In This Issue:
Do You Know Where Your Trademark Is? How the Fourth Circuit’s Interpretation of the Anticybersquatting Consumer Protection Act Correctly Protects Trademark Owners Online By: Alexa T. Blandeburgo, St. John’s University School of Law Copyright Protection of Fonts and Typefaces, New Litigation Brings the Topic to the Front Seat By: Giselle Ayala Lower Courts in Patent Cases Continue to Ignore Factual Disputes and Weigh Evidence Against Nonmovants By: Charles Macedo, David Goldberg, Thomas Hart, John Dellaportas, and Jamie Zipper Pro Codes Act: Navigating the Tension Between Public Access and Copyright Protection for Privately Published Standards Incorporated into Law By: Jonathan Berschadsky and Jack Goldberg
Summer/Fall 2024
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President's Corner Do You Know Where Your Trademark Is? How the Fourth Circuit’s Interpretation of the Anticybersquatting Consumer Protection Act Correctly Protects Trademark Owners Online By: Alexa T. Blandeburgo, St. John’s University School of Law Copyright Protection of Fonts and Typefaces, New Litigation Brings the Topic to the Front Seat By: Giselle Ayala Lower Courts in Patent Cases Continue to Ignore Factual Disputes and Weigh Evidence Against Nonmovants By: Charles Macedo, David Goldberg, Thomas Hart, John Dellaportas, and Jamie Zipper Pro Codes Act: Navigating the Tension Between Public Access and Copyright Protection for Privately Published Standards Incorporated into Law By: Jonathan Berschadsky and Jack Goldberg 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’m writing to you as the current President of the NYIPLA. I want to take a moment to introduce myself and let you know what we have already done in my first six months as the leader of this organization, and what I hope to accomplish before my term is over. I joined the NYIPLA in the Fall of 2002 as a first-year lawyer at Kenyon & Kenyon LLP. What I did not know back then was that the Association would lead me to a network of professional IP practitioners and adjudicators from an amazingly diverse group of industries, disciplines, and backgrounds that would change the trajectory of my life. As I look back to what the practice of IP was like back in 2002, I am amazed at how much things have evolved. The American Invents Act, the Defend Trade Secrets Act, the Trademark Modernization Act, new procedures for filing at the Copyright Office, discussions about patent thickets, case law from the Supreme Court, and possible legislative changes to IP laws have had and continue to have a major impact our practice today. I am so grateful that as a member of the NYIPLA, I had the resources and thought leadership of this organization to guide me, keep me up to date on everything that I needed to know to stay informed, and provide the best advice and strategy possible for my clients. From my experience, I personally believe that the more that IP practitioners know about all areas of IP practice, the stronger our bar is because we can support and aid each other in building stronger practices. We are simply stronger together when we form united collaborations to learn and effectuate positive change in our work as IP professionals. To that end, our programming this year is designed not only to help our members refine their skills in their primary IP practice area but also to explore other areas of IP that may be less familiar to them. The NYIPLA was here for me, and it is here for you too! The NYIPLA is a member driven organization that is led by a remarkable and dedicated Board of Directors, and they are eager to help our membership grow and thrive. Initiatives started under the sage leadership of immediate past-president Robert Rando, who has led our current membership to being over 900 voices strong. Six months ago, I set a goal of having more than 1,000 members before my term ends and we are well on our way. If, by chance, you are reading this and you are not a member or your membership has lapsed, we encourage you to click here to join or renew your membership! This year, we added several new committees to our Association to engage more IP practitioners. The Design Patents and Membership Committees, as well as our already established committees, allow active members to have an opportunity to be part of a professionally rewarding activity and build a strong network. If you have not already joined a committee, I strongly encourage you to take a look and sign up here. So, what else have we done? 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 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. Our Young Lawyers Committee has been bringing the substance and the fun with workshops and networking events to engage the most recent members to enter our profession. Finally, with the help of Feikje van Rein and her team at RRR Associations, LLC, we have launched a redesigned NYIPLA website to enhance the online experience. I am so proud of what we have accomplished so far, and I am excited for the programs and events to come. I am honored to serve as your president this year and I’m looking forward to seeing you all at one of our upcoming events and the 103rd Annual Dinner in Honor of the Federal Judiciary scheduled for March 21, 2025 at the New York Hilton Midtown.
NYIPLA President's Corner
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THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION
March 21st, 2025 New York Hilton Midtown Hotel
23rd ANNUAL OUTSTANDING PUBLIC SERVICE AWARD
Honorable Jimmie V. Reyna Circuit Judge United States Court of Appeals, Federal Circuit
Do You Know Where Your Trademark Is? How the Fourth Circuit’s Interpretation of the Anticybersquatting Consumer Protection Act Correctly Protects Trademark Owners Online By: Alexa T. Blandeburgo, St. John’s University School of Law
Introduction The world was revolutionized thirty years ago. On April 30, 1993, the World Wide Web (“WWW”) was launched for public use.1 It was a “great online awakening” that connected individuals to concepts that are now integral to our daily lives.2 And as individuals migrated onto the WWW, so did businesses. Consumers warmed to the idea of ordering something from the comfort of their home and having it arrive at their doorstep within days. Businesses took note of this consumer behavior and jumpstarted their online locations, using domain names to identify themselves on this newfound forum. A domain name is how websites portray their identity to individuals and are critical to the online presence of a company.3 For example, an individual who wants to visit the domain name registrar company, GoDaddy, must type in godaddy.com in their browser (the company’s domain name) to reach the website. Otherwise, only typing in “godaddy” would reach hundreds of websites that could be unaffiliated with the actual GoDaddy company.4 However, as businesses moved onto the digital space, some found that their trademarked name was already used in a domain name. This was by no accident–cybersquatters intentionally registered domain names that contained trademarks in hopes of reselling it to the trademark owner at a profit.5 This practice became known as cybersquatting, and it forced out businesses from owning a domain name that would be ideal for their business, unless they paid the ransom money to the cybersquatters.6 In October 1999, the Uniform Domain Name Dispute Resolution Policy (“UDRP”) emerged as an arbitrational mechanism for wronged trademark holders to seize a domain name that contained their mark.7 And a month later, Congress passed the Anticybersquatting Consumer Protection Act (“ACPA”) that established a cause of action for a trademark owner to hold liable one who, with “bad faith intent to profit from” a trademark, “registers, traffics in, or uses” a domain name that is “identical or confusingly similar” to the trademark that is distinctive at the time of registration.8 However, courts are divided over what type of activity is included within the statutory term “registration.” When registrants (domain name owners) register their domain name, it is in their possession for a limited time, generally from one to ten years.9 Once the term expires, registrants must re-register (renew) the domain name with the registrar, or risk losing the name.10 In addition, domain name registrants have the right to transfer their domain to another registrant or registrar.11 The Fourth Circuit broadly held that re-registrations of domain names are included in the meaning of the statute.12 Conversely, the Ninth Circuit narrowly held that re-registrations of domain names are not within the definition of “registration,” and thus not within the purview of the ACPA.13 This Note argues that the Fourth Circuit correctly held that “registration” encompasses both the initial and subsequent registration of a domain name under the ACPA. The Ninth Circuit’s narrow interpretation oversimplified the complexity of domain name ownership and thereby created a narrow loophole for cybersquatters to evade liability. Part I provides an overview of cybersquatting. Part II compares the ACPA and the UDRP, and discussses why a trademark owner would choose one avenue for relief as opposed to the other. Part III explains the circuit split, including the facts, holding, and rationale of each case. Part IV argues that the Fourth Circuit correctly held that subsequent registrations are within the purview of the ACPA from multiple perspectives of statutory interpretation. Lastly, Part V provides a solution to enforce stronger protections for trademark owners on the Internet. I. Cybersquatting and its Evolution A. The Distinctions of Domain Names and Trademarks In order to understand the ACPA, it is important to note that trademarks and domain names are not the same.14 A trademark is a word, phrase, symbol, or device, or a combination thereof, that identifies goods or services.15 Although trademarks need not be registered on the principal register to be protected, those that are enjoy significant advantages, such as constructive notice to third parties of the registrant’s claim of trademark’s ownership.16 Conversely, a domain name is the Internet address of a website.17 It is comprised of two components: top level domain (“TLD”)—the information after the final period, such as “.com”—and an identifying second level domain (“SLD”)—the information left of the period, such as a brand name.18 Since 1998, the Internet Corporation for Assigned Names and Numbers (“ICANN”) has regulated TLD registrars, such as GoDaddy, who have the authority to assign domain names and who assign those domain names to individuals or firms in exchange for a registration fee.19 ICANN is a non-profit organization that oversees the entire domain system, coordinates domain names, and accredits domain registrars.20 However, domain name registration does not secure trademark rights.21 Generally, domain names are acquired by whoever registers them first, and that entity holds the right to the domain until it expires or is sold.22 When a person or company seeks to purchase a domain, the registrars do not verify that it does not contain a trademark.23 Therefore, cybersquatters are able to obtain domain names that contain trademarks in an inexpensive and simple manner, but they can generate a remarkable profit by holding the name as ransom from trademark holders.24 B. A New Domain: The Origins of Cybersquatting Cybersquatting is the bad faith registration, use, or sale of a domain name that contains a trademark.25 Courts characterize cybersquatting as the Internet’s “land grab,” where cybersquatters force trademark owners to pay a price to use their own name online.26 This practice began at the emergence of the WWW when companies had not yet moved to the digital space.27 Companies’ absence on the WWW enabled cybersquatters to register domain names for the companies’ trademarks before the companies did so.28 Once businesses transitioned to online platforms, they were left bargaining with cybersquatters for domain names that contained their own trademark.29 Separate from earning a profit from such sales, cybersquatters may also aim to divert consumers away from the trademark owner’s website for commercial gain or to disparage the trademark itself.30 II. Avenues of Action for Trademark Holders A. The ACPA In November 1999, Congress passed the ACPA, which was an amendment to the Lanham Act.31 The legislative intent behind the ACPA was to protect consumers and American businesses, promote e-commerce growth, and clarify cybersquatting law for trademark owners.32 The ACPA created a new civil cause of action for trademark owners to hold cybersquatters liable when they registered domain names that are identical to or confusingly similar to the respective mark.33 An ACPA claim must establish: (1) bad faith intent to profit from that trademark, including a personal name which is protected as a mark; (2) registered, trafficked in, or used a domain name; (3) that in the case of a trademark that is distinctive at the time of registration of the domain name, is identical or confusingly similar to that mark, or (4) in the case of a famous mark that is famous at the time of the registration of the domain, is identical or confusingly similar to that mark.34 Courts have defined the phrase “confusingly similar” to mean where the domain name and trademark are “so similar in sight, sound, or meaning that confusion is likely.”35 In addition, bad faith encompasses the intention to divert consumers to the defendant’s website, rather than the trademark owner’s, to defraud and mislead the general public.36 Courts may consider factors such as, but not limited to, the following nine factors to decide whether the defendant acted in bad faith:37 The trademark or other intellectual property rights of the person . . . in the domain name; the extent to which the domain name consists of the legal name of the person or a name that is otherwise commonly used to identify that person; the person’s prior use . . . of the domain name in connection with the bona fide offering of any goods or services; the person’s bona fide noncommercial or fair use of the mark in a site accessible under the domain name; the person’s intent to divert consumers from the mark owner’s online location to a site accessible under the domain name that could harm the goodwill represented by the mark, either for commercial gain or with the intent to tarnish or disparage the mark, by creating a likelihood of confusion as to the source, sponsorship, affiliation, or endorsement of the site; the person’s offer to transfer, sell, or otherwise assign the domain name to the mark owner or any third party for financial gain without having used, or having an intent to use, the domain name in the bona fide offering of any goods or services; the person’s provision of material and misleading false contact information when applying for the registration of the domain name . . . or intentional failure to maintain accurate contact information; the person’s registration or acquisition of multiple domain names which the person knows are identical or confusingly similar to marks of others that are distinctive at the time of registration of such domain names, or dilutive of famous marks of others that are famous at the time of registration of such domain names, without regard to the goods or services of the parties; and the extent to which the mark incorporated in the person’s domain name registration is or is not distinctive and famous within the meaning of subsection(c)(1) of section 43. However, these factors are not an exhaustive list of what constitutes bad faith. The factors are intended to balance property interests of trademark owners with the interests of Internet users who intend to use trademarks in compliance with the law, such as for comparative advertising and criticism.38 Therefore, courts balance a case-specific approach with the statutory factors to determine the presence of bad faith.39 In addition, the ACPA includes a safe harbor provision that protects defendants who believe that their actions were lawful and had “reasonable grounds” to use the disputed name.40 B. The Uniform Domain Name Dispute Resolution Policy (“UDRP”) The ACPA is not the exclusive avenue for complainants to hold cybersquatters liable. The UDRP is an arbitrational mechanism used to resolve domain disputes between the registrant and a trademark owner.41 In 1999, the UDRP was approved by ICANN to provide an efficient and affordable means to resolve domain name disputes, rather than a costly and lengthy litigation under the ACPA.42 When someone registers a domain name, they contractually agree with the registrar to follow UDRP provisions.43 A claim under the UDRP must establish: (1) the domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; (2) the domain name holder possesses no rights or legitimate interests in respect of the domain name; and (3) the domain name has been registered and is being used in bad faith.44 Unlike judges, the decisionmakers are experts in international trademark law and domain name issues.45 C. When the UDRP Is Not the Appropriate Course of Action There are several differences between the UDRP and the ACPA that reflect varied needs of wronged trademark holders. First, the ACPA and the UDRP provide different remedies.46 The UDRP is limited to cancelling or transferring the domain name registration to the complainant.47 Conversely, like the UDRP, courts under the ACPA may order the cancellation or transfer of the domain name to the trademark owner.48 However, unlike the UDRP, plaintiffs under the ACPA are entitled to recover damages from: (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action.49 Second, UDRP decisions are not binding on courts, and courts have declined to decide what the standard for review would be for a UDRP decision.50 Conversely, judicial decisions under the ACPA expand the interpretations of the statute and are binding on the court’s jurisdiction.51 Hence, while the ACPA is expounded through judicial interpretation and precedent, the UDRP functions as a framework to consider and decide a mark owner’s complaint at hand.52 The decisions of the UDRP do not usurp judgments issued by courts.53 Consequently, since the ACPA is subject to judicial interpretation and application, it is the preferred forum to handle complex legal issues. If a complainant has several causes of action, such as trademark infringement or unfair competition in addition to the domain name dispute, the UDRP is ill-suited to handle such claims.54 Third, the UDRP streamlines domain name disputes in an efficient and cost-effective manner, whereas litigation under the ACPA is a costly, exhaustive process.55 Unlike litigation which may span for years, an Administrative Procedure filed under a UDRP tribunal is generally completed within 60 days of the date of the Complaint.56 The UDRP is an effective tool for individuals or businesses who are only looking for the transfer or cancellation of their domain name, and who do not want to endure an expensive and time-consuming litigation. However, the ACPA remains an important mechanism for trademark owners to enforce their rights online in issues rooted in trademark law, and who are seeking a remedy beyond a transfer or cancellation of their domain name. III. The Circuit Split A. What is the Split About? The ACPA imposes liability on a person who “has a bad faith intent to profit from the mark . . . and registers, traffics in, or uses a domain name that . . . is distinctive at the time of registration [and] identical or confusingly similar to that mark.”57 A plaintiff who brings an ACPA claim must show that their trademark was distinctive at the time the defendant registered the domain name.58 However, the statute is silent as to whether renewals, transfers, and other forms of domain name re-registrations within the statute’s use of “registration.” For example, A registers a domain name. Then, B acquires rights in a trademark that is confusingly similar or identical to the domain name A registered. Next, A renews the domain name, or transfers it to a new registrant, C. Whether B can prove that the mark was “distinctive at the time of registration” is a debate amongst courts: if “registration” is limited to only the initial registration, A’s renewal or transfer will not be subject to ACPA liability because at the time of the initial registration, the mark was not distinctive.59 However, if the renewal of the registration or the transfer of the registration to C is within the definition of “registration,” then B may establish that the mark was distinctive at the time of registration.60 In January 2023, the Fourth Circuit held in Prudential Insurance Company of America v. Shenzhen Stone Network Information that the ACPA is not limited to the initial registration of a domain name, but also includes subsequent registrations, renewals, and transfers.61 Therefore, where a “successive registration of a disputed domain postdates the trademark registration of the corresponding mark, the mark owner may show that the successive registration was done in bad faith.”62 Under this interpretation, any and all registrations of a domain, including the initial registration and those that follow (such as renewals and transfers), are actionable under the ACPA.63 The Fourth Circuit joins the Third and Eleventh Circuits in holding that “registers” is not exclusively applicable to only the initial registration.64 However, in GoPets Ltd. v. Hise, the Ninth Circuit departed from this view and held that “registration” does not extend to each registration of a domain name, thereby allowing a domain name holder (who registered the domain name before the trademark was distinctive) to freely transfer and renew the disputed domain when it postdates the registration of the corresponding trademark.65 B. The Fourth Circuit In April 2020, Prudential Insurance Company (“Prudential”) sued Shenzhen Stone Network Information Ltd. (“SSN”) for cybersquatting under the ACPA and trademark infringement under the Lanham Act.66 Prudential Insurance is a worldwide, United States-based insurance and financial service company.67 SSN is a Chinse Internet company that distributes economic and financial information to Chinese consumers, with a concentration in the foreign exchange industry.68 The CEO of SSN is Frank Zhang.69 Since November 2002, Prudential has owned the United States trademarks “PRUDENTIAL,” “PRU,” and other PRU-related marks.70 On October 17, 2017, Mr. Zhang, acting on behalf of SSN, purchased the domain name PRU.com (the subsequent registration) from an unidentified Texas company that had previously registered it (the initial registration).71 In March 2020, Prudential attempted to register PRU.com but learned SSN owned the domain.72 In mid-March 2020, a GoDaddy broker informed SSN that an anonymous buyer, later discovered to be Prudential, made an offer to buy the name.73 SSN rejected the offer and noted that only offers in the six-figures would be considered.74 On March 25, 2020, Prudential filed an action with the World Intellectual Property Organization (“WIPO”) pursuant to the UDRP regarding PRU.com.75 On April 22, 2020, Prudential filed an action against SSN and Zhang, alleging: (1) cybersquatting in violation of the ACPA; and (2) trademark infringement under the Lanham Act.76 On May 7, 2020, Prudential moved to terminate the UDRP proceedings.77 On March 26, 2021, Prudential filed a Motion for Summary Judgment on both claims, seeking an order transferring PRU.com to Prudential.78 The district court granted summary judgment to Prudential on the ACPA claim, and ordered the requested transfer of the PRU.com domain.79 The Fourth Circuit affirmed the judgment of the district court, and held that registration renewals are encompassed under the broad definition of “registration.”80 Therefore, even though the initial registration of PRU.com was done before Prudential trademarked PRU in the United States, SSN was liable under the ACPA because they purchased in bad faith the domain after Prudential acquired trademark rights to PRU.81 The court relied on precedents from the Third and Eleventh Circuits, noting that both courts held that the ACPA was not limited only to the initial registration but encompassed subsequent re-registrations.82 C. The Ninth Circuit In March 1999, defendant Edward Hise registered the domain name gopets.com.83 The disputed domain was neither the first nor the only name that Edward had registered; he and his brother, Joseph Hise, owned the corporation Digital Overture that had registered more than 1,300 domains as of 2011.84 In 2004, plaintiff Erik Bethke founded company GoPets Ltd. in South Korea.85 In September 2004, Mr. Bethke filed an application to register the service mark “GoPets” in the United States.86 In November 2006, the service mark was duly registered.87 In the beginning of 2004, Mr. Bethke offered to purchase the domain gopets.com from the Hises.88 On September 1, 2004, Edward responded to Mr. Bethke and disclosed that he was interested in selling the domain to a serious buyer, inviting Mr. Bethke to place a bid on the name by September 15, 2004.89 On October 11, Mr. Bethke wrote to Edward Hise and offered to pay $750 for the name.90 Edward responded that he would not sell the name “for little or nothing,” and that he had a stronger offer.91 On May 16, Mr. Bethke notified Joseph Hise that he was going to pursue UDRP proceedings.92 In July 2006, Edward Hise prevailed in the UDRP Proceeding.93 After the decision, the Hises registered domain names similar to gopets.com.94 On October 30, following the UDRP Proceeding, Mr. Bethke offered the Hises $5,000 to purchase the domain name—and after a telephone call, his offer increased to $40,000.95 On November 20, Mr. Bethke reached out to the brothers again, indicating that his company was about to embark on a marketing campaign with gopetslive.com but preferred gopets.com, for which the $40,000 offer still stood.96 On December 12, Edward responded to Mr. Bethke with a letter that warned that if Mr. Bethke used “gopetslive.com,” it would confuse consumers.97 The letter also threatened to add metatags to the computer code of gopets.com, where users who visited the game at gopetslive.com would be redirected to gopets.com instead.98 Edward concluded the letter by offering to sell gopets.com to GoPets Ltd. for $5 million.99 After sending the letter, Edward transferred the registration of the domain from himself to the Hises’ corporation, Digital Overture (the subsequent registration).100 In March 2007, GoPets Ltd. filed a complaint against the Hises, alleging cybersquatting under the ACPA, service mark infringement and unfair competition under the Lanham Act.101 On May 27, 2008, the district court found for GoPets Ltd. on its ACPA and Lanham Act claims.102 The Ninth Circuit reversed on the ACPA claim and held that the re-registration of gopets.com was not within the ACPA’s purview.103 The court deferred to traditional property law and reasoned that a property owner may “sell all of the rights he holds in property.”104 Thus, Edward Hise had the right to transfer the domain to Digital Overture in December 2006 after the registration of GoPets because he was the initial owner of the domain since 1999.105 The court explained that domain names would be “effectively inalienable” if registration renewals or transfers would be subject to ACPA liability.106 This is because domain owners’ ability to alienate the domain would be restricted if any future trademark that was filed after the initial registration of the domain exposed the subsequent registrant to liability under the ACPA.107 IV. Why the Fourth Circuit Got It Right A. Textual Analysis The Fourth and the Ninth Circuit both agreed that the text of the statute was ambiguous as to whether “registration” was limited to the initial registration but also includes subsequent registrations.108 For textualists, the primary inquiry in statutory interpretation is to determine the ordinary meaning of the text, often its most natural reading.109 Textualists believe the plain meaning of the text cannot be superseded by legislative history, legislative intent, or other moral arguments and policy rationale.110 The Fourth Circuit began with a textual analysis. There, the court defined “registration” by its plain and ordinary meaning, “the act of registering.”111 Under this definition, when one re-registers a domain, they are merely registering again, and the natural definition and understanding of the word includes any registrations, not only one subset of registration.112 The court emphasized that there is no language in the statute that conditions “registration” to limit the statute to the initial registration, such as “initial.”113 The Fourth Circuit’s textual analysis mirrored that of the Third and Eleventh Circuits. The Third Circuit held that “registration” was not limited to the initial registration because the language of the statute