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Dec. Newsletter

December 2012
Colorado Bar Association
Intellectual Property Section
In this issue...
Happy Holidays from the IP Section

This is an amazing and exciting time to be an IP attorney in Colorado and a member of the Colorado Bar Association IP Section. We boast one of the most active Sections in the CBA, and one of the most active IP bars in the country. Thank you to all the IP Section members who have put in hundreds of hours to help bring the highest level of programming to our community.

This has been an incredible (and packed) year for the Colorado IP Bar. In June, the Denver area was recognized as a national hub for innovation and creativity when it was chosen to be one of the first regional office locations for the USPTO. With plans to open in the second half of next year, the regional office will raise the profile of the Colorado IP bar and bring hundreds of jobs, hundreds of millions of dollars in revenue, and other exciting benefits to the state.

The announcement came in the wake of an amazing line-up of programs, including a road show at the University of Denver held by experts from the USPTO on the new America Invents Act attended by a couple hundred local attorneys; the kick-off of the new pro bono patent initiative (ProBoPat), which has already begun to pair members of the bar with underserved inventors and entrepreneurs; and the decision by the USPTO to host a patent clinic through the University of Colorado School of Law, which has already begun to pair law students with patent clients. In April, hundreds attended “Patents: Home on the Range or Wild Frontier;” and in May, over 400 IP attorneys attended the tenth annual Rocky Mountain IP Institute. On top of everything else, in October, we had the unique and exciting privilege of hosting the Federal Circuit Court of Appeals, with local opportunities to hear oral arguments and networking events with the Federal Circuit bench. These and other programs throughout the year brought top IP practitioners, executives, academics, and policy makers from around the country, as well as key individuals from the USPTO, like Secretary Blank, Director Kappos, and Bernard Night.

We look forward to more exciting developments for the Colorado IP Community. Warm wishes for a happy holiday season!

Danny Sherwinter
Secretary, Colorado Bar Association IP Section

P.S. Check out U.S. Patent Pub. No. 2002/0128081 for one of my favorite holiday-themed patent applications.

Upcoming IP Section Events

Nuts and Bolts of Intellectual Property Practice

Date and Time: Thursday, Jan. 17—All Day
Location: CBA Offices, 1900 Grant Street, Denver, CO 80203

A must-attend for all students, clerks, first-year, and second-year attorneys, and anyone else practicing or hoping to practice IP law! This day is meant to provide newly and recently minted attorneys, or those wishing to transition to intellectual property, with foundational basics in the practice of intellectual property law. We will have an exciting line-up of expert speakers, including talks from Magistrate Judge Mix on how to interact with the Court, and Judge Carparelli will speak on professionalism in the workplace. In addition, an in-house panel will discuss how to interact with clients, as well presentations on the state of the job market and the nuts and bolts of practicing intellectual property law.

For more information (including agenda and price) and to register, click here or call the CBA-CLE offices at 303-860-0608 or toll free 303-860-2531. Scholarships or discounted pricing may be available upon request.

Past IP Section Events

Pretexting and the New Colorado Ethics Rules

Earlier this month, Adam Scoville (RE/MAX) moderated a panel discussion between Hon. John R. Webb (Colorado Court of Appeals), James Sudler (Chief Deputy Regulation Counsel, Colorado Supreme Court Office of Attorney Regulation), and Thomas E. Downey, Jr.(Downey & Associates, P.C.) on new attorney ethics rules relating to “pre-texting.” Attorneys have a duty under Rule 11 to investigate their claims prior to filing suit. The ethical rules, however, constrain an attorney’s ability to perform certain pre-textual pre-filing investigations. This can be especially true in intellectual property cases, where attorneys may need to acquire and examine an accused product before filing suit. Recently, there have been efforts to address these ethical concerns in Colorado that ended without resolution. The four panelists, all members of a pretexting subcommittee created to examine and address these issues, spoke about current developments and techniques for IP attorneys to navigate the still-muddy waters.

IP Section Website

Don’t forget to check out the CBA IP Section website. Please refer to it often for updates on news and events.
The CBA has posted online member directories for each practice section. Click here to see our directory.
Our contact at the CBA is Melissa Nicoletti, Director of Sections and Committees. She can be reached at 303-824-5321, or melissan@cobar.org.

