this legislative intent—or even the intent of KITS leadership. See Charity Interview, supra note 16; see also About, Kids in the Spotlight, https://www.kitsinc.org/about [https://perma.cc/9 FNQ-LUAA] (last visited Oct. 31, 2023). To protect the rights of the minors involved, KITS registers the minors’ creative works as “works made for hire” with the United States Copyright Office. Id. This means that ownership of the copyright vests in KITS, rather than with the minors. See, e.g., Circular 30, supra note 33, at 1. KITSCEO Tige Charity’s intent, however, is for the minors to have control over their copyrighted scripts. See Charity Interview, supra note 16. For Charity, the organization’s mission, to encourage minors in foster care to tell their own stories, is important because “they have a voice.” Id. “[There is] no greater agony than bearing an untold story inside you,” Charity said, quoting Maya Angelou. Id. [81] See, e.g., Circular 30, supra note 33, at 3. [82] See id.; see also I.C. ex rel. Solovsky v. Delta Galil USA, 135 F. Supp. 3d 196, 203 (S.D.N.Y. 2015). But unlike in the T-Shirt Design Case, KITS does provide resources for program participants to create their works, so despite the age of some KITS program participants, the relationship might meet some of the statutory factors for “works made for hire.” See Charity Interview, supra note 16; see also Circular 30, supra note 33, at 3. [83] See I.C. ex rel. Solovsky, 135 F. Supp. 3d at 210–12 (discussing whether the underlying contract was unconscionable and therefore void). The case’s subsequent history is unilluminating. The court held an evidentiary hearing on the issue of unconscionability, but it was cut short when the second-grader argued instead that no contract had ever been formed. I.C. ex rel. Solovsky v. Delta Galil USA, 2016 WL 6208561, at *1 (S.D.N.Y. Oct. 24, 2016) (mem.). The court directed the second-grader to file another amended complaint alleging this new theory. Id. at *3; see also Second Amended Complaint and Jury Demand, I.C. ex rel. Solovsky v. Delta Galil USA,2016 WL 7838530, at *9 (S.D.N.Y. Oct. 26, 2016) (alleging no contract was formed and copyright infringement). [84] See, e.g., Child Labor, supra note 38, at 3. [85] 17 U.S.C. § 203. [86] See supra Part I. [87] The United States Copyright Office produces circulars which are accessible for a layperson to read and understand. See generally, Circular 1, supra note 28. [88] See Hefner Interview, supra note 16. [89] See id.; Charity Interview, supra note 16.
Patenting to Infinity and Beyond: An Analysis of Potential Patent Protections for Commercialized Space Inventions By: Laura Ospina, Villanova University Charles Widger School of Law
PATENTING TO INFINITY AND BEYOND: AN ANALYSIS OF POTENTIAL PATENT PROTECTIONS FOR COMMERCIALIZED SPACE INVENTIONS I. Houston, We have a Problem: Threats Faced by United States Inventors of Commercialized Space Objects The exploration of Outer Space began in the 1950s with the commencement of the Space Race between the United States and Soviet Union.[1] Since then, the development of space technologies has allowed multiple nations to put satellites into space, explore the moon, reach Jupiter, and beyond.[2] In recent years, space travel has adjusted from an exploration-based regime, to a commercialized opportunity for private travel.[3] This has given private corporations, such as SpaceX and Blue Origin, opportunities for substantial profits.[4] These profits, though, stem from billions of dollars in invention investments.[5] While this has given rise to countless advancements in celestial technologies, further advancements are threatened due to the lack of patent protection that inventors face from international infringements.[6] United States patent law has an overarching view of strict jurisdictional lines of patent protections.[7] Under Federal patent law, patents are granted protections exclusively throughout the United States but only impose liability to infringers within the United States.[8] While certain exceptions exist, international patent protections generally mirror this trend of jurisdiction limitations.[9] Outer Space regulations, however, refuse to draw these kinds of lines.[10] Celestial treaties have been enacted internationally, but are dated and severely lacking in expansive guidelines.[11] Regulations are based in five international treaties which repeatedly referenced Outer Space as a “res communes”.[12] A res communes is defined as belonging to all, unable to be controlled by anyone, and that must be used for the betterment of the general population.[13] This free-form property view directly contrasts the application of patent protections. The concern lies with the lack of patent protection in celestial reaches. Primarily, on Earth, an inventor can get patent protections in various jurisdictions by registering in individual jurisdiction. These filings are time-extensive and often very expensive, therefore it is generally recommended that corporations partake in international filing only for jurisdictions that pose genuine threats to infringements, that have potential for market strength, and that offer strong enforcement options.[14] However, once in Outer Space, the inventions are outside the realm of any jurisdictional protections. “If a company is unable to obtain patent protection in every such country or if a country becomes a potential country of registration after the invention has already been disclosed to the public (e.g., in earlier patent filings), competitors may be able to circumvent the company’s patents by using flags of convenience.”[15] There are two major problems that stem from this lack of proper protection in outer space: first, it reduces incentives to innovate and develop new technologies and second, it grants competitive advantages to competing companies who can ignore patents and utilize pre-existing inventions.[16] II. Hitchhiker’s Guide to Patenting the Galaxy: Historical Comparisons Between Space Law and United States Patent Law A. Prevalence of Patents for Inventions Used in Outer Space Travel “Throughout the relatively brief history of space exploration, most projects have been overseen by government agencies . . . but it cannot be denied that momentum has, in recent years, swung toward private-sector players.”[17] Research shows that the future of commercial space exploration is bright, with fifty-five percent of American anticipating routine space travel in the next fifty years.[18] Further, predictions also show that in thirty years, the space tourism industry will be worth a whopping $3 trillion.[19] What was once considered a government-run endeavor has now switched to private corporations utilizing the inherent interests in space exploration into highly profitable opportunities.[20] However, very few corporations have the money or resources required to generate actual profits, leaving Space X, Blue Origin, and Virgin Galactic as the lone proponents.[21] With these great financial risks, comes an opportunity for great reward.[22] Some estimate that in the next decade upwards of 400 missions could yield roughly $137 billion for private corporations.[23] But these financial incentives have already led to litigation regarding patent grants between these major corporations.[24] What has become a modern-day battle of the billionaires to create the strongest space system, has subsequently resulted in intellectual property concerns and calls for improved reforms.[25] i. SpaceX SpaceX is an aerospace company, founded by Elon Musk in 2002, with the hopes of “revolutionizing the aerospace industry and making affordable spaceflight a reality.”[26] Its success has been unmatched, being the only private company to return a spacecraft from low-orbit and having the first commercial spacecraft deliver cargo to and from the International Space Station.[27] To date, it has completed 286 launches, 249 landings, and 221 re-flights.[28] All of these flights have come with high price tags, commonly reaching multi-billion dollars.[29] To protect these assets, SpaceX has begun to patent certain inventions related to their space inventions.[30] SpaceX has 143 patents globally and 120 of those are active.[31] The majority of these patents are filed in the United States, but there are also a good amount in Germany and Taiwan as well.[32] SpaceX designs and manufactures space crafts and rockets, as well as develops crew and cargo capsules, engines, cryogenic tank structures, avionics, and equipment.[33] In 2022 alone, SpaceX filed for thirty-two patents and it is anticipated that this trend will increase more going forward.[34] ii. Blue Origin Blue Origin was founded by Jeff Bezos in 2000 and has worked towards specifically perfecting the sub-orbital spaceflight for commercialized purposes.[35] With the scope of its inventions being driven by the long term goal of having people live and work in outer space, the majority of its inventions range from aerospace, renewable energy, and engine equipment.[36] Blue Origin has sixty-six patents globally and thirty-nine of those are active.[37] The majority of its patents, thirty, are filed in the United States, with six others in Russia and six more throughout Europe.[38] Blue Origin has invested billions in various space objects, with just its recent Blue Moon lander costing well over $3.4 billion.[39] However, this investment has reaped spectacular reward.[40] A single seat on its spaceships can cost upwards of $28 million.[41] In just its New Shepard space tourism program, Blue Origin has generated more than $100 million.[42] iii. Virgin Galactic Virgin Galactic was founded in 2004 by British billionaire, Richard Branson, with the purpose “to transform access to space for the benefit of humankind.”[43] In August of 2023, Virgin Galactic sent its first private group of travelers on a suborbital flight.[44] Tickets for trips like these cost anywhere from $250,000 to $450,000, and at this time over 800 customers have booked a ticket on a future flight.[45] While Virgin Galactic is considered the least profitable of the major space travel companies, it is showing a positive trajectory, with its predicted 2023 revenue being 500% higher than its 2022.[46] A unique aspect of Virgin Galactic is that it currently holds no patents. Rather, it owns a firm called The Spaceship Company, which licenses various IPs from Mojave Aerospace Ventures.[47] For example, when developing the SpaceShipOne which was the first nongovernmental crewed spacecraft to fly into space, Mojave Aerospace Venture manufactured the aircraft through Virgin Galactic sponsorship.[48] B. Historical Basis of Space Law The overall framework of celestial regulation is relatively limited.[49] The major regulations came out of the Space Race and have rarely been adjusted since.[50] The combination of the five major Space law treaties present the same core concept, Outer Space and celestial bodies are a res communes.[51] Res communes are “[t]hings common to all; things that cannot be owned or appropriated, such as light, air, and the sea.”[52] The treaties all reference different aspects of space involvements, but generally fall back on this same principle.[53] While none of them directly address intellectual property rights, certain aspects can be applied to the issue or shed light on future reforms.[54] Specifically, in 1967 the Outer Space Treaty (“OST”) was passed, creating formally binding international regulation and classifying Outer Space as a res communes.[55] The OST begins by recognizing the “importance of international cooperation in the field of activities in the peaceful exploration and use of outer space,” and a common interest in space, the moon, and other celestial bodies; while also desiring to promote unified use of the area to the benefit of generalized scientific developments.[56] Further, it prohibits claims of national appropriation by any sovereignty, through any means.[57] In 1976 the Registration Convention was put into force as an extension of the OST, with the intent of making provisions for the mechanism for States to assist in the identification of their space objects.[58] This requires applicable States to register any space objects they send into orbit or beyond, with a generalized registry and to inform the Secretary-General of the United Nations.[59] The primary purpose of this Convention was to promote transparency of nations’ space activities and to provide important information as to prevent possible accidents in Outer Space.[60] Further is follows the general underlying principle of promoting the exploration and use of Outer Space for peaceful purposes.[61] The history of the Registration Convention, though, was rocky.[62] There was extensive negotiation that occurred before its passing and many countries were hesitant to ratify it.[63] Key concerns included vague language of the definition of “launching state”, disagreement about the formation of a singular global registry versus a country-by-country registry, and the requirements for the disclosure of certain information in the registration.[64] This treaty is the primary source of concern for current United States patent holders. This creates a flag of convenience-type loophole for foreign (and potentially domestic) corporations. Under this agreement, the space object’s country of registration retains the jurisdiction and control over the object, including applicable patent regulations. Therefore, a corporation need only register their inventions or infringing work in a favorable country in order to take advantage of such laws. Further if a corporation was using inventions that it knows to be infringing, they only need to register it in a country in which the original inventor has not filed for a patent, and they can go around any punishments. C. Historical Basis of Jurisdictional Limitations of United States Patents As technologies have developed, the relevant applications of patent law have attempted to keep up. One overarching theme that persists throughout is the strict jurisdictional limitations assigned to patent protection. This limitation can be traced back to 1856, where the Supreme Court ruled in Brown v. Duchesne,[65] that the exclusive property rights “granted to a patentee do not extend for foreign entering in [a U.S.] port”.[66] Later, in Dowagiac v. Minnesota Moline Plow,[67] the Court refused to extend patent protection to patented articles used in Canada, even though the product was produced in the United States.[68] This holding was later codified in 1952, with the U.S. Patent Act of 1952 that stated that patents grant exclusive rights throughout the United States.[69] Further statutory restrictions include §271, which imposes liability only to those who use, make, sell, or offer to sell a patented invention without authority within the United States, or if they import the invention into the United States.[70] Few statutory references are directly related to an extraterrestrial reach, but §105, titled the Inventions in Outer Space, does give some guidance.[71] This extends its current patent law protections to its objects in Space, meaning that inventions which are created or first reduced to practice on a United States spacecraft is deemed to be made in the United States and thus fall within United States patent laws.[72] However, §105 still included some jurisdictional restrictions such that United States patent law wouldn’t extend to a space object that is included in an international agreement which the United States is a party, and it does not apply to an object that is carried on a vessel that is registered to a foreign country in accordance with the Registration Convention.[73] The §105 limitations, in addition to the flags of convenience loophole created by the Registration Convention, pose a major threat to United States corporations.[74] Under this, a foreign entity can avoid infringing a United States patented invention in Outer Space by registering their product in a country where the United States invention has not been patented.[75] Registration simply occurs by “furnish[ing] information promptly to the Committee on the Peaceful Uses of Outer Space, through the Secretary-General, for the registration of launching.”[76] By utilizing the benefits under the Registration Convention, an entity would be able to develop an infringing craft, send it into space, use it in space, and subsequently profit off of it without ramifications.[77] Because the Registration Convention defined “launching state” in broad terms, a company could incorporate its business in or simply launch its spacecraft from a desired jurisdiction.[78] III. To Boldy Patent Where No Man Has Patented Before: Recommendations for Patent Protections in Outer Space A. Drawing Conclusions From Other Res Communes i. High Seas and Air Ways The Convention of the High Seas classified the high seas as a res communes, stating that with “high seas being open to all nations, no state may validly purport to subject any part of them to its sovereignty.”[79] This is the source of the original Flags of Convenience Loophole, under whichowners of seagoing vessels could register ships in countries other than the country of legal residence of the owner, thereby taking advantage of more favorable laws, regulations, and taxes.