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Tastes like chicken! Trademark infringement?

Written By: Tabina Haider

As technology progresses, the realm of trademark law is expanding. Many things are now trademarkable; from words and sounds to shapes and symbols. This has grown even to the sense of smell. Precedent has shown that it is possible to trademark a smell. [1] Think back to your kindergarten years and see if you are able to recall the smell of Play-Doh. To many, a distinctive smell pops into their minds that makes them think of Play-Doh specifically. These were the arguments that Hasbro, the company that manufactures Play-Doh, made to the United States Patent and Trademark Office (“USPTO”) when filing to trademark the scent. [2] Due to the distinctive nature of this Play-Doh scent in connection with its goods, Hasbro was able to successfully trademark this particular smell. [3] This trademark makes the Play-Doh scent Hasbro’s official property, prohibiting others from using it. [4]

Since smell is considered trademarkable, the question that naturally follows is whether flavor may also be protectable. Smell and taste are largely connected, and the properties of both senses are very similar, so it makes sense that if one is trademarkable, then the other is as well. The answer, according to caselaw, is that flavor mostly cannot serve as a trademark due to its functional nature. [5] Caselaw even states that scent should also not be trademarkable. [6] This is because flavor and scent are generally seen as a characteristic of a good rather than a trademark and can never be inherently distinctive. [7] Since flavor is the essential function of the product, it is almost impossible to trademark because something that acts to serves its purpose cannot be a trademark.

While it is difficult, it is not impossible to protect flavor as a trademark. A strong showing of acquired distinctiveness can be used to illustrate that a flavor or scent serves as a mark. [8] If an inventor is able to prove with substantial evidence, as Hasbro did with the smell of Play-Doh, that a particular taste makes consumers associate that flavor with the inventor’s brand, that flavor will be protected.

 

[1] Franco Galbo, Making Sense of the Nonsensical: A look at Scent Trademarks and Their Complexities, IPWatchdog (Dec. 21, 2017), https://www.ipwatchdog.com/2017/12/21/scent-trademarks-complexities/id=91071/ [https://perma.cc/8ZP8-JLNZ].

[2] Rachel Siegel, Remember How Play-Doh Smells? U.S. Trademark Officials Get It., Wash. Post (May 14, 2018), https://www.washingtonpost.com/news/business/wp/2018/05/24/remember-how-play-doh-smells-u-s-trademark-officials-get-it/ [https://perma.cc/977J-RSMK].

[3] Id.

[4] Id.

[5] In re Pohl-Baskamp GmbH & Co., 106 U.S.P.Q.2d 1042, 1048 (T.T.A.B. 2013).

[6] Id.

[7] Id.

[8] Id. at 1049.

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Cultural Engagement as a Remedy to Cultural Appropriation in Intellectual Property Law

Written By: Frances Asha

As society, including younger generations, becomes increasingly more cognizant of instances of cultural appropriation and view the practice with disdain, companies and researchers can get their reputations into hot water by utilizing copyright, patent, and trademark law on intellectual property many would argue they have no right to own because that intellectual property is not from cultures that those companies and researchers are part of.

These instances of cultural appropriation are highly visible to the masses thanks to technological advances and the popularity of social media.[1] A Tweet can gain traction and easily get picked up by mainstream media. Suddenly, the whole world is watching. Even before the age of social media, companies still made some public relations blunders involving cultural appropriation.[2] For example, Walt Disney was criticized for trademarking the Swahili phrase “Hakuna Matata” in 1994.[3] Some attorneys defended this trademark, asserting that the trademark protects Disney’s creative use of the phrase for merchandising purposes.[4] In other words, the phrase can still be used freely as part of the language, but not on clothing. However, is it morally acceptable, even if it is legally acceptable, for a company to trademark a phrase it did not invent, especially a phrase from a culture of people whom the company is not a part of?

Companies and researchers can utilize communication, partnerships with indigenous peoples and giving credit where credit is due to reduce these sorts of conflicts, avoiding negative public opinion and maintaining respect for cultural words and traditions. Reaching out to the community the tradition, process, or word comes from can stop cultural misunderstandings about a company’s goals or intentions and  avoid accusations of cultural theft. For example, a mushroom company, Mushroom Mike, was criticized on Instagram for trying to patent huitlacoche, a specific type of mushroom that has been traditionally grown and eaten by indigenous Mexicans for centuries.[5] However, rather than patenting the huitlacoche itself, he sought only to patent a particular growing process for a specific strain of huitlacoche. This process is different from indigenous methods and took Mushroom Mike five years to develop.[6] Partnering with an indigenous farmer who is familiar with huitlacoche to develop a new growing method (or at the very least paying one as a consultant) would mean having someone from the community vouch for the company. This form of community involvement and profit sharing would be one way to show respect for who first discovered and cultivated this type of mushroom. Those interested in improving a traditional method or wanting to incorporate foreign elements into a story they want to sell would benefit from engaging with and learning from the cultures they source their materials from.

Another avenue of reducing incidents of cultural appropriation is through regulation (rather than leaving the onus solely on companies to develop partnerships with indigenous peoples). For example, the World Intellectual Property Organization runs a committee dedicated to “reaching agreement on a text(s) of an international legal instrument(s), which will ensure the effective protection of traditional knowledge (TK), traditional cultural expressions (TCEs) and genetic resources (GRs).”[7] However, even with a regulatory solution, indigenous peoples and other minorities still need to be engaged with to form effective policies that protect traditional practices and expressions. This is why the World Intellectual Property Organization collects information from indigenous panels.[8]

Conflicts involving cultural appropriation can be murky and hard to resolve, but making it an industry standard to communicate and partner with relevant communities; acknowledging where source material comes from; enacting and enforcing policies that protect traditions from unfair use and ownership; and hiring diverse and culturally competent employees are all ways companies and researchers can avoid cultural appropriation. Combating cultural appropriation is not only necessary to maintain a positive public image and customer relations, but it is also a practice that any ethical company should stand behind.