IP Section Blog

The IP Section blog is at ipsectioncolorado.org. You can find news from and links to other Colorado and national IP resources, connect with other IP Section members, provide input to Section Officers, get up-to-date information about IP Section activities, developments regarding the Denver Patent Office, and more. Be sure to register to get the full benefit of the blog.

If you would like to write a blog posting or have anything you would like posted to the blog, please e-mail Danny Sherwinter at dsherwinter@mfblaw.com

Classified Advertising

Experienced Chemical/Mechanical Patent Attorney

Available for contract/overflow work in patent/trademark prosecution, litigation support and opinion work. Please contact James K. Poole, 970-472-5061, jkpoole@aol.com.

Patent Searches by Noted Expert

Recommended by Jim Poole (CBA member) and other patent attorneys at InvestigatePatents.com. Please contact Stan Schwartz at Schwartz@InvestigatePatents.com or 301-806-0600 about your search needs and/or for an estimate.

Subject to editorial review, classified advertisements are printed by the IP Section free of charge and will run for three months, unless we receive a request to drop or continue running the ad. Submit or resubmit your ad by e-mailing the proposed text to Danny Sherwinter at dsherwinter@mfblaw.com.

Call for Suggestions, Ideas, and Articles

Luncheon Program Topics and Speakers

The IP Section Officers are also soliciting your suggestions and ideas for topics and speakers for our Luncheon programs for 2013. Please forward any comments you may have to Danny Sherwinter or our Programs Committee Chairperson, John Kennedy.

Articles for The Colorado Lawyer

The IP Section is in the process of compiling and evaluating articles to publish in The Colorado Lawyer this coming year. If you have an interest in submitting an IP-related article for TCL, please contact Danny Sherwinter. We encourage individuals who may be on their own but nonetheless would like to team up with a senior or junior practitioner to contact us so we can help facilitate that relationship.

IP Section Newsletter

Subject to editorial discretion and review, the IP Section Newsletter is open to the submission of short articles and columns on IP topics of interest. If you are interested in contributing, please contact Danny Sherwinter.