[80] This includes coastal and non-costal States’ freedom of navigation, fishing, laying of submarine cables and pipelines, and flying over the high seas.[81] It is predicted that more than half of the world’s merchant ships are registered under the flags of convenience, a system which is highly criticized.[82] ii. International Space Station The International Space Station (“ISS”) is a co-operative orbital laboratory instituted between Europe, the United States, Russia, Canada, and Japan; none of which are the owner of the station.[83] The ISS, is not technically a res communes, however, it follows similar concepts of communal use for the betterment of mankind.[84] There are a series of international regulations surrounding the ISS.[85] Primarily, the ISS is regulated under the terms of the International Space Station Intergovernmental Agreement, which states that “each partner shall retain jurisdiction and control over the elements it registers and over personnel in or on the Space Station who are its nationals”.[86] This Agreement states that activities occurring on or around the ISS are considered as having occurred “only in the territory of the Partner State of that element’s registry”.[87] Additionally, if an object is invented on the ISS, the country of inventorship is allocated based on the registry of the ISS element in which the invention took place.[88] The third aspect of this Article is directly applicable to patents, such that a nation cannot apply its laws concerning secrecy of inventions if it would prevent the filing of a patent application in another State that provides for the protection of secrecy of patent applications containing secret information.[89] The owner of intellectual property on the ISS can only bring action for infringement in one particular State.[90] However, an inventor can still file for a patent in any country they want, since the territorial approach is only to determine the location and State where the invention occurred.[91] B. Possible Solutions To Outer Space Patent Protections i. A Limited Hope for International Regulation When evaluating the common res communes, there is great international agreement on the importance of the regulation of these unique locations. Conversely, the regulatory schemes of space have been very limited and have seen great international push back. Well-drafted treaties like the Registration Convention and Moon Agreement struggled to reach mass agreement both before and after implementation. This is indicative of the international reluctance to create further regulations on space-specific endeavors. Even those who want to create protections are concerned about hindering innovation.[92] However, when evaluating situations like the ISS, there does exist some agreement for the regulation of specific Outer Space parameters. Other international reforms proposed here would need to follow similar avenues to ensure wide-spread acceptance. While it may seem more difficult to execute space-specific regulations, there are certain schemes that would protect private corporations from these unique infringements. The primary goal of international reform is to close the flags of convenience loophole that arises from the Registration Convention. However, the comparison of an Outer Space flags of convenience loophole and the traditional high seas flags of convenience loophole points to different avenues of reform. Under the traditional flags of convenience, a ship that is transporting goods from one country to another is under the jurisdiction of the registered country only until it reaches its destination, at which time it falls under the jurisdiction of the destination country.[93] This means that even if United States inventors cannot stop the infringing works from setting sail, they can still prevent the works from being imported into the jurisdictions where they have patents and where the infringement would actually cause harm. However, when looking at the Outer Space flags of convenience, there is no destination country since Outer Space is not considered an actual jurisdiction. So not only can United States inventors not rely on international regulations to stop the flags of convenience loophole from occurring in the development of these works, but also once the works are sent to the final destination, there exists no avenues for protection. The primary solution to this would be to make Outer Space the destination location, either through international agreement or by creating a space patent registry.[94] By continuing to not have a comprehensive global patent system, the economic feasibility of space exploration is threatened. Without proper protection of patent rights, companies will not be incentivized to innovate and develop new technologies. By establishing a space patent registry, inventors from the United States could ensure that foreign companies are not stealing their inventions and profiting off them, simply by launching them from a convenient country. For example, if company X invented a new spaceship component, they would register this invention with the space patent registry. Now, they would not have to worry about foreign corporations stealing this invention because once someone puts it in their own spacecraft and sends it into space, it would be in a “jurisdiction” where the United States corporation’s patent is protected. This then mirrors the final protections seen in the high seas flags of convenience. Under this, corporations couldn’t avoid liability by simply registering their invention in a different jurisdiction.[95] When creating this registry more detail and concern needs to be put in place as to prevent the difficulties seen in the Registration Convention. There, many have commented on the Convention’s inefficiencies to create uniform regulations since no singular national registry has a complete list of the registered space objects, the timely manner requirements are commonly not met, and incomplete descriptions fail to meet the Convention’s intended goals.[96] There would need to be clearly defined parameters of what is considered “Outer Space”, what information is needed in the registration, and the requirement that registration must happen prior to launching. ii. Non-Regulatory Solutions In Lieu of No Formal Change 1. Mass Registration in Jurisdictions That Threaten Infringement A singular international patent does not exist, rather, patent owners must individually seek protection in each country they wish to stop infringements in.[97] Currently, only five jurisdictions have successfully completed commercialized space travel: United States, European Union, Russia, China, and India.[98] Further, the European Union’s recent creation of a unitary patent system also simplifies an American inventor’s ability to obtain mass protections.[99] Similarly, utilization of the terms of the Patent Cooperation Treaty would also allow protections in multiple jurisdictions at once in a single filing.[100] While there is a good chance that in the next decades more countries will enter the race, at this time, registering major patents with these top five jurisdictions is sufficient to avoid the major sources of infringement risk.[101] 2. Follow Virgin Galactic’s Model of Relying on Licensing Virgin Galactic, though not the front-runner in commercialized space travel, has a unique view on patent protections, such that it does not have its own patents, opting to licenses critical parts from other manufacturing corporations.[102] Specifically, it “rel[ies] on licenses from third parties for certain intellectual property that is critical to [its] branding and corporate identity, as well as the technology used in [its] spacecraft.”[103] While Virgin Galactic has stated that it intends to begin patenting inventions soon since their current system “may be inadequate”, at this time it relies mainly on the licensing scheme.[104] The benefits of licensing these inventions, rather than developing and patenting them in-house can be expansive.[105] For the licensee, they can develop research faster, access new products and processes, avoid costly development fees, and importantly here, avoid infringement action.[106] Virgin Galactic specifically obtains licenses for patents from the company Mojave Aerospace Ventures.[107] This has given them the ability to “develop, construct, import, promote, test, and operate one or more Licensed Spacecrafts only for sub-orbital consumer space tourism.”[108] Further, Virgin Galactic’s indemnification requirements are limited, such that they are considered harmless “with respect to any losses to the extent they arise out of any infringement or misappropriation that constitutes a breach by MAV”.[109] This provision protects Virgin Galactic if any of the inventions they license infringes an existing patent.[110] By avoiding the initial development stages of the inventions, Virgin Galactic is able to develop and manufacture their Space objects faster and cheaper. This would only be beneficial for inventions that are not crucial to the system, as corporations would prefer to have protections for the important aspects. For certain inventions this can be beneficial, but Virgin Galactic’s statements about it being potentially inefficient indicate that this is a Band-Aid fix to the real problem. 3. Utilization of Trade Secrets For certain devices, a simpler and less-costly solution is to forgo the patent route and rely on trade secrets and possible non-disclosure agreements as well. For example, Archer is one of the industry leaders in the development of electric vertical takeoff and landing aircrafts (“eVTOL”).[111] While they have utilized patents for certain creations, they have relied on trade secrets to protect their proprietary manufacturing process of the eVTOLs.[112] This is beneficial for certain situations where the manufacturing process would be difficult to reverse-engineer and thus the secret would provide a competitive advantage.[113] Additionally, a trade secret would not require the novel or inventive aspect of patents, does not need the costly steps of registration, and will have longer protections since trade secrets are maintained as long as the information remains a secret.[114] While this is not an expansive solution, as it could only be used for certain limited secrets, it would still provide some additional protections. IV. The Final Frontier of Outer Space Patent Protections Over the last decades, the prevalence of patent filings for space-related inventions has increased both within the United States and abroad.[115] While these technologies have taken over modern science, the relevant laws protecting them have failed to keep up. However, the absence of expansive space law regulations leaves open an option for comprehensive laws, targeting specific modern-day issues.[116] Specifically, as we see private corporations dive into this coveted field, new regulations are needed to strike a balance between protecting the res communes of Outer Space while still incentivizing inventions through patent protections.[117] While centralized international regulations would provide the best comprehensive solution to private corporations, the immediate passage of these are unlikely. In the meantime, United States inventors looking to prevent infringement of their costly inventions by competing corporations, should seek alternative options to protect their work and protect their financial endeavors as well. [1] See What Was the Space Race?, Smithsonian, https://airandspace.si.edu/stories/editorial/what-was-space-race#:~:text=What%20was% 20the%20goal%3F,a%20race%20to%20the%20Moon. (last visited Nov. 12, 2023) (discussing the effects of World War II on the view that rocket technology would drive modern warfare, thus influencing the United States and Russia to begin fighting for the best technology). [2] See The History of Space Exploration, Nat’l Geographic, https://education.nationalgeographic.org/resource/history-space-exploration/ (last visited Nov. 12, 2023) (discussing the development of major inventions such as intercontinental ballistic missiles, the Sputnik satellite, the Sputnik II satellite carrying a dog, certain rockets). [3] See Matthew Weinzierl & Mehak Sarang, The Commercial Space Race is Here, Harv. Bus. Rev. (Feb. 12, 2021), https://hbr.org/2021/02/the-commercial-space-age-is-here (discussing the 2020 mission which, for the first time, put a human in space by a vehicle which was not built or owned by any government, thus promoting the current and future promotion of commercialized space travel). [4] See Tim Fernholz, SpaceX’s Leaked Financials Reveal Elon Musk’s Appetite for Growth, Quartz (Aug. 18, 2023), https://qz.com/spacexs-leaked-financials-reveal-elon-musks-appetite-fo-1850751586#:~:text=At%20the%20time%2C%20its%20investors,its%20 annual%20revenue%20in%202022. (stating that in 2015, SpaceX has revenues less than $1 billion, but in 2022 that revenue jumped to $4.6 billion and additionally the current valuation of SpaceX is roughly $150 billion); see also Michael Sheetz, Jeff Bezos Says Sales of Blue Origin Space Tourist Flights are ‘Approaching $100 Million’ Already, CNBC (July 20, 2021 3:15 PM), https://www.cnbc.com/2021/07/20/jeff-bezos- blue-origin-space-tourist-sales-approaching-100-million.html (discussing Blue Origin’s substantial profits, with Owner Jeff Bezos stating that ‘[t]he demand is very, very high,’”). [5] See Jeff Foust, SpaceX Investment in Starship Approaches $5 Billion, Space News (May 26, 2023), https://spacenews.com/spacex-investment- in-starship-approaches-5-billion/#:~:text=WASHINGTON%20%E2%80%94%20SpaceX%20will%20have%20spent,by%20the%20company's%20 chief%20executive. (stating that SpaceX has already spent at least $5 billion on just its Starship vehicle and the corresponding launch infrastructure); see also Taylor Giorno, Blue Origin SpaceX Lobby for Dominance and Government Contracts in Billionaire Space Race, Open Secrets (May 2, 2022 3:16 PM), https://www.opensecrets.org/news/2022/05/blue-origin-and-spacex-lobby-for-dominance-and-government- contracts-in-billionaire-space-race/ (stating Blue Origin spent $2 billion on lobbying in 2021 alone). [6] See Brenda M. Simon, Patents, Information, and Innovation, 85 Brook. L. Rev. 727, 734 (June 25, 2020) (listing threats to inventors sourced in lack of patent protection). [7] 35 U.S.C. § 154 (a)(1) (2015). [8] 35 U.S.C. § 271 (2010). [9] See Patent Cooperation Treaty, USPTO, https://www.uspto.gov/patents/basics/international-protection/patent-cooperation-treaty (last visited Nov. 12, 2023) (discussing Patent Cooperation Treaty which allows an application in multiple countries with a singular filing). [10] See Peter Treloar, Investing in Space Inventions: Patent Protection for Space Technologies, Spruson & Ferguson (May 17, 2022), https://www.spruson.com/patents/investing-in-space-inventions-patent-protection-for-space-technologies/ (summarizing the major international space treaties to conclude that nations are not able to “assert that space or celestial objects are their territory and subject to their jurisdiction.”). [11] See Sophie Goguichvili, Alan Linenberger & Amber Gillette, The Global Legal Landscape of Space: Who Writes the Rules on the Final Frontier?, Wilson Ctr. (Oct. 1, 2021), https://www.wilsoncenter.org/article/global-legal-landscape-space-who-writes-rules-final-frontier (discussing the global space governance framework’s inability to keep up with the evolving state and industry practices). [12] Martin Svec, Outer Space, an Area Recognized as Res Communis Omnium: Limits of National Space Mining Law, 60 Space Pol’y 1, 2 (2022). [13] See Res Communes, LSD L., https://www.lsd.law/define/res-communes (last visited Nov. 12, 2023) (defining “res communes”). [14] See Michael K. Henry, Where Should we File in 2020? Recent Trends in Foreign Patent Filings, Henry Patent L. Firm (Nov. 22, 2019), https://henry.law/blog/trends-in-foreign-patent-filings/ (stating difficulty in international filings require selective registration for inventions). [15] See Matthew J. Kleiman, Patent Rights and Flags of Convenience in Outer Space, Space Rev. (Feb. 7, 2011), https://www.thespacereview.com/article/1772/1 (“If the patent is not on file or is difficult to enforce in that country, the patent holder would be virtually powerless to protect its invention.”). [16] See id. (identifying various effects of lacking patent protection in Outer Space). [17] See Everyday IP: Spaceships – Past, Present, Patents, Dennemeyer IP Grp. (Oct. 15, 2021), https://www.dennemeyer.com/ip-blog/news/every day-ip-spaceships-past-present-patents/#:~:text=Virgin%20Galactic%20holds%20zero%20registered,design%20of%20its%20space%20planes. [18] See Brian Kennedy & Alec Tyson, American’s Views of Space: U.S. Role, NASA Priorities and Impact of Private Companies,Pew Rsch. Ctr. (July 20, 2023), https://www.pewresearch.org/science/2023/07/20/americans-views-of-space-u-s-role-nasa-priorities-and-impact-of-private- companies/ (discussing Pew research study of 10,329 United States adults, who in 2023 concluded that American’s attitudes towards space is changing as a result of it increased popularity and accessibility). [19] See Michael Sheetz, The Space Industry Will be Worth Nearly $3 Trillion in 30 Years, Bank of America Predicts, CNBC (Oct. 31, 2017, 8:04 PM), https://www.cnbc.com/2017/10/31/the-space-industry-will-be-worth-nearly-3-trillion-in-30-years-bank-of-america-predicts.html (discussing Bank of America Merrill Lynch’s prediction of the exponential growth of the space industry). [20] See Svetla Ben-Itzhak, Companies are Commercializing Outer Space. Do Government Programs Still Matter?, Wash. Post (Jan. 22, 2022,, 5:00 AM) (stating that while the government dictates the rules and much funding for space endeavors, private corporations are still becoming more powerful and popular). [21] See Mohammad Jazib, List of Richest People Who Own Private Space Companies, agran Josh (Aug. 24, 2023, 3:19 PM), https://www.jagranjosh.com/general-knowledge/richest-people-who-own-private-space-companies-1692870550-1 (listing the richest people in the world who own private space companies, with Elon Musk, Jeff Bezos, and Richard Branson on the top of the list). [22] See Marianne Guenot, The Moon is Open for Business, and Entrepreneurs are Racing to Make Billions, Bus. Insider (Aug. 8, 2023, 4:59 PM), https://www.businessinsider.com/nasa-helping-private-companies-build-business-moon-make-lunar-billions-2023-6#:~:text=Even%20NASA's% 20SLS%20spacecraft%20%E2%80%94%20which,Artemis%20missions%20III%20to%20VIII. (predicting future return-on-investments for future corporations). [23] See id.