 

[1] Judith Soto, Hands Off My Heritage: Cultural Appropriation and Trademarks, Trademark Now (Mar. 6, 2019), https://www.trademarknow.com/blog/hands-off-my-heritage-cultural-appropriation-and-trademarks [https://perma.cc/XS86-D4LJ].

[2] Id.

[3] Id.

[4] Id.

[5] Linda Black Elk (@linda.black.elk), Instagram (Sept. 1, 2020), https://www.instagram.com/p/CEmeBMclQzR/ [https://perma.cc/JK4R-ZVG2]; Mike Jozwik (@mushroommikellc), Instagram (Aug. 31, 2020), https://www.instagram.com/p/CEkF7OJnRcl/ [https://perma.cc/V9YF-NZ5F].

[6] Jordan Nutting, After 5 Years of Experimenting, Mushroom Mike Develops Corn Fungus for Mexican

Delicacies, Milwaukee J. Sentinel (Aug. 31, 2020, 6:58 AM, Updated Sept. 2, 2020, 7:44 AM), https://www.jsonline.com/story/life/food/2020/08/31/mexican-delicacy-mushroom-mike-finds-way-cultivate-corn-fungus/3339584001/ [https://perma.cc/9QBL-TBFW].

[7]Intergovernmental Committee (IGC), World Intell. Prop. Org. [WIPO] https://www.wipo.int/tk/en/igc/ [https://perma.cc/257H-J394].

[8] Id.

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COVID-19 Vaccine Patent Race

Written By: Alice Chuang

Life in 2020 has been heavily been dictated by the novel COVID-19 virus. With alarming infection and fatality rates has been changing what is considered the “new normal.”[1] Vaccine research and development around the world has come tremendous pressure, resulting in the global patent race for a COVID-19 vaccine.

Generally, a patent is an exchange between the inventor and the national government in which the inventor discloses to the public exactly how to recreate the claimed invention.[2] The incentive is the right to choose who, when, where, and how the invention is manufactured, used, or sold.[3] The patent essentially creates a sort of monopoly over the invention to recoup the investment costs of research and development.[4] While the frenzy to develop a vaccine for the COVID-19 may initially appear to be an altruistic desire to save the world, there are actually significant issues that the patent system causes for this industry as it alters the vaccine-creating motive and causes negative repercussions.

The monopoly that patents grant allows companies to charge prices above what would be available in the free market.[5] This is the freedom to upcharge for drugs that the world desperately needs to reduce the staggering fatality rates.[6] Even though the United States government could bypass patent rights, it would have to provide a hefty compensation to the patent holder.[7]The current system raises the question of whether the intent behind medicine production is solely for monetary gain or for actual public benefit, and whether that intent impacts how our healthcare system operates. What this means for the COVID-19 vaccine race specifically is that a single company could have monopoly over a product that is needed by people around the world and necessary to prevent deaths in many communities.[8] This patent translates to an immense economic power for one with many companies receiving nothing in return for their investments and work.[9] This will also open the floodgates to many patent infringement lawsuits.[10]

Economists and experts have suggested for many years now that the patent system does more harm than good for the healthcare system.[11] A better incentive system is a prize system that separates the act of inventing the vaccine from the actual drug production and distribution.[12] In a crisis situation, like the current global pandemic that we are in, nations should not be engaging in economic nationalism or relying on a patent system that does not foster the most efficient solution.[13] Ultimately, when it comes to a global health pandemic, a system that promotes helping all should be prioritized above economic gain – and the current patent system may not be the right system for that.

 

[1] COVID-19 Dashboard by the Center for Systems Science and Engineering (CSSE) at Johns Hopkins University (JHU), Coronavirus Resource Center (Sept. 23, 2020, 7:15pm showing 31,759,233 cases worldwide and 973,904 deaths), https://coronavirus.jhu.edu/map.html [https://perma.cc/9GBZ-KZDB].

[2] Rebeca Echevarria Harasimowicz, The Global Patent Race for a COVID-19 Vaccine, NAT’L L. Rev. (Mar. 24, 2020), https://www.natlawreview.com/article/global-patent-race-covid-19-vaccine [https://perma.cc/Y54W-5Z3Y].

[3] Id.

[4] Natalie Stoianoff, Whoever Invents a Coronavirus Vaccine Will Control the Patent – and, Importantly, Who Gets to Use It, The Conversation (May 29, 2020), https://theconversation.com/whoever-invents-a-coronavirus-vaccine-will-control-the-patent-and-importantly-who-gets-to-use-it-138121 [https://perma.cc/JH9P-CDYK].

[5] Simon Lester, We Need a Coronavirus Vaccine. Patents Might Slow the Process., CATO Institute (April 8, 2020), https://www.cato.org/publications/commentary/we-need-coronavirus-vaccine-patents-might-slow-process [https://perma.cc/4L35-5X73].

[6] Supra note 1.

[7] Joel Wallace, Mad Dash to Coronavirus Vaccine May Face Legal Hurdles, IPWatchDog (Mar. 12, 2020), https://www.ipwatchdog.com/2020/03/12/mad-dash-coronavirus-vaccine-may-face-legal-hurdles/id=119790/ [https://perma.cc/7ZGH-D7A4].

[8]  Simon, supra note 4.

[9] Id.

[10] Id.

[11] Id.

[12] Id.

[13] Id.