Recently Filed U.S.D.C. Colorado Cases

Filed 9/25/12–10/31/12

Caption Type Date Filed Case Number Judge Filing Attorneys
Grady v. Nelson Copyright 11/15/2012 1:12-cv-03004 Judge Blackburn, referred to Magistrate Judge Tafoya Andrew John Contiguglia Contiguglia & Fazzone, P.C.
EdWell Programs, Inc. et al v. Cheetah Exam Prep, LLC Copyright 11/30/2012 1:2012-cv-03130 Judge Jackson Paul Forrest Lewis, Schimtz Lewis PC
reFX AUDIO SOFTWARE INC. v. Does 1–123 Copyright 12/3/2012 12cv02566 Philip A. Brimmer Gregg I. Anderson
Combat Zone Corp. v. Does 1-5 Copyright 12/3/2012 12cv02587 Chief Judge Daniel, referred to Magistrate Judge Tafoya Sanjin Mutic Mile High Law Office, LLC
Patrick Collins, Inc. v. John Does 1-5 Copyright 12/4/2012 1:2012-cv-03166 Judge Jackson, referred to Magistrate Judge Hegarty Jason A. Kotzker, Kotzker Law Group
Patrick Collins, Inc. v. John Does 1–7 Copyright 12/4/2012 1:2012-cv-03167 Judge Brimmer, referred to Magistrate Judge Hegarty Jason A. Kotzker, Kotzker Law Group
Malibu Media, LLC v. John Does 1–19 Copyright 12/4/2012 1:2012-cv-03168 Judge Martinez Jason A. Kotzker Kotzker Law Group
Malibu Media, LLC v. John Does 1–14 Copyright 12/4/2012 1:2012-cv-03169 Judge Brimmer, referred to Magistrate Judge Hegarty Jason A. Kotzker, Kotzker Law Group
Malibu Media, LLC v. John Does 1–8 Copyright 12/4/2012 1:2012-cv-03170 Judge Brimmer, referred to Magistrate Judge Hegarty Jason A. Kotzker, Kotzker Law Group
Malibu Media, LLC v. John Does 1–14 Copyright 12/4/2012 1:2012-cv-03171 Judge Arguello, referred to Magistrate Judge Hegarty Jason A. Kotzker, Kotzker Law Group
Malibu Media, LLC v. John Does 1–23 Copyright 12/4/2012 1:2012-cv-03172 Judge Arguello, referred to Magistrate Judge Hegarty Jason A. Kotzker, Kotzker Law Group
Malibu Media, LLC v. John Does 1–15 Copyright 12/4/2012 1:2012-cv-03173 Judge Martinez Jason A. Kotzker, Kotzker Law Group
Grady v. Cavender Copyright 12/5/2012 1:2012-cv-03185 Judge Jackson Mollie B. Hawes, Miller & Steiert, P.C
Broadnet Teleservices, LLC v. Shoutpoint, Inc. et al Patent 11/6/2012 1:2012-cv-02921 Judge Arguello, referred to Magistrate Judge Tafoya Timothy Paul Getzoff, Holland & Hart, LLP
NeuroGrafix et al v. Medtronic Navigation, Inc. et al Patent 11/13/12 1:2012-cv-02977 Chief Judge Daniel, referred to Magistrate Judge Watanabe Eric Bryan Fenster Eric B. Fenster, LLC
Phil Durango, LLC v. PSR Group, Inc. Patent 11/21/12 1:2012-cv-03070 Judge Jackson Scott Robert Bialecki Fox Rothschild LLP
Otter Products, LLC v. Treefrog Developments Inc Patent 11/28/12 1:2012-cv-03115 Judge Jackson Julie Sandra Turner Turner Boyd LLP
HealthTrio, LLC v. Aetna Inc. et al Patent 12/11/12 1:2012-cv-03229 Judge Blackburn Benjamin Baughman, Lieb Sheridan Ross, P.C.
Ranch-Way Feed Mills, Inc. v. Bomgaars Supply, Inc. Trademark 10/31/2012 1:2012-cv-02879 Judge Blackburn, referred to Magistrate Judge Hegarty William W. Cochran Cochran, Freund & Young, LLC
Adams Jr. v. Grand Slam Club/Ovis et al Trademark 11/8/2012 1:2012-cv-02938 Judge Martinez, referred to Magistrate Judge Boland James A. Jablonski,Law Office of James A. Jablonski
Castillo et al v. Baez et al Trademark 11/9/2012 1:2012-cv-02958 Magistrate Judge Boland Chris Castillo PMB 144
Professional Bull Riders, Inc. v. Exclusive Genetics, L.P. Trademark 11/14/2012 1:2012-cv-02995 Judge Brimmer, referred to Magistrate Judge Watanabe Neil L. Arney Kutak Rock, LLP
WCM Industries, Inc. v. Jay R. Smith Manufacturing Co. et al Trademark 11/16/2012 1:2012-cv-03019 Judge Martinez, referred to Magistrate Judge Shaffer John R. Posthumus Sheridan Ross, P.C.
PostNet International Franchise Corporation v. Jones et al Trademark 11/20/2012 1:2012-cv-03065 Chief Judge Daniel, referred to Magistrate Judge Shaffer Scott C. Sandberg Snell & Wilmer, LLP

Please email Danny Sherwinter at dsherwinter@mfblaw.com with any interesting Colorado District Court IP decisions or IP news involving Colorado Companies.

IP Law Developments from BNA

Patents/Priority

Prior Invention Invalidates a Product Patent Despite Nine-Year Delay in Commercialization

Fox Group Inc. v. Cree Inc., Fed. Cir., No. 2011-1576, 11/28/12

Case Summary: A patent on a silicon carbide wafer used in semiconductor applications is invalidated because the alleged infringer established prior invention

Key Takeaway: The prior inventor, to overcome a charge that it had abandoned, suppressed, or concealed a product invention, need not show steps toward commercialization of the product.

By Tony Dutra

Commercialization is not necessary to show prior invention of a product to defeat a patent infringement charge, the a split U.S. Court of Appeals for the Federal Circuit ruled Nov. 28 (Fox Group Inc. v. Cree Inc., Fed. Cir., No. 2011-1576, 11/28/12).

Overturning a lower court’s summary judgment, the court held that a presentation and article published by a claimant to prior invention were adequate to disclose all the limitations of the asserted claims; that, unlike process inventions, products need not be enabled in those disclosures; and that a nine-year lapse until commercialization was insufficient to show suppression or concealment of the invention.

The dissent argued that, to overcome evidence of concealment or suppression, a prior inventor that does not commercialize its invention must at least show that its other disclosures give “the benefit of an invention” to the public. The disclosures here failed to do that, the dissent said.

