Letter from AmeriKat: 8,000,000, 3, 1970s, 1, $3,340, #24 - US IP News in Numbers

For international travellers coming from the U.S., you will usually find yourself in one of the many Hudson News stores doting our nation's airports pacing the magazine rack for a selection of entertaining flight-fillers. The AmeriKat's favorite staples that are crammed into her already overstuffed Coach carryall, are The Economist, US Weekly (so bad, its good), National Geographic, Psychology Today, Rolling Stone and, front-seat pocket favorites - Time and Newsweek. These are usually the first magazines the AmeriKat starts devouring even before take-off and by the time the plane is taxing to the runway, she has made it to her favorite page - the page with that week's news expressed in numbers. Sadly the AmeriKat is busily stranded in London so the joy of airplane literature have escaped her this summer, but in a tribute to her favorite travel reading she has taken a glossy page out of US news magazines and has put this week's US IP news in figures. (picture, left - the AmeriKat snuggling under her airplane reading)

When IP news is a f(x) of n.....

8,000,000 - The number of patents issued by the USPTO on 16 August 2011 when it granted a patent to Second Sight Medical Products for a product called Argus II - a visual prosthesis apparatus that enhances visual perception for people who have become blind due to outer retinal degeneration. Argus II uses electrical retina stimulation to produce the visual perception of patterns of light. The Argus II is starting its clinical trials in the US and has obtained marketing approval in Europe. President and CEO of Second Sight, Robert Greenberg, stated that "This patent protection and significant federal support for innovation have already played key roles in creating nearly 100 US jobs at our company. Once the Argus II has FDA approval in the United States, we expect to create hundreds of more jobs over the next several years..." IP innovation and protection = economic stimulus, is plainly the message from the USPTO.

75 years - the number of years that it took the USPTO to reach 1 million granted patents in August 1911 when it issued to Francis H. Holton of Akron, Ohio a patent for his improvement in vehicle tires to make them more durable and puncture resistant.

6 years - the number of years that it took the USPTO to go from 7 million patents granted to 8 million patents. The 7 millionth patent was issued to John P. O'Brien for a strong, biodegradable polysaccharide fibers he invented for use in textile applications.

1 - The number of Abercrombie & Fitch articles of clothing the AmeriKat owns - which is far less than the cast of Jersey Shore. IPKat readers may have caught a glance at last week's story that frat-boy favorite apparel retailer, Abercrombie & Fitch, was reported to have offered to pay Michael "The Situation" Sorrentino of MTV reality show Jersey Shore to never where its clothes on air (see A&F press release here) as the "association is contrary to the aspirational nature of our brand, and may be distressing to many of our fans." Many are calling the press release a publicity stunt for a "slow day in August" right before the back-to-school buying begins. However, its interesting to note that a press release about an allegedly detrimental impact on brand reputation was created to increase just that - brand reputation....ahhh, the fickle world of brands!

$3,340 - The cost of the genetic test for breast cancer risk that was subject of Myriad Genetic's recent success in the US Court of Appeals for the Federal Circuit when the court upheld the company's patents on two human genes - BRCA1 and BRCA2 (picture, right - pink ribbon, (c) Science 2002). The sequencing of the genes tests for mutations that increase the risk of a woman getting breast and ovarian cancer. A recent New York Times article reports that despite its recent legal success some commentators are suggesting that the test has been surpassed by newer DNA sequencing techniques which are faster and cheaper. This, the article reports, may be a sign of trouble to come, notwithstanding that Myriad's main patents do not start expiring until 2014. However, Myriad has stated that the company has time to start adapting to the new technology before its patents expire and in the future will be relying more on trade secret protection than on patents. Myriad's CEO Peter D. Meldrum in January stated, in reply to a question about whether Myriad would begin enforcing their European patents, including for BCRA1 and BCRA2, against companies using the genes in tests, that "[i]f I had my druthers, I would not want to go into a new market in a heavy-handed fashion, trying to enforce patents." Instead, the company is reported to begin relying more on its "vastly superior information."