does not limit the word “registration” to include only the creation registration.114 This is evidenced by the absence of words such as “initial” and “creation.”115 Similarly, the Eleventh Circuit held that the plain meaning of “register” includes a re-registration because there are no qualifiers to condition the act of registering to mean only the initial registration.116 And, like the Fourth Circuit, the Eleventh Circuit relied on the dictionary definition of “re-register,” which is to “‘register again.’”117 Consequently, these courts agreed that the ordinary meaning of “registers” and “registration,” by their very definition, must include the initial registrations and any subsequent re-registrations thereafter.118 The Ninth Circuit also conducted a textual analysis of “registration” and “register.”119 The court explained that under any reasonable definition, an initial contract with the registrar was a “registration.”120 However, like the Fourth Circuit noted, there was ambiguity as to whether subsequent registrations, such as transfers and renewals, were included under “registrations.”121 The Ninth Circuit ultimately rejected that interpretation because it deemed the transfer of the domain name from Edward Hise to Digital Overture as a continuance of ownership in light of property law.122 Unlike the Fourth Circuit, the Ninth Circuit interpreted the absence of words such as “initial” to suggest that the rights of an initial registrant are not relinquished when the domain name is transferred to another owner because the general rule in property allows a “property owner to sell of the rights he holds in property.”123 B. Legislative History The legislative history of the ACPA suggests that the behavior of Edward Hise is particularly what the statute was intended to address and prevent.124 Under an approach that looks to legislative history, such evidence may illuminate statutory text when its meaning is ambiguous.125 In fact, the Ninth Circuit often considers legislative history when interpreting statutes.126 Legislative history, for those who value it, provides additional evidence that the Fourth Circuit correctly interpreted the ACPA to include re-registrations within the meaning of the statute.127 When Congress passed the ACPA in 1999, there was a need for legislation that banned the “deliberate, bad-faith, and abusive registration of Internet domain names in violation of the rights of trademark owners.”128 This was a real issue that damaged the reputation and sales of companies, where consumers who wanted to access the company’s website were instead diverted to an unaffiliated website of the company.129 Consequently, the ACPA aimed to curtail “the act of registering someone else’s name as a domain name for the purpose of demanding remuneration from the person in exchange for the domain name.”130 The Fourth Circuit cited several Congressional reports to support its holding that “registration” includes both the initial and subsequent registrations based on the purpose and intent of the ACPA.131 The express intent of the ACPA was to restrict bad faith registrations that harmed consumers, businesses, and commerce.132 Similarly, the Eleventh Circuit believed it to be “nonsensical to exempt the bad-faith re-registration of a domain name simply because the bad-faith behavior occurred during a noninitial registration . . . .”133 This would permit behavior that Congress sought to prevent, namely those who have the “intent to profit from the goodwill associated” with the respective trademark.134 Conversely, the Ninth Circuit’s holding enables cybersquatters to escape liability even though they re-registered the domain name with a bad faith intent, running counter to the purpose set out by Congress.135 The court held that re-registrations do not fall within the meaning of the statute because under traditional property law, a domain name owner may sell or transfer all rights they own in property.136 However, limiting the ACPA to extend only to initial registrations could absolve a narrow class of cybersquatters from liability. The ACPA’s legislative history suggests that Edward Hise acted in the same manner and motives that Congress intended to address.137 Specifically, when Edward Hise offered the domain name to Mr. Bethke at the exorbitant price of $5 million, and subsequently re-registered the domain to his company Digital Overture.138 This behavior aligns squarely with Congress’ purpose to prevent cybersquatters from “extortionat[ing] profits” from mark owners like Mr. Bethke.139 In addition, Edward Hise would have redirected consumers of gopetslive.com (GoPets Ltd) to gopets.com if Mr. Bethke did not pay $5 million for gopets.com.140 Thus, not only did Edward Hise have “bad faith intent to profit from the mark,” but also intended to divert consumers away from Mr. Bethke’s online location that would harm the goodwill of GoPets and create “a likelihood of confusion as to the source . . . of the site” in consumers.141 It is important to note that the holding of the Ninth Circuit does not allow cybersquatters to register a domain name that is identical or confusingly similar to a mark that exists at the time of registration. The distinction between the Fourth and Ninth Circuit is reflected in the narrow circumstance where the initial domain name registration was before the mark existed. Under this scenario, the Fourth Circuit will subject re-registrations of the domain name to ACPA liability after the mark exists.142 However, under the Ninth Circuit, a cybersquatter can freely re-register the domain name after the mark exists even if there is a showing of bad faith without generating ACPA liability.143 C. Public Policy Concerns The Ninth Circuit also made implicit policy considerations that the Fourth Circuit addressed and dismissed.144 The Ninth Circuit was concerned by a broader interpretation of registration to apply to subsequent registrations or transfers of ownership.145 The court claimed that a broad interpretation of “registration” would restrict the original domain holder’s ability to alienate their property.146 However, this concern is alleviated through the bad faith element set forth by statute.147 As the Fourth Circuit highlighted in Prudential, the Ninth Circuit’s concerns about alienability are offset by the bad faith safeguard set forth in the statute.148 In other words, liability only attaches when registration is completed in bad faith.149 Thus, even a broad interpretation of “registration” would not prevent a domain holder from transferring their property if they were acting in good faith.150 The Fourth Circuit’s interpretation of “registrations” includes initial and subsequent registrations, but only if the bad faith element is satisfied.151 If the transfer in ownership of the domain name does not constitute bad faith, then the transferee will not be found liable under the ACPA.152 Hence, the Ninth Circuit’s concern that holding subsequent registrations would render the domains inalienable is alleviated through the bad faith element under the ACPA. Conclusion The Fourth Circuit in Prudential was correct in rejecting the Ninth Circuit’s holding in GoPets, and for joining the Third and Eleventh Circuits to include initial and subsequent registrations to be within the ACPA. Under the Fourth Circuit, re-registrations, like renewals and transfers, are included within the meaning of the statute and can be subject to liability if the re-registration happens when the respective mark is distinctive. The Ninth Circuit’s decision, under a narrow set of circumstances, can allow cybersquatters to avoid liability if and only if the domain name was registered before the mark owner obtained their rights. The Ninth Circuit should reconsider the holding in GoPets to reflect a uniform set of laws that domain name and trademark owners can look towards, and for attorneys to best advise their clients. 1 Julian Ring, 30 years ago, one decision altered the course of our connected world, NPR, https://www.npr.org/2023/04/30/1172276538/world-wide-web-internet-anniversary#:~:text=Fresh%20Air-,The%20World%20Wide%20Web%20 became%20available%20to%20the%20broader%20public,with%20graphics%2C%20audio%20and%20hyperlinks. 2 Id. 3 Domain Name Basics, Google Workspace Admin. Help, https://support.google.com/a/answer/2573637?hl=en#B (last visited Dec. 18, 2023). An example of a domain name is google.com– the domain name is “google.” Id. 4 Derek Miller, What is a domain name? The best beginner’s guide (2024), GoDaddy, (Mar. 6, 2023), https://www.godaddy.com/resources/skills/what-is-a-domain-name. 5 Tamara Michelle Kurtzman, Cyber Center: The Continued Hijacking and Ransoming of the Domain Name System by Modern-Day Corporate Privateers, ABA, https://www.americanbar.org/groups/business_law/resources/business-law-today/2016-june/cyber-center-the-continued- hijacking-and-ransoming/#:~:text=Anticipatory%20cybersquatting%20is%20the%20practice,increasingly%20valuable%2C%20in%20the%20future. 6 Id. 7 ICANN, Uniform Domain Name Dispute Resolution Policy, https://www.icann.org/resources/pages/policy-2012-02-25-en#4 (last visited Mar. 2, 2024). 8 15 U.S.C. § 1125(d)(1)(A)(i)(ii). 9 Renewing Domain Names, ICANN, https://www.icann.org/resources/pages/renew-domain-name-2018-12-07-en (last visited Dec. 18, 2023). 10 Id. 11Transferring Your Domain Name, ICANN, https://www.icann.org/resources/pages/transferring-your-domain-name-2017-10-10-en (last visited Dec. 18, 2023). 12 Prudential Ins. Co. of Am. v. Shenzhen Stone Network Info. Ltd. (Prudential II), 58 F.4th 785, 797 (4th Cir. 2023). 13 GoPets Ltd. v. Hise, 657 F.3d 1024, 1032 (9th Cir. 2011). 14 How trademarks and domain names differ, U.S. PATENT AND TRADEMARK OFFICE, https://www.uspto.gov/sites/default/files/documents/TM-Trademark-or-Domain-Name-flyer.pdf. 15 15 U.S.C. § 1127; see Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 162 (1995). 16 15 U.S.C. §§ 1057(c), 1072 17 Derek Miller, What is a domain name? The best beginner’s guide (2024), GODADDY, (Mar. 6, 2023), https://www.godaddy.com/resources/skills/what-is-a-domain-name 18 Id. 19 Id. 20 What Does ICANN Do? ICANN, https://www.icann.org/resources/pages/what-2012-02-25-en (last visited Oct. 3, 2023). 21 See How trademarks and domain names differ, supra note 14. 22 Miller, supra note 17. 23 See Sporty’s Farm L.L.C. v. Sportsman’s Mkt., Inc., 202 F.3d 489, 493 (2d Cir. 2000) (“Since domain name registrars do not check to see whether a domain name request is related to existing trademarks, it has been simple and inexpensive for any person to register as domain names the marks of established companies.”). 24 Id. 25 Prudential II, 58 F.4th at 791. 26 Interstellar Starship Servs., Ltd. v. Epix, Inc., 304 F.3d 936, 946 (9th Cir. 2002). 27 Sporty’s Farm, 202F.3d at 493. 28 Panavision Int’l, L.P. v. Toeppen, 141 F. 3d 1316, 1319 (9th Cir. 1998). 29 S. REP. NO. 106–140, at 4–5 (1999). 30 Id. at 14. 31 S. REP. NO. 106–140, at 1 (1999). 32 Id. at 4. 33 Id. at 8. 34 15 U.S.C. § 1125(d)(1)(A)(i)–(ii). 35 HeronDev. Corp. v. Vacation Tours, Inc., No. 16-20683-CIV, 2018WL2943217, at*7 (S.D. Fla. June 12, 2018). 36 S. REP. NO. 106–140, at 14–15 (1999). 37 15 U.S.C. § 1125(d)(1)(B)(i)(I)–(IX). 38 See Gioconda L. Grp. PLLC v. Kenzie, 941 F. Supp. 2d 424, 433 (S.D.N.Y. 2013). 39 Id. 40 15 U.S.C. § 1125(d)(1)(B)(ii); see also Virtual Works, Inc. v. Volkswagen of Am., Inc., 238 F.3d 264, 270 (4th Cir. 2001) (holding that the court will not construe the safe harbor provision “so broadly as to undermine the rest of the statute”). 41 Scope of the Uniform Domain Name Dispute Resolution Policy, ICANN (last visited Dec. 21, 2023), https://www.wipo.int/amc/en/domains/guide/#a1 42 Id. 43 ICANN, Uniform Domain Name Dispute Resolution Policy, ¶ 2, https://www.icann.org/resources/pages/policy-2012-02-25-en (last visited Dec. 18, 2023). 44 Id., ¶ 4(a)(i)–(iii), https://www.icann.org/resources/pages/policy-2012-02-25-en (last visited Dec. 18, 2023). 45 WIPO Domain Name Panelists, WIPO, https://www.wipo.int/amc/en/domains/panel.html (last visited Dec. 18, 2023). 46 15 U.S.C. § 1125(d)(2); ICANN, Uniform Domain Name Dispute Resolution Policy, ¶4(i), https://www.icann.org/resources/ pages/policy-2012-02-25-en. 47 ICANN, Uniform Domain Name Dispute Resolution Policy, ¶4(i), at https://www.icann.org/resources/pages/policy-2012-02-25-en#4. 48 15 U.S.C. §§ 1125(d)(1)(C). 49 15 U.S.C. § 1117(a). 50 Barcelona.com, Inc. v. Excelentisimo Ayuntamiento de Barcelona, 330 F.3d 617, 625 (4th Cir. 2003) (holding that the UDRP is designed to enforce domain name disputes, not solve disputes rooted in trademark law). 51 Id. 52 Id. 53 Id. at 625. 54 Id. at 624–25. 55 ICANN, Rules for Uniform Domain Name Dispute Resolution Policy, ¶ 5, at https://www.icann.org/resources/pages/udrp-rules-2015-03-11-en (Oct. 24, 1999); see also Barcelona.com, 330 F.3d at 623 (“The UDRP is intended to provide a quick process for resolving domain name disputes by submitting them to authorized panels or panel members operating under rules of procedure established by ICANN.”). 56 Overview of the UDRP Administrative Procedure, WIPO, https://www.wipo.int/amc/en/domains/guide/#b2 (last visited Dec. 21, 2023). 57 15 U.S.C. § 1125(d)(1)(A)(ii)(I). 58 Id. 59 GoPetsLtd. v. Hise, 657 F.3d 1024, 1032 (9th Cir. 2011). 60 Prudential II, 58 F.4th at 797. 61 Id. at 789. 62 Id. at 797. 63 Id. 64 Id. 65 657 F.3d 1024, 1031 (9th Cir. 2011). 66 Prudential II., 58 F.4th at 790. 67 Id. at 789. 68 Prudential Ins. Co. of Am. v. PRU.COM (Prudential I), 546 F. Supp. 3d 476, 480 (E.D. Va. 2021). 69 Id. 70 Prudential II, 58 F.4th at 789. 71 Prudential I, 546 F. Supp. 3d at 480. 72 Prudential II, 58 F.4th at 789. 73 Prudential I, 546 F. Supp. 3d at 482–83. 74 Prudential II, 58 F.4th at 789. 75 Id. at 790. 76 Id. at 790–91. 77 Id. at 790. 78 Prudential I, 546 F. Supp. 3d 476, 480 (E.D. Va. 2021). 79 Id. at 494. 80 Prudential II, 58 F.4th at 797 (holding that all registrations after the initial registration of the domain name are included under the ACPA). 81 Id. SSN was also liable because they could not invoke the safe harbor defense. Id. at 807. 82 Id. at 794. 83 GoPets, 657 F.3d at 1026. 84 Id. at 1027. 85 Id. GoPets is a video game featuring virtual pets. Id. 86 Id. 87 Id. 88 Id. 89 Id. 90 Id. 91 Id. 92 Id. 93 Id. 94 Id. at 1029. These websites include gopets.mobi, gopets.name, goingpets.com, gopetssite.com. Id. 95 Id. at 1028. 96 Id. 97 Id. 98 Id. 99 Id. 100 Id. 101 Id. at 1029. 102 Id. 103 Id. at 1035. 104 Id. at 1032. 105 Id. 106 Id. at 1032. 107 Id. at 1031. 108 See id. at 1031; see also Prudential II, 58 F.4th at 794. 109 Republic of Sudan v. Harrison, 139 S. Ct. 1048, 1055 (2019). 110 ANTONIN SCALIA, READING LAW: THE INTERPRETATION OF LEGAL TEXTS 3 (2012) (“the notion that judges may ... improvise on constitutional and statutory text enfeebles the democratic polity.”). 111 Prudential II, 58 F.4th at 796. 112 See id. (explaining that the “Merriam-Webster Dictionary defines ‘registration’ as ‘the act of registering’”); see also Jysk Bed’N Linen v. Dutta-Roy, 810 F.3d 767, 777 (11th Cir. 2015) (explaining that the Oxford Dictionary defines “register” is to “‘[t]o register again’”). 113 Prudential II, 58 F.4th at 796. 114 Schmidheiny v.Weber, 319 F.3d 581, 582–83 (3d Cir. 2003). 115 Id. 116 Jysk Bed’N Linen, 810 F.3d at 777–78. 117 Id. at 777 (quoting re-register, OXFORD ENGLISH DICTIONARY (2015)); see also Prudential II, 58 F.4th at 796 (holding that the ordinary meaning of “registers” includes both the first registration and subsequent registrations because the dictionary definition of “re-register” is to “register again”). 118 Jysk Bed’N Linen, 810 F.3d at 777; Prudential II, 58 F.4th at 796; Schmidheiny, 319 F.3d at 582–83. 119 GoPets, 657 F.3d at 1031. 120 Id. at 1030. 121 Id. 122 Id. at 1032. 123 See id. at 1031; see also Prudential II, 58 F.4th at 796. 124 H.R. REP. No.106-412, 6. 125 See Heppner v. Alyeska Pipeline Serv. Co., 665 F.2d 868, 871 (9th Cir. 1981). 126 See id.; see also United States v. Olander, 572 F.3d 764, 768 (9th Cir. 2009); see also Polk v.Yee, 36 F.4th 939, 948 (9th Cir. 2022). 127 ROBERT A. KATZMANN, JUDGING STATUTES 35 (2014). 128 S. REP. No. 106–140, at 4 (1999). 129 H.R. REP. No. 106–412, at 6 (1999). 130 H.R. REP. No.106–464, at 116 (1999) (Conf. Rep.). 131 Prudential II, 58 F.4th at 796. 132 Id. (citing S. REP. NO. 106–140, at 4–6). 133 Id. at 795 (quoting Jysk Bed’N Linen, 810 F.3d at 778). 134 See Jysk Bed’N Linen, 810 F.3d at 778; see also S. REP. NO. 106-140, at 4. 135 S. REP. NO. 106-140, at 4 (“[t]he purpose of this bill is to protect commerce and American businesses, to promote the growth of online commerce, and to provide clarity in the law for trademark owners by prohibiting the bad faith and abusive registration” of distinctive trademarks). 136 GoPets, 657 F.3d at 1031. 137 S. REP. NO. 106-140, at 4, 8 (explaining that there are a variety of reasons that cybersquatters target distinctive marks, such as to make a profit or cause consumer confusion). 138 GoPets, 657 F.3d at 1028. 139 H.R. REP. NO. 106-412, at 6. 140 GoPets, 657 F.3d at 1028. 141 S. REP. NO. 106-140, at 4; see also 15 U.S.C. § 1125(d)(1)(B)(i)(V), (VI). 142 Prudential II, 58 F.4th at 797. 143 GoPets, 657 F.3d at 1032. 144 Prudential II, 58 F.4th at 797. 145 GoPets, 657 F.3d at 1031–32. 146 See id. at 1032 (“We see no basis in ACPA to conclude that a right that belongs to an initial registrant of a currently registered domain name is lost when that name is transferred to another owner.”). 147 Prudential II, 58 F.4th at 797. 148 Id. 149 15 U.S.C. § 1125(d)(1)(A)(i). 150 S. REP. NO. 106-140, at 4 (“Thus, the bill does not exten[d] to innocent domain name registrations by those who are unaware of another’s use of the name . . . .”). 151 Prudential II, 58 F.4th at 797 (“[W]here there is no bad faith, there is no liability for cybersquatting.”). 152 See id. (“The ACPA does not take away the initial registrant's right to sell or transfer all of her rights in a domain name to any other party . . . .”).
Copyright Protection of Fonts and Typefaces, New Litigation Brings the Topic to the Front Seat By: Giselle Ayala
The legal status of fonts and typefaces in the realm of copyright law remains a complex and evolving issue. At some point, it appeared that the discussion was settled; there is no copyright protection for fonts. However, the discussion about whether fonts and typefaces are protected by copyright law is more alive than ever. In this context, the debates revolve around the concept of originality and functionality. This article explores the intersection of design, functionality, and copyright protection, focusing on the legal frameworks governing fonts and typefaces. Introduction Fonts and typefaces are integral to visual communication, shaping not only aesthetic but also functional aspects of text presentation. Where did it all start? Even before the development of copyright law, the creation of fonts and writing designs was already relevant. Here, I am first referring to the concept of “typography”, which is the art and technique of arranging symbol to communicate in writing.[1] From handwriting and the use of wood block to the development of more complex systems to create fonts and typefaces, the first discussions regarding copyright protection of fonts, in the context of Common Law, took place in the United Kingdom. In Stephenson, Blake and Co. v. Grant, Legros & Co., 115 L.T.R. 66 (1916), “the court recognized that the typeface design was subject to copyright under the then-current Copyright Act of 1911.”[2] Nowadays, under the laws of the United Kingdom typefaces are considered works of art protected under Copyright.[3] Even though typefaces are not expressly listed, Section 54 of the Copyright, Designs and Patents Act of 1988, speaks of typefaces as protected when part of “articles specifically designed or adapted for producing material in a particular typeface.”[4] However, there is no such clarity in the United States. Despite their significance, the question of whether fonts and typefaces can be protected under copyright law has been contentious. The development of typography has evolved from manual typesetting to digital formats, leading to new challenges in copyright protection. The transition from print to digital raises questions about the ownership of these designs, particularly as computer fonts became widespread through the development of software. I. Understanding Fonts and Typefaces Even though “fonts” and “typefaces” are concepts sometimes used as if they were identical, they are different. Fonts are specific visual kinds of typefaces, which change one from another in terms of size and weight. Fonts refer to the digital representation that is used to display a text on a screen or in print. Typefaces, on the other hand, refer to a set of distinct glyphs that characterize a particular style of lettering. When it comes to copyright protection of fonts and typefaces, one of the focal points is the design features of these symbols. In particular, the elements of typefaces have been at the core of the discussions, stress, weight, aperture, and serif styles.[5] Even though there are conceptual differences between the two concepts, here, we will use them interchangeably, with some comments. II. Legal Framework for Copyright Protection A. Copyright Law Overview Under the U.S. Copyright Act of 1976 and its subsequent amendments, copyright is afforded to “…original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device.”[6] The Copyright Act includes a non-exclusive list of works that are protected, including graphic works. However, the U.S. Copyright Office official position is that typefaces are not protected by copyright. Circular 33 of the U.S. Copyright Act expressly states that “Copyright law does not protect typeface or mere variations of typographical ornamentations or lettering,” and defines a typeface as a “set of letters, numbers, or other characters with repeating design elements that is intended to be used in composing text or other combinations of characters, including calligraphy.” Apparently, it is clear that typefaces are not protected by copyright law. However, the topic has been discussed in litigation several times. Then, what are the issues that make copyright protection of typefaces problematic? Let’s see. i. Originality Requirement To qualify for copyright, a work must be original and fixed in a tangible medium. This raises questions about whether the design of a typeface meets these criteria, as many argue that typefaces are primarily utilitarian rather than artistic. Under U.S. Copyright law the threshold of originality is low. In Feist Publications, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340 (1991), the U.S. Supreme Court explained that “to be sure, the requisite level of creativity is extremely low; even a slight amount will suffice. The vast majority of works make the grade quite easily, as they possess some creative spark . . . .”[7] In light of this logic, it is intriguing that copyright law does not afford protection to typefaces. As Jame Felici presents it, creating a type, a good one, requires works and the right combination of certain elements. If such low originality threshold alone was applied to this analysis, we might have a winning argument in favor of the copyright protection of typefaces. “It’s hard to talk about these variables—measure, point size, and leading—one at a time. They work in concert, and ultimately all three are dependent on the typeface you’re working with. Bigger type needs wider measures, and wider measures need more leading. Wider measures, in turn, need larger type. Changing the leading changes everything. Despite their being such basic specifications—you really can’t set type at all without assigning values to them—their interrelationships are not always fully appreciated. This is a polite way of saying that they’re commonly mishandled, and not just by novices.”[8] However, it is not that simple, we must consider functionality. Additionally, the easier or harder it is to create something or come up with an original work, isn’t relevant either to decide whether something is entitled to copyright protection. In Feist Publications, the U.S. Supreme Court also explained that, “the underlying notion was that copyright was a reward for the hard work that went into [creating the work] [however] . . . the ‘sweat of the brow’ doctrine had numerous flaws . . . to accord copyright protection on this basis alone distorts basic copyright principles in that it creates a monopoly in public domain materials without the necessary justification of protecting . . . .”[9] ii. Functional vs. Artistic Elements A key issue in font/typefaces protection is distinguishing between artistic expression and functional aspects of a work. Courts have often ruled that functional items, such as fonts used solely for communication, may not qualify for copyright. Does it mean that font used for purpose beyond communication could be protected by copyright? In Star Athletica, L. L. C. v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017), the US Supreme Court explained that the Copyright Act does not protect graphic works incorporated into a “useful article,” which is defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information.” However, some copyright may be afforded to a graphic work “to the extent that, such design incorporates . . . features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”[10] In the case of typefaces, what makes a typeface unique are those elements mentioned before: stress, weight, aperture, and serif styles. Could one separate those elements from the “basic” design of letters? It is highly improbable. However, it is probably an analysis to be made on a case-by-case basis. Therefore, if a typeface designer came up with a typeface design that incorporates elements which can be separated from the letters themselves, those elements might be entitled to copyright protection. A scenario like that one could be similar to that in Chosun International v. Chrisha Creations, where the Second Circuit determined that the paw designs on children’s animal costumes qualified for copyright protection. The court ruled that the paw designs were conceptually separable from the overall costume, meaning they could be protected as distinct creative expressions separate from the costume itself. This decision highlights the potential for individual elements of a design to receive copyright protection even when they are part of a larger non-protectable work. Now that we have explained the general legal issues that affect the copyright protection of typefaces, let’s look at cases where topic has come up. We will also explore how typefaces have been the subject of copyright claims via software protection. B. Case Law Analysis i. Eltra Corp. v. Ringer In Eltra Corp. v. Ringer, 579 F.2d 294 (4th Cir. 1978), the U.S. Court of Appeals for the Fourth Circuit determined that typefaces were not eligible for protection under U.S. Copyright law because typefaces could not be categorized as “works of art.” In this case, the Court gave deference to the U.S. Copyright Office’s prior determination that Plaintiff’s “typeface design” was not entitled to registration because it lacked “elements, either alone or in combination, which can be separately identified as a ‘work of art.’”[11] ii. Adobe Systems, Inc. v. South Sun Products, Inc. In Adobe Sys. Inc. v. S. Software Inc., 45 U.S.P.Q.2d 1827 (N.D. Cal. 1998), Adobe Systems (“Adobe”), a leading software company known for its creative and multimedia products, filed a lawsuit against South Sun Products (“South”), a company involved in manufacturing and distributing software. The case arose from allegations that South Sun had unlawfully copied Adobe’s font software. Adobe had developed software, an editor named the “Utopia software,” capable of digitizing several font files previously in bitmap form[12] and modifying its control points[13] so that the final product was a font that could be reproduced in at any resolution. The Court explained here: “The raw material for Adobe’s fonts comes from various sources including the purchase of digitized font files from third parties. Adobe obtains a digital representation of the x and y coordinates for the glyphs which it then stores in computer memory. These ‘raw’ coordinates are then translated into Adobe’s font coordinate system by internal Adobe software which provides the glyph coordinates and glyph instructions.”