(discussing bright future of financial rewards for commercialized space travel). [24] See Todd Bishop, Musk v. Bezos: SpaceX Challenges Blue origin’s Rocket-Landing Patent, Geek Wire(Sept. 2, 2014, 8:12 AM), https://www. geekwire.com/2014/elon-musks-spacex-challenges-patent/#:~:text=Elon%20Musk's%20SpaceX%20is%20petitioning,of%20launching%20and%2 0recovering%20rockets. (discussing petition to the USPTO filed by Elon Musk requesting an overturn of Blue Origin’s approach for landing a booster rocket at sea, on grounds that is was not novel); see generally Joshua T. Smith, The Future of Space Exploration: Spacex’s Petitions for Inter Partes Review Against Blue Origin’s Rocket-Landing Technology, 19 Sci. Tech. L. Rev.65, 66-67 (Dec. 2017) (discussing further basis for petition to overturn Blue Origin patent). [25] See Sheetz, supra note 16; see also Alan Boyle, Jeff Bezos’ Blue Origin Fuels Feud With Richard Brenson’s Virgin Galactic Over Suborbital Space Trips, Geek Wire (July 9, 2021 1:13 PM), https://www.geekwire.com/2021/jeff-bezos-blue-origin-fuels-feud-richard-bransons-virgin -galactic-suborbital-space-trips/ (discussing the growing feud between the three major corporations that stems from issue such as which is going to reach suborbital travel first, the quality of their flying experiences, and general popularity trends); see also John M. Wechkin, Stephen E. Arnett, & Stephen A. Brookman, Patents in the Emerging World of NewSpace, Perkins Coie (July 3, 2023), https://www.perkinscoie.com/en/news-insights/patents-in-the-emerging-world-of-newspace.html (discussing the concept of NewSpace, which is private corporations taking over the space exploration sector, leading to calls for increased patent protections). [26] See Alison Eldridge, SpaceX, Britannica (Nov. 28, 2023), https://www.britannica.com/topic/SpaceX (discussing creation of SpaceX). [27] See Mission, SpaceX, https://www.spacex.com/mission/ (last visited Nov. 28, 2023) (discussing extensive list of successes by SpaceX as a pioneer in the private space exploration industry). [28] See id.(listing up-to-date number of launches, landings, and re-flights by SpaceX). [29] See Jeff Foust, SpaceX Investment in Starship Approaches $5 Billion, Space News (May 26, 2023), https://spacenews.com/spacex-investment-in-starship-approaches-5-billion/ (stating SpaceX’s large investment in singular launching project). [30] See SpaceX Patents – Insights & State (Updated 2023), Insights, https://insights.greyb.com/spacex-patent/ (giving year-by-year listing of SpaceX patents, beginning in 2005). [31] See id.(listing amount of SpaceX patents). [32] See id.(charting the breakdown of SpaceX patents by nation, with the United States have eighty-four, Germany having twenty-six, Taiwan having ten, Japan having five, Canada having 3, and the United Kingdom having one). [33] See id. (discussing variety of SpaceX inventions). [34] See id. (charting the ever-increasing rate of patent applications by SpaceX, with the most substantial increase occurring from the year 2018 with five filings, to 2019 with thirty-seven filings). [35] See About Blue Origin,Blue Origin, https://www.blueorigin.com/about-blue (last visited Nov. 28, 2023) (stating mission statement of Blue Origin); see also Blue Origin, Britannica (Dec. 1, 2023), https://www.britannica.com/topic/Blue-Origin (discussing creation of Blue Origin). [36] See Blue Origin Patents – Key Insights and Stats, Insights, https://insights.greyb.com/blue-origin-patents/ (last visited Nov. 28, 2023) (discussing Blue Origin’s belief of the importance of protecting earth through the discovery of new energy and material sources, and the impact of this mission on their unique inventions). [37] See id. (stating current number of patents held by Blue Origin). [38] See id. (charting the breakdown of Blue Origin patents by nation, with the United States having thirty, Russian Federation having six, Europe having six, Japan having five, India having three, and Kazakhstan having three). [39] See Joey Roulette, Bezos’ Blue origin Wins NASA Contract to Build Astronaut Lunar Lander, Reuters (May 19, 2023, 6:49 PM), https://www.reuters.com/technology/space/nasa-name-second-company-build-astronaut-lunar-lander-2023-05-19/ (discussing multi-billion-dollar contract, received by Blue Origin, to fund the creation of a spacecraft that would fly astronauts to and from the moon). [40] See Audrey Wilson, How Does Blue Origin Make Money, Finty (Aug. 17, 2023), https://finty.com/us/business-models/blue-origin/ (stating that while Jeff Bezos has spent more than $1 billion of his own money on Blue Origin, the company has received revenues from multiple sources, including space tourism flights, selling engines, and contracts with NASA for the space flights). [41] See Sissi Cao, What You Pay For Blue Origin’s Spaceflight Depends on Who You Are, Observer (June 23, 2022, 5:30 AM), https://observer.com/2022/06/blue-origin-space-tourism-pricing-marketing/ (stating wide range of seat costs, that range from nothing to almost $30 million, based on different factors which are tailored to the individual passenger, all generating substantial profits for the company). [42] See id. (stating that the New Shepard revenue is also expected to increase, as the number of passengers on flights is expected to double in the next year). [43] See Virgin Galactic, Virgin, https://www.virgin.com/virgin-companies/virgin-galactic (last visited Nov. 28, 2023) (stating mission statement of Virgin Galactic); see also Virgin Galactic, Britannica (Nov. 19, 2023), https://www.britannica.com/topic/Virgin-Galactic (discussing creation of Virgin galactic). [44] See Maya Yang, Virgin Galactic Successfully Flies Tourists to Space for First Time, Guardian (Aug. 10, 2023, 3:29 PM), https://www.theguardian.com/science/2023/aug/10/vigin-galactic-space-flight-vss-unity-landing (detailing Virgin Galactic’s first successful launch of a crewed space travel). [45] See id. (stating the prices that 800 clients have already spent to secure a seat on future missions). [46] See Sissi Cao, Virgin Galactic Revenue Jumps 500% as Space Tourism Takes Off, Yahoo Finance (Aug. 2, 2023), https://finance.yahoo.com/news/virgin-galactics-revenue-jumps-500-204631892.html (stating that “[t]hough the company has yet to prove its business model profitable, it’s plowing in significantly more revenue as amateur astronauts line up.”). [47] See Virgin Galactic Holdings, Inc. Form 10;K/A, U.S. S.E.C., 1, 19 (Dec. 31, 2020) https://s29.q4cdn.com/417755062/files/doc_financials/ Annual/10K-A-2020-Virgin-Galactic.pdf (depicting Spacecraft Technology License Agreement between Mojave Aerospace Ventures and Virgin Galactic); see also Mojave Aerospace Ventures, Wikiwand https://www.wikiwand.com/en/Mojave_Aerospace_Ventures (last visited Nov. 29, 2023) (discussing Mojave Aerospace Venture’s 2004 deal with Virgin Galactic to develop a suborbital spacecraft for space tourism; which lead to a joint venture between Virgin Galactic and Scaled Composites called The Spaceship Company to further manufacture the spaceship); see also To Boldly Go Where no Billionaire Has Gone Before, Reddie(Oct. 12, 2021), https://www.reddie.co.uk/2021/10/12/to-boldly-go-where-no- billionaire-has-gone-before/ (stating that while Virgin Galactic has no patents of its own, it uses the Spaceship Company subsidiary to license various intellectual property from Mojave Aerospace Ventures, including inventions such as winged spacecrafts). [48] See Elizabeth Howell, SpaceShipTwo: A Flight Path to Space Tourism, Space.com (Mar. 31, 2021), https://www.space.com/ 19021-spaceshiptwo.html (discussing creation of SpaceShipOne, with goal of winning $10 million prize to become first privately funded vehicle to fly back and forth between space in a two-week span); See also Virgin Galactic, X (Sept. 22, 2020), https://twitter.com/virgingalactic/status/1308493561592254464?lang=en (stating success of SpaceShipOne mission). [49] See Marcus Schladeback ,Fifty Years of Space Law: Basic Decisions and Future Challenges, 41 Hastings Int’l & Compar. L. Rev.245, 245 (2018) (describing space law as “a collection of more or less amusing and unrealistic rules”). [50] See id. at 246 (stating that in 2018, on the fifty-year anniversary of the Outer Space Treaty, space law has remained unchanged, and review of its effectiveness needs to occur). [51] See Space Law Treaties and Principles,U.N. Off. For Outer Space Aff.s, https://www.unoosa.org/oosa/en/ourwork/spacelaw/treaties.html (last visited Dec. 1, 2023) (stating the five major treaties which create the foundation of space, based on the premises that “the activities carries out in outer space and whatever benefits might be accrued from outer space should be devoted to enhancing the well-being of all countries and humankind, with an emphasis on promoting international cooperation.”). [52] See Bryan A. Garner, Black’s Law Dictionary 4076 (8th ed. 2004) (defining “res communes”). [53] See Space Law Treaties and Principles, supranote 69 (discussing overall theme of space law treaties). [54] See Benjamin Stasa & Brooke Kushman, Outer Space and Intellectual property Law: A Dispatch From the Future, JD Supra (July 10, 2023), https://www.jdsupra.com/legalnews/outer-space-and-intellectual-property-5376073/#:~:text=However%2C%20while%20the%20Outer%20 Space,intellectual%20property%20rights%20in%20space. (stating that the primary legal framework, under the Outer Space Treaty, does not reference nor provide guidance on applicability of intellectual property laws in space). [55] See Vladimir Kopal, Treaty in Principles Governing the Activities of States in the Exploration and Use of Outer Space, Including the Moon and other Celestial Bodies, Audiovisual Libr. Of Int’l L. (Dec. 19, 1966), https://legal.un.org/avl/ha/tos/tos.html (discussing the persistent themes of res communes, in the various forms of the Outer Space Treaty). [56] See Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, Including the Moon and Other Celestial Bodies, Jan. 27, 1967, 18 U.S.T. 2410, 610 U.N.T.S. 205. [57] See Treaty on Principles Governing the Activities of States in the Exploration and Use of Outer Space, Including the Moon and Other Celestial Bodies, Jan. 27, 1967, 18 U.S.T. 2410, 610 U.N.T.S. 205. [58] See Convention on Registration of Objects Launched into Outer Space, Jan. 14, 1975, 28 U.S.T. 695, 1023 U.N.T.S. 15. [59] See Convention on Registration of Objects Launched into Outer Space, Jan. 14, 1975, 28 U.S.T. 695, 1023 U.N.T.S. 15. [60] See Henry R. Hertzfeld, Unsolved Issues of Compliance With the Registration Convention, 8J. Space Safety Eng’g238, 238 (Sept. 2021) (detailing the complexities of international regulations and the subsequent inefficiencies that followed when drafting the Registration Convention). [61] See Anja Nakarada Pečujlić, Registration Convention, Planetary Sci. (Mar. 31, 2020), https://oxfordre.com/planetaryscience/display/ 10.1093/acrefore/9780190647926.001.0001/acrefore-9780190647926-e-132?d=%2F10.1093%2Facrefore%2F9780190647926.001.0001%2Facrefor e-9780190647926-e-132&p=emailAy3aIicJIc0rM (discussing an overall objective of overriding the jurisdiction and control of outer space as a means of promoting fair and ethical use of it). [62] See id. (introducing the difficult road the Registration Convention faced prior to its implementation). [63] See id. (discussing the extensive negotiation history and failure to obtain widespread ratification as means of showing its unpopularity). [64] See id. (listing various disagreements of the Convention’s drafting which lead to its widespread criticism). [65] See Brown v. Duchesne, 60 U.S. 183 (1856) [66] See id. at 183 (quoting the Supreme Court’s holding). [67] See Dowagiac Mfg. Co. v. Minn. Moline Plow Co., 235 U.S. 641 (1915). [68] See id. at 652 (stating the Supreme Court’s continued reliance on jurisdictional restricts of patent protection). [69] See 35 U.S.C. §154(a)(1) (1952). [70] See 35 U.S.C. §271(a) (1952). [71] See 35 U.S.C. §105 (2018). [72] See 35 U.S.C. §105(a) (2018) (“Any invention made, used or sold in outer space on a space object or component thereof under the jurisdiction or control of the United States shall be considered to be made, used or sold within the United States for the purposes of this title”). [73] See 35 U.S.C. §105 (2018). [74] See Andrews Stevens & Todd M. Hopfinger, Obtaining and Enforcing Patents for Outer Space, Sterne Kessler Goldstein & Fox (July 2020), https://www.sternekessler.com/news-insights/publications/obtaining-and-enforcing-patents-outer-space (introducing a flag of convenience-type loophole created by § 105). [75] See id. (giving example to illustrate issue). For example, if a United States corporation builds a space object based on a competitor’s United States patent and uses the object while in outer space, they can avoid being found liable for infringement simply by registering the object in a foreign country where the competitor’s technology was not patented. [76] See Resolution Adopted by the General Assembly: 1721 (XVI). International Co-Operation in the Peaceful Uses of Outer Space, UNOOSA, https://www.unoosa.org/oosa/en/ourwork/spacelaw/treaties/resolutions/res_16_1721.html (last visited Jan. 2, 2024) (stating requirements for registration of space objects under the Registration Convention). [77] See id. (highlighting how the §105 loophole actually opens up United States corporations to infringements by other United States corporations). [78] See Matthew J. Kleiman, Patent Rights and Flags of Convenience in Outer Space, Space Rev. (Feb. 7, 2011), https://www.thespacereview.com/article/1772/1 (stating the Registration Convention defined “launching state” as either the country which is either the country that launches the object, procures the launching of the object, or the country from which the space object is launched; meaning that a company could select a company by either incorporating it business in or launching its spacecraft from a beneficial country). [79] See Convention on the High Seas, Dec. 10, 1982, 1833 U.N.T.S. 3. [80] See Kevin Davidson & Keri Sicard, Extraterrestrial law: Protecting Patents in Outer Space and on Celestial Bodies, IP Watchdog (Aug. 20, 2023, 12:15 PM), https://ipwatchdog.com/2023/08/20/extraterrestrial-law-protecting-patents-outer-space-celestial-bodies/id=164862/ (introducing the flags of convenience loophole that exists for high seas regulations); see also Matthew Baur, Flags of Convenience and the Hazards of Shipbreaking, Glob. Fin. Integrity (Nov. 17, 2021), https://gfintegrity.org/flags-of-convenience-and-the-hazards-of-shipbreaking/ (discussing the flags of convenience loophole and the risks it imposes on industry participants). [81] See Convention on the High Seas, Dec. 10, 1982, 1833 U.N.T.S. 3. [82] See Matthew J. Kleiman, Patent Rights and Flags of Convenience in Outer Space, Space Rev. (Feb. 7, 2011), https://www.thespacereview.com/article/1772/1 (“Due to lax regulations, minimal oversight, and poor record keeping in these countries, flags of convenience are often criticized for creating a permissive environment for criminal activities, poor working conditions, and environmental damage.”). [83] See Elizabeth Howell, International Space Station-Everything You Need to Know, Space.com (June 11, 2023), https://www.space.com/16748-international-space-station.html (discussing the creation of the ISS from 1998 to 2011, and its long-term utilization for various purposes by many different nations). [84] See 15 Ways the International Space Station Benefits Humanity Back on Earth, NASA (July 22, 2022), https://www.nasa.gov/missions/station/15-ways-the-international-space-station-benefits-humanity-back-on-earth/ (last various ways in which the ISS completes its goals of betting mankind as a whole). [85] See Agreement Among the Government of Canada, Governments of member States of the European Space Agency, the Government of Japan, the Government of the Russian Federation, and the Government of the United States of America Concerning Cooperation on the Civil