The patent system is premised on requiring public disclosure of inventions - you get to enjoy your monopoly, as long as the rest of us can see and build upon your scientific step for the betterment of society (as long as the use is non-infringing during the limited time you are enjoying your monopoly). Trade secrets, however, are all about keeping information out of the public domain for an indefinite time. Should information, such as the information Myriad has about which of the thousands of mutations in the two genes raise the risk of getting cancer, be kept out of the public domain? If companies with valuable medical information are relying on trade secrets rather than patents, this could have serious impact on the progress of science (Copyright Clause) and in this case, medical research. If this begins to be a trend, are we to blame failings in our patent systems and protections or the desire of companies to maintain a monopoly on proprietary information and technology for as long as possible? Or is this just the same question? Are there public policy arguments for demanding that such information be disclosed, and if so, how does that square with the Anglo-American philosophy of commoditizing property (and IP)for financial gain? Is it only right that a company should use whatever legal means it has to protect its investment and research, regardless of any public policy or ethical considerations? Similiar questions are posed by the New York Times article and by Dan Vorhaus in his blog the Genomics Law Report.

$353 million - the amount of money reported to have been generated by the breast cancer test which accounted for Myriad's $402 million revenue in the year ending June 2011.

3 - The number of grape growers that have successfully claimed that the US government can be joined to a patent invalidity claim. The three Californian grape growers have claimed that a California trade group, The California Table Grape Commission, licensed invalid patents from the US Department of Agriculture(USDA). The USDA owned three patents issued under the Plant Variety Protection Act for grapevines that produce table grapes - Sweet Scarlet, Scarlet Royal and Autumn King. The USDA licensed its rights in the three patents to the California Table Grape Commission, a California state agency. The Commission was established to promote the state's table-grape industry and is funded by a tax levied on each box of table grapes produced in California. The Commission sublicences the patents and under the licences is entitled to retain 60% of the royalties with the remaining 40% going to the USDA. The Commission authorized three nurseries to serve as the exclusive distributors of the patented varieties. The ultimate growers of the grapes have to sign a "Domestic Grower License Agreement" which requires the growers to pay a royalty, prohibits the growers from propagating the plants, and permits the Commission to order the destruction of the purchased plants if the Commission believes the growers are violating the license.

Three grape growers, who purchased the grapevines covered by the patents signed the licence agreement and paid the licensing fee. They then brought a claim for declaratory judgment challenging the patents for invalidity for lack of novelty and that the Sweet Scarlet (picture, left) patent is unenforceable because of alleged inequitable conduct during prosecution at the USPTO. The US Court of Appeals for the Federal Circuit issued a decision last Wednesday that the Administrative Procedures Act ("APA")enables the 3 grape growers to "pursue equitable relief against the USDA on its patent law claims." The 3-judge panel ruled that the USDA could be joined as a party to the claim because the licensing agreement between the USDA and the Commission did no transfer all the rights in the patents, as such the USDA was a necessary and proper party to the grape grower's patents claims. Judge William Bryson, giving the opinion of the Court, held that an amendment to section 702 of the APA "recognizes a right of judicial review for 'agency action'" in that it waives "sovereign immunity for actions seeking relief other than money damages against federal agencies, officers, or employees" - such as the equitable relief sought by the grape growers in their dedicatory judgment for patent invalidity. As such, the grape growers could join the USDA in their action. Allegedly invalid patents are also curse for the US government it seems....

#24 - The ranking given to Girl Talk's album, Feed the Animals, by Rolling Stone in 2008. Girl Talk, the one man band of Gregg Gillis, a former biomedical engineer turned musician, is known for weaving hundreds of samples of recorded music and sounds into frenetic tracks which he releases for free or a la Radiohead model. A recent article in the Huffington Post this week explains why Gillis uses this model when he releases his work under the Illegal Art label. Also this week, EMI won a partial victory in a copyright lawsuit against online music storage site MP3tunes who was found liable for contributory infringement when it failed to remove unauthorized songs from its website after being put on notice. District Judge William Pauley however refused to rule on whether MP3tunes employees were liable for copyright infringement in downloading 171 songs.