[14] According to Adobe’s allegations, South’s employee Paul King (“King”), copied Adobe’s program from several sources, uploaded them to his own computer, and then with the help of two software programs named “Font/Monger” and “Fontographer,” created three fonts used in the “Key Fonts Pro 1555” product. Adobe argued copyright infringement for the authorized copy of its program and for the unauthorized creation of derivative works of the Utopia software. South and King admitted that the Adobe program had been copied and loaded unto King’s computer. However, they argued that instructions which resulted in the “Key Fonts Pro 1555” product together with the output were non-copyright subject matter. The U. S. District Court for the Northern District of California ruled in favor of Adobe and explained that although typeface designs are not copyrightable, a computer program is protectable regardless of the non-protectable character of the output. The Court explained that a computer program, which is subject matter protectable under the Copyright Act, is “a set of statements or instructions to be used directly or indirectly in a computer to bring about a certain result.”[15] The Court also recalled the 1988 Copyright Office Policy Decision, where the Copyright Office determined that digitized typefaces are not copyrightable because they are not computer programs and require little selection beyond that coming from the uncopyrightable typeface design.[16] Then, the Court added that in 1992, the Copyright Office, concerned about the development of new technology affecting how typefaces are understood, issued a final regulation regarding the protection of “computer programs that generate typefaces.”[17] “After a careful review of the testimony and the written comments, the Copyright Office is persuaded that creating scalable typefonts using already digitized typeface represents a significant change in the industry since our previous Policy Decision. We are also persuaded that computer programs designed for generating typeface in conjunction with low resolution and other printing devices may involve original computer instructions entitled to protection under the Copyright Act. For example, the creation of scalable font output programs to produce harmonious fonts consisting of hundreds of characters typically involves many decisions in drafting the instructions that drive the printer. The expression of these decisions is neither limited by the unprotectible shape of the letters nor functionally mandated. This expression, assuming it meets the usual standard of authorship, is thus registrable as a computer program.” Finally, the Court granted Adobe’s summary judgment motion on its claim of copyright infringement of its Utopia program. This case underscores the important role of software in the copyright protection of typefaces. iii. Shake Shack Enters. v. Brand Design Co. In Shake Shack Enters. v. Brand Design Co.,[18] Shake Shack Enterprises, LLC and SSE IP (together “Shake Shack”) brought an action for declaratory judgment against Brand Design Company, Inc. d/b/a House Industries (“House Industries”). The issue of copyright infringement was resolved via motion to dismiss in favor of Shake Shack. House Industries is a typeface shop that develops fonts and provides custom design services, including the creation of logos and branding. In 2002, House Industries developed the Neutraface font, which was inspired by and named for the Modernist architect Richard Neutra. House Industries makes its Neutraface font available to customers on its website. For a licensing fee, anyone can download the Neutraface font software and use it to create text. To obtain the license, user must agree to House Industries’ End User License Agreement (“EULA”). Interestingly enough, House Industries EULA forbids user from using the fonts to create logos or products for sale.[19] Given House Industries’ allegation that Shake Shack, for years, has been using House Industries’ font, Neutraface, for the development of logos, advertising and sales, in violation of the EULA, Shake Shack commenced this litigation. Shake Shack alleged that the style of lettering in Shake Shack’s logos, signage, and merchandise does not infringe on House Industries’ intellectual property rights, and that House Industries had engaged in copyright misuse by attempting to monopolize the legitimate use of a typeface in the public domain. In response to Shake Shack’s action, House Industries counter-claimed for breach of contract and copyright infringement. The Court dismissed House Industries’ allegations of breach of contract and copyright infringement on the basis of preemption by the Copyright Act. The Court explained that state-law claims, like breach of contract, may be subject to statutory preemption if the purpose of a party is to vindicate rights against a “work of authorship.” The Court also explained that under copyright law House Industries’ allegations failed because there was no evidence that Shake Shack ever had access to the House Industries font software. Considering that typefaces are not protectable under copyright law, House Industries was required to demonstrate that its proprietary software, which may be protected under copyright, had been copied. No evidence in that regard was provided.The Court explained: “It is speculation to assert that Shake Shack created its signage with glyphs generated by House Industries' software. Even if the glyphs in Shake Shack’s signage are identical to the Neutraface glyphs, typeface is part of the public domain. . . . The public is free to replicate, imitate, or reverse engineer Neutraface glyphs to create glyphs of identical appearance, as long as House Industries’ software is not used to do so. That House Industries’ Neutraface font software is one way to generate those glyphs does not support the conclusion that it is, in fact, how Shake Shack generated those glyphs for its signage.” (emphasis added).[20] This case underscores the basic principle that typefaces by themselves are not entitled to copyright protection in the United States. iv. Laatz v. Zazzle Laatz v. Zazzleis an ongoing litigation that, in terms of copyright law, may resolve the following issue: how much originality or creative contribution is necessary to entitle a font software to copyright protection? If taken to trial, this is an interesting case to follow. Nicky Laatz (“Laatz”) is a font designer who derives her income from the design of fonts software using the FontLab[21] platform. She has created over 110 unique fonts that she markets through her own website and Creative Market, an online markplace for user-generated design assets.[22] Laatz sells licenses to her fonts and the associated font software. The license granted to the purchaser is a non-exclusive one-person use license. Zazzle, Inc. (“Zazzle”) is an online platform that specializes in the design and on-demand production of customized products. Customers can either purchase products created by design professionals or use Zazzle’s design customization tool to create their own items. The platform offers a variety of fonts and graphics, and users can upload their own images to combine with Zazzle’s designs. Once an order is placed, Zazzle takes care of all production logistics. Laatz filed a complaint against Zazzle after discovering that Zazzle’s employee, Mr. Alkhatib, had reproduced and made available to the public, without authorization, font software property of Laatz. Zazzle’s employee approached Laatz around November of 2016 to inquire about the acquisition of a perpetual license of the font “Blooming Elegant Trio” and the “Blooming Elegant Software”. The proposed acquisition would be for Zazzle’s server-based use so that it could be made available through the Zazzle design customization tools. Laatz does not provide perpetual licenses and did not respond to Zazzle’s inquiry. On or about May of 2017, under the direction of Zazzle, Zazzle’s employee purchased a license to the “Blooming Elegant Software” and made the font software available to Zazzle’s designers, users and customers. Laatz discovered the unauthorized use of the “Blooming Elegant Software” when a Zazzle’s customer reached out requesting help with the use of the Blooming Elegant font on the Zazzle’s website. Zazzle’s position in regard to Laatz’s copyright infringement claims is that, Laatz has not protectable copyright interest. Therefore, on March 31, 2023, Zazzle filed a motion to dismiss Laatz allegations. According to Zazzle, Laatz cannot allege ownership of a work protected by copyright because she did not “hand code” the font software at issue. Instead, Laatz used a third-party software to create a font, which is subject matter not protected by copyright. Zazzle’s position in regard to Laatz’s authorship contributions to the Blooming Elegant fonts, is that “the only thing she purportedly ‘hand-coded’ are ‘the instructions for how the characters/glyphs should appear next to each other by choosing the values for each of the font-wide variables that FontLab permits a designer to set, such as cap height, letter spacing, ascender height, and descender height.’ […] In other words, she “merely assigned coordinates to a particular letterform and then used a third party program to render typeface or typefont from those coordinates.’”[23] In opposition, Laatz argues that she owns a valid work of authorship because she “personally hand-coded the instructions for how the […] glyphs should appear . . . by choosing the values for each of the font-wide variables that FontLab permits a designer to set, such as cap height, letter spacing, ascender height, and descender height.”[24], additionally, “the US Copyright Office issued a registration certificate, with effective date February 18, 2021, for the software for each of the three fonts in the Blooming Elegant Trio”[25]. The United States District Court for Northern District of California, considered the requirements of copyright ownership, concluding that at this stage of the proceedings there were several issues yet to be resolved. The Court stated “The Court acknowledges that Defendants raise serious questions as to whether Plaintiff contributed enough to the Blooming Elegant Software to be considered its author. But that is a question of fact not appropriate for resolution at the pleading stage.”[26]. After the motion to dismiss was denied, Laatz filed a motion for summary judgment. As part of the supporting evidence, Laatz submitted the opinion of two experts, one in the font industry and the other in font licensing, design and distribution, both stating that Laatz actions resulted in a copyrightable software. However, Zazzle offered its own expert contradicting their opinion. As a result of this, the Court denied Laatz’s summary judgment request. The Court stated: “Given the conflicting expert testimony, the Court cannot conclude as a matter of law that Plaintiff’s copyrights are valid. Plaintiff therefore has not established that there is no dispute of material fact related to her copyright infringement claim […]”[27]. This case highlights that fonts themselves remain largely outside the protection of copyright law. However, the current debate centers on how much originality or creative contribution is required to qualify font software for protection. Many practitioners and font designers are closely watching the outcome of this litigation, as it could significantly impact industry practices regarding the licensing of font software. Additionally, Laatz has designed over 100 fonts using the Fontlab platform, underscoring the high stakes involved in this case.[28] C. Should copyright protect fonts’ designs? Advocates argue that copyright protection incentivizes creativity and investment in typeface design, fostering innovation in the typography field. Designers often invest considerable resources in creating unique typefaces, and copyright provides a mechanism for recouping those investments. On the other hand, critics argue that fonts are tools for communication, and granting copyright may hinder accessibility and usability in design. This perspective suggests that typefaces should be freely available to promote creativity and innovation in graphic design. As technology advances, new forms of typefaces, including variable fonts and responsive designs, may challenge existing legal frameworks. Ongoing discussions about copyright law reform could lead to new approaches to font and typeface protection, balancing the interests of designers and users. In the meantime, font designers might consider redirecting their focus to other creative works that offer more opportunities for copyright protection. Conclusion The copyright protection of fonts and typefaces is a nuanced issue with significant implications for designers, users, and the broader design community. While current legal frameworks offer some protection, ongoing debates suggest that the landscape may continue to evolve. As this topic develops, it will be essential for stakeholders to engage in dialogue about the future of font and typeface protection, ensuring a balance between creativity, accessibility, and copyright protection. [1] KHAN, Saniuddin, The Evolution of Typography: A Journey Through History, available at https://www.researchgate.net/publication/381260133_The_Evolution_of_Typography_A_Journey_Through_History [2] CARROLL, Terrence J, Protection for Typeface Designs: A Copyright Proposal, Santa Clara University School of Law, Jan. 1994, available at https://core.ac.uk/download/pdf/149257482.pdf [3] Id. [4] Copyright, Designs and Patents Act of 1988 [5] “The term serifs is used to describe the cross strokes which finish the stems or arms of letters. They are usually drawn at right angles or obliquely to these stems or arms and may extend on both sides or only on one side. The stem of a letter may be the straight or oblique stroke of a capital or lower-case letter and the arms may belong, for example to a capital E or a lower-case k.” MANFREDI, Travis L, Sans Protection: Typeface Design and Copyright in the Twenty-First Century, at 845, (citing BRINGHURST, Robert, The Elements of Typographic Style (version 3.2 ed. 2008)), available at https://cpb-us-w2.wpmucdn.com/usfblogs.usfca.edu/dist/7/272/files/2014/09/45-3-C3.pdf [6] U.S. Copyright Act of 1976. [7] Feist Publications, Inc. v. Rural Tel. Service Co., 499 U.S. 340, 345 (1991) [8] FELICI, James, The Complete Manual of Typography, 2d Ed., A guide to setting perfect type, at 117, Rochester Institute of Technology, School of Print Media, available at https://ayomenulisfisip.wordpress.com/wp-content/uploads/2011/10/complete-manual-of-typography.pdf [9] Feist Publications at 354. [10] Star Athletica, L. L. C. v. Varsity Brands, Inc., 137 S. Ct. 1002, 1008 (2017) [11] Eltra Corp. v. Ringer, 579 F.2d 294 (4th Cir. 1978) [12] SurferHelp, Image (Bitmap) File Descriptions, “A bitmap is an image displayed as an array of dots or ‘bits,’” available at https://surferhelp.goldensoftware.com/subsys/subsys_bitmap_file_description.htm [13] Control points in fonts are off-curve points that define the shape of letters by controlling the line segments and curves. FontLab Help, available at https://help.fontlab.com/fontlab-vi/Points/#:~:text=steps%20outlined%20here.-,Handles,are%20not%20quite%20proper%20 extrema. [14] Adobe Sys. Inc. v. S. Software Inc., 45 U.S.P.Q.2d 1827 (N.D. Cal. 1998), available at https://web.archive.org/web/20100 522133154/http://lw.bna.com/lw/19980303/9520710.htm [15] Id. (citing 17 U.S.C. § 101). [16] “The Copyright Office observes that more digitalization of even a pre-existing copyrightable work does not result in a new work of authorship,” 1988 Copyright Office Policy Decision, available at https://cdn.loc.gov/copyright/history/mls/ML-393.pdf [17] Adobe Sys., 45 U.S.P.Q.2d 1827 (N.D. Cal. 1998) [18] Shake Shack Enters. v. Brand Design Co., 22 Civ. 7713 (VM), 708 F. Supp. 3d 515 (S.D.N.Y. Dec. 28, 2023), available at https://casetext.com/case/shake-shack-enters-v-brand-design-co [19] Id. [20] Id. [21] FontLab is a font editor developed by Fontlab Ltd. [22] Creative Market profile, WIKIPEDIA, available at https://en.wikipedia.org/wiki/Creative_Market [23] Id. [24] Laatz v. Zazzle. Case 5:22-cv-04844-BLF. PACER. Doc. No. 124 [25] Id. [26] Id. [27] Laatz v. Zazzle. Case 5:22-cv-04844-BLF. PACER. Doc. No. 174 [28] “The answer, in this case, highlights the stark difference between the way the law and fellow creatives dole out credit to the imagination. Proving that Laatz played a key role will likely come down to proving that she wrote code by hand, said Christopher Sprigman, a professor at NYU Law and author of the book The Knockoff Economy: How Imitation Sparks Innovation.” MURPHY, Heather T. Into the Sparkly Heart of Zazzle’s Font War. Slate.com. Jan 24, 2023. Available at:https://slate.com/technology/2023/01/zazzle-copyright-font-blooming-elegant.html
Lower Courts in Patent Cases Continue to Ignore Factual Disputes and Weigh Evidence Against Nonmovants By: Charles Macedo, David Goldberg, Thomas Hart, John Dellaportas, and Jamie Zipper.*
Introduction In patent cases, district courts are increasingly granting summary judgment by ignoring factual disputes and/or weighing evidentiary disputes against non-movants, thus depriving patent owners of their right to a jury trial under the Seventh Amendment. As the Supreme Court has observed, it is an “axiom” that in ruling on a motion for summary judgment, “[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor.” Tolan v. Cotton, 572 U.S. 650, 651 (2014) (quoting Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, (1986)). “[A]t the summary judgment stage the judge's function is not himself to weigh the evidence and determine the truth of the matter but to determine whether there is a genuine issue for trial”. Anderson, 477 U.S. at 249. Thus, “a district court generally cannot grant summary judgment based on its assessment of the credibility of the evidence presented.” Agosto v. INS, 436 U.S. 748, 756 (1978). This is because “[t]he right to confront, cross-examine and impeach adverse witnesses is one of the most fundamental rights sought to be preserved by the Seventh Amendment provision for jury trials in civil cases. The advantages of trial before a live jury with live witnesses, and all of the possibilities of considering the human factors, should not be eliminated by substituting trial by affidavit and the sterile bareness of summary judgment.” Adickes v. S.H. Kress & Co.,398 U.S. 144, 176 (1970) (Black, J., concurring). Notwithstanding the foregoing, lower courts have adopted a specific practice in patent cases whereby judges substitute their own credibility determinations and unsubstantiated findings of fact in Rule 12 and Rule 56 motions. Like in Tolan, the Supreme Court’s exercise of supervisory authority is again required to confirm “the same common-law principles, methods of statutory interpretation, and procedural rules as other areas of civil litigation.” SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 580 U.S. 328, 340 (2017). The Supreme Court’s Supervisory Authority is Needed to Correct Trends in Patent Cases Where Procedural Standards are Ignored The failure of patent courts to follow the Supreme Cout’s axiom and substitute their credibility determinations contravenes the Seventh Amendment right to a jury trial. See, e.g., Leonard v. Dixie Well Serv. & Supply, Inc., 828 F.2d 291, 294 (5th Cir. 1987) (reversing grant of summary judgment because “it is for the jury at trial, not for the judge on a pretrial motion, to decide whose evidence is more credible.”). Such a violation demands reversal and course correction. See DR Distribs., LLC v. 21 Century Smoking, Inc., No. 3:12-cv-50324, 2024 U.S. Dist. LEXIS 99866, at *42 (N.D. Ill. June 5, 2024) (“because of Seventh Amendment concerns, in summary judgment proceedings, courts cannot determine factual disputes”). “The purpose of the summary process is to avoid a clearly unnecessary trial; it is not designed to substitute lawyers’ advocacy for evidence, or affidavits for examination before the fact-finder, when there is a genuine issue for trial.” Continental Can, 948 F.2d at 1265. “While facilitating the disposition of legally meritless suits, when summary judgment is improvidently granted the effect is to prolong litigation and increase its burdens. This is of particular concern in patent disputes, where the patent property is a wasting asset, and justice is ill served by delay in final resolution.” Id. at 1265-66 (emphasis added). Berkheimer v. HP acknowledges that with respect to patent eligibility, “whether a claim element or combination of elements would have been well-understood, routine, and conventional to a skilled artisan in the relevant field at a particular point in time is a question of fact.” 890 F.3d 1369, 1370 (Fed. Cir. 2018) (en banc), cert. denied. However, Berkheimer, Tolan and Anderson are too often forgotten in patent cases under the supervision of the Federal Circuit, which has failed to correct lower courts substituting their own judgment (often supported by no more than citations to Federal Circuit decisions on unrelated inventions) for record evidence. For example, in USC IP Partnership LP v. Facebook, a district court failed to apply the summary judgment standard correctly. 576 F. Supp. 3d 446 (W.D. Tex. 2021). The nonmovant presented statements from its technical expert’s rebuttal report, including testimony that “the claims present a unique and novel way of delivering webpages to consumers that was not previously demonstrated in the prior art.” USC IP P'ship, L.P. v. Meta Platforms, Inc., No. 2022-1397, 2023 U.S. App. LEXIS 22914, at *9 (Fed. Cir. Aug. 30, 2023) (citations omitted). The USC court, under Tolan and Berkheimer, should have found a dispute of fact as to conventionality. It did not. Instead, largely by analogizing to previous cases decided by the Federal Circuit, the district court rejected the evidence which contradicted its conclusion since it was “not backed by any concrete facts from the specification or the prior art.” Id. at 457; PPS Data, LLC v. Jack Henry & Assocs., 404 F. Supp. 3d 1021, 1037 (E.D. Tex. 2019). This is the same error the Supreme Court corrected in Tolan: “By failing to credit evidence that contradicted some of its key factual conclusions, the court improperly ‘weigh[ed] the evidence’ and resolved disputed issues in favor of the moving party,” 572 U.S. at 657 (quoting Anderson). Yet rather than call out these errors on appeal, the Federal Circuit in USC IP P'ship affirmed this faulty analysis by discounting the evidence as “conclusory” instead of giving credence to the factual evidence. USC IP P'ship, L.P.2023 U.S. App. LEXIS 22914, at *8. Savvy Dog Systems, LLC v. Pennsylvania Coin, LLC presents another example where the courts improperly substituted their own judgment on factual disputes. There, the non-movant asserted a patent claim was directed “to displaying the game field before the game commits to play the game.” 2024 U.S. App. LEXIS 6702, at *7 (Fed. Cir. Mar. 21, 2024). Based on this finding, the Federal Circuit invalidated the patent despite identifying no evidence that such a concept was “long standing” at the time of the alleged invention. Id. (citing ChargePoint, Inc. v. SemaConnect, Inc., 920 F.3d 759, 768 (Fed. Cir. 2019)). Rather than rely on the evidence presented with the motion, the Federal Circuit relied solely on its determinations in cases involving different inventions. See, e.g., Broadband iTV, Inc. v. Amazon.Com, Inc., 113 F.4th 1359 (Fed. Cir. 2024) (“claim 1 is directed to a type of ‘targeted advertising,’ which we have repeatedly found abstract”) (citing Free Stream Media Corp. v. Alphonso Inc., 996 F.3d 1355, 1361-62 (Fed. Cir. 2021); Intell. Ventures I LLC v. Cap. One Bank (USA), 792 F.3d 1363, 1369 (Fed. Cir. 2015); Customedia Techs., LLC v. Dish Network Corp., 951 F.3d 1359, 1363 (Fed. Cir. 2020)). This kind of ipso facto fact finding is not appropriate and violates the Tolan axiom. Judicial fiat is not how “historical facts” should be treated at summary judgment. Similarly, in Island v. TD Ameritrade, a district court deviated from the Supreme Court’s summary judgment framework. Island Intellectual Prop. LLC v. TD Ameritrade, Inc. Defendants, 2022 U.S. Dist. LEXIS 210408 (E.D. Tex. Sep. 28, 2022), Magstr. Rpt. Adopted, Island Intellectual Prop. LLC v. TD Ameritrade, Inc., 2022 U.S. Dist. LEXIS 209232 (E.D. Tex. Nov. 17, 2022). In that case, the nonmovant presented more than sufficient factual evidence that the claimed aspects of determining and calculating interest were not abstract “fundamental economic practice[s] long prevalent in our system of commerce” and that the indisputably novel and particular way the invention calculated interest on a non-pro rata basis, along with the unconventional account structure and unique database structure that enabled the particular method of accounting, were unconventional, non-routine and inventive at the time of the invention. Id.; Bilski v. Kappos, 561 U.S. 593, 611(2010). Rather than construe the evidence in the light most favorable to the nonmovant, the district court relied on In re TLI Commc’ns LLC Patent Litig. v. Av Auto., L.L.C. as supportfor the proposition that “an ‘electronic database’ or other steps performed ‘electronically’ fall squarely within Federal Circuit precedent finding generic computer components insufficient to add an inventive concept to an otherwise abstract idea.” 823 F.3d 607, 614 (Fed. Cir. 2016). But that determination for an entirely different invention (created at an entirely different time) in another case had, at most, minimal relevance. Nevertheless, the Federal Circuit proceeded to affirm the decision in one-word, with no explanation, leaving doubts as to the basis for affirmance. The pattern continues in Broadband iTV, Inc. v Amazon.com, Inc. There, a district court granted a summary judgment motion based, in part, on the claim language, stating that the claims themselves admitted conventionality. 2024 U.S. App. LEXIS at *10. In finding the claims contained admissions, the district court confused the prior existence of templates generally with the unconventional use of templates in the specific context of the claimed invention, namely user interfaces for television program guides in 2006 (the time of the invention). Nevertheless, the Federal Circuit affirmed. With respect to one of the disputed patents, the Federal Circuit cited to three of its previous cases to hold that the patent was directed to “targeted advertising, which [it] ha[s] repeatedly found abstract.” 2024 U.S. App. LEXIS at *24 (citations omitted). With regards to the same patent, the Federal Court stated that “[t]he district court largely based its step two analysis on the intrinsic record, and [that it] again agree[s] with the district court’s interpretation of the intrinsic record.” Id.at *26. This conclusion distorts the law and allows the lower court in patent cases to interpret and weigh evidence on summary judgments. Once again, this erroneous perception of the Tolan axiom must be fixed. The Federal Circuit misapplies other prevailing motion standards in analogous ways. For example, in Beteiro, LLC v. Draftkings, Inc., a decision in the context of judgment on pleadings, the Federal Circuit substituted its own judgment in finding in Alice/Mayo Step 1 “fundamental ... practices long prevalent” without reference to any historical factual precedent. 104 F.4th 1350, 1356 (Fed. Cir. 2024) (citing Intell. Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1314 (Fed. Cir. 2016)). In doing so, the Circuit Court discounted the factual assertion that “remote gambling” was “common in 2002” (the time of the invention) as irrelevant, notwithstanding that such a fact belies the statement immediately prior, that the Federal Circuit’s ipso facto precedent establishes that it was “long prevalent.” Id. Likewise at Alice/Mayo Step 2, the Federal Circuit concluded that GPS was "a set of generic computer components" instead of accepting, as true, the pleading that "GPS on a mobile phone was conventional technology in 2002.” In doing so, the Court of Appeals plainly failed to adhere to the Supreme Court’s directive to accept as true all material facts as plead (in the context of a motion on the pleadings). Id. at 1357. Conclusion Litigants deserve proper, fair, and clear adjudication. The continuous misapplication of the Tolan axiom by courts must be resolved, as it represents a threat to litigants’ Seventh Amendment right to a jury trial, and their ability to properly understand and appeal decisions in patent cases. If courts continue to misapply the summary judgment standard with respect to patent eligibility cases, an increasingly high number of litigants will be deprived of their day in court. Absent change, patent law will continue to lag behind other areas of law, frustrating the ability of litigants and the public to proceed based on a correct understanding of the law. * Messrs. Macedo and Dellaportas were counsel on a Combined Petition in Support of Rehearing and Rehearing En Banc in Island Intellectual Property LLC v. TD Ameritrade, Inc., Nos. 2023-1318, -1441 (Fed. Cir. June 18, 2024) that raises this issue. Mr. Macedo is a partner, Mr. Goldberg is Senior Counsel, Mr. Hart is an associate, and Ms. Zipper is a law clerk at Amster, Rothstein & Ebenstein LLP. Mr. Dellaportas is a partner at Emmet, Marvin & Martin, LLP.