Competing Claims to Priority of Invention

Fox Group Inc. owns two patents (6,534,026 and 6,562,130) on single crystal silicon carbide, used for a variety of semiconductor applications. At issue here, Claims 1 and 19 of the ‘130 patent are similar and claim an SiC wafer with three specific defect densities.

The dispute in the current case is dependent on the timing of Fox and Cree Inc.’s independent development of SiC technology covered by the patents:

  • Cree created a G0259 boule—a synthetic crystal block—and sliced a “Kyoto Wafer” from that boule in 1995. That same year, it presented an image of the wafer and described its low defect nature at a conference. An article on the Kyoto Wafer was published in 1996.
  • Fox claimed priority to its reduction to practice in 1997. Its patents were issued in 2003.
  • There was no evidence of Cree’s attempts to commercialize a Kyoto Wafer product until at least 2004.

Fox sued Cree for patent infringement in 2010 in the U.S. District Court for the Eastern District of Virginia. Fox sought summary judgment of infringement; Cree filed a motion for summary judgment of invalidity of both patents under 35 U.S.C. §102(g).

Judge Rebecca Beach Smith determined that Cree did not infringe the ‘026 patent, which is no longer at issue in the case. She subsequently granted summary judgment of invalidity of the entire ‘130 patent, though only Claims 1 and 19 were at issue.

Fox appealed that decision.

Cree Reduced Invention to Practice First

Under Section 102(g), a patent can be invalidated if “the invention was made in this country by another inventor who had not abandoned, suppressed, or concealed it,” Judge Evan J. Wallach began, quoting the statute.

He further quoted Mycogen Plant Science Inc. v. Monsanto Co., 243 F.3d 1316, 1332, 58 USPQ2d 1030 (Fed. Cir. 2001) (62 PTCJ 123, 6/8/01), for the two options available to Cree “to prove that it was the prior inventor: (1) it reduced its invention to practice first…, or (2) it was the first party to conceive of the invention and then exercised reasonable diligence in reducing that invention to practice.”

The court concluded that Cree met the first option.

The two-pronged test for showing reduction to practice, the court said, quoting Teva Pharmaceutical Industries Ltd. v. AstraZeneca Pharmaceuticals LP, 661 F.3d 1378, 1383, 100 USPQ2d 1852 (Fed. Cir. 2011) (83 PTCJ 181, 12/9/11), is that “the prior inventor must have (1) constructed an embodiment or performed a process that met all the claim limitations and (2) determined that the invention would work for its intended purpose.”

According to the court, Cree showed that the Kyoto Wafer met all three defect density limitations, satisfying the first prong. And as to the second, the court said that Cree’s “generalized purpose” of making low defect SIC wafers was adequate, and that it was not necessary for Cree to have the purpose of making a wafer meeting “specific, measurable, and repeatable densities.”

In particular, the court rejected Fox’s argument that Cree had to show repeatability to support a claim to reduction to practice.

No Abandonment, Suppression, or Concealment

The court next turned to whether Fox had shown that Cree abandoned, suppressed, or concealed the invention it had reduced to practice in 1995.

Fox had to show active and intentional suppression or concealment, or else make the case that either could be inferred by Cree’s “unreasonable delay in making the invention publicly known,” according to Dow Chemical Co. v. Astro-Valcour Inc., 267 F.3d 1334, 1342, 60 USPQ2d 1519 (Fed. Cir. 2001) (62 PTCJ 521, 10/5/01), the court explained.

The majority characterized Fox’s evidence as an attempt to establish the inference of suppression and concealment. Fox pointed to Cree’s failure to file for a patent, lack of commercialization effort, and inadequate disclosure—a failure to reveal the growing conditions for boule G0259—in the presentation and article.

First, the court said, there is no requirement under Section 102(g) that the prior inventor file for a patent. And commercialization is only one way to make a public disclosure, it added, with presentations and articles certainly other acceptable means of disclosure.

Fox argued that Cree’s presentation and article did not include disclosures that would enable one of skill to make the Kyoto Wafer and thus were not enabling. The court, however, said that its precedents held only that a Section 102(g) disclosure must enable process claims, and enablement is not required to show how to make the product claimed here.

Thus, the court concluded, Cree adequately supported its prior invention claim. The court accordingly affirmed the lower court’s judgment of invalidity of Claims 1 and 19 of Fox’s ‘130 patent.

Lower Court Erred in Invalidating Entire Patent

However, the court reversed the district court’s summary judgment of invalidity of all claims in the ‘130 patent.