International Space Station, Jan. 29, 1998, T.I.A.S. No. 12927; see also International Space Station Legal Framework, Eur. Space Agency, https://www.esa.int/Science_Exploration/Human_and_Robotic_Exploration/International_Space_Station/International_Space_Station_legal_ framework (last visited Nov. 28, 2023) (listing the three sources of international cooperation agreements that provide the framework for ISS regulation, including the International Space Station Intergovernmental Agreement, four Memoranda of Understandings between NASA and each cooperating Space Agency, and various bilateral Implementing Agreements between the space agencies involved in the Memoranda of Understandings). [86] See International Space Station Intergovernmental Agreement, Jan. 29, 1998, 27 I.L.M. 189. [87] See International Space Station Intergovernmental Agreement Art. 21(2), Jan. 29, 1998, 27 I.L.M. 189. [88] See International Space Station Intergovernmental Agreement Art. 21(3), Jan. 29, 1998, 27 I.L.M. 189. [89] See International Space Station Intergovernmental Agreement Art. 21(3), Jan. 29, 1998, 27 I.L.M. 189. [90] See Rochus Moenter, The International Space Station: Legal Framework and Current Status, 64 J. Air L. & Comm.1033, 1054 (1999) (stating certain legal restrictions for ISS participating nations). [91] See International Space Station Legal Framework, Eur. Space Agency, https://www.esa.int/Science_Exploration/Human_and_Robotic_ Exploration/International_Space_Station/International_Space_Station_legal_framework (last visited Nov. 28, 2023) (discussing certain rationale for ISS regulations). [92] See Sheetz, supra note 16. (“Today’s benefit from satellites is nearly immeasurable, and massive projects such as the International Space Station or the Stratolaunch aircraft are possible only through the industry’s growth”.) [93] See Jurisdiction Over Vessels, Nat’l Oceanic Atmospheric Admin. (Oct. 4, 2022), https://www.noaa.gov/jurisdiction-over-vessels (introducing the avenues for flag state jurisdictions). [94] See Intellectual Property and Space Activities, WIPO, 1, 22 (Apr. 2004), https://www.wipo.int/export/sites/www/patent-law/en/ developments/pdf/ip_space.pdf (discussing recommendations made by the International Bureau of the World Intellectual Property Organization to create uniform international regulations for Outer Space-specific works). [95] See Liz Malmen, Exploration of Space and Patent Law: How the Current Legal System Ineffectively Protects Private Companies in the Commercial Space Industry, 20 Santa Clara J. Int’l L.80, 96 (Dec. 3, 2021) (discussing the benefits of a universal patent law, such that it would the loophole similar to the flags of convenience). [96] See Is It Time For a More Robust Registration Convention?, Denv. J. Int’l Convention (Mar. 14, 2013), https://djilp.org/is-it-time-for-a-more- robust-registration-convention/ (stating that any benefit to having a registry list is undermined by an incomplete list). [97] See International Laws Involving Patents, Justia (Oct. 2023), https://www.justia.com/intellectual-property/patents/international-patent- protection/#:~:text=A%20single%20international%20patent%20does,a%20citizen%20of%20that%20country. (stating international patent laws make it difficult for inventors to get expansive protections across multiple jurisdictions). [98] See A Look at Countries with Commercial Space Missions and Their Private Players, CNBC (Nov. 18, 2022, 9:58 PM), (providing list of countries that have completed commercialized space travel). [99] See Unitary Patent, Eur. Pat. Off., https://www.epo.org/en/applying/european/unitary/unitary-patent#:~:text=The%20first%20European %20patents%20with,UPC%20Agreement)%20by%20that%20date. (last visited Nov. 30, 2023) (introducing the European Union’s unitary patent system); see also New Unitary Patent System: Pioneering a New Era of Patent Protection and Enforcement in the EU, Eur. Comm’n (June 1, 2023), https://ec.europa.eu/commission/presscorner/detail/en/ip_23_3004 (discussing the beneficial aspects of the European Union’s unitary patent system for inventors seeking mass protections) [100] See Patent Cooperation Treaty, USPTO, https://www.uspto.gov/patents/basics/international-protection/patent-cooperation-treaty (last visited Nov. 12, 2023) (discussing an inventor’s ability to get a file “international” patent application). [101] See supra, note 138 (reiterating the strongest nations that currently exist in manned space travel, while suggesting that certain private players from around the world have potential to break into the market soon as well). [102] See Virgin Galactic Holdings, Inc. Form 10;K/A, U.S. S.E.C., 1, 19 (Dec. 31, 2020) https://s29.q4cdn.com/417755062/files/doc_financials/ Annual/10K-A-2020-Virgin-Galactic.pdf (indicating Virgin Galactic’s SEC annual filing which shows their extensive utilization of intellectual property licensing). [103] See id. [104] See id. (“Our success depends, in part, on our ability to protect our proprietary intellectual property rights, including certain methodologies, practices, tools, technologies and technical expertise we utilize in designing, developing, implementing, and maintaining applications and processes used in our spaceflight systems and related technologies. To date, we have relied primarily on trade secrets and other intellectual property laws, non-disclosure agreements with our employees, consultants and other relevant persons and other measures to protect our intellectual property and intend to continue to rely on these and other means, including patent protection, in the future.”). [105] See Patent Licensing: Benefits, Pitfalls and Types, Copperpod IP (Jan. 4, 2021), https://www.copperpodip.com/post/patent-licensing- benefits-pitfalls-types (stating that licensing of patents allows for the commercialization of the patents in either an exclusive or non-exclusive manner). [106] See id. (stating numerous benefits for licensee). [107] See Spacecraft Technology License Agreement, SEC, 1,1 (Sept. 24, 2004), https://www.sec.gov/Archives/edgar/data/1706946/0001193125 19215509/d785777dex1027.htm (stating licensing agreement for certain space objects, between Mojave and Virgin Galactic). [108] See id. at 3 (stating licensing conditions for sub-orbital space objects). [109] See id. at 8-9 (stating that Mojave has the ability to license the products, that they are not aware of any current infringements, and that no claim of infringement currently exists; and further stating that any litigation that arises against these infringement issues will fall to Mojave, not Virgin Galactic). [110] See id. (stating litigation protections for Virgin Galactic). [111] See Archer Achieves Key Flight Test Program Milestone as Midnight Takes Flight, Archer https://www.archer.com/ (last visited January 2, 2024) (discussing Archer’s fast-growing technologies in the field of commercialized eVTOL aircrafts). [112] See Lionel M. Lavenue, Pu-Cheng Huang, & Joseph M. Myles, Protecting Innovation in Aerospace, Finnegan (Oct. 8, 2023), https://www.finnegan.com/en/insights/articles/protecting-innovation-in-aerospace.html (discussing the company’s utilization of trade secrets for inventions such as proprietary manufacturing process for the eVTOL aircrafts, its software, and its control systems, which make them highly valuable in the market). [113] See id. (“Patents are more suitable for protecting inventions or designs that can be reverse-engineered or easily copied, while trade secrets are better suited for protecting confidential business information, such as manufacturing processes and source code, that cannot be easily reverse-engineered or discovered by others. Patents have a limited lifespan of about 20 years and require public disclosure, while trade secrets can last as long as the secret is kept, but come with fewer protections.”). [114] See Patrick Soon & Rebecca Bellow, The Top 4 Advantages of Trade Secret Protection, WHGC (Sept. 18, 2014), https://www.whglawfirm .com/top-4-advantages-of-trade-secret-protection/ (listing the wider variety of classifications of trade secrets, the difference in protections, and the ease of gaining trade secret protections, as opposed to patent protections). [115] See New Report Reveals Global Patenting Trends in Space Technologies, Eur. Pat. Off. (July 21, 2021), https://www.epo.org/en/news -events/news/new-report-reveals-global-patenting-trends-space-technologies (detailing study conducted by the European Patent Office, the European Space Policy Institute, and the European Space Agency). The study showed that while the United States was the major country filing for patents on space technologies, consisting of thirty-eight percent of the global total, nine additional countries have also begun patent these as inventions well, including China, Japan, Germany, France, and Russia. See id. (stating the growing international patent filings for space-related inventions). [116] See Christopher Green, Outer Space Treaty & Beyond: Do Existing Space Laws Put an Astronomical Barrier to Private IP Rights in Space?, JD Supra (Sept. 8, 2020), https://www.jdsupra.com/legalnews/outer-space-treaty-beyond-do-existing-44028/ (discussing the risks associated with the non-existing and non-expansive regulations of Space laws that currently exist). [117] See id. (detailing need to further regulations of Outer space activities, as related to patentable inventions).
Notable Trademark Decisions, April 2025 By: Scott Greenberg and Vrudhi Raimugia
Federal Circuit Rejects Opposition Due To Insufficient Proof of Distinctiveness For Opposer’s Highly Descriptive Mark, But Suggests That USPTO Reconsider Registrability of Applicant’s Similar Mark American Policy Roundtable (“APR”) filed applications with the USPTO to register the service marks iVoter and iVoter.com on the Principal Register in connection with web-based information services in the field of public policy and political issues. The applications were approved by the USPTO Examining Attorney without any objections and published for opposition. Heritage Alliance (“Heritage”) opposed based solely on a claim of priority and likelihood of confusion with Heritage’s prior common law marks “iVoterGuide” and “iVoterGuide.com” in connection with similar web-based information services. The USPTO’s Trademark Trial and Appeal Board dismissed the opposition based on its findings that Opposer Heritage’s marks were highly descriptive and consequently Heritage’s proof of acquired distinctiveness at the time of APR’s adoption of its marks was insufficient. On appeal, the U.S. Court of Appeals for the Federal Circuit affirmed the Board’s decision but also suggested that the USPTO may want to reconsider its ex parte determination that APR’s marks are entitled to registration. Heritage Alliance v. American Policy Roundtable, 133 F.4th 1063, 2025 U.S. App. LEXIS 8289 (Fed. Cir. April 9, 2025). The Federal Circuit panel noted that, in reviewing the Board’s decision, the panel will decide any legal issues de novo, and will review the Board's factual findings for substantial-evidence support, which requires such relevant evidence as a reasonable mind might accept as adequate to support a conclusion. With regard to Heritage’s opposition claims, the Federal Circuit panel noted that applicant APR effectively conceded confusing similarity of the parties’ marks. However, in the proceedings below the Board had agreed with APR that (1) Heritage’s marks “iVoterGuide” and “iVoterGuide.com” were merely descriptive of the services, including a holding that the prefix “i” would be understood as meaning the Internet with regard to Heritage’s services, and therefore (2) Heritage was required to prove that is marks has acquired distinctiveness prior to APR’s earliest proven priority date (which was the filing date of its applications in 2019 because APR provided no other evidence of earlier use). Moreover, the Board had held that Heritage’s marks were not only descriptive, but were highly descriptive of its services, subjecting Heritage to a higher requisite degree of proof of acquired distinctiveness. On this issue, the Board had held that Heritage’s proof of acquired distinctiveness was not sufficient in view of the highly descriptive nature of its pleaded marks. For its claim of acquired distinctiveness, Heritage had only relied upon (a) its claim of continuous use of its marks in commerce for more than five years prior to APR’s adoption of its marks, and (b) three third-party declarations, which the Board had concluded were all essentially identical in form and came from declarants who were not random consumers but were volunteers used by Heritage to help evaluate political candidates so they could be graded regarding their positions on the issues. In view of the highly descriptive nature of Heritage’s pleaded marks, the Board held that Heritage did not sufficiently establish acquired distinctiveness and therefore dismissed the opposition. The Federal Circuit panel concluded that all of the Board’s findings were supported by substantial evidence and therefore affirmed the Board’s conclusion that the opposition should be dismissed. However, the panel further noted that, given APR’s concession of the likely confusion between its marks and Heritage’s highly descriptive marks, the opinions of both the Board and the Federal Circuit raise an “obvious issue” of whether the USPTO should reconsider its ex parte approval of the marks in APR’s applications as being marks “entitled to registration” as required by the trademark statute at 15 U.S.C. § 1063(b). 2025 U.S. App. LEXIS 8289 at *15. Heritage Alliance v. American Policy Roundtable, 133 F.4th 1063, 2025 U.S. App. LEXIS 8289 (Fed. Cir. April 9, 2025) (precedential).[SG] Federal Circuit Clarifies Priority & Limits of Trademark Expansion in Dollar Financial v. Brittex In Dollar Financial Group, Inc. v. Brittex Financial, Inc., the United States Court of Appeals for the Federal Circuit (“the Federal Circuit”) addressed a dispute over trademark priority and likelihood of confusion between competing users of the “MONEY MART” brand. The case involved a challenge to federal trademark registrations owned by Dollar Financial Group (“DFG”) and turned on whether DFG could claim trademark priority for pawn services based on earlier use of the mark for related financial services, despite Brittex Financial, Inc.’s (“Brittex’s”) intervening and continuous use of similar marks in the pawn industry. At the center of the case was a critical question in trademark law, can a trademark owner expand the scope of its rights from one set of services to another through legal doctrines such as the “zone of natural expansion” or “tacking,” especially when another party has used a similar mark in the new service area for years. DFG operated financial services under the “MONEY MART” brand since the 1980s, primarily in the fields of loan financing and check cashing. In 2012, DFG began using the same mark for pawn brokerage and pawn shop services and subsequently registered two trademarks in 2014 that covered these services. Brittex, on the other hand, operated pawn shops in Texas since 1993 under the names “MONEY MART PAWN” and “MONEY MART PAWN & JEWELRY.” While Brittex never federally registered its trademarks, it established common law rights in those marks through decades of continuous and geographically localized use. In 2014, Brittex filed a petition to cancel DFG’s registrations, arguing that its own prior use in pawn services gave it priority and that DFG’s new registrations would likely cause confusion among consumers. The Trademark Trial and Appeal Board (“TTAB”) originally denied Brittex’s petition, concluding that DFG’s prior use of the mark for loan financing gave it rights in the related field of pawn services. The TTAB reasoned that pawn services were effectively encompassed within or closely related to loan financing, and therefore DFG had priority. Brittex appealed, and in a 2021 decision, the Federal Circuit reversed the TTAB decision. The Federal Circuit clarified that pawn services differ meaningfully from loan financing, particularly because pawn services also involve the retail sale of collateral, a component absent from traditional loan financing. Thus, the Federal Circuit held that DFG could not rely on its older use of the mark in loan services to claim priority in pawn services. The case was remanded to the TTAB for further proceedings. On remand, the TTAB determined that Brittex had established priority in the pawn services field, having continuously used its marks since 1993. DFG, by contrast, only began using “MONEY MART” in relation to pawn services in 2012. The TTAB rejected DFG’s reliance on the zone of natural expansion doctrine, which generally allows a senior user of a mark to prevent registration of a confusingly similar mark by a junior user in an area into which the senior user might naturally expand. In affirming the Board’s decision, the Federal Circuit reaffirmed long standing precedent, particularly Jackes-Evans Manufacturing Co. v. Jaybee Manufacturing Corp., 481 F.2d 1342, 1345 (C.C.P.A. 1973) that the zone of natural expansion doctrine is purely defensive. That is, it could be used to prevent a third party’s registration but not as a basis to establish one’s own right to registration in the expanded field. Since