Pro Codes Act: Navigating the Tension Between Public Access and Copyright Protection for Privately Published Standards Incorporated into Law By: Jonathan Berschadsky and Jack Goldberg*
In the pursuit of ensuring safety and uniformity in high-risk industries, expert organizations play a crucial role in developing and disseminating industry best practices. These organizations meticulously craft standards that serve as invaluable guidelines for various sectors, such as agriculture, banking, construction, energy, motor vehicle safety, product safety, environmental protection, and maritime operations, where adherence to strict safety measures is paramount. For instance, these standards aid housing developers in constructing buildings that meet the highest fire safety standards. Standards developing organizations (SDOs) take on the responsibility of publishing these standards. They make these standards available to the public in different formats, including for sale as physical books and digital copies. By offering these resources, SDOs enable professionals and stakeholders to access the expertise and knowledge necessary to implement best practices in their respective fields. The availability of these standards in both physical and digital formats ensure widespread accessibility and convenience for users. Professionals can conveniently refer to these standards during project planning, execution, and evaluation stages, enhancing overall safety and compliance in their industries. Recognizing the significance and value of industry best practices, government lawmaking and regulatory bodies frequently adopt and incorporate these standards into their legal frameworks. When incorporated into law, these standards become binding on all individuals and entities operating within the respective field. This ensures that compliance with these standards is not optional but mandatory for all practitioners. Thousands of codes provided by both U.S. SDOs and international SDOs have been incorporated into law through legislation or regulatory rule making. By incorporating these standards into law, government bodies aim to establish a unified and enforceable regulatory framework. This incorporation ensures that compliance with these standards is not merely a matter of best practice or recommendation but a legal obligation for all relevant stakeholders. It establishes a level playing field for businesses and professionals operating within the industry, promoting consistency, safety, and accountability. Furthermore, the inclusion of these standards in the legal framework provides clarity and certainty for practitioners. They can rely on these legally binding standards to guide their decision-making processes, ensuring that their practices align with the highest levels of safety, quality, and performance. In addition, the incorporation of standards into law also serves to enhance public trust and confidence. When individuals and communities know that specific standards have been legally mandated, they can have greater assurance in the safety and reliability of products, services, and infrastructures within that field. Some argue that the cost to access these standards is too steep. Others argue that SDOs' publication and distribution of standards serve as a valuable source of revenue for these organizations and that by selling copies of the standards they have developed, SDOs can sustain their operations, fund research and development initiatives, and continue to provide guidance and expertise to industries in need. From an intellectual property perspective, as original works fixed in a tangible medium, standards are eligible for copyright protection in the United States, granting the organizations or bodies that develop them certain exclusive rights, known as "106 rights." Section 106 of the U.S. Copyright Act grants these rights, which include the right to reproduce the work, create derivative works, distribute copies, and publicly perform the work. In other words, the SDOs own the intellectual property rights in the codes and hence have the right to license the codes for a fee, despite the fact that they are incorporated by reference as public law. The existence of copyright protection for standards thus creates a conflict between the public's right to access the law and the ability of SDOs to protect their copyrights in the standards they develop and sell. Courts have recognized the importance of public access to the law and have established the "government edicts" doctrine, which limits copyright protection for certain works considered to be government edicts, such as laws, judicial opinions, and annotations. The government edicts doctrine ensures that the public is aware of and has free access to the laws they are compelled to follow. This principle is rooted in the belief that the law should be accessible and transparent to all. Applying the government edicts doctrine to grant the public free access to standards that are incorporated by reference into law presents a complex dilemma. It raises questions about balancing the public's right to access the law with the copyright interests of the SDOs. Allowing unrestricted access to these codes could potentially undermine the copyright protection granted to the SDOs. This tension highlights the need for a careful and nuanced approach to resolving the conflict between public access and copyright protection. It is an ongoing legal debate that courts have grappled with, and it may require legislative measures to find a suitable balance between the rights and interests involved. The tension between government edicts and copyright in privately published standards has been the subject of numerous legal cases in U.S. courts, but these cases have provided limited clarity on the issue. In the 1994 case CCC Info. Servs. v. MacLean Hunter Mkt. Reports, Inc., the Second Circuit[1] court declined to place a compendium of used car valuations, which had been incorporated into state law, into the public domain. The court cited concerns regarding the Fifth Amendment of the U.S. Constitution, as it feared that placing the compendium in the public domain without just compensation would constitute an unlawful taking of private property by the government. However, eight years later, the Fifth Circuit took a different stance in Veeck v. Southern Building Code Congress International. The Court[2] refused to follow the guidance of the Second Circuit and instead placed a set of model codes, which had been incorporated by reference, into the public domain. The court distinguished the model codes in question from the data compendium in the previous Second Circuit decision. Additionally, the Fifth Circuit believed that the Takings Clause was not implicated in this case because the creator of the model codes had actively sought government incorporation of their code. More recent decisions in this area have sidestepped the government edicts issue by deciding cases on fair use grounds, with alleged infringers often finding protection under fair use. For example, in the 2023 case American Society for Testing & Materials v. Public.Resource.Org, Inc.[3], the non-commercial reproduction of a model code incorporated by reference into law was deemed fair use. However, it's important to note that fair use determinations are highly dependent on specific facts, and recent case law does little to alleviate concerns for potential infringers regarding their use of standards incorporated by reference into law. To address the uncertainty surrounding public access to incorporated codes, lawmakers have introduced legislation aimed at striking a balance between the interests of copyright holders and the public. One such bill is the Pro Codes Act (H.R. 1631), which was introduced on March 17, 2023, by Rep. Darrell Issa and boasts 19 cosponsors from both sides of the aisle. This Act seeks to provide clarity by establishing guidelines for standards that are incorporated by reference into Federal, State, local, or municipal law or regulation. Under the Pro Codes Act, copyright in these incorporated standards would be retained. However, the Act also mandates that SDOs make the standards publicly accessible online. SDOs have the flexibility to display the standards in restricted formats, such as a read-only version that prevents users from copying and pasting content. Additionally, SDOs can require users to create an account or agree to terms of service, as long as there are no monetary costs and no personally identifiable information is collected without user consent. During the markup hearing for the Act on July 19, 2023, concerns were raised regarding the access limitations proposed. Rep. Bishop, a Republican from North Carolina's 8th congressional district, for example, argued that the publicly accessible version should have basic functionality, including copy and paste abilities, rather than being strictly read-only. Democrat Rep. Lofgren forcefully contended that allowing SDOs to require account creation or terms of service agreements for access to the standards would deviate from the nation's history of public access to the law. The bipartisan skepticism towards the current definition of "publicly accessible online" suggests that amendments to the act are likely. Still, despite these disagreements, according to govtrack.us, the Pro Codes Act has a 63% chance of being enacted. To ensure compliance with copyright laws and navigate the complexities surrounding the use of SDO copyrighted codes that have been incorporated by reference into laws, it is essential to seek legal advice. Consulting with expert law professionals can help companies avoid potential copyright infringement and find solutions that allow them to use and convey the copyrighted codes appropriately. This bill is provisionally dead due to a failed vote on July 22, 2024, under a fast-track procedure called 'suspension.' The Pro Codes Act may or may not receive another vote by the House of Representatives. Currently, it is being considered in the Senate, where it was introduced as Bill S. 835 and is awaiting further action *Jonathan Berschadsky is a Partner and Jack Goldberg was a Law Clerk at Merchant & Gould P.C. Jack Goldberg is not yet admitted to bar. [1] CCC Information Services, Inc. v. Maclean Hunter Market Reports, Inc., 44 F.3d 61 (2d Cir. 1994) [2] Veeck v. Southern Building Code Congress Intern., 49 F. Supp. 2d 885 (E.D. Tex. 1999) [3] Am. Soc'y for Testing & Materials v. Public.Resource.Org, Inc., 13-cv-1215 (TSC) (D.D.C. Mar. 31, 2022)
Notable Trademark Decisions, October 2024 By: Scott Greenberg and Vrudhi Raimugia
Supreme Court Rejected First Amendment Challenge to Names Clause In a recent case, Vidal v. Elster, the United States Supreme Court (“the Court”) unanimously rejected a First Amendment challenge to the “names clause” of the Lanham Act. The Court addressed Steve Elster’s attempt to register the trademark “Trump too small,” which the Patent and Trademark Office denied based on the Lanham Act’s names clause. The names clause prohibits registering a trademark that includes a living individual's name without their consent. Elster argued unsuccessfully that this restriction violated his First Amendment rights. Vidal v. Elster, 602 U.S. 286, 144 S. Ct. 1507 (2024). The Court affirmed that the restrictions on trademark registration, particularly regarding names, are compatible with the First Amendment due to their historical roots and established legal principles. The Court discussed how trademarks have historically served two main purposes: indicating ownership of goods and identifying the source or manufacturer. Further, the Court emphasized that the names clause would prohibit trademarking another living person’s name without their consent, thereby protecting that individual’s reputation and goodwill. The Court also stated that the focus on content is essential for preventing consumer confusion about the origin of products. The Court highlighted that trademark law has long coexisted with First Amendment rights, suggesting that not all content-based restrictions require heightened scrutiny. The Court notes that restrictions on trademarks, including name-related ones, do not necessarily conflict with free speech protections. In the Court’s opinion, Justice Clarence Thomas, writing for the majority, explained that the names clause of the Lanham Act (15 U.S.C.S. § 1052(c)), while content-based, is viewed as a viewpoint-neutral restriction that aligns with historical and legal traditions, thus being compatible with the First Amendment. Finally, the Court concluded that the names clause of the Lanham Act would not violate the First Amendment. Justice Kavanaugh concurred in part with the majority opinion, expressing his agreement with the conclusion that the names clause is constitutional based on historical precedents. He believed that a viewpoint-neutral, content-based trademark restriction could be constitutional even without a historical basis, suggesting that this issue can be addressed in future cases. Justice Barrett also concurred, agreeing with the majority that the names clause did not violate the First Amendment but challenged the reasoning that relied solely on historical context. She argued that the Court’s evidence for the historical basis of the names clause was insufficient and advocated for a standard that assessed whether content-based trademark restrictions were reasonable in light of trademark law’s goals, particularly concerning source identification. Justice Barrett argued that reasonable restrictions in trademark law were essential for preventing source confusion, which occurs when consumers misidentify the origin of goods. She contended that trademarks incorporating the names of living individuals without consent could clearly lead to such confusion. Therefore, she concluded that the names clause served as a reasonable regulation of speech, aimed at protecting both consumer interests and the goodwill of individuals. Justice Sotomayor concurred in part and dissented in part, supporting the constitutionality of the names clause based on its reasonable restrictions that would prevent source confusion. She emphasized that the names clause was both content-based and viewpoint-neutral, as it regulated trademarks based solely on whether they identify a living individual without consent. Despite agreeing on the clause’s constitutionality, she critiqued the majority’s reliance on historical and traditional justifications, arguing that this approach lacked grounding in established First Amendment principles. Justice Gorsuch, joined by Justice Thomas, concurred in part, but critiqued the majority’s reliance on historical analogues to determine the constitutionality of the names clause in trademark registration. They agreed with Justice Barrett’s perspective that such historical searches were unnecessary for resolving constitutional questions. Further, Justice Gorsuch advocated for applying a doctrinal framework grounded in First Amendment precedent, suggesting a two-step analysis: first, determining if the challenged provision would target specific viewpoints; second, assessing if it would serve the reasonable purpose of trademark law—identifying and distinguishing goods. He emphasized that while the Court had sometimes treated viewpoint-neutral content classifications as presumptively unconstitutional, this would not apply when the risk of suppressing ideas would be low. He supported the idea that reasonable, viewpoint-neutral restrictions on governmental benefits did not violate free speech rights, citing precedent that would allow for such distinctions without triggering heightened scrutiny. Ultimately, Justice Gorsuch warned against the potential confusion that could arise from the historical approach taken by the majority, advocating instead for a clearer application of established First Amendment principles. He underscored that while history could inform legal understanding, it should not dictate the constitutional validity of current legislation, especially when it comes to the names clause and trademark registration. To conclude, the justices clarified that their decision was specific to the names clause and did not establish a broad framework for evaluating all content-based trademark restrictions. Here, the Court affirmed that the historical foundation was sufficient to uphold the names clause against First Amendment challenges but acknowledged that future cases may require a different analysis. Vidal v. Elster, 602 U.S. 286, 144 S. Ct. 1507 (2024). TTAB Grants Summary Judgment Based on Failure to Respond to Admissions, Notwithstanding Defendant’s Previous Denial of the Same Allegations in His Answer Hua Yongfu (“Yongfu”) obtained a United States trademark registration for the mark LEARN-JOURNEY in connection with various writing implements, stationery products, and other goods in Class 16. The Learning Journey International, L.L.C. (“Learning Journey”) petitioned to cancel Yongfu’s registrations on grounds including priority and likelihood of confusion with Learning Journey’s prior registrations for “LEARNING JOURNEY,” nonuse, abandonment, and fraud.Yongfu filed an answer denying Learning Journey’s allegations. During discovery, Learning Journey served Yongfu with requests for admissions covering all of Learning Journey’s factual allegations, to which Yongfu did not respond. Learning Journey then moved for summary judgment on all of its claims based on Yongfu’s deemed admissions resulting from his failure to respond to the admissions-requests.Yongfu’s sole defense was based on his denials of the same factual allegations in his answer. In a precedential decision, the USPTO’s Trademark Trial and Appeal Board rejected Yongfu’s defense as insufficient, granted summary judgment to Learning Journey on its claim for cancellation on the ground of abandonment, and declined to consider Learning Journey’s remaining grounds. Learning Journey Int'l v. Hua Yongfu, 2024 USPQ2d 1608, 2024 TTAB LEXIS 326 (TTAB Sept. 6, 2024). Entitlement to a statutory cause of action The Board held that Learning Journey proved indisputably that it was entitled to bring its statutory cause of action for cancellation based on priority and likelihood of confusion through its proof of ownership of its active registrations for “LEARNING JOURNEY.” The ownership of these registrations was sufficient to show Learning Journey’s direct commercial interest by demonstrating that Learning Journey has a plausible claim for likelihood of confusion. Moreover, the Board held that, having established its entitlement to a statutory cause of action, Learning Journey may rely on any statutory ground for cancellation. 2024 TTAB LEXIS 326 at *13-14. Standard for summary judgment The Board noted that, under Fed. R. Civ. P. 56(a), summary judgment may be granted when the moving party is able to demonstrate, prior to trial, that there is no genuine dispute of material fact, and that it is entitled to judgment as a matter of law. The evidence must be viewed in a light most favorable to the non-moving party, and all justifiable inferences are to be drawn in the non-movant's favor. If the moving party successfully discharges its initial burden of production, the burden shifts to the nonmovant to demonstrate the existence of a genuine dispute for trial. If the nonmovant’s showing is insufficient to demonstrate that a genuine dispute exists on an essential element of the subject claim, the moving party is entitled to judgment as a matter of law. Id. at *3-6 (citing, inter alia, Celotex Corp. v. Catrett, 477 U.S. 317, 323, 106 S. Ct. 2548 (1986)). Yongfu’s deemed admissions The Board noted that, pursuant to Fed. R. Civ. P. 36(a)(3), due to Yongfu’s failure to timely respond to Learning Journey’s requests for admissions, those requests are deemed admitted by operation of law. In view of that, Yongfu had two separate avenues for relief available, either (1) move to reopen his time to respond to the admission requests because his failure to timely respond was the result of excusable neglect under Fed. R. Civ. P. 6(b)(1)(B), or (2) move to withdraw and amend his admissions pursuant to Fed. R. Civ. P. 36(b). However, Yongfu made no attempt to do either of the above, and instead relied on the fact that he had already denied the same allegations in his answer to the petition. The Board held that this was insufficient to prevent the conclusion that the matters deemed admitted are conclusively established in the proceeding. As to Yongfu’s reliance on his denials in his answer, the Board held that he still needed to respond to the admission-requests. Id. at *8 (citing Perez v. Miami-Dade Cty., 297 F.3d 1255, 1269 (11th Cir. 2002) (“The mere fact that a party has previously denied the matter about which an admission is sought does not obviate the need to respond to a Rule 36request for admissions.” (quoting U.S. v. Young, 1990 U.S. Dist. LEXIS 11865, 1990 WL 135734, at *2 (S.D.N.Y. Sept. 10, 1990))). Yongfu himself attempted to rely on a passage from the Perez decision which states that “[o]nce a defendant has answered, . . . it continues to be inappropriate for a plaintiff to re-serve the complaint in the form of a request for admissions . . . ."Perez, 297 F.3d at 1269. However, the Board held that the Perez case was distinguishable in this regard, because the defendants in Perez did not solely rely on the denials in their answer, but also made a motion to withdraw their deemed admissions under Fed. R. Civ. P. 36(b). 2024 TTAB LEXIS 326 at *8. Effect of deemed admissions The Board noted that, when matter has been conclusively established under Rule 36, it is taken as a judicial, rather than an evidential, admission that “cannot be rebutted by contrary testimony or ignored by the [Board] simply because it finds the evidence presented by the party against whom the admission operates more credible,” and this “applies equally to those admissions made affirmatively and those established by default, even if the matters admitted relate to material facts that defeat a party’s claim.” Id. at *10 (citing Am. Auto. Ass’n (Inc.) v. AAA Legal Clinic of Jefferson Crooke, P.C., 930 F.2d 1117, 19 USPQ2d 1142, 1144 (5th Cir. 1991)). Consequently, Yongfu’s admissions conclusively demonstrated the absence of any genuine dispute of a material fact regarding the requisite elements of Learning Journey’s claim of abandonment. In particular, Respondent Yongfu’s admissions were deemed to conclusively establish: that “at the time of registration of Respondent’s Mark, [Respondent] [was] not using Respondent’s Mark on any goods that fall under the categories of goods listed in Respondent's Registration,” that Respondent “ha[s] not sold goods that fall under all of the categories of goods listed in Respondent’s Registration under or in connection with Respondent’s Mark for a period of at least three (3) consecutive years,” that Respondent “ha[s] not sold goods that fall under any of the categories of goods listed in Respondent’s Registration under or in connection with Respondent’s Mark for a period of at least three (3) consecutive years,” and that Respondent “d[oes] not have an intent to use Respondent’s Mark on or in connection with goods that fall under any of the categories of goods listed in Respondent’s registration.”These deemed admissions are sufficient for Petitioner to demonstrate that there is no genuine dispute of material fact on its claim of abandonment. 2024 TTAB LEXIS 326 at *14-15 (footnotes omitted). The Board therefore granted Learning Journey’s motion for summary judgment cancelling Yongfu’s registration on grounds of abandonment and further held that, in view of that outcome, it was unnecessary to consider Learning Journey’s other grounds for cancellation. Id. at *16-17. Learning Journey Int'’ v. Hua Yongfu, 2024 USPQ2d 1608, 2024 TTAB LEXIS 326 (TTAB Sept. 6, 2024) (precedential). TTAB Holds That Sales by Third-Party Amazon Retailers Linked to Applicant’s Website Is Inadequate as Applicant’s Use in Commerce for Retail Store Services In the case of Gail Weiss’s trademark application for “GABBY’S TABLE,” the Trademark Trial and Appeal Board (“TTAB”), in a precedential decision, upheld the Trademark Examining Attorney’s refusal to register the mark. Weiss, the applicant, sought to register the mark for online retail services related to food and cooking. However, the application was denied due to an inadequate specimen showing the mark was in use with the identified services. In re Weiss, 2024 USPQ2d 1376, 2024 TTAB LEXIS 277 (TTAB July 31, 2024). In the trademark application for “GABBY’S TABLE,” the specimen submitted by the applicant consisted of website marketing and advertising materials. However, the Examining Attorney raised concerns regarding its adequacy in demonstrating use of the mark in connection with the claimed Class 35 services. The Examining Attorney argued that while the specimen included a list of recommended items for purchase, it did not directly offer retail services. Instead, clicking the “Buy Now” buttons redirected consumers to third-party websites (such as Amazon and Cuisinart) for purchase. This redirection meant that the specimen failed to establish a direct association between the mark and the services identified in the application. The Examining Attorney provided screenshots from Amazon’s Associates page, a well-known affiliate marketing program. This program allowed content creators, publishers, and bloggers to monetize their traffic by linking to products on Amazon. When users would click on those links and make qualifying purchases, the affiliate would earn a commission. The Examining Attorney highlighted that the applicant’s website functioned similarly to this affiliate model, lacking direct retail services. The Examining Attorney concluded that the specimen did not meet the required standards for establishing use of the mark in commerce as mandated by the Trademark Act. In response, the applicant submitted articles discussing how to launch an Amazon affiliate store, emphasizing that such stores directed customers to Amazon using affiliate links rather than selling products directly. These stores created product listings to redirect customers to Amazon, allowing the owner to earn commissions from sales without holding inventory. The articles explained that owners of affiliate stores could profit by directing traffic to Amazon and receiving payment for referrals. According to the Examining Attorney, this evidence underscored the distinction between the applicant’s operations and the direct retail services required for trademark registration. The applicant also likened their service to providing “shelf space” for goods, claiming that once a consumer decides to buy a product displayed on their site, they could easily click to purchase, similar to a consignment store model. This argument was countered by the Examining Attorney’s evidence that demonstrated no direct sales occur on the applicant’s site. The TTAB acknowledged that the applicant’s specimen displayed the applied-for mark, as required, however questioned whether this mark was used in connection with the claimed services of “Computerized on-line retail store services” in the relevant field. The applicant, in their defense, also iterated that consumer perception was critical, and that to determine whether a mark is used in connection with the services described in the application, a key consideration is the perception of the user. However, the TTAB responded to that argument stating that the evidence showed that when consumers would click the “Buy Now” buttons, they would be redirected to third-party websites, and there was no support for the claim that consumers perceived these actions as a purchase from the applicant’s own retail services. The TTAB also stated that the website primarily functioned as a referral service, directing users to purchase from third-party vendors rather than selling products directly. This distinction was crucial, as it did not satisfy the requirements for online retail services. The TTAB affirmed that the evidence must have demonstrated a direct association between the mark and the services, whereas simply showing the mark without a clear connection to the services did not fulfill the requirements. The TTAB also reviewed whether the applicant’s website indicated that consumers could purchase goods directly through the site, finding that the specimen must have clearly shown that the mark identified the services being offered, and in this case, the applicant’s use of the mark did not sufficiently establish that connection. Ultimately, the TTAB maintained that the applicant’s specimen did not adequately support the registration for the claimed services, affirming the Examining Attorney’s refusal under Sections 1 and 45 of the Trademark Act. In re Weiss, 2024 USPQ2d 1376, 2024 TTAB LEXIS 277 (TTAB July 31, 2024) (precedential).