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TikTok’s Uncertain Future in the Short-Form Video app Market

Written By: Edgar Guzman

TikTok, a short-form video social networking application owned by Chinese company ByteDance, has amassed worldwide popularity since late 2018. Unfortunately, alongside a rise in popularity, the app has gained controversy with U.S. lawmakers raising “national security and privacy concerns over ByteDance’s ties to the Chinese government.”[1]

In late 2019, a college student named Misty Hong filed a class-action lawsuit in California alleging that “TikTok and its Chinese parent company, ByteDance, neglected their duty to handle user data with care and knowingly violated a slew of statutes governing data gathering and the right to privacy.”[2]

Under the direction of President Trump and the U.S. Treasury, the Committee on Foreign Investment in the United States (“CFIUS”) has conducted investigations into the acquisition of Musical.ly by ByteDance.[3] CFIUS is a committee that “has the power to block or unwind deals involving foreign investors, and the President of the United States has ultimate authority over its decisions.”[4] According to a report by the Congressional Research Service, the statutory process for CFIUS “sets a legal standard for the President to suspend or block a transaction if not other laws apply and if there is ‘credible evidence’ that the transaction threatens to impair the national security.”[5]

The power afforded to CFIUS investigations is evident based on precedent. Based on similar concerns surrounding personal data collection from application users, CFIUS has previously “forced Chinese investors to divest from PatientsLikeMe, a healthcare startup, and Grindr, an online dating platform, both bought by U.S.-based companies.”[6]

In an Executive Order issued on August 6, 2020, President Trump addressed national security concerns surrounding TikTok.[7] The executive order “seeks to ban business dealings with TikTok by any US citizen or organization after Sept. 20,” while a second executive order, signed on August 14, requires “any sale or transfer of TikTok [to] be approved by CFIUS.”[8] In response, TikTok filed a lawsuit against the U.S. government stating that President Trump’s orders are not supported by evidence or due process, and “disagree[ing] with the characterization of TikTok as a national security threat,” further commenting “that the Trump administration ignored all of TikTok’s efforts to address those concerns.”[9] These efforts included “spen[ding] nearly a year working in good faith to give the CFIUS requested details and information about TikTok’s Business.”[10]

For now, the Trump administration demands TikTok operations be placed in U.S. hands and, as an alternative solution, TikTok and Oracle have agreed to become business partners since “Microsoft announced that it will not buy TikTok’s U.S. operations from ByteDance.”[11] While the exact nature of the agreement and whether it will allow TikTok to survive a ban remains unknown, other competitors are taking advantage of the situation, including Facebook’s new Reels feature on Instagram.[12]

 

[1] Paige Leskin, Inside the Rise of TikTok, the Viral Video-Sharing App Wildly Popular with Teens and Loathed by the Trump Administration, Business Insider (Aug. 7, 2020, 2:20 PM), https://www.businessinsider.com/tiktok-app-online-website-video-sharing-2019-7 [https://perma.cc/9FEM-CU69].

[2] Blake Montgomery, California Class-Action Lawsuit Accuses TikTok of Illegally Harvesting Data and Sending It to China, The Daily Beast (Dec. 2, 2019, 5:20 PM), https://www.thedailybeast.com/california-class-action-lawsuit-accuses-tiktok-of-illegally-harvesting-data-and-sending-it-to-china [https://perma.cc/Q5KJ-6CX2].

[3] Katie Canales, The US Treasury is Investigating TikTok over National Security Concerns, Treasury Secretary Mnuchin says, Business Insider (July 29, 2020, 10:17 AM), https://www.businessinsider.com/us-treasury-investigating-tiktok-bytedance-2020-7 [https://perma.cc/VV9B-GWSN].

[4] Jeff John Roberts, ‘A strange power’: The Secretive Presidential Committee that Could Kneecap TikTok, Fortune (Aug. 7, 2020, 8:31 AM), https://fortune.com/2020/08/07/tiktok-ban-trump-committee-foreign-investment-us-cfius/ [https://perma.cc/4T6G-7T3F].

[5] Congressional Research Service, The Committee on Foreign Investment in the United States (CFIUS) Summary (2020) https://crsreports.congress.gov/product/pdf/RL/RL33388 [https://perma.cc/H7T2-YLTE].

[6] Shining Tan, TikTok on the Clock: A Summary of CFIUS’s Investigation into ByteDance, Center for Strategic & International Studies (May 13, 2020), https://www.csis.org/blogs/trustee-china-hand/tiktok-clock-summary-cfiuss-investigation-bytedance [https://perma.cc/XY7B-6RGX].

[7] Brian Fung, Does TikTok’s Deal with Oracle Avert a US ban?, CNN Business (Sept. 14, 2020, 12:06 PM), https://www.cnn.com/2020/09/14/tech/tiktok-deadlines/index.html [https://perma.cc/2R8H-YN5K].

[8] Id.

[9] Nathan Ingraham, TikTok Sues the US Government over Upcoming ban, Engadget (Aug. 24, 2020), https://www.engadget.com/tiktok-sues-us-government-152040736.html [https://perma.cc/2B8P-2MZV].

[10] Id.

[11] Brian Fung & Selina Wang, TikTok will Partner with Oracle in the United States after Microsoft Loses bid, CNN Business (Sept. 14, 2020, 4:29 PM), https://edition.cnn.com/2020/09/13/tech/microsoft-tiktok-bytedance/index.html [https://perma.cc/33GA-8D3M].

[12] Julia Alexander, Instagram Launches Reels, its Attempt to Keep you off TikTok, The Verge (Aug. 5, 2020, 9:00 AM), https://www.theverge.com/2020/8/5/21354117/instagram-reels-tiktok-vine-short-videos-stories-explore-music-effects-filters [https://perma.cc/F58Z-2686].