Brittex had already begun using the mark in the pawn field before DFG entered that space, DFG could not claim earlier rights via natural expansion. The Federal Circuit declined to expand the doctrine into an offensive tool for asserting the right to registration. DFG also raised, for the first time on appeal, the argument that it should be permitted to “tack” its new use of the mark for pawn services onto its earlier uses in financial services. The tacking doctrine usually allows trademark owners to claim priority for a newer version of a mark or for new services if the changes are minor and the commercial impression remains the same, and if the services are substantially identical. However, the Federal Circuit declined to consider this argument because DFG failed to raise it at the TTAB level. The Federal Circuit then addressed the TTAB’s analysis under the In re E.I. DuPont DeNemours & Co., 476 F.2d 1357 (C.C.P.A. 1973), which are used to determine whether there is a likelihood of confusion between two marks, as follows: Similarity of Marks: The Federal Circuit agreed that the marks were highly similar in appearance, sound, and meaning. Further, merely adding descriptive words like “PAWN” or “JEWELRY” did not substantially distinguish Brittex’s marks from DFG’s MONEY MART. Strength of the Mark: Brittex’s mark was found to be suggestive, and while not especially famous, it carried slightly above-average commercial strength based on long-term use. Overlap in Services and Channels: The services, pawn brokerage, were identical, and the customer base and trade channels overlapped substantially, increasing the likelihood of confusion. Other Considerations: Although DFG had prior incontestable registrations for other services, those registrations did not include pawn services and thus did not give DFG the right to exclude Brittex in this specific market. Based on the above, the Federal Circuit affirmed the TTAB’s decision, upholding the partial cancellation of DFG’s registrations for pawn services. The Federal Circuit concluded that Brittex had priority, and substantial evidence supported a likelihood of confusion between the marks when used for overlapping services. The Federal Circuit highlighted the importance of clearly delineated trademark rights and reinforced the limitations of doctrines like zone of natural expansion and tacking when used to assert priority, illustrating that even long-standing and federally registered marks do not automatically extend to new goods or services, particularly where another party has established common law rights through earlier use. Dollar Financial Group, Inc. v. Brittex Financial, Inc.,132 F.4th 1363, 2025 USPQ2d 480, 2025 U.S. App. LEXIS 6377 (Fed. Cir. March 19, 2025) (precedential). [VR] TTAB Reaffirms High Bar for Product Configuration in the Royal Oak’s Watch Trademarks Case In re Audemars Piguet Holding SA, the Trademark Trial and Appeal Board (“TTAB”) addressed two applications (Serial Nos. 90045780 and 90045814) to register the three-dimensional configuration of watches from the Audemars Piguet “Royal Oak” line as trademarks. The applications described detailed physical features of the watches, including a round watch face, an octagonal bezel with hexagonal screw heads, case shape, crown, attachment studs, a patterned dial, and a specific bracelet design. The main legal issues centered on whether the proposed designs could function as trademarks under U.S. trademark law, particularly in light of functionality and acquired distinctiveness requirements. The United States Patent and Trademark Office (“USPTO”) initially refused registration for both applications on the basis that product designs are not inherently distinctive, and neither application had claimed acquired distinctiveness. The USPTO’s Examining Attorney determined that certain elements including the round watch face, case shape, winding crown, attachment studs were functional and therefore must have been shown in dotted lines to indicate they were not part of the protectable mark. Only the octagonal bezel and hexagonal screw heads could have been considered non-functional and capable of indicating source. Following Applicant’s submissions and arguments, the distinctiveness refusal was withdrawn by the USPTO, but the drawing objections remained, following which, Audemars Piguet appealed to the TTAB. During the appeal, the Examining Attorney requested a remand to correct an oversight, the failure to include a distinctiveness-based drawing requirement. The TTAB granted the remand, after which the Examining Attorney issued additional Office Actions reasserting both the functionality-based and the distinctiveness-based drawing requirements. Audemars Piguet objected, arguing the Examining Attorney exceeded the scope of the remand and that any newly submitted evidence should be excluded. The TTAB rejected these procedural arguments, affirming that both refusals were within the Examining Attorney’s authority and done properly before the TTAB. Later, on the merits, the TTAB evaluated two separate drawing requirements. The functionality-based drawing requirement stemmed from a finding that most of the design elements (like the round face and case structure) were functional in nature and therefore cannot be protected as trademarks. The TTAB cited precedents such as Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844, 850 n.10 (1982) and In re Honeywell, Inc., 532 F.2d 180, 182 (CCPA 1976) to support the proposition that features commonly used in the industry to achieve a utilitarian purpose, like circular watch faces, were functional and must be depicted in dotted lines. In the present case, the only elements found non-functional and potentially protectable were the octagonal bezel and the eight hexagonal screw heads. Further, the acquired distinctiveness-based drawing requirement required that only those elements which the Applicant could prove had secondary meaning be shown in solid lines. After reviewing voluminous advertising materials submitted by Audemars Piguet, the TTAB concluded that the only consistently promoted and recognized design elements were the octagonal bezel and the eight hexagonal screws. Most advertisements showed the watch with various design alterations or included the company’s well-known word marks, which the public would be predisposed to see as source indicators. The ads did not sufficiently educate consumers to associate the overall watch shape or its component elements aside from the bezel and screws as indicators of origin. The TTAB found that a major shortcoming in the Applicant’s case was the lack of “look-for” advertising i.e. promotional material that explicitly directed consumers to recognize specific design features as brand identifiers. The TTAB found that this type of advertising was crucial in product configuration cases because consumers do not naturally perceive product design elements as trademarks unless instructed to do so. Furthermore, most watches shown in the record varied in design and were labeled as part of the broader “Royal Oak” collection, which encompassed many visual variants. This undermined any argument that consumers associated the entire design in question with a single source. The TTAB also addressed and rejected the Applicant’s legal arguments that stare decisis should require the TTAB to follow a 2014 district court infringement ruling in which Audemars Piguet prevailed. See Audemars Piguet Holding S.A., v. Swiss Watch Int’l, Inc., 46 F. Supp. 3d 255 (S.D.N.Y. 2014). The TTAB found that the district court’s ruling addressed only the bezel and screw heads, not the broader design, and thus was not binding on the issues of distinctiveness or functionality of the full configuration. The TTAB also dismissed arguments based on a non precedential TTAB decision inIn re Cartier N.V., Ser. No. 77227767, 2010 WL 3164745 (TTAB 2010), explaining that despite the Applicant’s claim that the facts were not very different, the watch designs were materially different, and each case must be evaluated on its own evidentiary record. The TTAB particularly focused on two key legal principles: (1) under §2(e)(5) of the Lanham Act, functional features are not eligible for trademark protection; and (2) product designs are not inherently distinctive and require strong evidence of acquired distinctiveness to qualify for registration under §2(f). Additionally, under Trademark Rule 2.52(b)(4), any part of a design that is functional or unregistrable must be shown in broken or dotted lines in the drawing to ensure the applicant is not claiming rights in those aspects. These legal standards, especially stringent for product designs, guided the TTAB’s evaluation. Ultimately, the TTAB emphasized that under trademark law, functional product features could not be protected as trademarks, and applicants must provide strong, feature-specific evidence to prove that product designs, particularly complex ones, have acquired distinctiveness. The decision affirmed that product design configurations face a high bar for trademark protection, functional features must be excluded from trademark claims, and the remaining elements must be shown through consistent, targeted marketing to have acquired distinctiveness. The TTAB therefore affirmed the Exmaining Attorney’s objections to the drawings based on functionality and non-distinctiveness. In re Audemars Piguet Holding SA, 2025 USPQ2d 18, 2025 TTAB LEXIS 1 (TTAB January 2, 2025) (precedential). [VR]
Historian's Corner
BY: DALE CARLSON
If you can imagine this, decades ago the NYIPLA's Young Lawyers Committee was referred to by a different moniker entirely. It was called the "Committee on Consonance and Harmony in the Profession" - quite a mouthful indeed! The reason for the rather awkward name back then was that many new IP lawyers were not necessarily young since it was often a second career opportunity for them. In any event, ever since our Association's origin in 1922, there was an impetus within the organization to foster the development of newer lawyers entering our profession. More recently, the NYIPLA has been at the forefront in encouraging the establishment of IP Inns of Court to enhance civility in the profession and the development of lawyering skills spanning generations of lawyers. In 2009, the NYIPLA co-sponsored the Inaugural Dinner of the Conner IP Inn held at the Union League Club in Manhattan. Judge William C. Conner was a past president [1972-73] of our Association. That dinner was quite a memorable gathering, as memorialized in the Inaugural Journal attached as Appendix A. Judge Conner's wit and wisdom came through in flying colors! Judge Conner was also honored by our Association by virtue of the Conner Writing Competition bearing his name. This competition dates back to 1999. During his lifetime, Judge Conner personally presented the award to the winners. The very first winner was a student from my alma mater Syracuse, and the 2023 winner hailed from Quinnipiac. Happily, in recent years the competition judging has been blind, meaning that judges know neither the names of the students nor the schools they are attending. In addition to an IP Inn honoring Judge Conner, there is also one named for Judge Giles S. Rich, another past president [1950-51] of our Association, as well as one named for Judge Pauline Newman, a former director [1968-72] of our Association. Both of those Inns are situated in the D.C. metro area. If you haven't yet watched the podcast that immediate past president Rob Rando hosted with Judge Pauline Newman, I'd strongly encourage you to do so. Not only does this podcast demonstrate Judge Newman's charm and wit, it also demonstrates the more daring and adventurous side of her persona. As a spoiler alert, please don't miss her description of her ski trips to Vermont via motorcycle, her tuning and honing her sports cars to gain top speed, and her flying jaunts over Long Island in what must have been a single-engine airplane with a few "spins and loops" along the way. Enough said - please watch it so you can judge for yourself. And enjoy!
As Time Goes By - Fostering Consonance and Harmony
Historian's Corner - Appendix A
The Board meeting was held via virtual format via Zoom. In attendance were: Patrice Jean, President Abigail Struthers David Bomzer Cheryl Wang Robert Rando Jenny Lee Christopher Loh Lauren Emerson Eric Greenwald Hon. Roslynn Mauskopf Deirdre Clarke Jonathan Berschadsky Nick Forgione Christine-Marie Lauture Feikje van Rein President Patrice Jean called the meeting to order at around 5:07 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Financial Report. Financials lower than last year YTD. Confirmed $100k difference was accounted for. New members. Patrice reported there are 895 members. Motions were passed to waive reading of the names to admit new members. Amicus Briefs Committee. Abby reported there is 1 open proposal for Ecofactor v Google which is a Fed Circuit case involving use of expert testimony in calculating damages in particular on licenses. Amici briefs are due 12/02/24. Conflict check to be circulated. The board discuss taking neutral positions when filing and reasoning. Legislative Action Committee. Email from Chris Israel noted there might be a mark up of PERA and PREVAIL Judge Mauskopf proposed whether NYIPLA to issue statement in support of Judgeship Bill which is intended to increase number of judges. The board voted in favor pending review of the bill contents, with 1 abstention. Judges Dinner – March 21, 2025. The board revisited the discussion on vendor sponsorship. Feikje recommended not ruling out law firms – similar to hospitality suites, requiring law firms to buy tables in order to be able to sponsor. The board discussed covering expenses such as the judge’s only CLE by allowing more sponsors for the membership reception. Keynote speaking still pending but will move on to other potential candidates if no response by Nov 5th. Membership Drive. Stickers are ready and can be collected at the next meeting. Notebooks are pending. Job Postings – Patrice proposed reviving to have page on website & include in newsletter. Noted that there were many graduated law students at the Young Lawyers event the other night who had taken the bar and were networking looking for job opportunities. The board also discussed other potential cost-effective opportunities for student members & recent graduates to be engaged and network e.g., trivia at law firm office. AAC Update. Eric Greenwald shared idea proposed by Christine Lauture to send 2 question engagement survey to IP practitioners as a way of engaging and identifying opportunities to engage members. First – what IP topic is not being addressed by NYIPLA Second – are there issues related to advancement, business development, etc. that you’d like to see addressed at NYIPLA program Previous/ Upcoming programs a. 09/19 Trade Secrets Committee Meeting - Mark Schildkraut will provide an update next month b. 09/19 YLC USPTO - Deirdre Clarke reported it was a great 1 hr virtual program. It was well attended with close to 40 attendees. Speakers included Judge Johnson from TTAB & Jenna Denault from the AAC and Lindsey interlocutory attorney at the TTAB. Speakers discussed their experience & careers at the USPTO. c. 09/20 Patent Law UPC Program - Jeffrey Coleman. 20-25 participants at the event. d. 2024 IP Transactions Bootcamp (Oct. 8/15/22) (5:00pm – 8:00pm, via Zoom) David Bomzer reported that so far 2 out of 3 sessions had about 30 attendees, not including speakers. Trademarks, Copyright & NIL in 1st session. The 2nd session covered patents & university agreements and a portion on ethics. Great turnout & engaging speakers. Positive feedback from YLC members. e. 10/09 YLC Happy Hour Program - David Bomzer reported that 59 people signed up – Great atmosphere, food & conversation. Great to see more senior attorneys engaging with law students & young practitioners. f. 10/15 PTAB Committee Meeting - David Bomzer reported that Tom Kraus & Hon James Worth covered government director review. Officially, 7 signed up through NYIPLA website but usually 20+ at program – over 20 attendees. Next is Nov 19th. g. 10/23 YLC + AAC Mock Interviews - (6:00pm – 8:00pm, Groombridge) - Eric Greenwald - No new updates. Registration has closed at capacity for interviewees not yet enough for interviewers. h. 11/07 Patent One Day Program (8:30am – 5:00pm, Hughes Hubbard & Reed) - David Bomzer reported the planning call went well last week. Keynote speaker still pending. i. 2025 January NYIPLEF Dinner - Patrice Jean reported the gala was oved. More updates to come. j. 2025 February Biosimilars - Feikje Van Rein reported this is set to take place at Orrick – in person only. Irina & Colman to touch base next week. k. 2025 Zoom Out AAC - Eric Greenwald Committee Reports. Connor Writing Competition has launched – advertising in progress Corporate Committee had great kickoff Chris Israel spoke including for FTC Colman attended & had good back & forth discussion Past Presidents – no new update Design Patent – working on 1 day patent program Old Business. None. New Business. Nov 21st Columbia office of professional development – session for IP attorneys undergrad – virtual. Usually at least 80 students; proposed listing NYIPLA as co-sponsor Meeting adjourned at 6:08 pm ET.