Historians Corner
BY: DALE CARLSON
This history is dedicated to Gregory J. Battersby, lead author and motive force behind the 75 Year History. Without Greg's leadership, there would likely be no Centennial edition because there would be no building block to expand upon for the 100th. Greg was NYIPLA's 2nd Vice President in 1997-98. Many thanks to you, Greg! As we celebrate our centennial anniversary, we thought it appropriate to reflect back on our history. The project turned out to be a fascinating adventure in not only the history of our Association but also the patent, trademark & copyright bars as well. Of course, it all began with the Patent Bar. When we think back on the legends of the Patent Bar, we think of names such as William H. Davis, William Houston Kenyon, Lawrence Langner, Theodore Kenyon, Giles Rich, Alexander Neave, Samuel Darby, John Kelton, David Kane, Morton Adams, Bill Conner, Pauline Newman and Al Nolte. When we recall the history of the legal profession in general, names such as Supreme Court Justices Tom Clark and Arthur Goldberg, Second Circuit Judges Learned Hand, Augustus Hand and William Mulligan, and Federal Circuit Judges Helen Nies and Howard Markey immediately come to mind. It turns out that the careers of these lions of the legal profession are remarkably intertwined with the history of our Association. As their professional reputation grew, so did the reputation of our Association which is arguably the most influential regional bar association in the nation. The Genesis "Washington, DC, September 8, 1921" "Sir: I have the honor to submit herewith the following report of the business of the United States Patent Office for the fiscal year ending June 30, 1921: The Patent Office is in a deplorable condition..." So began the 1921 Annual Report of Patent Commissioner Thomas E. Robertson. His concern for the continuous stream of resignations of trained examiners and the resulting increase in backlog led him to solicit the aid of the Patent Bar in support of an emergency pay raise bill pending before Congress. He knew that such a bill would meet stiff opposition from some economy-minded members of the House of Representatives. From this perennial crisis of inadequate Patent Office salaries, our Association was born. In response to Commissioner Robertson's pleas for assistance, the Committee on Patents and Trademarks of the New York County Lawyers Association held a meeting on November 29, 1921, in the rooms of that Association at 165 Broadway, New York City to consider how to help induce Congress to pass the Lampert Bill. The meeting was attended by seventy-five local patent lawyers and was chaired by William Houston Kenyon. At the same meeting, a Committee of five was appointed to prepare a plan for a permanent organization. This Committee consisted of the following individuals: William H. Davis, Chairman, William R. Kennedy, Oscar Jeffery, Edward M. Bentley and Albert F. Nathan After some discussion, a number of resolutions were adopted by the group, including several outlining a course of action. Members of the Bar interested in patent matters would personally call upon or write all New York members of Congress as well as the sponsor of the pay legislation and the House majority leader to urge prompt passage of the bill. They were also to prevail upon their clients to do the same. Each interested person was also asked to contribute five dollars to defray the cost of the committee's activities. The final, but by no means the least, of the resolutions prompted by Commissioner Robertson and adopted at that meeting called for the appointment of a committee of five to: "(1) Prepare a plan for a permanent organization of persons of good standing in this city and vicinity professionally engaged as patent lawyers, solicitors of patents, or patent experts;..." The idea of forming such an organization through which patent lawyers in New York could make their views known in Washington and also have some degree of social meetings with the judiciary was actively espoused by William Houston Kenyon. An Association is Born At the next meeting of the group on March 7, 1922, Richard Eyre, Chairman of the Committee on Patent Office Relief, reported the details of his Committee's work and the passage of the pay raise bill. Commissioner Robertson addressed the meeting and personally delivered his thanks for the efforts of the group. He again urged that a permanent organization be formed and explained the possible usefulness of such an organization. William H. Davis, Chairman of the Committee on Permanent Organization, then presented to those assembled a proposed constitution and bylaws. With some discussion and minor revision, the proposal was adopted at that same meeting and our Association, named The New York Patent Law Association, was born. A Nominating Committee was formed to propose a slate of officers for vote by the membership at the next meeting. The newly formed Association then issued its first official pronouncement: a resolution recommending passage of the pending Lehlback Bill concerning Civil Service reclassification, which would have the effect of upgrading all Patent Office salaries. At the subsequent meeting on March 30, 1922, our Association elected its first officers and directors. William Houston Kenyon was elected President along with three Vice-Presidents: Thomas Ewing (a former Commissioner of Patents), William H. Davis and Richard Eyre. Edwin J. Prindle served as Temporary Chairman and Lawrence K. Sager served as Temporary Secretary. Mr. Kenyon held the office of President for three years, after which our Association began the tradition of one-year Presidential terms. With the efficiency and thoroughness characteristic of the patent bar, our Association immediately launched an ambitious program of activities. President Kenyon announced the appointment of a full slate of standing committees, including a Committee on Professional Ethics, a Committee on Admissions and a Committee on Meetings. Interestingly, all of these Committees continue their responsibilities today. In addition, a number of special Committees were appointed to support passage of the Lehlback Bill, to investigate such matters as the post-war revival of the Patent Treaty with Germany and improvement of the quarters of the federal courts in New York City. The latter had a strong influence in the construction of the Federal Court Building at Foley Square. In what today could be characterized as an instance of deja vu, the Commissioner of Patents, at this first official meeting, presented our Association with three questions on which he desired our input: Should the first Office Action be complete and thorough even if it delays the initial examination? Should little or no attention be paid to matters of form unless the Examiner finds allowable subject matter in the application? and Should the Examiner indicate what subject matter he considers patentable, even if not properly claimed by the applicant? Upon referendum of the membership, all three questions were answered overwhelmingly in the affirmative. Although deeply engrossed in matters affecting the profession and the law, the fledgling Association did not forget the need for recreation and conviviality for its members. Not yet three months old, our Association held its first golf outing at Dongan Hills, Staten Island and, still warm from the flow of success at its first social venture, held a second golf day in October of that year at Ardsley. The winners of the respective tournaments, George T. Bean and Marquis H. Lockwood, were presented with cups by Frederick W. Barker of the Meetings Committee, who ran the events, with the admonition that they that they were "never to fill them except with liquid of the same golden hue with which the cups were lined" (ed. note: notwithstanding that Prohibition was in effect). The golf outing has remained a popular event for our Association and a new cup is now held by Fritz Schweitzer, Jr., having rested the cup from former president Albert Robin who had won the previous three tournaments. The active and productive founding year of our Association was capped by what is still the banner event of our Association year - the Annual Dinner in Honor of the Federal Judiciary (hereinafter the "Judges Dinner"). Held on December 6, 1922 at the Hotel Waldorf Astoria (its situs ever since) the dinner was preceded by a menu printed in the format of a U.S. Patent that pointedly referred to the limiting effects of Prohibition[1]. That first dinner, starting a custom that continues today, had each honored guest escorted by an Association member. It was a rousing success with 258 members and guests in attendance. Among the distinguished guests were Judges Charles M. Hough, Martin T. Manton and Augustus and Learned Hand. The festivities were hosted by President Kenyon, who characterized both the new Association and the dinner as "experiments." Our Association's membership included some patent lawyers who had amateur theatrical talents, including at least one with direct ties to the professional theater.[2] They produced, for the first Judges Dinner, a play which had a cast of about 16 and put on the boards the trial of an alleged patent infringement case.[3] Similar entertainment at succeeding dinners established the Judges Dinner as an event filled with originality and festivity that attracted many federal judges as regular guests. By 1926, our Association had grown to a membership of 363, with 317 of those being active members. As reported by John P. Bartlett then the Chairman Ex Officio of the Board of Governors our Association's work was largely taken up with discussions on pending legislation: the Vestal Design Registration Bill, the Patent Law Reform Bill, the Trademark Registration Bill and the Bill for the increase of salaries of the Federal Judges. Indeed, little has changed in 70 years. A Committee on the Federal Courthouse was also formed to study the then-proposed new federal courthouse at Foley Square which would permit the court to move out of the Downtown Post Office. The Association Survives the Depression A Patent Office Celebration Committee was formed in 1932 and chaired by Herbert Van Dyke. This Committee participated in the opening of the new Patent Office in Washington on April 11, 1932. Membership in our Association continued to grow through the depression years. By 1935, the membership totaled 423. The largest fundraising event remained the Judges Dinner which had more than 500 in attendance. A sketch entitled "No More Patent Attorneys" was presented by Lawrence Langner and W. Houston Kenyon. Mr. Orestes Caldwell, past President of the New York Electrical Society, gave a talk with slides on the development and practical application of the "so-called electric eye" and Samuel E. Darby, Jr. gave "an interesting and amusing impersonation." During the 1935 Association year, the Committee on the Federal Courthouse reported that although "the granite carvers are now on strike the architect advises that we may reasonably expect to have the Court House completed and ready for occupancy about next February [1936]." Our Association played a role in President Franklin Roosevelt's New Deal proposal to increase membership in the Supreme Court. After careful consideration and much debate, the Board of Governors adopted a resolution opposing "all suggestions for increasing the number of United States Supreme Court judges, or tending in any way, directly or indirectly, to bring the Supreme Court under the power or influence of any other branch of the Government." Ultimately, the number of seats on the Supreme Court was increased to the present nine. An Engineers' Court??? In the late 1930's, under the guidance of Merrell E. Clark, Albert G. Davis and Theodore S. Kenyon, our Association considered issues that would remain in the forefront for decades to come. The Board of Governors at that time opposed in principle a proposal to create a single Court of Patent Appeals (which it would later refer to as an "Engineers' Court"). The Committee on Patent Law and Practice, chaired by Alexander C. Neave, offered the following reasons for opposing such Court: The conflict of decisions of various circuit courts of appeals is in fact not serious, and the present practice has certain advantages which the Single Court would not have. There is no necessity for a court of judges with technical training and such a court would have its own disadvantages which would be more serious than those which may now exist. A Single Court would not materially reduce the expense of patent litigation and might well make it more expensive. A specialized Appellate Court would be an undesirable departure from our present judicial system. The problem of obtaining competent judges would be a serious one. The proposed Court would create complications which do not now exist. The Single Court would be an unnecessary expense. An Association sub-committee had earlier reported that: "[…] we need appellate judges who are trained in judicial consideration of problems and who are able to weigh and sift the evidence presented to them. Scientific judges would soon fall behind in their technical knowledge and would undoubtedly develop prejudices and narrow scientific ideas which would result in the case not being decided upon the evidence given in the Court below but upon the technical views of such an Appellate Court, which views litigants could not meet since no evidence is introduced in the appellate court." Irrespective of this early opposition, the concept of a patent appeals court was revisited again in the late 1970. In 1982 the Court of Appeals for the Federal Circuit was finally established. Back in the 1930s, our Association also opposed a proposal that patents would expire twenty years from the date of application, "believing that the real root of evil lies in delays in the prosecution of applications in the Patent Office." Who Said Patent Attorneys Can't Have a Good Time? The Judges Dinners during the 1930's included live demonstrations of leading edge technologies. For example, the 1939 Judges Dinner featured demonstrations of the Polaroid principle by the Polaroid Corporation with Dr. Martin Grabau as the speaker and of television by the Radio Corporation of America with Mr. Otto S. Schairer as the principal speaker. The dinner was attended by 244 members and 430 guests - approximately one-fourth the size of the Judges Dinner today. Social interaction was not lost on the founding members of our Association, most notably in their golf games. The "early years" of the then New York Patent Law Association included an annual golf tournament alternately held at the Pelham, Scarsdale and Sleepy Hollow Country Clubs. These tournaments and dinners that followed were quite well attended drawing almost twenty percent of the membership at that time. By 1940, our Association membership had exceeded 500 and there was a serious discussion among the Board of Governors about establishing a working library and headquarters for our Association. It was believed that this could serve as a meeting place for the Governors, committees and Association members as well as a headquarters for out-of-town members. The most serious question presented, however, was where to locate the library - uptown or downtown. It was reported by the Secretary that in January, 1940, 176 members of our Association had their offices uptown, while 206 were downtown. It was noted, however, that the proportion had perhaps been reversed by the movement uptown of the firm of Pennie, Davis, Marvin & Edmonds. A library committee was formed under the guidance of C.P. Goepel, who proceeded to appeal for old law books and pamphlets on "Patents, Designs, Trade-Marks and Copyrights." The highlight of the 1941 Judges Dinner was a skit put on by Mr. Langner, Theodore S. Kenyon and R. Morton Adams entitled "The Incandescent Spark," which followed the travails of a patent from the initial writing of the patent application through appeal at the U.S. Supreme Court. (All taking place in a matter of five days!). Perhaps as a comment on the judiciary's view of patents at the time, Mr. Langner has the Chief Justice explaining to the newest justice not to be frightened of patent cases, saying "Just remember that our rule is never to sustain a patent." The play, supplying a long-felt want, was written by Curt von Boetticher and directed by Lucious Cook. Efforts had been made to obtain the British Ambassador, Lord Halifax, as the guest speaker but he had declined because of the pendency of the "Lease-Lend Bill" before Congress. That same year, the ongoing Committee on the Federal Court House, chaired by Henry D. Williams, reported that the Court House was now complete but it noted one lingering problem - its subway connection. The Committee report stated: Nevertheless, the subway connection is solely to the B.M.T. Line, and at a comparatively slight expense could be a free underground connection with a passageway from the I.R.T. subway station at Brooklyn Bridge. This is regarded by the Committee as of great importance. Further, when the connection has been made with this station, it will be possible to use the subway station and passages to proceed underground, thus escaping the street traffic from City Hall Park to the Federal Court House. Under present arrangements, it will cost a 5 cent fare to cross the underground bridge over the subway tracks, and access may only be had thereby to the Municipal Building, but your committee proposes to bring about a free passageway over a bridge above the subway tracks which will enable one to enter the Municipal Building and the Federal Court House beneath the street traffic. The War Years During World War II, our Association turned its attention to various administrative measures relating directly to the prosecution of the "War," new legislation proposed and considered in Congress, the trend of court decisions in patent litigation and the recommendations of a National Patents Planning Commission. Of particular concern was proposed legislation that affected the patent rights of alien enemies or citizens of countries held by enemies. As a show of patriotism, the Association decided to invest its funds in Defense War Bonds. When it was decided that the Patent Office should be moved from Washington, D.C. to afford working and living space for people engaged in work more directly connected with the war, our Association sought to have the Patent Office moved to New York. An official announcement was actually made that the Patent Office would relocate to New York although it was subsequently decided that portions of the office would remain in Washington with the examining corps moved to Richmond, Virginia. Due to the stress of the war, the only member meeting held in 1942 was the Judges Dinner at the Waldorf, which enjoyed the largest attendance of any similar function in the history of our Association until then. Travel restrictions, particularly those that involved the use of gasoline, caused our Association to cancel its annual golf outings. Nevertheless, our Association continued to work with the Alien Property Custodian on questions of patent rights as well as with the National Planning Commission on new legislation. A Significant Role in Writing the Lanham and Patent Acts Throughout the 1940s, our Association actively supported various legislative proposals to provide improved protection for trademarks which culminated in the passage of the Lanham Act in 1946. Several members of our Committee on Trademarks, led by Chairman Sylvester J. Liddy, testified before Congress in support of the Act. The success in passage of the Lanham Act and the discontent among the patent bar, as reflected in Mr. Langner's "Incandescent Spark" play, induced an effort to revise the patent laws which had last been given major legislative attention in 1870. Our Association played an active and major role in that effort. In 1948, at the direction of then President Robert W. Byerly, our Committee on Patent Law and Practice, chaired by Alexander C. Neave, and including Giles Rich, drafted and had introduced a bill to overturn the Mercoid Cases, 320 U.S. 661 (1944) and 320 U.S. 680 (1944), which had virtually eliminated the doctrine of contributory infringement and expanded the misuse doctrine. The 80th Congress adjourned without acting on that bill, but similar bills were introduced in the 81st Congress. The Subcommittee on Patents, Trademarks and Copyrights asked Pasquale J. Federico of the Patent Office to draft "an overall patent revision bill." Mr. Federico consulted with prominent members of the patent bar and this Association, including Giles Rich and Henry R. Ashton (then also President of the American Patent Law Association). At a meeting on February 8, 1950 of seventeen patent law associations, Giles Rich and Paul Rose were appointed as a two-man drafting committee on behalf of the National Council of Patent Law Associations. Over the next two years, after multiple meetings with Associations around the country and many revisions thereof, the bill was submitted to the House and ultimately became the law. The activity leading to the 1952 Patent Law began in the twenty-fifth year of our Association when Giles Rich was our First Vice President. After the 1952 Patent Act was passed, our Association devoted its efforts toward having the President and Congress appoint a patent attorney to the Court of Customs and Patent Appeals in an effort to strengthen the patent system. In 1956, Giles Rich, one of the moving forces behind the 1952 Act, was appointed to the Court of Customs and Patent Appeals, the predecessor of the Court of Appeals for the Federal Circuit, on which he still sits. Judge Rich became the first member of our Association and, it is believed, the first registered patent attorney ever appointed to the federal bench. The Post-War Years The Post-War years brought about a relaxation of the wartime restrictions and a reinvigoration of our Association. By 1947, the annual golf outing was restored at Tamarack Country Club and it was noted that "some 88 members and guests played golf, turning in scores which averaged substantially in excess of 100 but which in no way detracted from the enjoyment of the game or from the appreciation of the 33 prizes which were distributed." At the 1948 Judges Dinner, our Association celebrated its Silver Jubilee with cocktails, souvenir programs and anniversary cakes impressively served by the Waldorf with a candlelight parade. The 740 attendees heard Mr. William H. Davis speak of the founding of our Association twenty-five years ago and Judge Harold R. Medina recount the foibles of an infringement trial. In 1951, our Association authorized the publication of the Bulletin to expand services to the membership despite economic "risks" of expanding such services. The purpose of the Bulletin was to foster "a sense of fellowship amongst the members ... to strengthen the usefulness and prestige of The New York Patent Law Association." Unfortunately, however, despite such laudable plans, it would be another ten years before the Bulletin was actually published, and then largely due to the efforts of editor, Henry E. Sharpe. Subsequent editors, including Jim Badie, Howard Barnaby and Greg Battersby, have ably carried on the tradition. Association membership climbed rapidly in the 1950's, passing the 850 mark by 1955 when a record 95 new members joined. That same year, a number of different types of meetings were adopted, including shop-talk meetings without charge for admission, medium-priced dinners with shop-talk, a medium priced dinner with a general interest program for spouses, a Christmas dinner dance and the customary Judges Dinner. United States Attorney General Herbert Brownell, Jr. was the guest speaker at the Judges Dinner that year, speaking on the subject "Liberty and Law are Inseparable." The Patent Crisis of the 1950's The 1950's proved to be a difficult time for patents and the Patent Office. The Supreme Court appeared to be anti-patent. This attitude found expression in a statement by Mr. Justice Jackson in his dissenting opinion in the Jungersen case in 1949, that, "the only patent that is valid is one which this Court has not been able to get its hands on" (335 U.S. 560, 572) and was reflected in lower Court decisions. By 1954, the Patent Office situation was desperate - the backlog of pending applications had reached alarming proportions, morale was low, personnel was leaving faster than replacements could be found. Our Association, under the presidencies of Norman Holland and Floyd Crews, came to the rescue. It pressed for increased appropriations from Congress. Association members regularly appeared before the House Subcommittee in charge of Patent Office appropriations. Our Association printed and mailed to each member of Congress and the Senate a statement setting forth the plight of the Patent Office due to inadequate funds. It worked with other associations to help recruit qualified examiners from the colleges. Our Association, at its own expense, placed advertisements in major magazines and newspapers to seek men with scientific training to work as examiners Poised for Growth The year 1957 was a milestone year for our Association. It marked the first time in Association history that more than a thousand members and guests attended the Judges Dinner. The speaker that year was the Hon. John J. Parker, Chief Judge of the United States Court of Appeals for the Fourth Circuit. It also was the year when the annual golf outing was replaced by a charter boat trip up the Hudson River to Bear Mountain State Park, dinner at the Bear Mountain Inn and a softball game. By the late 1950's, our Association began to establish itself as one of the leading regional law associations in the United States. In 1958, the Bylaws were amended to limit membership only to those admitted to practice law (thereby excluding patent agents). Such an amendment was made to permit our Association to qualify as a "legal society" within the definition of the American Bar Association guidelines. It also allowed our Association to be able to rent space at the Association of the Bar of the City of New York to use as headquarters. With a membership of 950, our Association established for the first times its own telephone line. The magical thousand member mark was reached by 1959 under President David S. Kane. For the first time, members of our Association could list their membership in the New York Patent Law Association as part of biographical data in any approved Law List. The Judges Dinner included, for the first time, complimentary cocktails at the reception before the Dinner - all at a cost of $17 for members and $19 for non-members. The Association Flourishes in the Space Age The 1960's marked a special time for the now expanding New York Patent Law Association. A permanent office was established for the first time on March 8, 1960 in the City Bar Building at 36 W. 44th Street. The offices housed the "Carl P. Goepel Library of the New York Patent Law Association." Unfortunately, C.P. Goepel, who had been collecting patent books on behalf of the Association for more than fifteen years, never got to observe the library in his name, having passed away the previous November. The purpose of the permanent office was to centralize all Association records and make them readily available to incoming officers and chairmen. The Library Committee was authorized to assemble photographs of all past presidents to display them appropriately in the new office. Consideration was also given to retaining the services of a professional public relations firm to increase the degree of publicity given our Association's activities and especially its Judges Dinner. That same year, the Committee on Professional Ethics and Grievances was particularly active since it was the first full year that our Association functioned as an accredited local bar association. The Committee, under Chairman W. Houston Kenyon, took action against attorney advertising by obtaining the agreement of each member that they would not list their name in bold face type under "Patent Attorneys & Agents" in the Manhattan Classified Telephone Directory. More than 1100 attended the Judges Dinner that year, including 25 judges and many other distinguished guests. Our Association established an Annual Judicial Conference in 1962 where Chief Judge Sylvester Ryan of the Southern District of New York and Senior District Judge Moritmer W. Byers of the Eastern District of New York met with a large gathering of Association members and guests to discuss the problems of the Federal District Courts of New York City. The Committee structure of our Association expanded significantly in the early 1960's with the addition of such new committees as publications, antitrust, economic matters affecting the profession, and public information and education. A special subcommittee was established to create a speaker's bureau to address various groups on subjects of concern to our Association. The employment committee was particularly active in the early 1960's, placing more than 14 members in 1963 alone. A special committee was formed in 1963 to consider the change of our Association's name to a name similar to "The New York Patent, Trademark and Copyright Association." After much study, the committee recommended that the name remain unchanged. Association Achieves National Status The 1963 Judges Dinner marked the first time that a United States Supreme Court Justice was the featured speaker. Over 1200 attendees had the good fortune to hear the address by Mr. Justice Arthur J. Goldberg. In the mid-1960's, our Association became increasingly more active in national issues. At the request of the American Bar Association, our Association prepared and filed an amicus brief in the Supreme Court in the Graham v. John Deere case. The brief took no position on the merits but urged that the standard of patentability should be established by statute and that there should be no constitutional standard of invention. Officers of our Association regularly met with the Commissioner of Patents on such issues as a mandatory duty of disclosure by inventors and the Patent Office's refusal to give a filing date to an application which contained informal drawings. Our Association was repeatedly represented at hearings involving Patent Office fees and the relocation of the Patent Office from Washington. It opposed a proposed move of the Office to Maryland, stating that such a location would seriously disrupt the efficient operation of the Office. Due, in large measure, to its emerging national reputation, our Association moved its offices in 1965 from the Bar Building to larger and more adequate quarters in the Columbia University Club at 4 West 43rd Street. Consideration was given to the establishment of a permanent secretary, although financial considerations caused the question to be tabled for three years. In August, 1965, the Chairman of President Lyndon Johnson's Commission on the Patent System requested suggestions and recommendations from our Association for its consideration in evaluating what changes should be made to the patent system. A Special Committee was formed headed by Albert Johnson (our Association's First Vice-President) and President W. Houston Kenyon. The Committee produced a report that was heavily relied upon by the Commission in revamping the patent system. Having a Good & Profitable Time Throughout the 1960's, the social and educational sides of our Association remained strong. In addition to the Judges Dinner, each year the Meetings Committee planned and ran a Commissioner's Dinner where the Commissioner of Patents was honored, a Christmas Dinner Dance (usually at the Roof Garden of the Hotel Pierre), an annual spring golf outing (frequently at the Knollwood Country Club in Elmsford, New York), a Judicial Conference, and a series of forums on pertinent topics. In addition, committees were formed to study and implement health, accident and professional liability insurance programs. In 1967, our Association offered Association members a special liability insurance policy underwritten by Travelers Insurance in amounts up to $500,000 as well as group life insurance policies up to $50,000. The Employment Committee broadened its charter to include placements for non-professional personnel as well as office space referrals. More than 1200 attended the 1967 Judges Dinner to hear U.S. Supreme Court Justice Tom C. Clark speak on patents in our present world. Tom Clark had delivered the SCOTUS opinion in Graham v. John Deere which dealt with the concept of Section 103 obviousness that Giles Rich had incorporated into the 1952 Patent Act and elucidated upon in his 1964 "Kettering Speech". It goes without saying that Justice Clark's Opinion echoed Judge Rich's take on the subject. Economic Hard-Times Economic hard times began to befall our Association in the late 1960's. John Kelton's annual report at the conclusion of the 1968-1969 Association year expressed serious concerns relative to Association finances. He noted that for the first time in many years, our Association had shown a net loss from the prior year, and he began to question the wisdom of maintaining a full time office at the Columbia University Club at a cost to our Association of $1,650 per year. Incoming President Hugh Chapin solved the pending financial crisis by closing the office at the Columbia University Club which had housed our Association Library, increasing dues by $5.00 (to $30.00), and decreasing committee expenses by decreasing the number of luncheon meetings. Our Association was beginning to experience growing pains. Outgoing treasurer Al Nolte noted the following: In preparing this, my last report as Treasurer, I succumbed to a mood of nostalgia and decided to compare this report with the one I had made in 1949 at the end of my first year as Treasurer. I was astonished at the enormity of the growth of our Association in the 20 years since then. We were then a much smaller association with only one-half of our present membership, i.e., 668 members as against 1226 members now. At that time, we held only 4 membership meetings a year; we now hold a total of 9 such meetings and forums. We were then able to carry on the work of our Association with the help of only 11 committees; now we require the help of some 30 committees and sub-committees to carry on the vastly increased burden of work. We then published no Bulletin or any publication of a similar nature; now we do so at a cost of close to $5,000 per year. We then required the collection of only $18,000 per year to carry on the activities of our Association; now we need more than $60,000 per annum for this purpose. We then had a net worth of $15,436.36; now our net worth is over $27,000. Clearly our Association has grown with the times and thus adapted itself to the demands of the advances in our profession. The late 1960's also brought about a number of changes to our Association. Pauline Newman (now Federal Circuit Judge) was the first woman in the history of our Association elected to the Board of Governors. By 1970, our Association's reputation and influence had spread to the international front. Association members participated in discussions and Congressional hearings on the Patent Cooperation Treaty. In 1971, a special committee chaired by Ed Halle prepared and filed on behalf of our Association an amicus brief in connection with the appeal taken to the Second Circuit in the Painton v. Bourns case. Based in part on the position taken by our Association, the Second Circuit spoke out on the question of preemption of trade secrets claims, reaffirming the continued propriety of trade secrets agreements in all respects. Golden Anniversary Our Association celebrated its golden anniversary in 1972, highlighted by the Judges Dinner that year. The guest speaker that evening was Senator James Buckley of New York who expressed serious concerns about the patent system. He stated that he felt that appointing a patent attorney