1970s - The decade when late sportscaster Myron Cope coined the term "The Terrible Towel" (watch the story here). The Terrible Towel, a yellow and black cloth which is swung about in the air by the Pittsburgh Steeler's (an American football team) fans is the subject of a trade mark infringement suit. The lawsuit brought by the Steelers and Allegheny Valley School (who owns the trade mark and is where Cope's autistic son lived) against Eugene Berry Enterprise alleges that that company filed a trade mark application in May for THE TERRIBLE TOWEL and has been selling shirts with the mark. Eugene Berry Enterprise has been asked to withdraw its application.

Initial interest

With hidden cameras installed in
all hotel bedrooms, the cats took
in in turns to watch for illicit
raids on the minibar ...

The keenly-awaited trial and current tribulations of International Monetary Fund head Dominique Gaston André Strauss-Kahn have attracted copious quantities of media attention following his recent arrest for sexual assault in a New York Hotel. There has also been considerable speculation as to whether DSK, as he is conveniently known, should be relieved of his all-powerful role as a maker and breaker of national economies, and also as to whether it is merely the man himself who stands accused -- or all men, as personified by him. So great is the public interest in the affair that the celebrated French philosopher Bernard-Henri Lévy (or BHL, as he is conveniently known) has had to break with the generally-accepted practice of philosophers today and say something that ordinary people can understand in coming to the defence of his banking friend.

This episode is being watched with interest by more than just the curious public and concerned parties. An Italian company, DSK Srl from Milan, has registered as a Community trade mark (or CTM, as it is conveniently known) a logo (left) representing the now famous letters DSK for goods and services in Classes 2, 28 ("Games and playthings ...") and 40.

A Spanish company, Silver Sanz SA of Barcelona, has also registered as a CTM a DSK logo (right), this time for goods in Class 9: "galvanic batteries, fuel cells, batteries and accumulators and parts therefor; primary packs of rechargeable alkaline batteries; apparatus and instruments for charge surveillance and control of aforementioned goods".

The IPKat has been wondering about the impact of all this publicity for the IMF DSK on the other ones.  Clearly this is not the sort of event against which even the best standards and practices of IP portfolio management can easily guard.  One imagines that, on these facts at least, any attempt by the trade mark owner to cash in on the publicity would be regarded as being in bad taste -- but in different circumstances that might not be so, such as when the owner of a trade mark consisting of a three-letter figurative mark finds that someone who shares the same initials has just won a major golf tournament, been elected to high office or accorded some other high-level status.  Merpel says, if anyone was considering a marketing campaign based on bad taste, the descriptions listed in respect of these two marks would be easy to make use of.

More famous initials:
JFK
LBJ
JK Rowling
PJ Proby
VS Naipul
EL Wisty
IP Kat

Tarnishment by association: a new twist

It is well known that fashion labels send celebrities free samples of their wares in the hope that the celebrity will wear the piece in public, be photographed in the process and hopefully inspire others to follow.

But according to this article, this time it's different: Snooki - that's a woman's name, apparently - is a character from MTV's "reality" show Jersey Shore. She is about as trashy as anyone can be. But she gets a lot of media attention (for the next 15 minutes or so at least). So designer labels send her the latest "must have" purses. But, and that's the punchline: those of their competitors... association with Snooki is obviously considered seriously detrimental to your brand image.

Ever the lawyer, this Kat wonders: is this actionable (leaving questions of proof aside)? The intention is clearly tarnishment of the competitor's trade mark, but it doesn't seem to fit into any well-established categories of tarnishment.

The Pillsbury Doughboy rises to take on My Dough Girl

There is nothing this Kat loves more than bakery related IP stories, especially cupcake litigation (see post here). So this story especially caught her eye via a TechDirt tweet. But before delving into the IP fight, some background is necessary for non-US readers.

The Pillsbury Doughboy is an American advertising icon and mascot for the Pillsbury Company (owned by General Mills) who sells a variety of chilled dough that can be popped in the oven to reveal croissants, cinnamon rolls, buns and cookies. He is, as the name suggests, a "boy" made out of dough. (Picture, left - The Pillsbury Doughboy) His television commercial appearances normally end with a human finger poking his stomach and him responding with a giggle or his trade marked "hoo hoo" (click here to listen). Like Aunt Jemima and the Green Giant before him, the Pillsbury Doughboy enjoys a significant reputation in the US.