MINUTES OF OCTOBER 16, 2024 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Virtual via Zoom New York, New York
MINUTES OF NOVEMBER 7, 2024 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION In Person at Hughes, Hubbard & Reed & Virtual via Zoom New York, New York
The Board meeting was held at the offices of Hughes, Hubbard & Reed with members attending in-person and via Zoom. In attendance were: Patrice Jean, President David Bomzer Jeffrey Coleman Jenny Lee Christopher Loh Lauren Emerson (Dialed In) Eric Greenwald Ashley Ross (Dialed In) Hon. Roslynn Mauskopf Deirdre Clarke Jonathan Berschadsky Jenna Deneault Nick Forgione Christine-Marie Lauture (Dialed In) Feikje van Rein President Patrice Jean called the meeting to order at around 6:15 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Financial Report. Financials in a stable position. Less of a loss than last year at this point New members. Patrice reported there are 905 members. Motions were passed to waive reading of the names and to admit new members. Amicus Briefs Committee. Conflict check for Ecofactor v Google has been conducted and there is a quorum to file the brief. The committee will discuss at next meeting. Hon. Mauskopf mentioned that there are proposed new rules for amicus briefs filings and they are open for comment, she will share with committee to discuss at next meeting. Legislative Action Committee. Hon. Mauskopf referred to the One Day Patent program and the report by the speakers including Chris Israel, about the expected changes in the administration. It is still to be expected that Pera and PreVail will have a mark up next week. Judges Act is still expected to pass before the end of the congress term. Judges Dinner – March 21, 2025. Keynote speaking still pending but will move on to other potential candidates if no response by Nov 5th. The board discussed, voted and approved the following sponsorship for the Welcome Reception. Diamond $7,500; Gold $5,000; Silver $3,500; Bronze $2,500. Available to vendors and law firms. Law firms will have to buy one table to be eligible. Day of Dinner CLE – the board discussed possible topics and speakers. Membership Drive. Stickers were handed out to the Patent One Day attendees as well as the board members. Job Postings – Patrice encouraged the board to have their job listings posted to the NYIPLA website. Previous/ Upcoming programs 10/23 YLC + AAC Mock Interviews – Eric & Jenna reported a successful program 11/07 Patent One Day Program – great success, tku to HHR for hosting 11/12 YLC Committee Meeting – a monthly cmte meeting with speakers 11/19 PTAB Committee Meeting – 3 patent judges have been confirmed 12/03 AAC + Committees Mini-Golf - Puttery – invitations have been sent 01/08 NYIPLEF Dinner – GT will be hosting and in the process of securing speakers 02/05 Biosimilars – 3 corporate speakers have been secured and working on the rest 2025 Zoom Out AAC- either January 28 or 29 2025 Bootcamp/Skills Program – the board discussed the possibility of a transactions bootcamp in the spring. The board discussed other options for programs focused on skills and young lawyers. Committee Reports. Connor Writing Competition & IOTY have launched – advertising in progress Old Business. Patrice will reach out to possible new co-chairs to fill the vacant positions. New Business. Nov 21st Columbia office of professional development – session for IP attorneys undergrad – virtual Usually at least 80 students; NYIPLA will be listed as co-sponsor Jeffrey, Ashley and Jonathan left the meeting at 7.10pm Meeting adjourned at 7.38pm ET.
MINUTES OF DECEMBER 11, 2024 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Virtual via Zoom New York, New York
The Board meeting was held via virtual format via Zoom. In attendance were: Patrice Jean, President Abigail Struthers Paul Bondor David Bomzer Jeffrey Coleman Cheryl Wang Robert Rando Jenny Lee Lauren Emerson Eric Greenwald Ashley Ross Hon. Roslynn Mauskopf Jonathan Berschadsky James Breen Nick Forgione Feikje van Rein President Patrice Jean called the meeting to order at around 5:03 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Financial Report. Financials in a stable position. Reduced operating loss and increased membership dues. New members. Jeff reported there are 915 members, including 5 new members since last month. Motions were passed to waive reading of the names and to admit new members. Amicus Briefs Committee. Abby reported that the committee is considering whether to comment on the proposed new rules for amicus briefs filings. She noted that the committee will not be submitting a brief for EcoFactor v Google. Supreme Court did not take up cert for In re Cellect. Legislative Action Committee. Paul reported that the proposed new rule on making terminal disclaimers has been officially withdrawn from the PTO. He reported that there will be a Senate Judiciary IP subcommittee hearing on the RESTORE Act and that both PERA and PREVAIL acts will need to be reintroduced in 2025. President Biden’s statement announced intention to veto Judges Act so it does not look like it will pass. Candidates for new PTO director are being considered. Judges Dinner – March 21, 2025. Feikje reported that information regarding sponsorships was sent out but no takers yet though there was some initial interest. Patrice noted she will do one last push for the keynote speaker but will move on if no response by Christmas. In the meantime, she will also ask if the other potential candidate is available. Day of Dinner CLE – the board discussed possible topics and speakers. Membership Drive – Membership committee has done a great job. Job Postings – Patrice reported that there have been new job listings posted and encouraged the board to post on the NYIPLA website. Previous/ Upcoming programs 11/07 Patent One Day Program – successful program, thanks to HHR for hosting 11/12 YLC Committee Meeting – a monthly committee meeting with speakers 11/19 PTAB Committee Meeting – 3 patent judges have been confirmed 12/03 AAC + Committees Mini-Golf - Puttery – invitations have been sent 01/08 NYIPLEF Dinner – GT will be hosting and in the process of securing speakers 01/16 Entertainment Sports & Social Media Committee Meeting – Cheryl will report next meeting. 01/29 Zoom Out AAC – virtual informal event with young lawyers 02/05 Biosimilars – 3 corporate speakers have been secured and working on the rest 02/25 In-House Job Panel – looking for panelist with government experience. 2025 Bootcamp/Skills Program – the board discussed the possibility of a transactions bootcamp in the spring focused on specific IP skills. 2025 YLC Wine Tasting – discussed potential venues and sponsors Rob emphasized value of involving past presidents and recommended leveraging their networks for speakers and panelists. Committee Reports. Conner Writing Competition & IOTY have launched – advertising in progress. Board discussed potential strategies for increasing nominations. Design Patent Committee had successful outreach events including panel with Columbia University students. Plan to host a practical event with USPTO speaker. Old Business. None. New Business. None. Meeting adjourned at 6:22 pm ET.,
MINUTES OF JANUARY 13, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Union League Club & Virtual via Zoom New York, New York
The Board meeting was held at the Union League Club via hybrid format with members attending in-person on-site, through Zoom and over telephone conference. In attendance were: Patrice Jean, President Abigail Struthers Paul Bondor (Dialed In) David Bomzer Jeffrey Coleman Cheryl Wang Jenny Lee Lauren Emerson Eric Greenwald Ashley Ross (Dialed In) Deirdre Clarke Jonathan Berschadsky James Breen Jenna Deneault Christine-Marie Lauture Feikje van Rein President Patrice Jean called the meeting to order at around 4:08 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting subject to edits. Financial Report. Financials are in a stable position. Figures skewed $50k higher because the Hilton fee was recently paid. CLE programming revenue is up YTD but expenses are also up. Judge’s Dinner is still operating at a small loss, though revenue is up. CD at BofA coming due Jan 21st. Feikje to select best short-term rate due to unpredictability long term. New members. Jeff reported there are 923 members, including 3 new members since last month. Membership is up in all categories other than Active 3-. Motions were passed to waive reading of the names and to admit new members. Amicus Briefs Committee. Committee may submit brief en banc for recent Teva v Amneal Pharms case. Comments on the proposed new rules for amicus briefs filings due by Feb 17th. The board discussed the threshold for disclosure of membership and potential impact for NYIPLA. Legislative Action Committee. New administration so need to wait and see. RESTORE, PERA and PREVAIL acts will all need to be reintroduced in 2025. Judges Dinner – March 21, 2025. Still working on keynote speaker. Letter has been sent to potential speaker’s schedule coordinator. Other potential candidate has expressed interest but schedule not confirmed due to impact of LA wildfires. Day of Dinner CLE – Topic will be “Effects of U.S. IP Jurisprudence on the Modern American Economy.” In the process of determining how best for potential partners or sponsors to support while ensuring no conflicts with membership. Previous/ Upcoming programs 12/17 PTAB Committee Meeting – discussed CAFC rule 36 affirmations; lively discussion, informative & well-done; most attendees for entire year 01/08 NYIPLEF Dinner – raised enough for 2 scholarships; well-attended & previous scholarship winners in attendance; last year’s recipient moderated panel discussing AI & discrimination bias; DE&I CLE credit given 01/16 Entertainment, Sports & Social Media Committee Meeting – well-attended in-person & virtual event; great panel on potential impact to trademark licenses in light of pre-trial rulings in Penn State trademark infringement case 01/21 PTAB Committee Meeting – Tony LoCicero to discuss PREVAIL Act 01/29 Zoom Out AAC – informal Zoom event with young lawyers to discuss 2024; typically well attended 02/05 Biosimilars – Colman & Irena have 6 speakers lined up; in-person event 02/12 Past President’s Dinner – at Sparks steak house following next board meeting which will be held at Amster Rothstein offices in Chrysler building 02/13 Design Patent Committee Meeting – most common rejections seen in design patent applications; want to have Patented author (Thomas Rinaldi) speak at a future program 02/25 In-House Job Panel – YLC hosted event; currently panel of mid-level attorneys including Eric, Gabe, and Nick from AAC in-person only roundtable; corporate attendees encouraged to attend 03/12 Young Lawyers Committee Happy Hour - venue to be secured, midtown preferred 04/03 membership committee event; discuss next steps after patent infringement complaint; likely virtual & speakers to be confirmed 2025 April/May Litigation Funding Program - Tues or Wed – this is a hot topic; program to cover sourcing funding and/or when courts are looking to identify source of funding 2025 Bootcamp/Skills Program – Spring roundtable or regular virtual series; may be rebranded; goal is to kickoff planning in April 2025 Spring Careers in IP Program – opportunity to co-host with Columbia Law School student org 2025 TM Half-Day CLE Program – early stages of planning; looking at June dates; copyright committee considering AI topic; also considering ethics or DE&I panel Committee Reports. IOTY – seeking additional candidates; so far at least 1 candidate Dispute Resolution 2-day program includes delegation from Singapore & Penn State; March 3rd private event for org leaders ; March 4th 9:30 – 11:30 am Cravath hosting roundtable; opportunity for NYIPLA rep to attend IP Transactions Committee new co-chair is Tom Kowalski Old Business. Judge’s dinner finalize table reservations – Welcome Reception firm sponsors New Business. None. Meeting adjourned at 5:09 pm ET.
The Board meeting was held at the offices of Amster, Rothstein & Ebenstein LLP with members attending in-person and via Zoom. In attendance were: Patrice Jean, President Abigail Struthers Paul Bondor David Bomzer Jeffrey Coleman Cheryl Wang (Dialed In) Jenny Lee Christopher Loh Lauren Emerson Eric Greenwald Ashley Ross Hon. Roslynn Mauskopf Deirdre Clarke Jonathan Berschadsky James Breen (Dialed In) Jenna Deneault Nick Forgione Christine-Marie Lauture (Dialed In) Feikje van Rein President Patrice Jean called the meeting to order at around 4:12 pm ET. Jenny Lee arrived at 4.50pm and Ashley Ross arrived at 5.05pm. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Financial Report. Jeff reported that financials are trending in the right direction. Currently in the black but that will change next month with expenses. New members. Jeff reported there are 943 members. Membership is up in all categories other than < 3 years. Motions were passed to waive reading of the names and to admit new members. Board discussed engagement and retention, in particular, ways to support law students transitioning to first year. A subcommittee between Membership and YLC committees will be formed. Amicus Briefs Committee. The board reviewed the draft comments on proposed FRAP rule changes. Members discussed revising length and tone to focus on amplifying importance of NYIPLA’s input and amici input overall. Comments to be circulated with approval by Fri or over the weekend if necessary. Legislative Action Committee. Changes in leadership were reported. All Acts will have to be reintroduced. Effect of current executive orders on PTO was mentioned. The board discussed value of hosting non-partisan basic IP 101 bootcamp for legislative stakeholders. Materials will be sent to Feikje. Judges Dinner – March 21, 2025. Patrice reported keynote speaker is still to be confirmed. The board discussed firms who have not booked yet and the Honored Guest lists. Day of Dinner CLE – Topic will be “Effects of U.S. IP Jurisprudence on the Modern American Economy.” Costs include lunch. NYLS Symposium Sponsorship – The board discussed value of sponsoring the 3rd Annual IP, Entertainment Media & Fashion Symposium on April 3rd, and the various sponsorship levels for the event. Members voted in favor of approving the Gold level sponsorship. IPOS Engagement Meeting with NYIPLA – Patrice reported it will take place March 3rd or 4th at Hughes Hubbard & Reed offices. Attendance will include a group from Singapore and 2 professors from Penn State. Day after, there will be a meeting at Cravath to talk with other leaders in the IP space. Previous/ Upcoming programs 01/16 Entertainment, Sports & Social Media Committee Meeting Cheryl Wang – Program was well-done and well-attended; at least 20 people via Zoom and 40-50 people in-person. 01/21 PTAB Committee Meeting David Bomzer - Discussed PREVAIL act & impact to PTAB 01/29 Zoom Out with NYIPLA Eric Greenwald - Well attended approx. 17 or 18 people including some of AAC 02/05 Biosimilars Patrice Jean – Standing room only at one point; very well done program; Reception held after; attendees included people from Eli Lilly, Teva, J&J, MSN 02/12 Past Presidents Dinner Rob Rando – Rob planned it but absent due to illness 02/13 Design Patent Committee Meeting Jonathan Berschadsky– Noted that all external publications by PTO reps areon hold for indefinite future; Will discuss avoiding common rejections in design patent applications 02/18 PTAB Committee Meeting David Bomzer – Will discuss Rule 36 02/25 In-House Job Panel Eric Greenwald - 5 panelists; planning meeting to take place Mon 03/12 Young Lawyers Committee Happy Hour Abigail Struthers – report next meeting 04/16 Litigation Funding Program Feikje van Rein - Irina is putting on another program; speaker from Orrick & potentially Connolly 2025 Bootcamp/Skills Program David Bomzer – Different skills classes to take place each week in April; starting with Patent Committee program on April 4th; April 7 & 10th Jonathan Bershadsky working on the program; final April date TBD with Adam Kowalski putting together program; Rob Rando to present File to Trial 2025 Spring Careers in IP Program Patrice Jean – Columbia Law School; end of March 2025 pending confirmation as to which day 2025 TM Half-Day CLE Program Deirdre Clarke - Planning begins next week Committee Reports. IOTY – 5 candidates; NYIPLEF doing well & applications are up for 2025 – volunteers to go through applications appreciated Old Business. None New Business. None. Meeting adjourned at 5:44 pm ET.