to the federal trial bench would help strengthen patents and bring uniformity to the treatment of patents by the courts. The gala evening was presided over by Frank Ford, Jr. and four charter members of our Association were present: Abraham Engel, Harry Jacobson, Ted Kenyon and Willis Taylor. Each was presented with a suitably inscribed Revere bowl. The remaining nine charter members were also sent inscribed bowls who advised Frank Ford that their grandchildren were dazzled by the mementos. The evening produced the first press conference ever given by our Association on behalf of Senator Buckley under the oversight of Stan Amberg, chairman of the Committee on Public Information and Education. The 50th Judges Dinner was highlighted by the issuance of Reissue Patent No. 00,001 entitled "An Improved Composition of Matter and Method of Using Same" in the names of William A. Cook and Alphonse A. Chef. The '001 Reissue Patent included six (6) independent claims and served as the menu for the evening. Our Association's golden anniversary year included a number of significant events. It also saw the inauguration of a new column in the Bulletin entitled "President's Corner" in which our Association's president had an opportunity to express his views to the membership. In honor of the golden anniversary, the annual Yearbook took on a gold cover. The Next Twenty Five Years Our Association's 51st year was under the tutelage of William C. Conner who made it his goal to increase the attendance of the judges at the Judges Dinner. He had remarked that in previous years the Judges Dinner had attracted such an embarrassingly small number of judges that it had even been suggested that the name of the dinner would have to be changed if the trend continued. With the help of Chief Judge David Edelstein of the Southern District of New York and with an unusually attractive speaker in the person of Judge William H. Mulligan of the Second Circuit, he succeeded in trebling the average number of local judges that attended the 1973 Judges Dinner. He noted that Judge Mulligan lived up to his reputation as the greatest public speaker on the bench at the time. Indeed, Judge Mulligan took the podium at our judges dinners not once, not twice, but three times. That same year, at the urging of Senator James Buckley, President Nixon appointed Bill Conner a District Judge in the United States District Court for the Southern District of New York. He is believed to be the first patent lawyer ever appointed to the federal trial bench. Judge Conner's ascendency through the NYIPLA ladder, like that of Judge Rich, appears to have put him in the national limelight. Our Association received permission in 1974 to file an amicus brief with the Supreme Court in the Kewanee Oil Company v. Bicron Corporation case. Under the guidance of Charles Bradley, an Association committee prepared and filed an excellent brief that was an instrumental part of a reversal of the Sixth Circuit decision. That same year, our Association took a position against ratification of the Patent Cooperation Treaty (PCT) and gave its views and recommendations to the Commissioner of Patents at the WIPO and OAS meetings. Featured speakers at the 1975 and 1976 Judges Dinners were the Hon. Howard Markey of the Court of Customs and Patent Appeals and Dean Joseph M. McLaughlin of Fordham Law School, respectively. Dean McLaughlin was recommended by former Dean and then Second Circuit Judge Mulligan who sent the following note to Larry Brooks which was read at the Dinner: "I am delighted that you have selected Joe McLaughlin, Dean of the Fordham Law School, to be your speaker. Although his vocabulary is limited and he has a noticeable speech impediment I am sure that he will do a good job so long as you keep an eye on the wine bottles. As a matter of fact, I have been helping Joe with the humorous content of his speech and I am sure it will pass muster. His address will trace the impact of common law pleading rules upon the New York Civil Practice Act as well as the New York Civil Rules of Procedure. Although it is rather lengthy, I am sure it will be of great interest to members of the Patent bar." Discretion being the better part of valor, Larry Brooks elected not to read Dean McLaughlin's reply to Judge Mulligan. In 1977, our Association finally incorporated and became the New York Patent Law Association, Inc. The heretofore "Board of Governors" became a "Board of Directors." That same year, the NYPLA assisted CBS News in connection with a television program on inventions and inventors and President Morris Relson appeared briefly on national television. Former President and now Judge Bill Conner was the speaker at the 1977 Judges Dinner which attracted a record number of attendees (1200) and Federal Judges (25). The subject of Judge Conner's talk was "Can a Patent Attorney Find Happiness on the Federal Bench?" Looking back, we suspect that the answer is yes. The 1979 Judges Dinner was one of the more memorable ones in the history of our Association, due in large measure to the guest speaker and his choice of topics. Admiral Hyman G. Rickover, the architect of the nuclear navy, took the opportunity to share with those in attendance his experiences with and opinion of the legal profession. To say that his speech was controversial would be an understatement. You can read the Admiral's speech in full in the February/March 2012 issue of the NYIPLA Bulletin online under "Resources". Under the leadership of Stanley Lieberstein, our Association held its first National Inventors Day Dinner in May, 1979. We presented a plaque to Dr. Samuel Ruben for his many inventions and contributions to the battery and elctrochemical and electronics arts. That same year, our Association prepared and filed amicus briefs in the United States Supreme Court in both the Diamond v. Chakrabarty and Dawson et al. V. Rohm & Haas cases. Our Association entered the 1980's with the same high spirit and vitality shown in earlier years. Commencing in 1980, our Association created the Giles S. Rich Award to be awarded at appropriate intervals to that lawyer, judge or statesman who has made a conspicuous contribution of the highest order to the progress of the law of intellectual property over the course of his professional life. Reaganomics and the Federal Circuit Reaganomics consumed the attention of our Association during the early 1980's as the Patent & Trademark Office ("PTO") dramatically increased its fees under the philosophy that those who benefit from government services should pay for them. The administration proposed a 500% increase in existing PTO application and issue fees, an anticipated $2,400 in patent annuity fees, and a 12-fold increase in the trademark renewal fee, just to name a few. Our Association was a leader in the fight against increases of this magnitude and against the failure of the administration to recognize the public benefits provided by the patent and trademark system. Unfortunately, the fight was unsuccessful although it did cast certain doubts on the ability of independent inventors, small businessmen and universities to afford such fees. One lobbying effort undertaken by our Association, however, was successful. John Pegram testified on behalf of our Association before the PTO on its proposal for amendment of rules pertaining to reissue and reexamination and the amendments as approved for the most part reflected our Association's position. Growing concerns for a need to strengthen and bring uniformity to the application of the patent laws spread through the patent bar leading several professional organizations, including ours, to support the creation of a single appellate court to hear patent appeals from the federal district courts. This led to the creation of the Court of Appeals for the Federal Circuit in 1982, as the successor to the C.C.P.A. Shortly after its formation, in 1984, one of our distinguished board members, Pauline Newman, was appointed by President Reagan to that Court. Some pundits say that the creation of the Federal Circuit marked the beginning of "the golden age of patent law" marked by the uniformity and predictability in the law wrought by that court. A Voice Throughout the 1980's Throughout the 1980's, our Association held annual CLE fall weekend programs. The initial program was held at the Concord Hotel in the Catskills and was moderated by Doug Wyatt. It gave the more than 200 in attendance an opportunity to brush up on the law as well as socialize with other Association members. This became a tradition for the next decade with subsequent fall weekend programs being held at other weekend resort locations including the Pocono Manor, the Sky Top Lodge and Mohonk Mountain House. Events at the latter two locations were spearheaded by David H.T. Kane. Our Association was also beginning to play a more active role abroad. For example, we joined in the World Intellectual Property Organization's efforts to harmonize patent, trademark and copyright laws throughout the world. We were honored to be the only regional professional Association to be an invited participant to its meetings and negotiations. On behalf of our Association, Doug Wyatt presented a painting to WIPO in honor of the 100th Anniversary of the Paris Convention. In recognition of the growing number of trademark and copyright specialists among our membership, the name of our Association was changed in 1983 to "The New York Patent, Trademark and Copyright Law Association." The name was subsequently changed in 1993 to the less tongue-twisting "New York Intellectual Property Law Association." Along with the new name came a new look for the Yearbook. The current Greenbook actually took on its present format beginning with the 1983-1984 issue under editor Jim Badie and associate editor, Mary-Ellen Timbers. Although our Association had published an annual Yearbook going back to its first year, the color and style of each edition varied widely. Beginning with the 1983-1984, the Yearbook assumed a distinctive dark green color. Due in large measure to this color, the book became known as the "Greenbook." Initial issues of the Greenbook included with it a handbook on the United States Court of Appeals for the Federal Circuit. In the mid-1980's and working in conjunction with the Connecticut, New Jersey and Philadelphia Patent Law Associations, our Association began running an annual, one-day, joint CLE program for the benefit of the patent profession. Ed Filardi and David H.T. Kane spearheaded our Association's efforts leading to a first program at Manhattan's Penta Hotel in 1985. This program continues to this day with great success. Our Association experienced another first in the 1984-1985 year when it elected Mary-Ellen Timbers as its treasurer. Mary-Ellen became our Association's first female officer. Another first was accomplished the following year when the Bureau of National Affairs published "A Guide to Patent Arbitration" written by our Association's Arbitration Committee chaired by Tom Creel. It was the first professional publication made available to the bar under our Association's auspices. The 1988 Judges Dinner set yet another milestone - the 2000 attendee mark. The speaker was Chief Judge Brieant of the Southern District of New York and his remarks on the attorney/client privilege were well-received by the audience. That same year, our Association placed a special exhibit at the Federal Court House at Foley Square to celebrate the bicentennial of the United States Constitution and the Patent System. The exhibit was opened at a wine and cheese reception and the principal speaker was PTO Commissioner Donald J Quigg. The committee was chaired by Doug Wyatt and included a book on the patent system authored by Frank Scheck. The bicentennial exhibit went on the road in subsequent years, appearing in Washington as part of the Bicentennial Celebration and at the Federal Circuit courthouse. Explosive Growth By the 1990's, our Association was poised for explosive growth. Under the watchful eye of Frank Scheck, membership reached an all-time high of 975 in 1991 and attendance at the Judges Dinner that year topped the 2400 mark. Attendees at the Judges Dinner had the unforgettable opportunity to hear the now late Hon. Helen Nies, Chief Judge of the Federal Circuit, as she recounted the story about how she became a judge and concluded with her own rendition of "New York, New York." That same year, our Association elected retiring Judge Howard Markey of the Federal Circuit to Honorary Life Member status. He was only the second person at the time to be so honored. Under the leadership of Howard Barnaby, an expedition was organized to Washington, D.C. in 1992 with the object of admitting a coterie of Association members to the United States Supreme Court. In addition to the swearing-in ceremony, the weekend also featured a reception and dinner at a Washington restaurant. Our Association continued to take a leading role on matters relating to pending intellectual property legislation. Association President Peter Saxon testified at a public hearing held at the PTO on the materiality standard for new PTO Rule 56 and Roger Smith provided a response to the Copyright Office on their request for comments concerning the registrability of costume designs. Our Association, under the guidance of Bill Brunet and John Murnane, also prepared and submitted a comprehensive report to the Bush Administration's Advisory Committee on Patent Law Reform. Our Association continued to participate at WIPO and other international meetings involving intellectual property issues. Virginia Richard and John Olsen attended a Working Group Meeting in 1991 in Geneva and, in concert with the PTO and the USTA, succeeded in advancing the U.S. position on many key issues. John Pegram represented our Association at the U.S. Bar/JPO Liaison meeting in Tokyo, Japan while Mike Meller represented our Association at the Trilateral Users Group Meeting in Japan in 1991. In 1992, our Association elected Andrea Ryan as its first female president and the following year again changed its name to the New York Intellectual Property Law Association. Andrea played a key role in establishing Michael Isaacs as our Association's first executive director in a role that lasted eighteen years through Mark Abate's term as president in 2010. 1993 brought about a revamping of the CLE program under Ed Vassallo. The fall CLE weekends were replaced by one-day, mid-week programs in the city. Our Association also joined forces with Fordham Law School to sponsor an excellent CLE program which attracted more than 200 attendees. That same year, the Foreign Trademark Committee spearheaded by Howard Barnaby, Sue Progoff and Virginia Richard, co-hosted with Fordham Law School an excellent program on the Madrid Protocol. Our Association served as the host for the Intellectual Property Law section of the American Bar Association in conjunction with their summer meeting in New York. The NYIPLA's Intellectual Property Law Annual, edited by Publications Committee chairman, Greg Battersby, was launched in 1994. The Annual is written by Association members and provides a concise summary of the highlights of the major areas of intellectual property law during the previous year. Copies of the Annual are distributed at no cost to each Association member and are sold to non-members. This "blue book" annual continued to be published for a number of years. Our Association also created a writing competition for law students and appropriately named it after its former president and now District Judge, William C. Conner. The award-winning article each year was originally published in the Greenbook and, more recently is published in the NYIPLA Bulletin, now called "The Report". Under the leadership of Pat Razzano, our Association participated with Patent and Trademark Institute of Canada in a joint CLE Program held in the fall of 1994 at the Sagamore Hotel in Lake George. The 1995-1996 Association year under Tom Creel saw a number of significant changes in the way our Association did business. The membership procedure was streamlined, and membership was opened up to any lawyer or a student with an interest in intellectual property. In addition, a review of the entire committee structure was undertaken in conjunction with the Past President's Committee. Attendance at the 1996 Judges Dinner broke another all-time record as more than 2,700 attendees came to hear Mayor Giuliani. The new concern of future administrations became whether there was enough room at the Waldorf to house all of those interested in attending the Judges Dinner. The success of this Dinner attests to the recognition our Association and intellectual property law in general has received in the broader context of society. Prior to the time of the 75th Judges Dinner in 1997, committee structures were revamped under the leadership of Marty Goldstein for future growth. At that Dinner, both past presidents Giles S. Rich and William C. Conner graced the audience from the Waldorf podium. A Retrospective from the 75th The continuing growth and health of the NYIPLA are eloquent testimony to the fact that the "experiments" William Houston Kenyon spoke of in 1922 have been an exceptional success in supporting the profession and the judiciary. By no means the oldest patent law association in the United States, we can nevertheless point to a history of notable accomplishments in the improvement of the intellectual property laws and protection available in this country and abroad as well as advancement of the profession. Completing its 75th year, our Association was as strong as ever and poised to welcome in the new millennium and celebrate its centennial in 2022. Now we will review how the next 25 years unfolded. A New Century Unfolds Melvin Garner became the first black president of our Association in 2003. As a keynote speaker for the 2004 Judges Dinner, Mel selected Charles Osgood, the noted TV personality. Mr. Osgood gave an entertaining talk replete with banjo playing for good measure. During John Murnane's time as president in 2004-05, he led discussions with Congressional representatives regarding patent reform initiatives. John lent a steady hand in directing the future of our Association. Edward Vassallo served as president for the 2005-06 term. Ed appointed Dale Carlson in 2005 to serve as our Association's first historian. Marylee Jenkins became the second female president of our Association in 2006. During her tenure for the 2006-07 term, Marylee fostered diversity of ideas among her board members. By the Fall of 2007, the eBay and KSR cases were the talk of the town as far as patent law was concerned. Under Chris Hughes' leadership, our Association hosted the Federal Circuit at a dinner in its honor in the Starlight Room on the eighteenth floor of the Waldorf then. That dinner celebrated the Federal Circuit's first 25 years of existence. That occasion may be seen as a high point for the uniformity and predictability hoped for from the court. During Mark Abate's term as president beginning in 2009, he played a key role in development of our Association's diversity scholarship now named in honor of Judge Rich. Tom Meloro reinforced the diversity scholarship commitment during his term as president in 2012-13. During Anthony Giaccio's term a president in 2008-09, he spearheaded efforts to create an IP Inn of Court in honor of Judge William C. Conner. Under Anthony's leadership, our Association co-hosted an inaugural dinner in honor of Judge Conner and his wife Janice at the Union League Club. The dinner was a great success, and the Conner Inn has been a great success as well. During Dale Carlson's term as president in 2010-11, transitions were made, largely due to budgetary constraints associated with the Great Recession. Feikje Van Rein and RRR took on the responsibilities of executive director. The Green Book was replaced with an inexpensive, picture-intensive Green Booklet. Fiscal responsibility was the order of the day. Fiscal responsibility was expanded and reinforced during President Theresa Gillis' administration in 2011-12. Among those who graced the audience at Terri's 2012 Judges Dinner was Judge Pauline Newman of the Federal Circuit. Judge Newman was an Association Board member from 1968-72. In 2013 the Board approved U.S. patent agents within the NYIPLA's geographic region (NY, NJ, CT and VT) as eligible to become Associate members of our Association. This action expanded our membership reach. During Charles Hoffmann's term as president in 2013-14, he expanded our physical reach by hosting a CLE program at Rensselaer Polytechnic Institute in Troy, NY. At the 2014 Judges Dinner, Charlie welcomed Judge Ken Starr as a riveting keynote speaker. At the 2015 Judges Dinner, President Anthony LoCicero presented former Secretary of State Madeleine Albright for a thoughtful and insightful keynote address. During her term as president in 2015-16, Dorothy Auth hosted the first in a series of annual president's forums on the subject of Section 101 patent eligibility after the decision in Alice. Walter Hanley's term as president in 2016-17 was a time of change. Walt and his board made the decision to move the 2017 Judges Dinner from the Waldorf to the Hilton Midtown since the former was closing for renovations. He chose Walter Isaacson to give an insightful presentation about American innovators. Annemarie Hassett served as President for the 2017-18 term. One of her objectives was to grow our Association's presence in the virtual space with regard to publications such as "The Report" in order to minimize hard copy mailings, thus reducing Association expenses. By the time of Annemarie's administration, about half of her board members were women." During Peter Thurlow's term as president in 2018-19, Pete chose to focus on political considerations in the context of PTAB issues and Section 101 as a focus for his administration. President Kathleen McCarthy's administration in 2019-20 was daunted by the onset of the Covid-19 pandemic. She and her board were forced to cancel the 2020 Judges Dinner in view of an order from Gov. Andrew Cuomo prohibiting public gatherings of this kind. President Colman Ragan's 2021 Judges Dinner was entirely virtual and included presentations by him and Katie McCarthy. Colman also provided a tasty virtual cooking demonstration. That event provided an opportunity to showcase distance learning technology. President Robert Isackson's administration in 2021-22 offered a return to in-person gatherings. Rob's 2022 Judges Dinner was held at the Hilton Midtown. President Heather Schneider's administration in 2022-23 featured a president's forum on the Inflation Reduction Act. Her 2023 Judges Dinner featured lively presentations by Mae Jemison and Judge Gilstrap. Afterword: Thanks to Robert Rando, president for 2023-24. His insightful podcast series with living past presidents provides a unique backdrop for this history. With Patrice Jean as the first female president of color for 2024-25, it is clear that our Association is in good hands for future growth. Dale L. Carlson Distinguished Practitioner-in-Residence, IP Law Director of the Intellectual Property Law Concentration Quinnipiac University School of Law dale.carlson@quinnipiac.edu Tel: 203-582-3225 [1] Written by Lawrence Langner, this "patent" was "reissued" by Arthur Tenser for a different menu, with deleted parts in brackets and new matter in italics, as required by Patent Office Rules, for the 50th Anniversary dinner in 1972. [2] Lawrence Langner, a charter member of our Association, was a director of The Theater Guild and in later years producer of "Oklahoma". [3] "The Famous Case of National Kink Safety Pin Co. v. International Bump Co. et al"; plaintiff's counsel played by Samuel Darby, defendant's counsel by Theodore C. Kenyon..
Centennial History of NYIPLA
In attendance were: Rob Rando, President, presiding Patrice Jean Abby Struthers Linnea Cipriano Eric Greenwald Ashley Ross Paul Bondor Chris Loh Jeffrey Coleman David Goldberg (joined via Zoom) Jenny Lee (joined via Zoom) Lauren Emerson (joined via Zoom at 5:38 pm) Cheryl Wang (joined via Zoom at 5:10 pm) From the Association’s executive office, Feikje van Rein attended in-person and Jack Caroddo joined via Zoom. From the Associate Advisory Council, Jennifer Denault joined via Zoom until 5:55 pm. Mark Schildkraut, Diana Santos, Heather Schneider, as well as James Breen, Nick Forgione, Christine-Marie Lauture and Khalil Nobles, from the AAC were unable to attend. President Rob Rando called the meeting to order at 5:10 PM ET. The board waived reading of the minutes and approved the minutes for the January 2024 board meeting. Financial Report. Jeffrey Coleman reported that finances YTD are trending in the right direction. Net operating income is up from a year ago. Discussed the costs of the CLE program for the day of the dinner and whether to continue if it is a loss leader. Board members discussed cost-effective options such as hosting it at a different location close to the Hilton. Members also discussed feedback from judges and other attendees to inform structure for next year. New Members. Jeffrey Coleman reported that membership has increased by over a hundred YTD. Membership increased across all categories except student membership, where there was a slight decrease. Associate membership numbers saw a significant increase. Membership Drive. Rob Rando reported that membership drive content was enhanced this year. He noted that NYIPLA had a membership committee in the past and there is member support for this. He reported that one of his last acts as president was to establish a membership committee. The board discussed the fact that membership fees for students were raised and the Young Lawyers Committee has suggested that with the increase, perhaps events such as mixers could be included without additional or separate costs to attend. The board members noted that the cost per attendee for events such as mixers are essentially the costs for 1-2 drinks, which are often included, as well as reserving the venue. Members discussed ways to more prominently highlight the many benefits that are included in the membership fee. Legislative Action Committee. Paul Bondor reported that PERA and PREVAIL Acts are both with the Senate Judiciary Committee. LAC worked with the Patent Law & Practice Committee to distribute comments to PERA, which were expected to go in tomorrow but just heard yesterday that will go in next month. Amicus Briefs Committee. David Goldberg reported that a brief on the merits which was previously submitted at the Federal Circuit level is now coming back. The case, which involves interplay between obviousness type double patenting and patent term adjustments, has been appealed to the Supreme Court. Petition for cert has not yet been filed but expect it will be filed in the next few weeks. He requested feedback on the brief circulated earlier today, which takes the position in support of the petition for cert, from board members not already conflicted out. The brief is intended to convince the S. Ct. that this is an important issue to look at. If the court agrees, then the LAC will want to submit a brief on the merits later on. will He also noted that he will coordinate with the LAC to get the monthly watch list of cases circulated. 102nd Judges Dinner, March 22, 2024. Board members shared the considerable positive feedback received on the guest key note speaker and the positive feedback from numerous judges and attendees regarding the rest of the programming as well. Members discussed some minor snags and how smoothly and swiftly they were addressed. Design Patent Committee. Rob Rando reported that the idea of creating a design patent committee was brought up to him at the Judge’s Dinner by Clint, a co-chair of the Patent Law & Practice Committee and with him were two attendees who expressed interest in volunteering to co-chair the committee. President Rando proposed creating a design patent committee and various board members voiced their support. LAC Fly-In. Rob Rando proposed at least once a year, having LAC members go down to DC to speak with members of the hill in a non-partisan way. He explained that this is something he has done with a different bar association over the years and has found it provides a lot of benefits, especially for raising the profile of the organization. He noted that being able to establish relationships with members of Congress or at least their staff allows more free-flowing communication and would be another membership benefit. He reported that Chris Israel would be able to identify a good time to do this and arrange it. President Rando noted that further details would need to be discussed and agreed upon, e.g., whether open to members of LAC or committee chairs or perhaps officers, etc. The board discussed their initial impressions and whether there might be any potential challenges to implementation, such as with respect to the organization’s entity status, or whether it would potentially trigger any disclosure requirements. Project Team Bylaws. Patrice Jean and Jenny Lee reported that the subcommittee, particularly Jonathan Berschadsky as well as Rob Rando, put in a lot of work into reviewing bylaws and multiple rounds of proposed changes were considered. This also helped reveal the Membership Committee that used to exist. Key points include mandatory attendance, around 70-75%, for board members, modification to the requirements for quorum on amicus brief approvals, including whether unanimous vote is required when a smaller group of board members are not conflicted out, and the addition of chapters and divisions. Rob reported that the addition to the bylaws authorizes the board to exercise its discretion in approving chapters that are in other districts of New York as well as other regions of the state. He discussed some requirements such as having 10 or more individuals in a region, and board members provided additional input on potential guidelines for implementation. Paul Bondor proposed that where a smaller group of board members are not conflicted out, then majority vote is sufficient provided such majority vote would not be less than 5 members. Motion was passed to approve the revised bylaws subject to Paul’s proposed change. Previous/ Upcoming programs a. 03/08 YLC/Women in IP MeetingAbigail Struthers reported that Patrice was on the panel (3 speakers including Leslie); International Women’s Day – really enjoyed event and excellent questions by members who attended; highlighting other women; great to have more women-focused events not just on IWD. b. 03/13 YLC Speed Networking Social Eric Greenwald noted that he dropped in 20-30 min after it started but was there until late; saw & met folks who were not active members; heavy on law students side but also many associates; all committees email blasted their members to attend and that helped with attendance about 50-60 ppl; Abigail Struthers reported that the event hosts did a great job of enforcing the move from table to table and the law students really enjoyed it; food & drinks were great (Jack Caroddo took care of food); space itself was great environment; Jack did a special reach out to ensure good balance between law students and associates c. 3/14 Presidents’ Forum Rob Rando reported that the program was very successful; covered US IP Policy; Speakers included Sharon Israel from USPTO, Stephen Mitchell from US Dept of Commerce; Chris Israel and Maria Strong from US Copyright Office; covered international policy, legislation; AI inventorship issues d. 03/19 PTAB Program David Goldberg reported that it was a good presentation as always; 3-4 PTAB judges putting together discussion on benefits or drawbacks of requesting RCE (??) vs appeals; all attendees got CLE credit; good results and good attendance; builds good relationship between NYIPLA and PTAB; great formula also worth highlighting 10-12 CLE credits e. 03/22 DOD CLE Rob Rando f. 03/28 Careers in IP Program Abigail Struthers reported that it was a great program but not as much of a turnout as hoped for; may not have been the best time to schedule - rainy night and Thurs night before Easter; colleague Peter Leslie did great; students loved it; some attendees had gone to a couple of programs before and Lynn attended as well; build enthusiasm in students for IP; great way to engage law schools g. 04/10 YLC Summer Internship Program Abigail Struthers reported there were about 10 attendees; idea was to capture those who are going to summer associateships h. 04/16 PTAB Program David Goldberg confirmed with Jack Caroddo that there were around 25 attendees i. 04/24 YLC/AAC Deposition Training CLE Abigail Struthers reported this event is going to be pushed out; tentative reschedule for June 5th; no sign ups; was during Passover k. 05/08 Annual Meeting Patrice Jean reported that we were able to get Scott Boalick to be featured speaker (Chief Judge at PTAB) always an energetic speaker; dinner will also include giving out awards going to be honoring Jenn Denault as part of highlighting membership focus this year; Community service honoree Judge Brown; lifetime achievement will be Melvin Garner; IOTY Award Dr. Kurshan as well as Connor Writing Award winners; will have CLE prior to it – run by Arbitration Committee – to discuss basics of arbitration; likely to include mediation given the latest updates on rules regarding mediation. Arbitration Committee took the initiative to reach out and express interest in putting on a CLE event. PLI and others will be sponsoring. l. 06/26 TM Half-Day CLE Abigail Struthers reported this was rescheduled; Chief Judge Rogers as keynote; held at King & Spalding; YLC and Entertainment Media Sports committee will have a panel on anti-counterfeiting; reception afterwards m. 07/16 Second Circuit Moot Court Program Rob Rando reported that this is a summer associate program; Desmarais and other firms interested to participate; will organize 1st call to figure out first case n. 2024 YLC/Entertainment Broadway Program Abigail Struthers reported there is not much progress yet. o. 2024 IP Transactions Bootcamp Abigail Struthers reported this event will take place virtually over 3 days, October 8, 15, 22; publicity for this to begin later in the summer p. 2024 FIT ProgramRob Rando reported this event is postponed until fall; considering 1st week of December; date and month to be finalized; potential for joint program with NYIPLEF’s Dec event q. 2024 Golf Outing Rob Rando reported still in progress for organizing; before golf season is over in October; earlier than that in the summer may be too hot and people will be away/traveling; the 5 iron indoor golf outing might be a good idea for summer and could help generate interest for the actual outing r. 2024 Arbitration Program Abigail Struthers reported the program will cover drafting ADR clauses and some updates on arbitration Committee Reports NYIPLEF Patrice reported committee is in the process of selecting NYIPLEF’s 2 scholarship winners; had 40 applications this year; Patrice and Jenny noted that there was a very strong group of applicants have clerked; Ivy League applicant; all applicants had incredibly compelling stories about the need for and their journey as diverse individuals and impact on journey to becoming a lawyer and in particular IP; Patrice noted that the committee broadened the criteria for diversity to comply with S. Ct. and reported that membership retention / engagement after submitting applications were very high. Communications Committee – need someone interested in running that committee also need more people; potentially get law students involved; what are we looking for in chair & also time commitment? Past President’s Podcast – President Rando reported the series and experience have been really great; still 12 outstanding; Judge Newman episode was fantastic and she had great insight/perspective to share; need editing to make sure not taking positions that may alienate; great partner to NYIPLA Meeting adjourned at 7:18 pm ET.