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Rise and Shine: Celebrity Hubris and the USPTO

Written By: Riane Briones

In a 2010 interview on The View, host Whoopie Goldberg said to superstar celebrity Beyoncé: “You are Beyoncé,” to which she responded, “Thank you.” [1] The now viral clip is a stark reminder that for many celebrities, a name is the equivalent of a brand and a lifestyle. Names have become such a part of their brands that many celebrities attempt to not only trademark their own names, but their children’s names as well as signature phrases they are most recognized for.

In peak 2000s reality TV fashion, socialite Paris Hilton famously trademarked her signature catchphrase “That’s hot”[2], rapper 50 Cent trademarked his stage name for use in virtually everything [3], and even the iconic Michael Buffer phrase “Let’s get ready to rumble!” has a trademark [4]. Trademarking names and catchphrases is popular because, of course, it gains an upper hand in legal disputes, and, in some cases, it allows celebrities to make money off of their names and personas alone, even when they aren’t specifically selling anything. [5] This is especially true considering the age of social media—on various social platforms, celebrities can cash in on their own personas and gather millions of followers just by displaying their daily lives on Instagram, Facebook, Twitter, and TikTok. [6]

But, for all of the success in celebrity trademarks, some have become more difficult to get through the United States Patent and Trademark Office (“USPTO”). Kylie Jenner, of “Keeping Up with the Kardashians,” attempted to trademark the phrase “rise and shine” after a clip of her singing the phrase became a viral meme. [7] Looking to capitalize on the meme’s popularity, Jenner sought to trademark the phrase for cosmetics and clothing. [8]

One would think that the popularity of the “rise and shine” clip would make trademarking it relatively easy. After all, the clip became the fastest meme to reach one billion views on TikTok and it was reenacted by a number of other prominent celebrities [9]. Surely, this would make the trademark a done deal.

However, in spite of Jenner’s popularity, the celebrity has already faced a number of hurdles in attempting to trademark the phrase. [10] Cathy Beggan, owner of cosmetics company Rise ‘N Shine LLC has already come forward to say that she already owns the trademark in relation to cosmetic products and clothing items. [11]

Jenner has not been successful in trademarking “rise and shine” yet, though the applications are still live at the moment so she may in the future, [12] but the legal battle does serve as a reminder of the phenomenon and, oftentimes, controversy, of celebrity trademarking. For the general public, many could not fathom why Jenner would capitalize on the phrase given that it was relatively common already [13].

Celebrity trademarks are often described as “ridiculous” [14] or “bizarre.” [15] But, during a moment where memes and catchphrases can catapult anyone into overnight fame, it feels unsurprising that celebrities want to cash in where they can. Facing backlash from her ultimately unsuccessful attempt to trademark her catchphrase “Okurrr”[16], rapper Cardi B defended herself in a 2019 Instagram video, stating, “Every single time I go to a corporate meeting, every time I go to a TV show, every time I do a commercial . . . you think I’m not gonna profit off this shit? . . . While I’m still here I’m gonna secure all the fucking bags.” [17] She encouraged her followers to capitalize on viral moments as well, saying, “Let me give y’all a secret too. It’s 2019 bitch, there’s a lot of ways to get rich.” [18]

 

[1] Işıl Dulkan, YOU ARE BEYONCE- Thank You, YOUTUBE (Feb. 6, 2015), https://www.youtube.com/watch?v=NdGjylS8p0g [https://perma.cc/7B2H-T54D]; Kristie Rohwedder, Beyonce Has Perfect Response to “You Are Beyonce”, BUSTLE (Jan. 9,2015), https://www.bustle.com/articles/57746-beyonces-response-to-whoopi-goldberg-saying-you-are-beyonce-is-totally-justified-video [https://perma.cc/3CUT-2AJT].

[2] Andrew LaSane, from Cat Names to Fruit, Here Are 11 Bizarre Things Celebrities Have Tried to Trademark , INSIDER (Oct. 22, 2019), https://www.insider.com/bizarre-things-famous-people-have-tried-to-trademark-2019-6#paris-hilton-has-trademarked-her-reality-show-catchphrase-thats-hot-5 [https://perma.cc/QW2S-K8S6].

[3] Id.

[4] Id.

[5] Kaitlyn Tiffany, Why Celebrities Try to Trademark Their Catchphrases and Baby Names, VOX (April 19, 2019), https://www.vox.com/the-goods/2019/4/19/18507920/celebrity-trademark-history-baby-names-taylor-swift [https://perma.cc/W6KD-QS5S].

[6] Rankin, How Celebrities Really Make Money on Instagram: Behind the Secret World of Social Media Sponsorship, E! ONLINE (June 13, 2016), https://www.eonline.com/news/776628/how-celebrities-really-make-money-on-instagram-behind-the-secret-world-of-social-media-sponsorship [https://perma.cc/7SBU-95A9]; Katie Sehl, 10 Reasons Celebrities Are Better at Instagram Than Brands, HOOTSUITE (Jan. 13, 2020), https://blog.hootsuite.com/10-reasons-celebrities-are-better-at-instagram-than-brands/ [https://perma.cc/C9T9-TY34].

[7] Charles Trepany, Kylie Jenner Has Filed to Trademark ‘Rise and Shine’ and Twitter Is So over It, USA TODAY (Oct. 22, 2019, 11:36 PM ET), https://www.usatoday.com/story/entertainment/celebrities/2019/10/22/kylie-jenner-applies-trademark-rise-and-shine-irks-twitter/4067365002/ [https://perma.cc/2FGS-9SSY].

[8] Clevver News, Kylie Jenner BLOCKED from “Rise & Shine” Trademark!, YOUTUBE (Oct. 30, 2019), https://www.youtube.com/watch?v=asDOrgzitUQ [https://perma.cc/C4RZ-XDFZ].