MINUTES OF FEBRUARY 12, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION In Person at the offices of Amster, Rothstein & Ebenstein LLP & Virtual via Zoom New York, New York
The Board meeting was held via virtual format via Zoom. In attendance were: Patrice Jean, President Abigail Struthers Paul Bondor Jeffrey Coleman Cheryl Wang Robert Rando Christopher Loh Lauren Emerson Eric Greenwald Ashley Ross Deirdre Clarke Jonathan Berschadsky Jenna Deneault Christine-Marie Lauture Feikje van Rein President Patrice Jean called the meeting to order at around 5:05 pm ET. Eric Greenwald joined at 5:17pm and Ashley Ross joined at 5:36pm. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Financial Report. Jeff reported that gross profit YTD was higher, membership dues up, expenses are steady, increased revenue overall but noted that figures will change after Judge’s Dinner expenses are reflected. New members. Jeff reported there are 953 members. 8 new members from Feb 2025 – 5 more students & 3 more attorneys. Motions were passed to waive reading of the names and to admit new members. Amicus Briefs Committee. No new briefs. Joint meeting with PTAB committee to discuss Rule 36 summary affirmances. Abby also reported LAC-NJ asked NYIPLA to join in providing input on DNJ pattern jury instructions, formal letter request to come. The board discussed suitable approach and potential changes that may be desired. Legislative Action Committee. Paul reported that USPTO director confirmation could be later than summer. He noted Ms. Coke Stewart is moving forward with policy decisions pending new director. Confirmed timing is not appropriate to further explore Feb proposed non-partisan initiative for Intro to IP 101 Bootcamp for capital staffers. Judges Dinner – March 21, 2025. Patrice confirmed keynote speaker. Day of Dinner CLE – Topic will be “Effects of U.S. IP Jurisprudence on the Modern American Economy.” The board discussed attendance challenges for a number of USPTO guests. Confirmed panel members will include Ms. Coke Stewart, Judge Stark, Peter Anthony Pappas and Chris Israel. IPOS Engagement Meeting with NYIPLA – Patrice reported on discussing opportunities to collaborate with the Singapore IP office to provide education around arbitration & mediation in Singapore. Abby & Patrice attended larger meeting at Cravath with Dave Campos, noting a good mix of international arbitrators & mediators. IOTY 2025 – Jonathan reported that there were submissions entered after the deadline. The board discussed the nominated candidates and voted to approve the committee’s recommendations for winners. Previous/ Upcoming programs 02/12 Past Presidents Dinner Rob Rando – Rob planned it but absent due to illness 02/12 Design Patent Committee Meeting JonathanBerschadsky– very pragmatic guidance on avoiding common rejections in design patent applications; went over allotted hour; good attendance. Noted that all external publications / presentations by PTO reps are on hold for indefinite future. 02/18 PTAB Committee Meeting David Bomzer – Together with ABC, discussed cases & the arguments advanced in each including Island v TD Ameritrade, SJ & whether same rules apply for Rule 36 judgements 02/25 In-House Job Panel Eric Greenwald - 5 in-house counsel panelists; at least 35 attendees 03/12 Young Lawyers Committee Happy Hour Abigail Struthers – on the calendar 03/18 PTAB Committee Meeting David Bomzer – Discuss memo rescinding discretionary denial interim procedures 04/03 Skills Program David Bomzer – 1 hour in-person event at Groombridge 04/16 Litigation Funding Program Feikje van Rein – 1.5 hrs in-person at Orrick; panelists include Former Chief Judge Lanaris, Denise DFranco who spoke at Biosimilars & John Colikowski head of IP policy at Nokia 2025 Bootcamp/Skills Program David Bomzer – In the process of planning fall program 2025 Spring Careers in IP Program Patrice Jean – Columbia Law School several alums on the panel including Patrice; working on securing in-house IP grad speaker 05/07 Annual Meeting Abby Struthers – Union League Club 2-9 pm ET CLE program planning in progress; potential topics include legislative related updates or perspectives from former agency dept members Next slot is dinner speaker / fireside chat – Patrice to reach out to PTO to see if Vishaly Udupa available; Nominating committee is starting process (Rob & Heather Schnyder) 06/26 TM Half-Day CLE Program Deirdre Clarke - Planning begins next week; Still in infancy of planning; have extended invite to Miriam Lord at Copyright Office who presented last year pending response; submitted formal request for USPTO speaker; invited John Welsh to speak re TTAB Overview; one of the panels for in-house counsel to cover how not to be copy ”wrong”; reached out to Copyright Committee 2025 July Moot Court CLE Program - Rob Rando to work on this after Judge’s Dinner 2025 One-Day Patent CLE Program, Abigail Struthers – Design Patent group may present something special Committee Reports Applications for NYIPLEF are up March 7th Conner Writing Competition deadline Past Presidents co-chairs to meet next Fri with Rob In-House Committee had Chris Israel as guest speaker again; reported on agency actions & Hill updates AAC Zoom Out – 2 members to help put together skills speaker series Membership Committee focusing on substantive programming; may consider International Member Rate Nominating committee: starting process (Rob & Heather Schneider) Feikje reported that Andrew “Andy” Berks passed away; was at Biosimilars event most recently Old Business. None New Business. None. Meeting adjourned at 6:22 pm ET.
MINUTES OF MARCH 5, 2025 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Virtual via Zoom New York, New York
One-Day Patent CLE Seminar By: Programs Committee On November 7, 2024, the NYIPLA held the One-Day Patent CLE Seminar at Hughes Hubbard & Reed LLP. Topics included: AI IP Guidelines IP & Antitrust with the FTC Hot Issues and Appeals: Regenxbio, Post-Amgen 112 and Cellect/Allergan Pending and Proposed IP Legislation Best Practices in Drafting ADR Clauses in IP Contexts Legal Changes to Design Patents Post-LKQ Decision AI and the Practice of Law: Ethical and Practical Issues of Using GenAI Columbia Science and Technology Law Review Fall Symposium 2024 By: NYIPLA & Columbia Law School’s Science, Technology & Intellectual Property Law (STIPL) On Friday, November 8, Columbia Law School’s Science, Technology & Intellectual Property Law (STIPL) held their annual symposium, “Judging Science.” This year’s symposium explored how the judiciary currently assesses and incorporates scientific and expert testimony in the US legal system, and their panel of leading legal scholars discussed potential improvements to make scientific evidence more reliable and understandable in court proceedings. The Symposium featured a wide range of viewpoints on the state of scientific evidence in the US judicial system. Scholars who contributed their expertise and commentary include: Prof. Edward K. Cheng of Vanderbilt Law School, Prof. Edith Beerdsen of Temple University Beasley School of Law, Prof. Valerie Hans of Cornell Law School, Prof. Maura Grossman of the University of Waterloo, Honorable Paul W. Grimm, Prof. David Faigman of UC Law San Francisco, Prof. Shari Diamond of Northwestern University School of Law, and Prof. Richard Lempert of the University of Michigan Law School. November YLC Meeting: Transition from Junior to Mid-Level Associate By: young lawyers Committee On November 12, 2024, the YLC Meeting included a panel discussion on the transition from junior to mid-level associate. The below panelists shared their experiences and strategies for navigating this career stage: Featured Speakers: Jennifer Rea Deneault, Partner, Groombridge, Wu, Baughman & Stone LLP Sam Eichner, Counsel, Pillsbury Winthrop Shaw Pittman LLP Eric Greenwald, Director, Merck Justin Fleischacker, Associate, Paul Hastings LLP Nicholas Forgione, IP Counsel, Authentic Brands Group PTAB Committee Meeting: MTA Final Rules & Practitioner Expansion Final Rules By: PTAB Committee On November 19, 2024, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding MTA Final Rules & Practitioner Expansion Final Rules. In this interactive meeting hosted by Co-Chairs Charley Macedo and Ken Adamo, they welcomed their featured guests: Hon. Miriam Quinn, Acting Vice Chief Administrative Patent Judge, USPTO Hon. Scott Moore, Acting Senior Lead Administrative Patent Judge, USPTO Hon. Michael Cygan, Administrative Patent Judge, USPTO PTAB Committee Meeting: Local Rule 36: Federal Circuit Review Under Scrutiny at the Supreme Court By: PTAB COmmittee On December 17, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Local Rule 36: Federal Circuit Review Under Scrutiny at the Supreme Court. Chief Judge Markey at the founding of the Federal Circuit made a promise to the bar: "In our Court there will be an opinion explaining enough to tell you what the law is in every case. ***We do not just render a one-worded decision and go away." Yet, for at least the past decade, over 35% of all appeals and over 45% of appeals from the USPTO are decided by the Federal Circuit under its Local Rule 36 with a single word "affirmed", and no explanation of the basis or rationale therefor. Both Local Rule 36 and its implementation by the Federal Circuit are out-of-step with the other circuit courts, as well as their own review process of district court and PTAB decisions. A pair of petitions for certiorari are pending before the Supreme Court to take on the issue Island and ParkerVision, which are seeking SCOTUS review in this practice. ParkerVision and Island together provide an ideal vehicle for this Court to evaluate the issue of summary affirmances by Court of Appeals generally, and the Federal Circuit's Local Rule 36 in particular, both in the context of the general appeal statute of 28 U.S.C. § 1291 (Island), as well as with respect of the specific appellate statue for appeals from the USPTO to the Federal Circuit under 35 U.S.C § 144 (ParkerVision). Learn more about Local Rule 36 practice, the objections raised in Island and ParkerVision. Speakers: Island's team, Charley Macedo, David Goldberg, John Dellaportas and Jamie Zipper presented. Counsel for ParkerVision's team, Amit Vora and Ronald Daignault spoke. Amicus counsel Robert Rando and Charlie Miller joined the discussion. Counsel for the Amicus Brief in ParkerVision on behalf of the D.C. Bar Association, William Atkins and Matthew Grillo participated. Counsel for the Amicus Brief in Island on behalf of the Boston Intellectual Property Law Association, Kia Freeman and Matthew van Eman, joined. Co-Chair Ken Adamo and Board Liaison David Bomzer was present to host and facilitate discussion. NYIPLEF's 6th Annual Diversity Scholarship Event By: New York Intellectual Property Law Education Foundation (NYIPLEF) On January 8, 2025, the New York Intellectual Property Law Education Foundation (NYIPLEF) held their 6th Annual Diversity Scholarship Event at Greenberg Traurig LLP. The CLE presentation had a distinguished panel of in-house counsel and was moderated by Jing Kong, the 2024 NYIPLEF Hon. Giles S. Rich Scholarship Recipient. Panelists included Elaine Drager, Bell Labs Solutions, Strategic Partnerships and Technology Leadership Office Lead Counsel, Nokia Bell Labs; Gloria Fuentes, Vice President & Associate General Counsel, Patent Litigations & IP Transactions, Bristol Myers Squibb; and Diana Santos, Senior Counsel, IBM Consulting, Global Generative AI Lead, IBM Corporation. January Entertainment, Sports & Social Media Committee Meeting: Penn State v. Vintage Brand - Trademark Infringement and Retro Merchandise By: Entertainment, Sports & Social Media Committee On January 15, 2025, the Entertainment, Sports & Social Media Committee held a meeting on Penn State v. Vintage Brand - Trademark Infringement and Retro Merchandise. Notwithstanding a recent jury verdict in favor of Penn State in a trademark infringement matter, pretrial rulings by the trial court in that matter have brought into question whether ostensibly settled law for decades can now be undone. Can products bearing trademarks of their own now be sold without a license from such owner? Featured Speakers: Robert L. Raskopf, Senior Counsel, Bilzin Sumberg LLP Donald Reinhard, Partner, Kasowitz Benson Torres LLP Todd Anten, Partner, Quinn Emanuel Urquhart & Sullivan, LLP PTAB Committee Meeting: PREVAIL Act - Insights in PTAB Reform from the Last Congress By: PTAB and LAC committee While we are in the process of an administration change, and await the appointment of the new Commerce Secretary and Deputy Undersecretary for the Patent and Trademark Office, the NYIPLA PTAB Committee in conjunction with the LAC Committee thought it would be useful to look at the recent effort of PTAB Reform as introduced in the last Congress by Senator Coons - the PREVAIL Act. On Tuesday, January 21, 2025 at 4:00pm the PTAB and LAC Committees had a joint webinar for the NYIPLA members. PTAB Committee Co-Chairs, Charley Macedo and Kenneth Adamo, were joined by LAC Committee Co-Chair, Anthony Lo Cicero, to review the latest version of the PREVAIL Act and discussed the areas where potential reform was suggested. Zoom Out with NYIPLA! By: Associate Advisory Council On January 29, 2025, attendees joined a refreshing networking conversation with NYIPLA board members, law firm associates and law students before the 103rd Annual Judges’ Dinner. A free, no-commitments Zoom forum on the year that was 2024, moderated by Associate Advisory Council members. Attendees had access to an array of accomplished attorneys, many of whom shared their successes from 2024. Speakers: James Breen, Associate, Goodwin Procter LLP Nicholas Forgione, Counsel, Authentic Brands Group LLC Eric Greenwald, Director, Merck Christine-Marie Lauture, Senior IP Attorney, EOS Worldwide Jennifer Rea Deneault, Partner, Groombridge, Wu, Baughman & Stone LLP Patent Law & Practice Committee Meeting: The Restore Act and the Prevail Act - Current Status and Future Outlook By: Patent Law & Practice committee Attendees joined the Patent Law & Practice Group for a remote session featuring John Lee, Chief Counsel for Intellectual Property, U.S. House of Representatives, Committee on the Judiciary, on February 4 at 12:00 PM. John discussed the current and future status of the Restore and Prevail Act, offering valuable insights into its implications for the patent landscape. Biologics & Biosimilars: Hot Topics By: Irena Royzman - Amicus Briefs Committee Attendees joined NYIPLA for this year's