MINUTES OF APRIL 17, 2024 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Greenspoon Marder LLP New York, New York
MINUTES OF MAY 8, 2024 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Union League Club New York, New York
The Board meeting was held at the Union League Club with members attending in-person. In attendance were: Patrice Jean, President Rob Rando, Immediate Past President Jeffrey Coleman Paul Bondor Deirdre Clarke Hon. Roslynn Mauskopf Lauren Emerson Dave Bomzer Jonathan Berschadsky Abby Struthers Jenny Lee John Pegram, Past President Anthony LoCicero, Past President Feikje van Rein attended from the Association’s executive office. Christine Marie Lauture, Jenna Deneault, and Nick Forgione from the Associated Advisory Council joined in-person. President Patrice Jean called the meeting to order at 5:58 pm ET. Patrice Jean welcomed the new board members. She gave a general overview of the minutes from the April 17, 2024 board meeting for the new board members. An amendment was proposed to remove a name mentioned in one of the committee reports, for privacy purposes, and the board agreed. A motion was made to approve the minutes as amended. The minutes were approved as amended. Feikje noted that all board members must sign the Conflict of Interest form, which Jack Caroddo, from the Association’s executive office, will send out next week. Patrice shared more information about the conflicts check. Patrice and Paul Bondor provided context regarding the ethical aspects of the conflicts check, with examples of the scope and the balance with participation. Patrice outlined additional administrative and technical matters for the new members. Rob Rando presented the LAC’s update on 2 legislative acts related to patents, PERA which deals with patent eligibility and PREVAIL which deals with the PTAB. He requested a board vote to approve the NYIPLA issuing a letter of support that would be circulated, such as to the Chief of Staff for Senator Koons and Senator Tillis. Rob specified that the letter would only be in support of change. The Past Presidents provided input and the board discussed the significance of such a letter. A motion was made for a vote on whether the NYIPLA agrees to send a letter in support of changes to legislation. The motion passed with 9 in agreement, 2 abstentions, and none in opposition. Meeting adjourned at 6:20 pm ET.
MINUTES OF JUNE 12, 2024 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Hughes, Hubbard & Reed 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 Abigail Struthers Paul Bondor David Bomzer (joined via Zoom) Jeffrey Coleman Cheryl Wang Robert Rando (joined via Zoom) Jenny Lee Christopher Loh Lauren Emerson Eric Greenwald (joined via Zoom) Ashley Ross (joined via Zoom) Hon. Roslynn Mauskopf Deirdre Clarke Jonathan Berschadsky James Breen Jenna Deneault Nick Forgione Christine-Marie Lauture (joined via Zoom) Feikje van Rein Jack Caroddo (joined via Zoom) Eric Greenwald via Zoom signed off around 6:11pm. Jenny Lee joined at 5:07pm. Christopher Loh joined around 5:20pm. Abigail Struthers joined around 5:47pm. President Patrice Jean called the meeting to order at 5:05 pm ET. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Patrice reminded everyone that all board members must complete the Conflict-of-Interest electronic form. No financial report for this month. Fiscal year just closed April 30th and audit begins soon. Jeffrey Coleman also reported there were 169 new members, which included a number of students from the speed networking event about 40 from the annual NYIPLEF event, and the rest were largely from the Judge’s Dinner. The board waived the reading of the new members’ names and approved the new members for admission. Rob Rando and Jenna Deneault noted there was nothing new to report for the Membership Drive. The stickers & notebooks will be ordered once there’s a complete count. Rob revisited the Student Membership Fee to discuss whether a reduction should be considered. The board discussed how other associations approach membership fees and the value that NYIPLA membership provides to students. This will be revisited after enrollment period ends and left as is for now. Legislative Action Committee. Paul Bondor reported that while there is a list of items pending with Congress, most will not move out of the committees, except possibly PERA and PREVAIL. The board discussed two draft comments to the USPTO. A protocol change was made to the salutations used in NYIPLA’s letters based on Hon. Roslynn Mauskopf’s input. The board reviewed sections that may need revision or that may favor one side, and discussed edits to ensure balanced perspectives. The board approved PTO comments to Director Review Executive Thomas Krause on the rules governing director review of PTAB decisions. Board members will send comments by noon tomorrow and Dave Bomzer will collaborate with the committee to re-work language for clarity. Final draft needed for board vote by next Friday. Abby Struthers presented the draft comments to the rules on Terminal Disclaimers outlining the significant impact of the proposed rules. The board discussed the draft outline and provided input. Motion was passed to move forward based on the proposed outline. Judge’s Dinner – March 21, 2025. Patrice reported that the contract with Hilton was signed and outreach to potential speakers is in progress. She shared the proposed recipient for Outstanding Public Service Award. The board approved moving forward with the proposed recipient and reaching out for next steps. Patrice reported that some suites are already reserved. Amicus Briefs Committee. Abby Struthers provided the monthly report noting that no recommendations are pending for board approval and no briefs are in preparation. She reported that Abbvie requested amicus support for the In re Abbott Labs case but noted it is not ripe for amicus consideration yet. Associate Advisory Council. Eric Greenwald will provide a report at the next meeting. Young Lawyers Committee. Patrice reported that the committee members have expressed interest in having “meet the NYIPLA board” programs. YLC members have asked about mentorship and/or other ways to connect with board members. The board discussed starting programs where select board members can connect with members in smaller sessions or events. Previous/ Upcoming programs a. 05/08 Annual Meeting - Patrice Jean reported that turnout was great & event was well-received. b. 05/09 Trade Secrets Committee Meeting - Mark Schildkraut will provide report at the next meeting. c. 05/21 PTAB Committee Meeting - David Bomzer reported the meeting was successful. There were 2 PTO judges who discussed 2 different rulemaking topics related to the draft comments. About 30-40 attended. d. 06/12 Connecting at Conferences: 25 Tips - David Bomzer reported the event went well. It was a virtual discussion with about 15 ppl in attendance. e. 06/18 PTAB Committee Meeting - David Bomzer reported this was cancelled for next week. f. 06/26 TM Half-Day CLE - David Bomzer and Deirdre Clarke reported the event will be held at King & Spalding. The event starts with networking lunch before moving into programming. Judge Rogers is the keynote speaker and the event will feature representatives from the Copyright Office and the FTC. Fireside chats interspersed with panels, such as the Copyright Committee with in-house counsel to discuss impact of Ai, Anti-Counterfeiting Panel with representative from US CBP, Past President Katie McCarthy, Heather McDonald and an in-house attorney from LV, and a joint panel with NYIPLA & INTA brand restrictions committee to discuss brand owner issues. g. 07/16 Second Circuit Moot Court Program - Rob Rando reported that the case will involve Copyright & AI with 2 procedural issues (SOL & motion to change venue); substantive h. 2024 YLC/Entertainment Broadway Program - David Bomzer reported this event is tabled until 2025. Rob Rando will reach out to previous partner who co-chairs Entertainment Sports & Social Media law committee. i. 2024 IP Transactions Bootcamp - David Bomzer reported the event will take place virtually over 3 evenings on Oct 8, 15, 22nd. j. 2024 Fashion Program - Rob Rando reported the plan is to launch in September for entries to be submitted with the fashion show to take place in December. Status meeting to be held in the next few weeks. k. 2024 Golf Outing - Rob Rando reported the event is loosely planned and that it may be pushed out to 2025 l. 2024 Arbitration Program- David Bomzer reported that as part of a 1-day CLE program this event will cover drafting ADR clauses in IP transactions and speakers include Judge Brown Committee Reports. Jon Bershadsky reported that the Design Patent committee is working on many programs to propose and would like to have greater visibility to increase membership & participation. Meeting adjourned at 6:37 pm ET.
MINUTES OF JULY 10, 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 virtually 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 Hon. Roslynn Mauskopf Deirdre Clarke Jonathan Berschadsky James Breen Jenna Deneault Nick Forgione Christine-Marie Lauture Feikje van Rein Jack Caroddo Jenna Deneault signed off at 5:58 PM. Eric Greenwald signed off at 5:48 pm. Christine Marie Lauture joined around 5:20 pm ET. President Patrice Jean called the meeting to order at 5:04 pm ET after reaching a quorum. The board waived the reading of the minutes and approved the minutes from the previous board meeting. Financial report. Jeffrey Coleman reported the audit is in progress with no specifics to report this month. New members. The board waived the reading of names and a motion was passed to admit new members. Expired memberships were reviewed and outreach will be coordinated with membership committee. Amicus Briefs Committee. Abigail Struthers mentioned the monthly report was circulated with the board materials. No current recommendations for board to approve. Government asked for extension in the In re Cellect case. The committee report also included In re Xencor, the Teva v. GlaxoSmithKline skinny label case, Allergan v. MSN Labs, Edwards v. Merrill safe harbor, Hikma which was originally dismissed, and Teva v. Amneal Pharm. She noted that conflict checks for Teva are typically challenging. Legislative Action Committee. Paul Bondor reported that since it’s an election year, not much is happening. It seemed like both might be put on the calendar but at the end of the day PREVAIL, with some modifications, is more likely because Sen. Koons and Sen. Tillis are interested in moving. Now would be the time to give input but Paul noted that was not recommended since the House is unlikely to pass it. Both PREVAIL and PERA are on committee for mark-up Aug 1st but there will be more opportunities later for input. Senate also introduced the NO FAKES Act, which is intended to put federal framework around digital replicas (e.g., rights to name, image & likeness with respect to AI created content). Exceptions seem to be driven by entertainment industry and Hollywood studios. Hearing on 3rdparty patent litigation funding last month seems to trend towards House meeting with disclosure rules that Chief Judge Connolly put in DE case. Paul then reported that the letter on terminal disclaimer guidance was submitted. He also noted that final guidance on the Bayh-Dol march-in rights is anticipated. Both Paul and Judge Mauskopf recommended the NYIPLA wait to weigh in until things get further along on this. Judges Dinner – March 21, 2025. Patrice Jean reported that Judge Reyna has accepted invitation for OPS winner. Still working on selecting a speaker. She noted that the Conrad Hotel, which we hope to secure for the Judge’s Dinner, has become luxury collection hotel. The hotel reached out to see if ok to book for next 3 years. Feikje reached out to Waldorf Astoria for available meeting spaces and the NYIPLA can do dinner but pre & post reception suites are not available. Will work with officers to discuss further at a later time. Membership Drive. Rob & Jenna have set a tentative plan focusing on law firm, in-house, ND & WD NY, and judiciary members, as well as expired memberships. Samples for stickers & notebooks to be discussed offline. Previous/ Upcoming programs 06/18 PTAB Committee Meeting. David Bomzer reported that after a month-long hiatus there is another meeting coming up at the end of month on July 23rd featuring a presentation on the LEAP program for USPTO – training & oral advocacy for less experienced attorneys. This will be a virtual event and a placeholder will be sent out to board members. 06/26 TM Half-Day CLE. Deirdre Clarke reported it was overall well-received; well-attended – it was standing room only in the morning. Overall feedback - excellent program. Speakers from Copyright office & TTAB & FTC. Moving the event to June instead of July is better in terms of higher attendance / interest. Post program happy hour reception was well-received. Hoping to add Ethics credit to program. 07/12 YLC + WIIP Summer Associate Roundtable. Ashley Ross to report at next meeting. 07/16 Second Circuit Moot Court Program. Rob Rando reported the event will take place at the Thurgood Marshall courthouse and provide 1 to 1.5 CLE credits. Great job on joint bench memo this year. Covers AI & copyright – substantive issues focus on 2 fair use factors & then procedural issues involving change of venue & SOL. Judges include Judge Ramon Reyes & Bankruptcy Judge Song. 2024 IP Transactions Bootcamp (Oct. 8/15/22). David Bomzer reported the planning committee met already and the next meeting is July 19th. Event is virtual and features speakers from around nation. 1st day Trademarks, Copyrights and Fashion, 2nd is Patents & University contracts; 3rd M&A, cybersecurity & ethics. 10/09 YLC Happy Hour Program. David Bomzer reported that event options that fit the budget are being explored. Happy hour networking program still in the process of securing a venue. 11/07 Patent One Day Program Nov. 7 HHR. David Bomzer met with all the chairs & went through last year’s agenda &previous committee chairs involved. Initial feedback expected by early Aug 1 month until initial program details & potential speakers. Turnout was good last year - virtual event with about 30-35 people. Board to consider consolidating Nov 6th board meeting with fall 1 day CLE – either both Nov 7 or 6. Committee Reports - No updates. Patrice will connect with liaisons before next board meeting. - The board discussed potentially newsworthy comments, e.g., those submitted last week, the obviousness patenting comments and request for comments on experimental use to litigation due late Sept. - Jon Bershadsky brought up HR 1631 and inquired whether the LAC has considered it. This Act is cited as the ‘‘Protecting and Enhancing Public Access to Codes Act’’ or the ‘‘Pro Codes Act’’. It amends U.S.C. Title 17 to address copyright protections for privately-developed technical standards that are incorporated into a law or regulation. - Patrice mentioned potential IOTY candidates. Meeting adjourned at 6:20 pm ET.
The Board meeting was held at the Union League Club and via Zoom. In attendance were: Patrice Jean, President Abigail Struthers David Bomzer Jeffrey Coleman Cheryl Wang Robert Rando (joined via Zoom) Jenny Lee (joined via Zoom) Mark Schildkraut (joined via Zoom) Lauren Emerson Eric Greenwald Ashley Ross (joined via Zoom) Jonathan Berschadsky Jenna Deneault Nick Forgione Feikje van Rein Jack Caroddo President Patrice Jean called the meeting to order at around 4:00 pm ET. Stephanie Crocenzi provided the financial report from Satty & Partners. Overall expenses increased due in part to programs and events,, including $20k increase related to the annual dinner. CD matured September 11th and was renewed with Chase for 3 months, Bank of America was renewed in June at 4.6%. Motion to approve the financial statements was passed. The board discussed the loss in profits of $100k for two years in a row and explored ways to lower expenses, including annual membership increase, creating sponsorship circles for events like the Judge’s Dinner, additional training-focused programs such as prosecution bootcamps, nuts & bolts of copyright filings, etc. Different types of pricing models for CLE programs were also discussed. The board waived the reading of the minutes and approved the minutes from the previous board meeting. New members. Jeffrey Coleman reported that total membership is up – currently at 850 compared to 751 last year. Membership in all categories increased except for Active under 3 years category. Student membership are up nearly triple which is most likely due to overall increase in law school engagement and board members speaking at law school events. The board waived the reading of names and a motion was passed to admit new members. Board members discussed focus on retention especially for new/younger lawyers and ways to increase involvement for retired members and past presidents. Jonathan Bershadsky will reach out to his contacts to discuss setting up a sub-committee. Amicus Briefs Committee. Rob Rando reported that the In re Cellect double-patenting case is still pending and the committee decided not to file in Edwards v. Meril but added it to the cases being monitored Legislative Action Committee. The Senate Judiciary Committee is voting tomorrow (September 19th) on the PERA and PREVAIL acts. RESTORE and NO FAKES acts are still being monitored. Judges Dinner – March 21, 2025. The board discussed raising prices for tables and explored various ways to cover increased event expenses such as early bird and late registration pricing. The board members also discussed NYIPLA’s position on vendor sponsorships such as for certain portions of the dinner or in the form of a branded step and repeat or sponsored goodie bag. Motion was passed to increase pricing for tables to $10k for platinum, $9k for gold, and $7500 for silver. Membership Drive. The board voted on the stickers and selected 2nd option. Notebooks remain pending. Open Committee Chair Positions. Board members were encouraged to recommend candidates to chair the Patent Litigation and IP Transactions committees. The board discussed value of looking at existing long serving and dedicated members. Previous/ Upcoming programs a. 08/01 Patent Litigation Committee Meeting - Christopher Loh to report at next meeting. b. 07/23, 08/20, and 09/17 PTAB Committee Meetings - David Bomzer reported the July meeting covered experiences with PTAB & LEAP, August covered motion practice with PTAB and September covered best practices on appeal with PTAB. Great turnout at each of the meetings with around 20 attendees at the September meeting. c. 08/22 Design Patent/Patent Law - Jeffrey Coleman reported the event was well-attended and covered protections for graphical user interfaces. Speakers included Karen Young USPTO Acting Deputy Commissioners for Patents and Erin Harriman & Nicole Haines who are both Senior Legal Advisors with the USPTO Office of Patent Legal Administration. d. 09/19 Trade Secrets Committee Meeting - Mark Schildkraut (11:45am – 12:45pm, via Zoom) board members encouraged to register before event tomorrow. e. 09/19 YLC USPTO - Deirdre Clarke (6:00pm – 7:00pm, via Zoom) to report next meeting. f. 09/20 Patent Law UPC Program - Jeffrey Coleman (11:00am – 12:00pm, via Zoom) g. 2024 IP Transactions Bootcamp (Oct. 8/15/22) David Bomzer (5:00pm – 8:00pm, via Zoom) reported the program is ready to go, finalizing Name Image and Likeness panel for Entertainment Sports & Social Media h. 10/09 YLC Happy Hour - Abigail Struthers (5:30pm – 8:00pm, Croton Reservoir Tavern) great venue i. 10/15 PTAB Committee Meeting - David Bomzer (4:00pm – 5:00pm, via Zoom) j. 10/23 YLC + AAC Mock Interviews - Eric Greenwald (6:00pm – 7:00pm, Groombridge) reported the event will include interviewers’ resume critique before then mock interviews with critique afterwards k. 11/07 Patent One Day Program - David Bomzer (8:30am – 5:00pm, Hughes Hubbard & Reed) reported admin office has encouraged stronger marketing push such as board members sharing/liking posts Meeting adjourned at 5:50 pm ET followed by annual committee reports.