[9] Kylie Jenner: ‘Rise and Shine’ Fastest to 1 Billion TikTok Views, BBC NEWS (Oct. 22, 2019), https://www.bbc.com/news/newsbeat-50137840 [https://perma.cc/7Z2H-TU3R].

[10] Alexandra Canal, Why Kylie Jenner’s ‘Rise and Shine’ Trademark Try May Not See the Light of Day, YAHOO! ENT. (Oct. 26, 2019), https://www.yahoo.com/entertainment/why-kylie-jenner-might-face-hurdles-with-rise-and-shine-trademark-filing-120039211.html [https://perma.cc/3PGD-SU3Z].

[11] Clevver News, supra note 8.

[12] Trademark Electronic Search System (TESS), USPTO, https://www.uspto.gov/trademarks-application-process/search-trademark-database [https://perma.cc/R224-RDZP] (click on “Search our trademark database (TESS),” then click “Word and/or Design Mark Search (Structured),” then enter rise and shine into the first search box under Basic Index in the dropdown menu and Kylie Jenner into the second search box under ALL in the dropdown menu).

[13] Trepany, supra note 7.

[14] WatchMojo.com, Top 20 Ridiculous Things Celebs Tried to Trademark, YOUTUBE (April 14, 2019), https://www.youtube.com/watch?v=4Xzb7i8iWK0 [https://perma.cc/55PR-EJP5].

[15] LaSane, supra note 2.

[16] Daniel Kreps, Not Okurrr: Cardi B’s Application to Trademark Word Denied, ROLLING STONE (July 3, 2019, 9:52 AM ET), https://www.rollingstone.com/music/music-news/cardi-b-okurrr-trademark-denied-855262/ [https://perma.cc/952F-MCFA].

[17] Katherine Gillespie, Cardi B Defends Trademarking ‘Okurr’, PAPER MAGAZINE (March 22, 2019), https://www.papermag.com/cardi-b-defends-okurr-trademark-2632493539.html [https://perma.cc/952F-MCFA].

[18] Id.

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T-Mobile-Sprint: Pro-competitive results despite a facially anticompetitive merger?

Written By: Chase Westin Laurent

With more than two-thirds of American households accessing the internet on mobile devices, wireless service providers are constantly looking for ways to remain competitive. [1] This has created a battle between major cell phone carriers to acquire competitors when feasible. Courts have blocked some of these previous merger attempts on the grounds that they violated Section 7 of the Clayton Act and decreased competition. [2] In contrast with previous rulings, on February 10, 2020, the United States District Court for the Southern District of New York approved the merger between two of the nation’s largest wireless carriers: T-Mobile and Sprint. [3]

Section 7 of the Clayton Act deems a merger anticompetitive and unlawful when it substantially lessens competition in “any line of commerce . . . in any section of the country.” [4] A prior case found a merger anticompetitive when it led to a market share exceeding thirty percent or when using an alternate measure of market concentration, a Herfindahl-Hirschman Index (“HHI”) increase of 200 points amounting to over 2,500 points. [5] Accordingly, thirteen states and the District of Columbia were able to establish a prima facie case, with T-Mobile expected to hold 37.8 percent of the market’s subscribers and increase its national HHI by 679 points to a total of 3186 points. [6] However, Sprint’s demise as a competitor, T-Mobile’s branding as the “disruptive Un-Carrier,” and DISH’s entry into the market led the court to rule in favor of the T-Mobile-Sprint combination. [6]

As a direct competitor, Sprint’s merger with T-Mobile would on its face decrease competition. [7] But, T-Mobile and Sprint’s management team, presented evidence that Sprint’s standing as a national competitor was soon to be gone. [8] Wireless carriers are constantly challenged with not only maintaining but also improving their network quality by way of either investments or cost-cutting. [9] Sprint’s history of eleven straight years of losses until 2017 and its current $37 billion dollars in debt disabled it from funding improvements by way of investments. [10] Thus, Sprint has turned to cost-cutting, leading to increased complaints regarding network quality, while AT&T, Verizon, and T-Mobile have shifted towards innovation and 5G. [11] This left Sprint with little chance at financial success in the future as customers  move towards the companies on top. [12]

In contrast, T-Mobile has seen almost a decade of successful rebranding and strategizing, which has attracted customers from its competitors. [13] Chief Executive Officer, John Legere, and his team implemented an innovative strategy: identifying and excluding features consumers disliked, such as two-year service contracts, fees for international roaming, and limits on data usage. [14] At prices lower than its competitors, T-Mobile began offering service plans without these undesirable features, greatly challenging AT&T and Verizon to similarly provide “pro-consumer packages.” [15] T-Mobile used the strategy as evidence that it seeks to further its image as the “Un-Carrier” with the merger and not to raise prices or curtail further innovation. [16]

Finally, T-Mobile argued that DISH’s entry into the market of wireless carriers, with nationwide 5G coverage expected by 2023, diminishes any effects of the 4-to-3 merger. [17] Merger Guidelines, though not binding upon the courts, require that a competitor’s entry into the market be timely, or “rapid enough to make unprofitable overall” anticompetitive practices, such as a merger. [18] The court ultimately found DISH’s entry into the market by 2023 timely when considering T-Mobile’s interest in remaining competitive during these three years by not raising prices for the sake of its brand and its consumers. [19]

As a result of the T-Mobile-Sprint merger, the “New T-Mobile” is set to compete with AT&T and Verizon. Whether consumers see the benefits of this merger in the coming years will likely depend on competitors enacting pro-consumer changes, DISH successfully entering the market, and T-Mobile continuing its successful brand strategy. Presuming these all take place, cell phone users will see increased network speeds and quality, more advanced technology, and ultimately lower prices in the near future. The merger’s approval, despite previous contentious rulings, might just work to benefit consumers and increase competition in contrast to its seemingly anticompetitive nature.