Fox’s initial complaint asserted infringement of “one or more claims” of the patent, the court noted. However, when the summary judgments were considered, it said, both parties were on notice that Fox was asserting only the two claims.

Inasmuch as there was no case or controversy with respect to the remaining claims of the patent, the court said, the district court lacked jurisdiction to rule on their validity. The appeals court thus vacated the judgment that the entire patent was invalid.

Judge Pauline Newman joined the opinion.

Dissent: Evidence of Suppression and Concealment

Judge Kathleen M. O’Malley disagreed with the majority’s analysis of the evidence of Cree’s suppression and concealment of its invention.

She characterized Fox’s evidence as both direct and inferential. She noted Fox’s reliance on Cree’s internal policy of concealing production methods—based on testimony from one of Cree’s inventors—and the nine-year delay until commercialization of “anything that resembled the Kyoto wafer.”

The burden then shifted to Cree, O’Malley said, to rebut Fox’s showing with clear and convincing evidence. She concluded that the disclosure in Cree’s 1995 presentation and 1996 article failed to meet that standard.

O’Malley said that Cree merely disclosed “the fact of the invention,” while the standard, articulated in Apotex USA Inc. v. Merck & Co., 254 F.3d 1031, 59 USPQ2d 1139 (Fed. Cir. 2001) (62 PTCJ 154, 6/15/01), is that, “a prior inventor must show that the public was clearly given the benefit of an invention, via reverse-engineering, a detailed disclosure, or otherwise, if it wants to rely on §102(g) to invalidate a patent.”

As to whether and how a product—compared to a process—must be adequately disclosed, she noted that the court’s precedents on adequate disclosures, such as in Dow v. Astro-Valcour, invariably involved commercialized products. And there is no evidence in the current case that Cree took steps to commercialize its products and make them available to the public until 2004, she said.

“Under the majority’s approach, an inventor could publicly announce that it made a product, with no explanation as to how it did so, and then hide it away in a closet indefinitely,” O’Malley said. “The majority’s approach cannot be the law.”

Christopher B. Mead of London & Mead, Washington, D.C., represented Fox. David C. Radulescu of Quinn Emanuel Urquhart & Sullivan, New York, represented Cree.

Coyprights/Trademarks

Mixed Results in Miniature Figurine Maker’s Infringement Claims Against ‘Accessories’

Games Workshop Ltd. v. Chapterhouse Studios LLC, N.D. Ill., No. 1:10-cv-08103, 11/27/12

Case Summary: A federal district court denies in part and grants in part summary judgment motions by both sides of a dispute over accessories for figurines used for miniature wargaming.

Key Takeaway: Of numerous copyright infringement claims brought by a U.K.-based plaintiff, some survive to go to trial. The plaintiff’s trademark infringement claims also survive, but the trademark dilution claims are dismissed for lack of any evidence of fame.

By Anandashankar Mazumdar

In a dispute between a U.K.-based maker of metal wargaming miniatures and a U.S.-based maker of “accessories” for the figurines, summary judgment was justified for some of the copyright and trademark claims, the U.S. District Court for the Northern District of Illinois ruled Nov. 27 (Games Workshop Ltd. v. Chapterhouse Studios LLC, N.D. Ill., No. 1:10-cv-08103, 11/27/12).

Granting in part and denying in part summary judgment motions, the court divided up the numerous copyright infringement claims based on differing facts.

Wargaming Miniatures Popular for 25 Years

Games Workshop Ltd. of Nottingham, England, is a producer of science-fiction and fantasy role-playing games and related products, such as table-top miniature wargames and video games. In 1987, Games Workshop began producing a series of metal figurines related to its Warhammer 40,000 fictional setting. Such figurines are often called “leads,” because when they first became popular in the 1970s and 1980s, they were often made of an alloy of lead and tin.

In 2008, Nick Villacci of Colleyville, Texas, established Chapterhouse Studios LLC, which began producing accessories or “bit parts” made at the same scale as the Warhammer 40,000 28-millimeter miniatures. These bit parts could be used to accessorize or replace parts on Warhammer miniatures.

Games Workshop sued Chapterhouse, alleging copyright infringement, trademark infringement, and other claims.

Both parties moved for summary judgment.