MINUTES OF SEPTEMBER 18, 2024 MEETING OF THE BOARD OF DIRECTORS OF THE NEW YORK INTELLECTUAL PROPERTY LAW ASSOCIATION Union League Club New York, New York
NYIPLA Annual Meeting By: Programs Committee + Arbitration, Mediation & Neutrals Committee On May 8, 2024, incoming Association President Patrice P. Jean welcomed members and guests at the Union League Club. Patrice expressed her appreciation for outgoing president, Robert J. Rando. The Annual Meeting started off with a CLE program on "New Landscape of Arbitration/Mediation in the Federal Court System" It was hosted by the Arbitration, Mediation & Neutrals committee, and we were joined by the following speakers: Hon. Leda Dunn Wettre, Magistrate Judge for the District Court of New Jersey Hon. Roslynn R. Mauskopf (Ret.), Former Chief Judge for the Eastern District of New York, Bracewell LLP Hon. Garrett E. Brown Jr. (Ret.), Former Chief Judge for the District Court of New Jersey, JAMS Patrick J. Murphy III, JAMS (Moderator) After the CLE program, members were invited to join us for the Committee Meetings, Annual Meeting of Members, Board Meeting, and the Awards Dinner. Trade Secrets Committee Meeting - Survey of Recent Academic Research in Trade Secret Law By: Trade Secrets committee On Thursday, May 9, 2024, from 10:30 am to 11:30 am, attendees joined the Trade Secrets Committee as they discussed a survey of recent academic research in trade secret law from Professor Saurabh Vishnubhakat of Cardozo Law, including his research on trade secret remedies. Professor Vishnubhakat also provided an update on empirical data surrounding the DTSA, including district court and appellate filing trends. PTAB Committee Meeting: Notice of Proposed Rulemaking for the PTAB By: ptab Committee The New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Notice of Proposed Rulemaking for the PTAB on May 21, 2024. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. This panelfeatured frequently asked questions about the appeals, AIA trials, and hearings. Speakers: Hon. Michael Tierney, Vice Chief Administrative Patent Judge, USPTO Hon. James Worth, Administrative Patent Judge, USPTO Connecting at Conferences: 25 Tips By: Programs Committee On June 12, 2024, attendees joined NYIPLA for a Zoom webinar featuring Janet L. Falk, Ph.D. Conference season is in full swing. Whether you are a seasoned networker, speaker and attendee, or you are new to the conference circuit, master these actionable steps to make the most of your attendance at a bar association meeting or an industry event. Learn how to connect with speakers and attendees in advance of the conference. Bring business cards and a small giveaway branded with your law firm's name. Engage in casual conversations over meals and between sessions. Take selfie photos with small groups that you will soon post on social media. Send a follow-up email within a few days after the event and schedule a reminder for a future date to re-connect. You've had a conversation, exchanged contact information and perhaps provided helpful materials with the speakers, attendees and conference organizers. Following these tips will help you establish and deepen these new relationships with colleagues, clients and potential referral sources. Topics to be addressed include: Prepare before the conference: Visit the event/organization website and contact the speakers and attendees in advance During the conference: Focus on the panelists and attendees, not on your email or members of your firm. Be deliberate and spontaneous in your networking conversations, always providing value. After the conference: Follow-up by email and send materials promised and social media connection requests as appropriate, using the template provided. Hot Topics In Trademark & Copyright Law By: Trademark Law and Practice COmmittee On June 26, 2024, NYIPLA presented its annual Hot Topics in Trademark & Copyright Law half-day CLE program at the midtown office of King & Spalding LLP. Sessions included: Update from the Trademark, Trial and Appeal Board - Hon. Gerard F. Rogers, Chief Administrative Trademark Judge, Trademark Trial and Appeal Board (TTAB) Report from the Front Lines of AI - Joshua Weigensberg, Partner, Pryor Cashman LLP (Moderator); Joshua Savitt, Director and Counsel, American Express; Michael Adelman, Counsel, Dow Jones; and Henry Behnen, Vice President, Paramount Update from the Federal Trade Commission - Tiffany Woo, Attorney, Federal Trade Commission Update from the Copyright Office - Miriam Lord, Associate Register of Copyrights and Director of Public Information and Education, U.S. Copyright Office How to Protect Fashion Through IP - Douglas A. Miro, Partner, Amster, Rothstein & Ebenstein LLP (Moderator); Felicity Kohn, Partner, Pryor Cashman LLP; and Richard S. Mandaro, Partner, Amster, Rothstein & Ebenstein LLP Anti-Counterfeiting Panel - Kathleen E. McCarthy, Partner, King & Spalding LLP (Moderator); Heather J. McDonald, Of Counsel, Baker & Hostetler LLP; Alaina van Horn, Chief, Intellectual Property Enforcement Branch, U.S. Customs and Border Protection; and Cheryl Wang, Attorney Brand Restrictions: More than Tobacco! What Brand Owners Need to Know in the U.S. and Around the World - Andrea Pitts, Partner, Gowling WLG and Thilo Agthe, Partner, Wuersch & Gering LLP YLC & WIIP Committee Summer Associate and Associate "How To" Roundtable By: young lawyers and women in Ip LAW Committees The Women in IP Law Committee and the Young Lawyers Committee teamed up for the WIIP monthly meeting on July 12, 2024 at 1:00 pm ET to host a young lawyer and summer associate roundtable event. Attendees split up in breakout sessions to discuss various “how to’s” e.g., network, know if your firm is right for you, identify a mentor, etc. and to answer any questions that young attorneys and summer associates have about the legal field. Participants were encouraged to come prepared to ask questions and participate in the discussion! 8th Annual Summer Associate Moot Court Argument CLE Program By: Robert Rando (Immediate Past President) This year's Summer Associate Moot Court Argument, which took place at the Thurgood Marshall U.S. Courthouse on July 16, 2024, was centered on AI and copyright fair use defense factors, along with stature of limitations and change of venue issues. Participating firms, which included Desmarais LLP; Goodwin Procter LLP; Hughes Hubbard & Reed LLP; Venable LLP, presented an oral argument on behalf of the interested parties. The Judges heard the argument, retired to conference the case, and returned to the bench with their comments. They also answered questions related to the mock argument and their deliberations in the case conference. The program was followed by a Networking Reception from 7:00 PM - 8:00 PM. The Judges' Panel consisted of the following: Hon. Ramon E. Reyes, Jr., U.S. District Court, Eastern District of New York, sitting by designation Hon. J. Paul Oetken, U.S. District Court, Southern District of New York, sitting by designation Hon. Elizabeth S. Stong, U.S. Bankruptcy Court, Eastern District of New York, sitting by designation Hon. Roslynn R. Mauskopf, Former Chief Judge of U.S. District Court, Eastern District of New York and Former Director of the Administrative Office of the U.S. Courts, Current Partner, Bracewell LLP, sitting by designation PTAB Committee Meeting: LEAP (Legal Education and Advancement Program) By: PTAB committee On July 23, 2024, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding LEAP (Legal Education and Advancement Program).This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Speaker: Hon. Janet Gongola, Vice Chief Judge for Engagement, USPTO Hon. Ryan Flax, Lead Administrative Patent Judge, USPTO Hon. Cynthia Hardman, Administrative Patent Judge, USPTO LEAP Graduates: Elana Araj, Greenberg Traurig Kaitlin Farrell, Haug Partners Eric Greenwald, Merck & Co. Patent Litigation Committee Meeting - Discovery in a Disappearing World By: patent Litigation committee Attendees were invited to join the Patent Litigation Committee meeting on Thursday, August 1 from 12:00 pm to 1:00 pm. Transperfect Legal presented a CLE on "Discovery in a Disappearing World" that offered insights into defensible mobile device acquisition, mobile device legal review options, and ephemeral messaging applications. Featured Speakers: Staci Rosen, Senior Director, Business Development, TransPerfect Legal Megan Goltz, Digital Forensics Manager, TransPerfect Legal Brandon Rimnac, Director, Consulting Services, TransPerfect Legal Daniel Meyers, President, Consulting and Information Governance, TransPerfect Legal PTAB Committee Meeting: Motions Practice at PTAB By: ptab committee On August 20, 2024, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Motions Practice at PTAB. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Featured Speakers: Hon. Grace Karaffa Obermann, Lead Administrative Patent Judge, USPTO Hon. Thomas L. Giannetti, Lead Administrative Patent Judge, USPTO Fireside Chat with the USPTO’s Office of Patent Legal Administration: Design Patent Protection for Graphical User Interfaces (GUIs) By: Patent Law & Practice and the Design Patent Committees On August 22, 2024, the Patent Law & Practice Committee and the Design Patent Committee of the New York Intellectual Property Law Association (NYIPLA) had a discussion with the USPTO's Office of Patent Legal Administration regarding design patent protection for graphical user interfaces (GUIs) including subject regulations, tips for best practices, and how emerging technologies might fit within this framework. This interactive event was hosted by NYIPLA Design Patent Committee Co-Chairs Brendan O'Dea and Ryan Schneer and Patent Law & Practice Committee Co-Chairs Clint Mehall and Joy Goudie. Featured Speakers: Karen M. Young, Acting Deputy Commissioners for Patents, USPTO Erin M. Harriman, Senior Legal Advisor, USPTO Office of Patent Legal Administration Nicole D. Haines, Senior Legal Advisor, USPTO Office of Patent Legal Administration PTAB Committee Meeting: Best Practices before the PTAB By: ptab committee The New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Best Practices before the PTAB on September 17, 2024. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Featured Speaker: Clint Mehall, Partner, Davidson Kappel LLC Trade Secrets Committee Meeting: Litigating DNA Trade Secrecy By: Trade Secrets committee Are DNA sequences protectable by trade secrecy? If so, recent advances in DNA sequencing technology have the potential to destroy trade secrecy protection for certain kinds of DNA sequence data. On September 19, 2024, Jacob S. Sherkow, Professor of Law, University of Illinois College of Law, reviewed the technology behind these advances, cases that have focused on DNA trade secrecy, and provide some practical suggestions for litigating DNA trade secrecy cases in our new, genomic age. So You Want to Work at the USPTO? By: Young Lawyers Committee and Deirdre Clarke (NYIPLA Board Member) On September 19, 2024, there was a panel discussion of present and former USPTO legal professionals that is geared towards law students and IP practitioners with an interest in working at the agency. Panelists shared what led them to the USPTO and their experiences. Featured Speakers: Hon. Melanye K. Johnson, Administrative Trademark Judge, USPTO Trademark Trial and Appeal Board Katie McKnight, former Interlocutory Attorney, USPTO Trademark Trial and Appeal Board; current counsel, Markery Law, Professorial Lecturer in Law, The George Washington University School of Law Scott Sisun, former Trademark Examining Attorney, USPTO; current Attorney - Founder, Sisun Law Jennifer Rea Deneault, former patent examiner, USPTO; current partner, Groombridge, Wu, Baughman & Stone LLP Patent Law & Practice Committee Meeting: Unitary Patent & Unified Patent Court By: Patent Law & Practice committee On September 20, 2024, the program covered the basics of the Unitary Patent, comparing it with the preexisting European patent options. The panel discussed factors and statistics that influence the decision to register a Unitary Patent, provide an overview of the differences between litigating under the Unified Patent Court (UPC) versus individual countries, and share insights from recent UPC case law with practical takeaways for drafting and prosecuting patents. Speakers: Damien Colombie, Partner, Lavoix Camille Pecnard, Partner, Lavoix IP Transactions Bootcamp 10/08/24 - 10/22/24 By: Programs Committee and David Bomzer (NYIPLA Board Member) NYIPLA hosted the 2024 IP Transactions Bootcamp, which was geared towards junior and mid-level associates. This year's program was held virtually, where attendees learned practical skills from experienced attorneys and in-house counsel. On October 8, 2024, the following topics were discussed: Copyright, Trademarks & Fashion A review of issues unique to nuances of trademark and copyright law to keep in mind when negotiating agreements such as licenses, assignments and co-branding joint venture deals. Speakers: Kathleen E. McCarthy, Partner, King & Spalding LLP Lauren B. Emerson, Partner, Leason Ellis LLP David Eshmoili, General Counsel & Corporate Secretary, David Yurman Cheryl Wang, Attorney (Moderator) The Landscape of Name, Image & Likeness in College Sports and Beyond Speakers: Lachauna Edwards, Business, Sports & Entertainment Lawyer, Lachauna Edwards Law, LLC Ahmand Johnson, Partner, Greenspoon Marder LLP A.J. Rudowitz, Associate, Duane Morris LLP On the second day (October 15, 2024) of the IP Transactions Bootcamp, we went over the following: Patents Review of common terms, conditions and issues that arise in patent related IP transactions (joint NDAs, settlements, etc.) Speakers: Jenny Lee, Partner, Haug Partners LLP David Bomzer, Partner, Cantor Colburn LLP Andrew Roper, Partner, Haug Partners LLP Andrew Chien, Head of Intellectual Property of Diagnostics, Siemens Healthineers Thomas J. Kowalski, Partner, Duane Morris LLP Troy LaMontagne, Counsel - Technology Transactions, Axiom Legal Heidi Lunasin, Special Counsel, Duane Morris LLP Nicole Woods, Assistant General Patent Counsel, Eli Lilly and Company Government & University Review of prominent issues relating to university and government contracts. Speakers: Jennifer Mandina, Senior Contracts Manager, University at Buffalo Ankur Parekh, Director & Senior IP Counsel, RTX Richard F. Kurz, Partner, Haug Partners LLP Ethics Speaker: Eugene Gormakh, Associate, Law Offices of Michael S. Ross On the final day (October 22, 2024), attendees had the opportunity to learn about the following topics: Mergers & Acquisitions, Due Diligence Speakers: Briana Barron, VP, Intellectual Property, Arcus Biosciences Timothy McNamara, VP of Legal in the Technology Sourcing and Intellectual Property, Goldman Sachs Eric Greenwald, Director, Merck & Co., Inc. Christopher Loh, Partner, Venable LLP Jonathan Berschadsky, Partner, Merchant & Gould P.C. AI/Software/Cybersecurity/Data Speakers: Mario F. Ayoub, Associate, Bond, Schoeneck & King PLLC Jonathan Berschadsky, Partner, Merchant & Gould P.C. Matthew S. Makover, Partner, Willkie Farr & Gallagher LLP Danny Spencer, Associate, Freshfields Bruckhaus Deringer LLP ADA Guidelines Speaker: Jessica Lipson, Partner, Morrison Cohen LLP Young Lawyers Committee Happy Hour By: Young Lawyers committee On October 9, 2024, the NYIPLA Young Lawyers Committee had 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 are welcome to participate. Attendees enjoyed two complimentary drinks and indulged in appetizers while engaging in one-on-one conversations with seasoned attorneys who can provide valuable insights into their practices. PTAB Committee Meeting: Director Review Final Rules By: ptab committee On October 15, 2024, the New York Intellectual Property Law Association (NYIPLA) PTAB Committee had a discussion regarding Director Review Final Rules. This interactive meeting was hosted by Co-Chairs Charley Macedo and Ken Adamo, of the NYIPLA PTAB Committee. Featured Speakers: Thomas Krause, PTAB Director Review Executive, USPTO Hon. James Worth, Senior Lead Administrative Patent Judge, USPTO Mock Interviews & Resume Review Workshop By: Young Lawyers Committee and the Associate Advisory Counsel The Young Lawyers Committee and the Associate Advisory Counsel of NYIPLA invited our student and active 3- years members to attend a mock interview and resume review workshop on October 23, 2024 at the offices of Groombridge, Wu, Baughman & Stone LLP. The event included three mock interviews and resume reviews with current practicing attorneys, followed by an opportunity to network with the attorneys in attendance.
NYIPLA Events
Last First Firm/Company/Law School State Membership Agard Celine New York Law School New York Student Akinbolagbe Oyinkansola NYU School of Law New York Student Albanese Kathryn Greenberg Traurig LLP New York Active 3+ Alcantara Melissa Leason Ellis LLP New York Active 3+ Applebaum Eliana Kirkland & Ellis LLP New York Active 3+ Arner Erika Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington D.C. Associate Ashok Theyjasvi UConn Law School Connecticut Student Auerbach Stephanie Quinnipiac University School of Law Connecticut Student Ayad Nibras Benjamin N. Cardozo School of Law New York Student Azami Caleb University at Buffalo School of Law New York Student Bachorik Jennifer Jones Day New York Active 3+ Banks Amara Yale Law School Connecticut Student Bass Jacob McDermott Will & Emery LLP New York Active 3+ Baum Alexandra Cardozo Law School New York Student Bell Cory Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Massachusetts Associate Bey Joshua Seton Hall Law School New Jersey Student Blackburn Shawn Susman Godfrey L.L.P. New York Associate Blandeburgo Alexa St. John's University School of Law New York Student Blanka Joseph Benjamin N. Cardozo School of Law New York Student Blashkevich Eva St. John's University School of Law New York Student Boiano Anthony Haley Guiliano LLP New York Active 3+ Borg-Breen Caryn Ballard Spahr LLP Pennsylvania Associate Bradford Danielle Brooklyn Law School New York Student Breakwell Abigael Albany Law School New York Student Cadavid MariaSalome Elisabeth Haub School of Law New York Student Castaño Paula NYU School of Law New York Student Chan Annie Kirkland & Ellis LLP New York Active 3- Chen Betty Desmarais LLP California Associate Chu Frederick St. John's University School of Law New York Student Clay Aaron Merck & Co., Inc. New Jersey Corporate Cole Eva Pace Law School New York Student Conroy Brianna Rutgers University Law School--Newark New Jersey Student Contractor Sanaea NYU School of Law New York Student Correia Suelly The Center for Leadership Studies New York Associate Corrigan Susanne Albany Law School New York Student Cunningham Sean DLA Piper California Associate Dai-He Lucille Cravath, Swaine & Moore LLP New York Active 3- Dander Jacob Haley Guiliano LLP New York Associate Darko Cherlean Rutgers University Law School--Newark New Jersey Student David Jasmin Brooklyn Law School New York Student De Lorenzi David Gibbons P.C. New Jersey Active 3+ DeGaray Alexandra Hofstra Law School New York Student Last First Firm/Company/Law School State Membership Delannes-Molka Emilie New York Law School New York Student DelRossi Michael Kirkland & Ellis LLP New York Active 3- DeVlieger Dana Kirkland & Ellis LLP New York Active 3- Dewey Austin Syracuse University College of Law New York Student Dhiman Neha Brooklyn Law School New York Student Diallo Aminata Rutgers University Law School--Camden New Jersey Student Dinetz Joshua New York Law School New York Student Downs Michael Emily C. & John E. Hansen IP Institute New York Student Dunsmore Abigail Pace Law School New York Student Duriez Agathe Columbia Law School New York Student Dzehtsiarenka Yuliya Columbia Law School New York Student Ebin Jacob Mayer Brown LLP New York Active 3+ Elbert Maya Foley Hoag New York Active 3+ Elder Nina University of Minnesota Law School Minnesota Student Endrizzi Robert Kirkland & Ellis LLP New York Active 3- Evangelatos Peter Kirkland & Ellis LLP New York Active 3+ Ewing Alexandra Richards, Layton & Finger, P.A. Delaware Associate Feigenbaum Emily New York University School of Law New York Student Feil Thomas Seton Hall University School of Law New Jersey Student Fineman Steven Richards, Layton & Finger, P.A. Delaware Associate Fisher Alec Davis Polk & Wardwell LLP New York Active 3- Flanders Kayla Benjamin N. Cardozo School of Law New York Student Franco Maria NYU School of Law New York Student Francois France Fordham University School of Law New York Student Frascone Anthony Pace Law School New York Student Fried Jennifer Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington D.C. Associate Friedland Kyle Morrison & Foerster LLP New York Active 3+ Gaglione Charles Connecticut Judicial Branch Connecticut Government/Academic Galinovsky Mark Benjamin N. Cardozo School of Law New York Student Ganin Colleen Perkins Coie LLP New York Active 3+ Garcia Maria Biotech AI New York Student Garibyan Stefanie Leason Ellis LLP New York Active 3+ Genestin Nica Pace Law School New York Student Gerber Joseph Knobbe, Martens, Olson & Bear LLP New York Active 3+ Ghanem Ingrid Willkie Farr & Gallagher New York Active 3- Gibson Erin DLA Piper California Associate Grasso Katie DLA Piper California Associate Greene Shonette Hofstra Law School New York Student Gupta Nisha Benjamin N. Cardozo School of Law New York Student Haefner Marc Walsh Pizzi O’Reilly Falanga New Jersey Active 3+ Halberstein Danit Foley Hoag LLP New York Active 3+ Hansen Elle New York Law School New York Student Last First Firm/Company/Law School State Membership Haynes Christine Richards, Layton & Finger, P.A. Delaware Associate He Haojing NYU School of Law New York Student Heavner Brett Finnegan Washington D.C. Associate Heckenberg Donald Venable LLP Washington D.C. Associate Hogan Kyle Brooklyn Law School New York Student Hughes Julia Fordham University School of Law New York Student Jakes Michael Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington D.C. Associate Jayakumar Arvind Harris Beach PLLC New York Active 3- Jung Mary Jane Fordham University School of Law New York Student Kaminski Jeffri Venable LLP Washington D.C. Associate Keiser Nishla Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Massachusetts Associate Keller Matthew St. John's University School of Law New York Student Kemper Batya New York University School of Law New York Student Kendrick Donisha Rutgers University Law School--Camden New Jersey Student Kim Amy Brooklyn Law School New York Student Kim Stephany Kirkland & Ellis LLP New York Active 3- Ko (Emily) Su NYU School of Law New York Student Kohn Felicity Pryor Cashman LLP New York Active 3+ Lai Alicia Susman Godfrey L.L.P. New York Active 3+ Lavenue Lionel Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Virginia Associate Lawler Joseph Haynes and Boone, LLP New York Active 3+ Lazarev Dennis Venable LLP New York Active 3+ Lee JaeJin Knobbe, Martens, Olson & Bear LLP New York Active 3+ Lee Andrew (Keum Yong) Kirkland & Ellis LLP New York Active 3- Lee Maggie Columbia University School of Law New York Student Lee Y. Christie NYU School of Law New York Student Lee Gina Benjamin N. Cardozo School of Law New York Student Levine Carmen NYU School of Law New York Student Li Allyson Kramer Levin Naftalis & Frankel LLP New York Active 3+ Li Olivia Columbia Law School New York Student Liang Luann University of Connecticut School of Law Connecticut Student Liberman Michael U.S. ITC Washington D.C. Government/Academic Lichtenauer Daniel Haug Partners New York Active 3- Lin Joel Gish PLLC New York Active 3+ Lin Tina Troutman Pepper LLP New York Active 3+ Luehrs Ben Desmarais LLP New York Active 3+ Lynch Ginnie University Of Richmond School Of Law Virginia Student MacRae Warren Gibbons P.C. New York Active 3+ Mahoney Megan Akin Gump Strauss Hauer & Feld LLP New York Active 3- Marcello Nicholas Venable LLP New York Active 3+ Marshall Danielle New York Law School New York Student Martinez Yessica Touro College Jacob D. Fuchsberg Law Center New York Student Last First Firm/Company/Law School State Membership Marzagalli Daniel Winston & Strawn LLP New York Active 3- Matared Rana Paul, Weiss, Rifkind, Wharton & Garrison LLP New York Active 3+ Hon. Mauskopf Roslynn Bracewell LLP New York Active 3+ McCaffery Erin Touro College Jacob D. Fuchsberg Law Center New York Student McCool Gabriel Wolf Greenfield & Sacks PC Connecticut Active 3+ Merville Alice University of Connecticut School of Law Connecticut Student Milinkovic Mina New York Law School New York Student Mooney Madeline Columbia Law School New York Student Mousa Natasha Hofstra Law School New York Student Moyer Jeffrey Richards, Layton & Finger, P.A. Delaware Associate Mueller Ken Kramer Levin Naftalis & Frankel LLP New York Active 3+ Myers Sterling Yale Law School Connecticut Student Nabatian Shira New York University School of Law New York Student Najman-Franks Marianna Benjamin N. Cardozo School of Law New York Student Natsume Thomas Baker Botts LLP New York Active 3+ Neuhaus Stephan A&O Shearman New York Associate Newell Ryan Knobbe, Martens, Olson & Bear LLP New York Active 3- Nikolaides Eric Morrison & Foerster LLP New York Active 3+ Noble Andrew Maschoff Brennan Gilmore Israelsen & Mauriel LLP New York Active 3+ O'Bryne Stephanie DLA Piper LLP Delaware Associate O'Connell Sean Maurice A. Deane School of Law, Hofstra University New York Student O'Hanlon Cara Emily C. & John E. Hansen IP Institute New York Student Ortega Mike Powley & Gibson, P.C. New York Active 3+ Ortynska Mariya IPStyle New York Active 3- Ospina Laura Villanova University Charles Widger School of Law Pennsylvania Student Pane Meghan Rutgers University Law School--Newark New Jersey Student Parekh Pooja Kramer Levin Naftalis & Frankel LLP New York Active 3+ Pedi Nicole Richards, Layton & Finger, P.A. Delaware Associate Perbost Camille St. John's University School of Law New York Student Phillips Anna Sterne Kessler Washington D.C. Associate Polley Miles University of Miami School of Law Florida Student Powers Trey Sterne Kessler Washington D.C. Associate Quezada Christina Rutgers Law School New Jersey Student Raich William Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington D.C. Associate Ramirez Shakira Rutgers University Law School--Newark New Jersey Student Reddington Joshua UNH Law New York Student Reid Paul Hofstra Law School New York Student Rhodes Michael Desmarais LLP California Associate Robinson Shiara Brooklyn Law School New York Student Rock Annie Haug Partners LLP New York Active 3- Rosenblatt Sami Benjamin N. Cardozo School of Law New York Student Rowser Kenya Cravath, Swaine & Moore LLP New York Active 3- Last First Firm/Company/Law School State Membership Rozendaal J.C. Sterne Kessler Washington D.C. Associate Rueckheim Michael Winston & Strawn LLP California Associate Ruff Kylie St. John's University School of Law New York Student Saady Nicholas Pryor Cashman LLP New York Active 3+ Sadler Nathan Varsity Tutors Jamaica Associate Sakkopoulos George Georgetown University Law Center Washington D.C. Student Sanders Paris Kirkland & Ellis LLP New York Active 3- Sapiro Michael Arnold & Porter Kaye Scholer LLP New York Active 3+ Satchwell Matthew DLA Piper LLP Illinois Associate Scerbo Michael Orrick New York Active 3+ Schroeder Jacob Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Washington D.C. Associate Sciutti Gloria Fordham University School of Law New York Student Sebastian Tala Wiggin and Dana LLP New York Active 3- Secrease Allen Brooklyn Law School New York Student Shaffer Rob O'Melveny & Myers LLP New York Active 3+ Shah Khushbu Orrick, Herrington & Sutcliffe LLP New York Student Shao Will NYU School of Law New York Student Sheehan Delia Albany Law School New York Student Sheffield Emily Kirkland & Ellis LLP New York Active 3+ Sheth Devansh Rutgers University Law School--Newark New Jersey Student Silverman Samuel Benjamin N. Cardozo School of Law New York Student Smith Cyddni Pace University School of Law New York Student Smith VeAnnah Hofstra Law School New York Student Soares Joana Jones Day New York Active 3+ Sotile Joseph Columbia Law School New York Student Specht Kara Finnegan, Henderson, Farabow, Garrett & Dunner, LLP Georgia Associate Spellman Sarah Hunton Andrews Kurth LLP New York Active 3+ Sreedharane Amrutha New York University School of Law New York Student St. Etienne Chloe Rutgers University Law School--Newark New Jersey Student Stamm Kathryn-Ann Cravath, Swaine & Moore LLP New York Active 3+ Starobin Miriam Brooklyn Law School New York Student Stevens Rachel University of Connecticut School of Law Connecticut Student Stone David A&O Shearman New York Associate Tabassum Sumaia Knobbe, Martens, Olson & Bear LLP New York Active 3- Tao Christina Seton Hall Law School New Jersey Student Tavernier Nishi Morrison & Foerster LLP New York Active 3+ Taylor Justin Kirkland & Ellis LLP New York Active 3+ Threatt James NYS Court New York Government/Academic Timmins-Reed Kaelyn Chapman University Dale E. Fowler School of Law California Student Trucchio Dominque Emily C. & John E. Hansen IP Institute New York Student Ungria Guillermo Ungria Spain Associate Uzohue Chizahra St. John's University School of Law New York Student Last First Firm/Company/Law School State Membership Varghese Libby Scarinci Hollenbeck New York Active 3+ Vega Ariana Inter American School of Law Puerto Rico Student Velasquez Santiago Quinnipiac University School of Law Connecticut Student Velazquez Kira Pace Law School New York Student Venkatesan Siddhartha May Mobility, Inc. New Jersey Corporate Walkow Marc Greenspoon Marder LLP New York Active 3+ Weber Brandon Kirkland & Ellis LLP New York Active 3- Whitesell Angela DLA Piper LLP Delaware Associate Williams Ulysses Walmart Inc. New Jersey Corporate Witty Sara Knobbe, Martens, Olson & Bear LLP New York Active 3- Wofsy Scott Locke Lord LLP New York Active 3+ Wolfson Jeffrey Haynes and Boone, LLP Washington D.C. Associate Wong Jerry Yale Law School Connecticut Student Wu Jeffrey Fordham University School of Law New York Student Yam Stephen Venable LLP Washington D.C. Associate Yan Emily New York University School of Law New York Student Yang Debbie Powley & Gibson, P.C. New York Active 3- Yomtobian Alan Williams Simons & Landis PLLC New Jersey Active 3- Yoo Jimin Fordham University School of Law New York Student Yu Shaoyao Kirkland & Ellis LLP New York Active 3- Ziaei Mona Benjamin N. Cardozo School of Law New York Student Zimny Karolina Pace Law School New York Student Zipper Jamie Amster, Rothstein & Ebenstein LLP New York Active 3- zu Dohna Florence NYU School of Law New York Student
WELCOME NEW MEMBERS
MOVING UP & MOVING ON
Colleen Tracy James and Peter Armenio, formerly of White and Case LLP, have joined Cahill Gordon & Reindel LLP as Partners. Mauriel Kapouytian Woods merged with Maschoff Brennan to form Maschoff Brennan Gilmore Israelsen & Mauriel LLP. Douglas Smith, formerly of Woods Oviatt Gilman LLP, has joined Harter Secrest & Emery LLP as Counsel. William Wilson, formerly of Goodwin LLP, has joined Morrison Foerster LLP, as a Partner. Greg Gulia and Vanessa Hew, formerly of Womble Bond Dickinson LLP, have joined Potomac Law Group as Partners. Donald Reinhard has been promoted to Partner at Kasowitz Benson Torres LLP. Nate Goldberg, formerly of Schoeman Updike & Kaufman LLP, has joined Clark Hill PLC as a Member. Brian Bloom and Melissa DeCandia, formerly of Tarter Krinsky & Drogin LLP, have joined Greenspoon Marder LLP as a Partner and Associate, respectively. Brant Kuehn, formerly of Wollmuth Maher & Deutsch LLP, has joined Greenspoon Marder LLP as a Partner. Tapan Oza, formerly of Kobre & Kim LLP, has joined Greenspoon Marder LLP as an Associate. David Ashley, formerly of Netflix, has joined Fox Rothschild LLP as Counsel. Philippe Zimmerman, formerly of Moses & Singer LLP, has joined Greenspoon Marder LLP as a Partner. Julie Shin, formerly of Lee & Ko, has joined Jones Day, as Of Counsel. Tamara Carmichael, formerly of Dorsey & Whitney LLP, has joined Saul Ewing LLP as a Partner.
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December 12/17/2024 PTAB Committee Meeting: Local Rule 36: Federal Circuit Review Under Scrutiny at the Supreme Court January 01/16/2025 January Entertainment, Sports & Social Media Committee Meeting: Penn State v. Vintage Brand - Trademark Infringement and Retro Merchandise 01/21/2025 PTAB Committee Meeting 01/29/2025 Zoom Out with NYIPLA! February 02/05/2025 Biologics & Biosimilars: Hot Topics 02/18/2025 PTAB Committee Meeting