Biologics & Biosimilars program on Wednesday, February 5 at the offices of Orrick, Herrington & Sutcliffe LLP. Speakers included: Eric Choi, IP Litigation, MSN Pharmaceuticals Inc. Larry Coury, Senior Vice President, Litigation and Dispute Resolution, Regeneron Denise DeFranco, Global Head, IP Litigation, Johnson & Johnson David Dow, Director, Patent and Regulatory Counsel, Boehringer Ingelheim Mira Mulvaney, Associate VP - Assistant General Patent Counsel, IP Litigation, Eli Lilly and Company Colman Ragan, Vice President & General Counsel, North America IP Litigation, Teva Pharmaceuticals Irena Royzman, Partner, Orrick, Herrington & Sutcliffe LLP (Moderator) Avoiding Common Rejections in Design Patent Applications By: Design Patent committee On February 13, 2025, attendees joined the Design Patent Committee of the New York Intellectual Property Law Association (NYIPLA) for a discussion with the USPTO's Technology Center 2900 regarding the most common rejections seen in design patent applications from their perspective, and tips on how to avoid them. This interactive event was hosted by NYIPLA Design Patent Committee Co-Chairs Brendan O'Dea and Ryan Schneer. Featured Speaker: Garth Rademaker, Design Practice Specialist, USPTO PTAB Committee Meeting: Update on SCOTUS Petitions on FRCP 56 and Rule 36 Judgments at the Federal Circuit By: PTAB committee The Supreme Court has been presented with a series of petitions that address whether the patent law should be treated like any other area of civil litigation – Does it need to follow the same rules of Summary Judgment under Rule 56? Can the lower courts ignore factual disputes presented by the parties in favor of its own fact finding on patent-eligibility decisions? Does the Federal Circuit have to provide some basis for its judgment, like other appellate courts, when it grants a Rule 36 Judgment affirming a lower court or PTAB decision? There are now four active petitions for certiorari raising one or both of these decisions: Island Intellectual Property LLC v. TD Ameritrade, Inc., No. 24-461 (raising both issues in the context of an appeal under 28 U.S.C. 1391) ParkerVision, Inc. v. TCL Industries Holdings Co., Ltd., No. 24-518 (raising Rule 36 Judgment issue in the context of an appeal from the PTAB under 35 U.S.C. 144) Harris Brumfield v. IBG LLC, No. 24-764 (raising Rule 56 (and related Rule 12(b)(6) issues) Audio Evolution Diagnostics v. United States, No. 24-806 (raising Rule 36 Judgment issue also in context of an appeal under 28 U.S.C. 1391) In this follow up to our December 2024 PTAB Committee meeting on “Local Rule 36: Federal Circuit Review Under Scrutiny at the Supreme Court”, we provided an update on the scope and status of the various petitions, and commentary on these issues. PTAB Committee Co-Chairs, Charley Macedo and Kenneth Adamo, was joined by Amicus Briefs Committee Co-Chair, Paul Coletti. A Day in the Life as In-House Counsel By: Young Lawyers Committee On February 25, 2025, the Young Lawyers Committee invited attendees to a panel discussion on the transition from law firm associate to in-house counsel and the experience of being in-house. The below panelists shared their experiences and strategies for navigating this career stage: Lindsey Fleischman, Counsel, Commercial Legal & Business Affairs, WPP Nicholas Forgione, IP Counsel, Authentic Brands Group LLC Eric Greenwald, Director, Merck & Co, Inc. Gabriel J. McCool, Counsel, Wolf, Greenfield & Sacks, P.C.; Former VP of Legal and IP, ReNAgade Therapeutics, Cambridge MA Ashley Valdes, Assistant General Counsel, Warby Parker Young Lawyers Committee Happy Hour By: Young Lawyers Committee Attendees joined the NYIPLA Young Lawyers Committee on March 12, 2025 for an evening of networking, food, and drinks! This social event was a fantastic opportunity to connect with fellow young lawyers and experienced attorneys. Whether you're a member or a non-member, all were welcome to participate. Attendees enjoyed two complimentary drinks and indulged in appetizers while engaging in one-on-one conversations with seasoned attorneys who provided valuable insights into their practices. PTAB Committee Meeting: USPTO Rescinds Fintiv Rules from Prior Administration By: PTAB Committee Attendees joined the NYIPLA PTAB Committee on Tuesday, March 18, 2025 at 4:00 p.m. ET via zoom for its March 2025 PTAB Committee Meeting. At this meeting, they discussed “USPTO Rescinds Fintiv Rules From Prior Administration: Discretionary Denials at the PTAB Under the Trump Administration”. Co-chairs Charles R. Macedo and Kenneth R. Adamo lead a discussion to address the recent announcement by the USPTO that it has rescinded the June 21, 2022, memorandum entitled “Interim Procedure for Discretionary Denials in AIA Post-Grant Proceedings with Parallel District Court Litigation” (Memorandum). The USPTO has advised, “Parties to post-grant proceedings should refer to Patent Trial and Appeal Board (PTAB) precedent for guidance, including Apple Inc. v. Fintiv, Inc., IPR2020-00019, Paper 11 (PTAB Mar. 20, 2020) (precedential) and Sotera Wireless, Inc. v. Masimo Corp., IPR2020-01019, Paper 12 (PTAB Dec. 1, 2020) (precedential as to § II.A).” The USPTO also announced that “To the extent any other PTAB or Director Review decisions rely on the Memorandum, the portions of those decisions relying on the Memorandum shall not be binding or persuasive on the PTAB.” NYIPLA "Day of Dinner" Luncheon CLE - Effects of U.S. IP Jurisprudence on the Modern American Economy By: PROGRAMS committee The panel discussed the impact on the American economy of various IP-related legislative initiatives, Supreme Court and Federal Circuit decisions (or the lack thereof), as well as Executive Branch agency actions. The program began with opening remarks from Coke Stewart, Acting Under Secretary of Commerce for Intellectual Property and Acting Director, USPTO. It was then followed by a panel discussion on the “Effects of U.S. IP Jurisprudence on the Modern American Economy” moderated by NYIPLA Immediate Past President, Rob Rando, and the below panel of distinguished speakers: Honorable Leonard P. Stark, Circuit Judge, United States Court of Appeals for the Federal Circuit Peter-Anthony Pappas, Director of IP Policy, Senate Judiciary Committee, IP Subcommittee (Senator Tillis) Chris Israel, Senior Partner, ACG Advocacy 103rd Annual Dinner in Honor of the Federal Judiciary The NYIPLA hosted the 103rd Annual Dinner in Honor of the Federal Judiciary on Friday, March 21st, 2025 at the New York Hilton Midtown Hotel. The Association presented the 23rd Annual Outstanding Public Service Award to Judge Jimmie V. Reyna, Circuit Judge of the United States Court of Appeals for the Federal Circuit. This award is given to a current or past member of the Judiciary that has provided an extraordinary level of Public Service. We were also joined by our Keynote Speaker, Judge Esther Salas, District Judge of the United States District Court for the District of New Jersey.
NYIPLA Events
NYIPLA Diverse Careers in IP Law By: Patrice Jean & Programs Committee Have you ever wondered what opportunities are available in today’s intellectual property marketplace? The panelists addressed these topics and more. On March 25, 2025 at Columbia School of Law, the panel discussed how you can navigate your career paths in a marketplace with diverse opportunities for intellectual property lawyers. Refreshments, including drinks and light snacks, was served. Panelists: Patrice P. Jean, Partner, Hughes Hubbard & Reed LLP Kathleen E. McCarthy, Partner, King & Spalding LLP William J. Thomashower, Of Counsel, Pryor Cashman LLP Have A Patent Infringement Complaint? Find Out What To Do After Service By: Ananya Pillutla and Jennifer Deneault The NYIPLA Sharpen Your Skills Series was pleased to present: Got a patent infringement complaint? There was a lively discussion on what to do after served with a patent infringement complaint. The event was on Thursday, April 3 from 6:00-7:00pm at the offices of Groombridge, Wu, Baughman & Stone LLP (565 Fifth Avenue, Suite 2900, New York, NY 10017). Light bites and refreshments was provided as well. Speakers: Mark J. Abate, Partner, Goodwin Procter LLP Mark A. Baghdassarian, Partner, Kramer Levin Naftalis & Frankel LLP Nangah Tabah, Counsel, IBM Jacob Whitt, Vice President, IP, Eagle Pharmaceuticals, Inc. Moderator: Ananya Pillutla, Associate, Groombridge, Wu, Baughman & Stone LLP AABANY IP Committee x NYIPLA Young Lawyers Committee Presents: Board Game Night By: AABANY IP Committee & Young lawyers Committee On April 9, 2025, there was an evening of fun and friendly competition at Board Games Night, co-hosted by the NYIPLA Young Lawyer’s Committee and the Asian American Bar Association of New York IP Committee. The event brought together members from both organizations for a night of casual board games. Food and refreshments was provided. 2025 Sharpen Your Skills Series - M&A IP Due Diligence By: Jonathan Berschadsky The NYIPLA Sharpen Your Skills Series was pleased to present: M&A IP DUE DILIGENCE program, designed for junior and mid-level associates to develop hands-on due diligence skills. This virtual program provided practical training from experienced attorneys, covering key aspects of IP due diligence in M&A, including identifying risks, assessing IP ownership and encumbrances, and evaluating license agreements. Attendees earned skills CLE credit and participated in interactive exercises, including a mock M&A transaction and data room analysis. Speakers: Jonathan Berschadsky, Partner, Merchant & Gould P.C. Patrick K. McClay, Partner, Baker Botts LLP PTAB Committee Meeting: Revamped Director Review Under the New Administration By: PTAB COmmittee Attendees joined the NYIPLA PTAB Committee on Tuesday, April 15, 2025 at 4:00 p.m. ET via zoom for its April 2025 PTAB Committee Meeting. At this meeting, they discussed “Revamped Director Review Under the New Administration”. Since the new administration took office in January, we have seen a series of new changes in policies and procedures at the U.S. Patent and Trademark Office and throughout the Federal Government. In this session, we focused on the new ranges of procedures involving Director Review, and the new procedure where the Acting Director will take over responsibility in the first instance for the briefing and determination of whether to deny review under discretionary factors. Co-Chairs Charley Macedo and Ken Adamo lead the discussion and reviewed the Director Review decisions since the new administration took over, and the new changes in the policy and procedures as impacting the PTAB. Hot Topics in IP Cases: Litigation Funding By: Irena Royzman - Amicus Briefs Committee On Wednesday, April 16, NYIPLA had a litigation funding program at the offices of Orrick, Herrington & Sutcliffe LLP. Speakers: Hon. Jose L. Linares (Ret.), Chief Judge, United States District Court for the District of New Jersey Denise DeFranco, Global Head, IP Litigation, Johnson & Johnson Joshua Harris, Director, Burford Capital LLC Chris Israel, Senior Partner, ACG Advocacy Moderator: Irena Royzman, Partner, Orrick, Herrington & Sutcliffe LLP Cutting-Edge Developments in AI Litigation By: Mark Doerr (AI, Cybersecurity & Digital Technologies) and Josh Weigensberg (Copyright Law & Practice) On April 29, 2025, litigators discussed the most recent action in AI-related litigation, focusing on copyrights and the recent decision in Thomson Reuters v. Ross Intelligence. Speakers: Mark Doerr, Partner, Patrick Doerr PLLC Josh Weigensberg, Partner, Pryor Cashman LLP 2025 Sharpen Your Skills Series - Patent Drafting and Prosecution By: Clint Mehall - Patent Law & Practice committee This program was designed for junior and mid-level associates to create a lively discussion on best practices in a patent drafting and prosecution. This program provided practical advice from experienced attorneys, covering key aspects of patent drafting and prosecution, including invention disclosure/harvesting, drafting techniques, AI drafting tools, Office Action response strategies, examiner interviews, appeals and continuations. Speakers: Clint Mehall, Partner, Davidson Kappel LLC Tom Satagaj, Principal Counsel, ZT Systems Brittany Penn, Associate, Kramer Levin Naftalis & Frankel LLP
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July 07/25/2025 Business Development Strategies Tailored for Patent Practitioners August 08/06/2025 Patented: 1,000 Design Patents With Author Thomas Rinaldi 08/07/2025 Patent Law & Practice Committee Meeting: Recentive Analytics, Inc. v. Fox Corp. 08/19/2025 PTAB Committee Meeting
Ross Elfand, formerly of White & Case LLP, has joined King & Spalding LLP as a Partner. Marc Lieberstein and Georges Nahitchevansky, formerly of Kilpatrick Townsend & Stockton LLP, have joined Akerman LLP as Partners. Sapna Palla, formerly of Allen Overy Shearman Sterling US LLP, has joined White & Case LLP as a Partner. Brian Tomkins, formerly of Lerner David LLP, has joined Foley & Lardner LLP as a Partner. Caroline Geiger, formerly of Skadden Arps Slate Meagher & Flom LLP, has joined Simpson Thacher & Bartlett LLP as a Partner. James Talbot, formerly of Debevoise & Plimpton LLP, has joined Simpson Thacher & Bartlett LLP as a Partner. Theodoros Konstantakopoulos, formerly of Desmarais LLP, has joined Goodwin Procter LLP as a Partner. Carl Morales, formerly of Fenwick & West LLP, has joined Goodwin Procter LLP as a Partner. Kathryn Bi, formerly of Davis Polk & Wardwell LLP, has joined Patterson Belknap Webb & Tyler LLP as a Partner. John Frantz, formerly of Verizon Business, has joined DLA Piper as a Partner. Milton Springut and Caroline Boehm, formerly of Moses & Singer LLP, have joined Herrick Feinstein LLP, Springut as a Partner and Boehm as Counsel. Stephanie Piper, formerly of DLA Piper, has joined Armstrong Teasdale LLP as Counsel. Diane Ragosa, formerly of Parker Ibrahim & Berg LLP, has joined Hinshaw & Culbertson LLP as a Partner in its Iselin, New Jersey office. Michael W. Johnson and Heather Schneider, formerly of Willkie Farr & Gallagher LLP, have joined Gemini Law LLP as Partners. Gregory Mitchell and Jane Chen, formerly of Wilson Sonsini Goodrich & Rosati PC, have joined Faegre Drinker Biddle & Reath LLP, Mitchell as a Partner and Chen as an Associate. Andrew Cochran has been promoted to Partner at Cahill Gordon & Reindel LLP. Lisa Ferrari has been named co-vice chair office managing partner of the New York office of Cozen O’Connor. James McConnell and Joshua Montazeri have been promoted to Partner at Fox Rothschild LLP.