Attempted Withdrawal Becomes Summary Judgment

Judge Matthew F. Kennelly first turned to Games Workshop’s attempt to withdraw several of its copyright infringement claims. The court said that at this stage of the proceeding, those claims could not simply be withdrawn without prejudice, and that Chapterhouse was entitled to summary judgment on those claims.

However, the court declined to address several other copyright infringement claims that had been included in a separate lawsuit.

Alleged Freelance Works Addressed

Turning to a third group of copyright infringement claims by Games Workshop, the court addressed Chapterhouse’s arguments that Games Workshop could not establish ownership over the relevant copyrights, because they were created by freelancers.

The court first determined under Saregama India Ltd. v. Mosley, 635 F.3d 1284, 98 USPQ2d 1097 (11th Cir. 2011) (81 PTCJ 704, 4/1/11), and other cases, that because Games Workshop’s goods were created in England, the question of ownership was governed by English law.

In its pleadings, Games Workshop withdrew its infringement claims for all such works except for those by six creators. Thus, the court addressed only these claims.

For works created by Wayne England, Mike McVey, and Bob Naismith, Games Workshop asserted that these works were created while those three were employees and thus under Section 11(2) of the U.K. Copyright, Designs, and Patents Act of 1988, Games Workshop was the initial owner of the relevant copyrights.

An affidavit by Alan Merrett, a Games Workshop founder and its head of IP, was sufficient to establish for the purposes of summary judgment that England, McVey, and Naismith created the relevant works as employees. The court said:

[The affidavit] sufficiently shows that Merrett, who has worked at [Games Workshop] since 1981, has personal knowledge regarding when England, McVey, and Naismith worked for the company. Chapterhouse has produced no evidence to rebut Merrett’s testimony regarding the employment status of McVey, England, and Naismith at the time they created the works at issue.

Chapterhouse’s claim that Merrett’s testimony lacked credibility was insufficient to defeat summary judgment on this point, the court said.

Contracts Sufficient to Establish Ownership

The court then turned to a group of works created by Clint Langley and Simon Egan. Games Workshop submitted an employment contract with Egan and an independent contractor agreement with Langley, both of which included provisions assigning the relevant copyrights to Games Workshop.

The court noted that it is unclear in such situations which country’s law applies to copyright transfers; however, the court found that “both English and U.S. law recognize the kind of written, signed assignment agreements at issue here.” Specifically, Section 90(1) of the U.K.’s 1998 law and Section 204 of the Copyright Act of 1976, 17 U.S.C. §204, recognize such transfers.

Thus, the court determined that Games Workshop was the owner of the copyrights in the Langley and Egan works.

‘Confirmation’ Document’s Effectiveness Unclear

Finally, the court turned to a group of works created by Adrian Smith. There was some dispute as to whether these works were actually still at issue in this proceeding. To the extent that they might still be at issue, the court noted that Games Workshop had conceded that Smith was a freelancer and not an employee.

In evidence was a document signed by Smith that purported to “confirm” that at the time Smith created the works, it was the parties’ intent that all rights be transferred to Games Workshop. However, this document was executed by Smith just before the filing of the instant claims, and not at the time he created the works.

According to the court, it was unclear whether this document had any legal force.

Games Workshop also argued that even without such assignment, under English law, it would still be the owner of the works as a joint author under the doctrines of joint ownership and equitable assignment asset forth in Section 10(1) of the 1998 law.

However, the court said, there was an insufficient factual basis in the record for resolving these questions at the summary judgment stage.

Scénes á Faire Doctrine Applied

Chapterhouse also argued that Games Workshop’s figurines were not protectable under English law. The court first stated that although English law was relevant to the question of ownership, the issue of protectability was governed by U.S. law.

In applying U.S. law to the figurines, the court rejected Chapterhouse’s arguments that the infringement claims were based on unprotectable ideas rather than tangible expression. The court said:

Examination of the photographs and drawing [in evidence] leaves little doubt that the bases for [Games Workshop’s] copyright claims are “original works of authorship fixed in [a] tangible medium of expression”—in [this] case, a predominantly graphic and sculptural medium.

Next, the court addressed Chapterhouse’s argument that some of the works claimed by Games Workshop were not protectable under the scénes á faire doctrine.

Several of the claims related to shoulder pads that could be attached to Games Workshop figurines. Chapterhouse submitted evidence that the shoulder pads in question were “‘in keeping’ with previous examples of military-style shoulder pads found throughout history.”