 

[1] Kurt Bauman, New Survey Questions Do a Better Job Capturing Mobile Use, UNITED STATES CENSUS (Aug. 8, 2018), https://www.census.gov/library/stories/2018/08/internet-access.html [https://perma.cc/DS43-DLNK].

[2] See, e.g., United States v. AT&T Inc., 541 F. Supp. 2d 2 (D.D.C. 2008); United States v. Phila. Nat’l Bank, 374 U.S. 321(1963).

[3] New York v. Deutsche Telekom AG, 2020 U.S. Dist. LEXIS 23716 (S.D.N.Y. Feb. 10, 2020).

[4] 15 U.S.C.S. § 18 (2019).

[5] Phila. Nat’l Bank, 374 U.S. at 364-66. See also Consol. Gold Fields PLC v. Minorco, S.A., 871 F.2d 252, 260 (2d Cir. 1989).

[6] Deutsche Telekom AG, 2020 U.S. Dist. LEXIS 23716 at *16-17.

[7] Id. at *60-61.

[8] Id. at *174.

[9] Id. at *99.

[10] Id. at *101-02.

[11] Id. at *99.

[12] Id. at *102.

[13] Id. at *29.

[14] Id. at *146.

[15] Id.

[16] Id. at *172-73.

[17] Id. at *145.

[18] Federal Trade Commission, Horizontal Merger Guidelines § 9.1 (Aug. 19, 2010).

[19] Deutsche Telekom AG, 2020 U.S. Dist. LEXIS 23716, at *136.

0

Blackbox: Online voting in the 2020 elections

Written By: Michael Walsh

A Byte of Online Voting

Sorry, you cannot vote online in the primaries or in presidential elections this year. That is, unless you have been selected to participate in one of the few small-scale pilot programs, such as the DemocracyLive system in Seattle, Washington, the Voatz platform in West Virginia, or most recently, the Shadow voting tool used for the 2020 Iowa caucuses just a few weeks ago. [1] These voting tools use blockchain technology to generate a unique hash for each vote. [2] To mitigate the risk of election tampering, the votes are submitted, but not counted electronically. [3] Each electronic submission is verified with a printed version of the ballot, then the printed ballots are tallied to calculate the total number of votes. [4] These electronic systems are usually deployed in areas in which voter turnouts are low or voting is only possible by remote means. [5][6] Ideally, these types of services may help improve voter turnout in the United states—a country in which less than 56% of voting-age adults participated in the 2016 presidential election. [7]

There is little federal oversight for online voting infrastructure, but Congress allocated an additional $380 million for voting infrastructure and security improvements [8], and 85% of those funds are estimated by the U.S. Elections Assistance Commission to be used by states before the 2020 election. [9][10][11] Ideally, those funds will help to alleviate problems in areas with intermittent or low bandwidth internet connections, such as some of the precincts that experienced problems with the Shadow voting app during the 2020 Iowa caucuses. [12][13][14] Additionally, a slew of other bills has been introduced to help secure elections from (predominantly foreign) interference. [15] One amendment to the Help America Vote Act (“HAVA”) of 2002, passed in December 2019, allocated an additional $400 million to help secure voting infrastructure. [16][17] However, some experts indicate that modernizing and securitizing current voting infrastructure would cost nearly $2.5 billion, not considering recurring maintenance costs. [18] To modernize Pennsylvania’s infrastructure alone is estimated to cost upwards of $150 million, which accounts for nearly half of the total HAVA funds allotted from Congress. [19]

Election Security Concerns and the 2016 Election

The costs to establish secure voting infrastructure do not seem so exorbitant when considering voter trust. The year 2016 marked the first year in which Russian interference influenced the presidential elections. [20][21][22] This foreign interference happened not by meddling with voter infrastructure (which now usually verifies electronically submitted votes with paper ballots), but by alternative means such as phishing, distributed denial-of-service (“DDoS”), and denial-of-service (“DoS”) attacks. [23][24][25] Such interference in 2016 will certainly not be the last. [26][27] In a recent national survey that asked politicians about cybersecurity risks, “[f]orty percent said they’ve had an account compromised in a phishing attack. And 60% said they haven’t significantly updated the security of their accounts since 2016.” [28] Even without direct interference with voter infrastructure, threat actors can make a meaningful difference in the outcome of elections with phishing, DDoS and DoS attacks on other vectors including campaign email accounts or insecure servers used by political groups. In response, Microsoft and Google (the companies that provide the most popular email services in the nation) have been implementing security measures to prevent these attacks. Most countermeasures focus on implementing typical information security protections, such as multi-factor authentication, tokenization, and software-based mitigation techniques, such as spoofing and phishing detection. [29][30]

Experts still have many questions about the security and privacy of electronic voting systems, most particularly those that are completely paperless. [31][32][33][34][35] Nevertheless, some voting this year will be done in select states by phone or PC through the Voatz system (but with paper ballot verification). [36] Voatz uses blockchain technology paired with biometric data from users’ phones, such as face scans and fingerprints. Although this version of multi-factor authentication may alleviate fraudulent voting, it poses serious privacy concerns [37] and does not address other salient security risks of online voting, such as phishing, DDoS, and DoS attacks. Regardless, the future of voting is likely to be a digital one, as a recent study from University of Chicago found. The survey estimated that voter turnout could increase by several percentage points [38][39], a figure that could compound with the help of universally compatible voting technology.