So when over eighteen months ago a Salt Lake City resident opened a cookie store called "My Dough Girl" it was only a matter of time until the Pillsbury Dough Boy came a knockin'. My Dough Girl specializes in gourmet cookies named after a specific "Dough Girl" with names such as Penelope, Vivianna and Margo. Like the Pillsbury Doughboy brand, she also sells frozen dough to customers for home baking. When the owner, Tami Cromar, picked the name of her bakery she told NBC affiliate, KSL in Salt Lake City that she went through the proper procedures, namely checking for any potential copyright infringement.

This is supposedly where she went wrong because as many will know this is a trade mark issue, not a copyright issue. The Doughboy then came after her for trade mark infringement when Pillsbury sent her a cease and desist letter this past May demanding she change the name of her business or face a lawsuit. The Pillsbury Company also filed oppositions to The Dough Girl's trade mark applications pending before the USPTO. It is reported that My Dough Girl will be changing their name at a cost of around $50,000 rather than face the costs of litigation.

The fans are not impressed, however, with the organization merely threatening a small business with the prospect of court. A Facebook page devoted to boycotting Pillsbury following its threat to My Dough Girl has drummed up over 800 members in support of Ms.Cromar. A post by Facebook user Cheryl Hawkes Skelton stated:

"Corporations think consumers have no brain power. There is NO way one could possibly confuse the blue and white dough boy with the red sign of My Dough Girl. I haven't purchased Pillsbury in the past, this clinches the deal that I won't in the future."

Another more terse post from user Christopher C. DeSantis stated that:

"Pillsbury's attorneys are far too hungry for billable hours; they should eat some of their own pastries instead. Legal shenanegans (sic) of this nature are frustrating beyond belief, and serve only to underscore the abuses of the legal profession and the greed of mega-corporations. For shame, Pillsbury! What planet are you from? No Pillsbury products for me until you withdraw this ridiculous lawsuit."

This Kat must again reiterate, that as far as she is aware, Pillsbury have only sent a cease and desist letter and have not actually issued proceedings.

Legally speaking, this Kat is skeptical how strong Pillsbury's case really is. The marks and goods are indeed similar when comparing Pillsbury mark as registered, i.e. DOUGHBOY. However, there is something to be said to how the Pillsbury Doughboy is actually refereed to and identified by consumers. This Kat grew up with the Pillsbury Doughboy's reputation, but the link, if any, between the two marks as used is small. This is because in common American nomenclature, the Doughboy is only ever referred to with the "Pillsbury" precursor.

Evidence of actual confusion would be difficult to come by, as well. My Dough Girl operates out of a stand-alone shop, and not, like Pillsbury's products, in every national supermarket through out the US. (Picture, left - is that a litigation ax he is wielding, or just a spatula - you decide) The marketing channels used by the two are extremely different as well. My Dough Girl's marketing seems, as far as can be ascertained, to rely primarily on social networking through its website, Twitter, Facebook page and word of mouth. The Pillsbury Doughboy enjoys multi-network national television campaigns. Further it seems impossible to envisage a scenario where a consumer gets in their car to drive to the grocery store to pick up a can of Pillsbury croissants, drives past My Dough Girl in Salt Lake City, gets confused, stops and purchases their products instead. Economically speaking, as well, if you are in the market for a Pillsbury Doughboy product it is highly unlikely you will be stopping at a gourmet cookie shop instead.

But what about dillution, an astute IPKat reader asks? This Kat believes that the blurring argument is again weaker given the smaller degree of similarity between the marks and the different consumers of the product (thus, decreasing the two's cross-association). And unless Pillsbury would be arguing that the pin-up names of the cookies tarnishes the innocent nature of the Pillsbury Doughboy, she is again unsure how far a dilution argument takes them. For recent dilution case involving Starbucks see this AmeriKat post here.

This Kat believes that this type of threatening conduct by large corporations can actually be more damaging to the reputation of their overall brand than the harm a small business name would actually cause to their trade marks. This Kat suggests that before big businesses blindly send out cease and desist letters they consider the benefit in doing so, not only for their intellectual property protection, but also their brand's reputation.