However, the court determined that the Games Workshop shoulder pads were not simply recreations of historical shoulder pads, and that there was some creativity in their designs. Furthermore, the court rejected the argument that adding a non-original element to a shoulder pad—such as a chevron—made the shoulder pad unprotectable.

The court said:

[A]lthough [Games Workshop] could not base its copyright claim on a depiction of an “X” or a chevron alone, its depiction of that otherwise-common element affixed on an original, creative shoulder pad with a distinctive color scheme is sufficient to satisfy the originality requirement.

Similarly, other figures, such as a skull or animals, were depicted in manners that reflected originality and creativity, and thus could be protectable.

There were some items, however, that were unprotectable under the scénes á faire doctrine, the court said. These included “a circular saw blade with a teardrop shape in the middle.” To the extent that this shape was incorporated into a larger work that was protectable overall, the court would not reject copyrightability. However, by itself, the saw-blade-and-teardrop was “merely two geometric shapes placed one atop the other” and was thus not protectable.

Finally, the court determined that Games Workshop could not exercise copyright protection over a depiction of a pile of skulls.

Works Not Utilitarian

The court then rejected Chapterhouse’s argument that some of the allegedly infringing elements in its miniature accessories were “mechanical or utilitarian” and thus not protectable under 17 U.S.C. §101.

Specifically, Chapterhouse argued that since accessories must be signed and shaped in order to fit onto Games Workshop figurines, these aspects were mechanical and utilitarian.

This was irrelevant to the question of infringement, the court said, because the inquiry focuses on whether Chapterhouse copied protectable elements of the Games Workshop figurines, not the utilitarian features. And to the extent that Games Workshop figurines had to be made in a certain way in order for there to be moving parts did not cancel out copyrightability. The court said:

The fact that [Games Workshop] decided to [make] its figurines with components that move in the way they might move in real life is insufficient to render those figurines, or even those particular components, utilitarian and not copyrightable.

Substantial Similarity and Independent Creation

The court rejected Chapterhouse’s arguments that summary judgment ought to be granted on the basis that its accessories were not substantially similar to the relevant Games Workshop works and also that they had been independently created.

According to the court, these issues were not appropriate for resolution at the summary judgment stage and that a reasonable jury could find for Games Workshop on these questions.

Trademark Claims

The court then declined to grant summary judgment on Games Workshop’s 110 trademark infringement claims based on Chapterhouse’s argument that 12 of the trademarks were “abandoned” or disclaimed in deposition testimony.

The court acknowledged that although some of Games Workshop’s trademark claims were unclear, there was no affirmative disavowal of these trademarks by Games Workshop.

The questions of likelihood of confusion and fair use were too dependent on a more thorough exploration of the facts and thus could not be resolved at the summary judgment stage, the court said.

On Games Workshop’s claims of trademark dilution, however, the court found no evidence in the record that the marks were famous and thus granted summary judgment in Chapterhouse’s favor.

Games Workshop was represented by Aaron J. Weinzierl of Foley & Lardner, Chicago. Chapterhouse was represented by Jennifer A. Golinveaux of Winston & Strawn, San Francisco.

Trademarks/Registrations

Employment Recruiter Fails in Bid to Register ‘Talent Assurance’ and ‘Job Assurance’ Marks

In re RiseSmart Inc., T.T.A.B., No. 85050089, 11/27/12

Key Holding: The TTAB affirms refusals to register “Talent Assurance” and “Job Assurance” marks after determining that they would result in confusion with the already registered “Assurance” mark for identical services.

Key Takeaway: The applicant’s inclusion of additional words in its marks does not alter the commercial impression as those words are descriptive in relation to the services the applicant offers under the marks.

By Tamlin H. Bason

The marks “talent assurance” and “job assurance” for employment recruiting services are likely to result in confusion with the already registered “assurance” mark for identical services, the Trademark Trial and Appeal Board held Nov. 27 (In re RiseSmart Inc., T.T.A.B., No. 85050089, 11/27/12).

The board determined that the inclusion in the applied-for registrations of the words “talent” and “job” did nothing to change the overall impression of the marks. Accordingly, the board affirmed the Section 2(d) refusal to register both marks. The board also affirmed the trademark examining attorney’s determination that the words “talent” and “job” are merely descriptive and thus must be disclaimed under Section 2(e)(1) of the Trademark Act.