 

[1] Emily S. Rueb, Voting by Phone Gets a Big Test, but There Are Concerns, THE NEW YORK TIMES (Jan. 23, 2020), https://www.nytimes.com/2020/01/23/us/politics/mobile-voting-washington.html [https://perma.cc/B2SR-NF88].

[2] Voatz, Frequently Asked Questions, https://voatz.com/faq.html [https://perma.cc/9RBS-6BK5].

[3] Id.

[4] Id.

[5] Emily Dreyfuss, Smartphone Voting Is Happening, but No One Knows if It’s Safe, WIRED (Aug. 9, 2018), https://www.wired.com/story/smartphone-voting-is-happening-west-virginia/ [https://perma.cc/JC2B-SYWF].

[6] Rueb, supra note 1.

[7] Drew Desilver, U.S. Trails Most Developed Countries in Voter Turnout, PEW RESEARCH CENTER (May, 21 2018), https://www.pewresearch.org/fact-tank/2018/05/21/u-s-voter-turnout-trails-most-developed-countries/ [https://perma.cc/4T3C-4JD4].

[8] The Impact of HAVA Funding on the 2018 Elections, U.S. ELECTION ASSISTANCE COMMISSION (2019), https://www.eac.gov/sites/default/files/paymentgrants/TheImpactofHAVAFundingonthe2018Elections_EAC.pdf [https://perma.cc/6KDW-RNEJ].

[9] Id.

[10] U.S Senate Committee on Rules and Administration Oversight of the Election Assistance Commission, U.S ELECTION ASSISTANCE COMMISSION (May 15, 2019), https://www.rules.senate.gov/imo/media/doc/EAC_Testimony.pdf [https://perma.cc/95VB-NA4H].

[11] Elizabeth Howard, Defending Elections: Federal Funding Needs for State Election Security, THE BRENNAN CENTER (July 18th, 2019), https://www.brennancenter.org/our-work/research-reports/defending-elections-federal-funding-needs-state-election-security [https://perma.cc/P7UC-8ZW4].

[12] Kevin Roose, The Only Safe Election is A Low-Tech Election, THE NEW YORK TIMES (Feb. 4, 2020), https://www.nytimes.com/2020/02/04/technology/election-tech.html, [https://perma.cc/2C8W-982G].

[13] Nick Corasaniti, Sheera Frenkel & Nicole Perlroth, App Used to Tabulate Votes is Said to Have Been Inadequately Tested, THE NEW YORK TIMES (Feb. 3, 2020), https://www.nytimes.com/2020/02/03/us/politics/iowa-caucus-app.html [https://perma.cc/B7TG-YJ2P].

[14] Keith Collins, Denise Lu & Charlie Smart, We Checked the Iowa Caucus Math. Here’s Where it Didn’t Add Up, THE NEW YORK TIMES (Feb. 14 2020), https://www.nytimes.com/interactive/2020/02/14/us/politics/iowa-caucus-results-mistakes.html [https://perma.cc/HH8N-DURV].

[15] S. 2669, 116th Cong. (2019); H.R. 1946, 116th Cong. (2019); H.R. 4990, 116th Cong. (2019).

[16] U.S. Election Assistance Commission, How Can The States Use the Funds?, U.S. ELECTION ASSISTANCE COMMISSION (Jan. 6, 2020)  https://www.eac.gov/how-can-states-use-funds-0 [https://perma.cc/79W6-WHYA].

[17] H.R. 1158 § 501, 116th Cong. (2019).

[18] Lawrence Norden and Edgardo Cortez, What Does Election Security Cost?, THE BRENNAN CENTER (Aug. 15, 2019), https://www.brennancenter.org/our-work/analysis-opinion/what-does-election-security-cost [ https://perma.cc/TL69-YCU2].

[19] Howard, supra note 11.

[20] U.S. Senate Committee 116th Congress, Report of the Select Committee on Intelligence United States Senate on Russian Active Measures Campaigns and Interference in the 2016 U.S. Election Volume 1: Russian Efforts Against Election Infrastructure With Additional Views, https://www.intelligence.senate.gov/sites/default/files/documents/Report_Volume1.pdf [https://perma.cc/CZ47-7XLY].

[21] Andy Greenberg, Feds’ Damning Report on Russian Election Hack Won’t Convince Skeptics, WIRED (Jan. 6, 2017), https://www.wired.com/2017/01/feds-damning-report-russian-election-hack-wont-convince-skeptics/ [https://perma.cc/2T8Q-YZR9].

[22] David E. Sanger and Catie Edmonson, Russia Targeted Election Systems in All 50 States, Report Finds, THE NEW YORK TIMES (July 25, 2019), https://www.nytimes.com/2019/07/25/us/politics/russian-hacking-elections.html [https://perma.cc/78SM-YVZ4].

[23] Andy Greenberg, Everything We Know About Russia’s Election-Hacking Playbook, WIRED (June 9, 2017), https://www.wired.com/story/russia-election-hacking-playbook/ [https://perma.cc/EAZ8-W5Z4].

[24] Shannon Bond, 2020 Political Campaigns Are Trying To Avoid A 2016-Style Hack, NAT’L PUB. RADIO (Jan. 28, 2020), https://www.npr.org/2020/01/28/799062773/2020-political-campaigns-are-trying-to-avoid-a-2016-style-hack [https://perma.cc/T2ER-KQ9U].

[25] Jeremey Ashkenas, Was It a 400-Pound, 14-Year-Old Hacker, or Russia? Here’s Some of the Evidence, THE NEW YORK TIMES (Jan. 26, 2017), https://www.nytimes.com/interactive/2017/01/06/us/russian-hack-evidence.html [https://perma.cc/U9CX-N829].