Registrations Sought for Job Recruiting Services

RiseSmart Inc. is a California-based employment recruiting service. In 2010, it filed applications to register the trademarks “Talent Assurance” and “Job Assurance” in standard characters for a variety of personnel placement and employment recruiting services in International Class 35.

The trademark examining attorney refused both registrations.

The first ground for refusal was that the two marks would result in a likelihood of confusion with the registered “Assurance” mark that applies to “temporary personnel services” in International Class 35. The examining trademark attorney thus refused registration under Section 2(d) of the Trademark Act, 15 U.S.C. § 1052(d).

Registration was also refused under Section 6(a) of the Trademark Act based on RiseSmart’s refusal to disclaim the words talent and job. The examining trademark attorney had instructed RiseSmart to disclaim each word after determining that the words were merely descriptive, and thus ineligible for registration under Section 2(e)(1). RiseSmart refused to disclaim the words, prompting the Section 6(a) rejection.

RiseSmart appealed to the TTAB.

Disclaimer Decision Subject to Review

The first thing the board addressed was whether the issue of disclaimer was subject to review on appeal.

RiseSmart, when it requested review, consented to disclaim both words in the alternative to its argument that both words were suggestive, not descriptive.

The examining trademark attorney argued that because RiseSmart consented to the disclaimer of these words, the issue should not be subject to review on appeal. The board disagreed.

If an applicant responds to a refusal based on descriptiveness by arguing on appeal that the mark has acquired distinctiveness under Section 2(f) then that “is considered an admission that the proposed mark is not inherently distinctive,” Administrative Trademark Judge Karen Kuhlke said. “However, when a claim under Section 2(f) is presented in the alternative, it does not serve as an admission of mere descriptiveness,” the board said. It noted that RiseSmart offered the disclaimer in the alternative, and therefore the board said that the issue was ripe for review.

The board, however, agreed with the examining trademark attorney that both words were merely descriptive. Indeed, both job and talent are descriptive of services that RiseSmart offers under the marks that it has sought to register, the board said. It said:

The word TALENT in the context of applicant’s personnel placement and recruitment services immediately informs the consumer about a significant feature of the services, i.e., that applicant provides talent, namely, personnel with the required skill set.

As for the word JOB, “It clearly, without further thought, directly describes the significant feature of the applicant’s employment services, namely that applicant places people in jobs,” the board said.

The board thus affirmed the examining attorney’s determination that both words needed to be disclaimed.

Marks Would Clearly Result in Confusion

Turning to the In re E. I. du Pont de Nemours & Co., 476 F.2d 1357, 1361, 177 USPQ 563 (C.C.P.A. 1973), likelihood of confusion factors, the board determined that both Section 2(d) refusals were appropriate.

The services offered under the RiseSmart marks and those offered under the registered Assurance mark “are legally identical,” the board said. Accordingly, the board said that it could assume that the services were offered through similar channels of commerce, and thus the second factor, too, weighed against registering the marks.

The board next determined that the word “assurance” formed the dominant portion of both RiseSmart marks.

The board also rejected RiseSmart’s argument that the inclusion of the words talent and job changed the commercial impression of the marks. On the contrary “the additional words in applicant’s mark simply provide more information as to the nature of the services,” the board said. It thus affirmed the Section 2(d) refusals with respect to both applications.

Administrative Trademark Judges Cindy B. Greenbaum and Frances Wolfson joined the board’s opinion.

RiseSmart was represented by Dyan M. House of Carter Stafford Arnett Hamada & Mockler, Dallas. The Patent and Trademark Office was represented by Florentina Blandu, Alexandria, Va.

A special thanks goes to BNA for allowing the IP Section to print its stories. If you are interested in receiving a free 15 day trial from BNA, please contact George Tanguay at 1-800-542-1113 or at gtanguay@bna.com.

IP Section Officer Contact Information

Chair

Michael P. Dulin
Polsinelli Shugart, P.C.
1515 Wynkoop Street #600
Denver, CO 80202
303-572-9300
mdulin@polsinelli.com

Vice Chair

Mollybeth (Molly) Kocialski
Oracle America, Inc.
500 Eldorado Blvd., M/S UBRM 01-200
Broomfield, CO 80021
303-272-9945
Mollybeth.kocialski@oracle.com

Secretary/Treasurer

Danny Sherwinter
Marsh Fischmann & Breyfogle LLP
1881 9th Street, Suite 335
Boulder, CO 80301
720-562-5500
dsherwinter@mfblaw.com

 

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