[26] Miles Parks, Russian Hackers Targeted The Most Vulnerable Part Of U.S. Elections Again, NAT’L PUB. RADIO (July 28, 2018), https://www.npr.org/2018/07/28/633056819/russian-hackers-targeted-the-most-vulnerable-part-of-u-s-elections-again [https://perma.cc/MR8E-3H3Q].

[27] Shannon Bond, Microsoft Says Iranians Tried To Hack U.S. Presidential Campaign, NAT’L PUB. RADIO(Oct. 4, 2019), https://www.npr.org/2019/10/04/767274042/microsoft-says-iranians-tried-to-hack-u-s-presidential-campaign [https://perma.cc/K9ST-T55N].

[28] Bond, supra note 24.

[29] Tom Burt, Protecting Democracy with Microsoft AccountGuard, MICROSOFT BLOG (August 20, 2018), https://blogs.microsoft.com/on-the-issues/2018/08/20/protecting-democracy-with-microsoft-accountguard/ [https://perma.cc/7MGY-MW5X].

[30] Lily Hay Newman, Google’s Giving Out Security Keys to Help Protect Campaigns, WIRED (Feb. 11, 2020), https://www.wired.com/story/google-free-security-keys-campaigns/ [https://perma.cc/4TN7-9SQ2].

[31] David Jefferson et al., What We Don’t Know About the Voatz “Blockchain” Internet Voting System (May 1, 2019), https://cse.sc.edu/~buell/blockchain papers/documents/WhatWeDontKnowAbouttheVoatz_Blockchain_.pdf [https://perma.cc/62H2-MQN4].

[32] Michael A. Specter et al., The Ballot is Busted Before the Blockchain: A Security Analysis of Voatz, the First Internet Voting Application Used in U.S. Federal Elections, Mass.  Inst. of Tech., https://internetpolicy.mit.edu/wp-content/uploads/2020/02/SecurityAnalysisOfVoatz_Public.pdf [https://perma.cc/89H7-XLP2].

[33] Abby Abazorius, MIT Researchers Identify Security Vulnerabilities in Voting App, MIT NEWS (Feb. 13, 2020), http://news.mit.edu/2020/voting-voatz-app-hack-issues-0213 [https://perma.cc/AA49-97FS].

[34] Robby Mook et al., Cybersecurity Campaign Playbook, HARV. KENNEDY SCHOOL BELFER CENTER (Nov. 2017), https://www.belfercenter.org/CyberPlaybook [https://perma.cc/82NN-KA57].

[35] Miles Parks, In 2020, Some Americans Will Vote On Their Phones. Is That The Future?, NAT’L PUB. RADIO (Nov 7, 2019), https://www.npr.org/2019/11/07/776403310/in-2020-some-americans-will-vote-on-their-phones-is-that-the-future [https://perma.cc/4W62-9TLS].

[36] Voatz, supra note 2.

[37] Jefferson et al., supra note 31.

[38] David Stone, West Virginia Was the First State to Use Mobile Voting. Should others follow? UCHICAGO NEWS (July 30, 2019), https://news.uchicago.edu/story/voting-mobile-devices-increases-election-turnout [https://perma.cc/NAF9-69B5].

[39] Anthony Fowler, Promises and Perils of Mobile Voting, U. OF CHI. (June 2019), https://cpb-us-w2.wpmucdn.com/web.sas.upenn.edu/dist/7/538/files/2019/06/Fowler_MobileVoting.pdf [https://perma.cc/6N8C-VQGZ].

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Who is responsible for fixing the e-commerce problem surrounding counterfeit products?

Written By: Laura Odujinrin

The Rise of E-commerce

E-commerce sites, like Amazon, eBay, and Etsy, provide huge opportunities for small and medium business (“SMB”) owners to reach customers and grow business in a way that would be nearly impossible with traditional brick and mortar. These e-commerce sites also allow consumers to choose from a much larger pool of products and producers to find exactly the product they are looking for.

In 2018, Amazon, the world’s largest e-commerce platform, [1] had nearly two million SMBs using its e-commerce marketplace platform to reach and sell to customers. [2] Those SMBs sold nearly 4,000 products per minute, [3] totaling $160 billion dollars in sales. [4] The e-commerce industry is only continuing to grow, with sales expected to reach nearly 15 percent of total retail spending and more than $4 trillion dollars in spending in 2020.” [5] But, with increased access, growth, and opportunity for business owners and consumers alike, comes a challenge: counterfeit products.

The Rise of Counterfeit Products

A counterfeit product is a product “made in imitation of something else with intent to deceive.” [6] In 2018, U.S. Customs and Border Protection and U.S. Immigration and Customs Enforcement seized 33,810 counterfeit products that violated intellectual property rights and were worth an estimated $1.4 billion dollars. [7] The number of seized counterfeit products has more than doubled since 2009, and the retail price of seized products has continued to increase year after year. [8]

Many counterfeiters advertise their counterfeit products using language [9] and images copied directly from the original product’s page, [10] leading to many consumers unknowingly purchasing counterfeit goods. To make matters worse, counterfeit goods, unlike authentic goods, often do not adhere to any health or safety regulations, which can lead to the purchase of potentially dangerous and life-threatening products. [11] For example, a CNN investigation found that a counterfeit version of a popular car seat sold on Amazon “broke into pieces in a 30-mph crash test …, failing to meet the basic standards set by U.S. regulators.” [12]

To make matters worse, the burden of finding and reporting counterfeit products currently falls on the small business owners themselves, costing them precious time and money. [13] While a few of the e-commerce sites, like Amazon, offer services to help manage counterfeit products, fighting the counterfeit problem is akin to a never-ending game of “Whack-a-Mole” for many business owners, who successfully get one counterfeit product taken down only to find a new one pop up days or weeks later. [14]

Government Action

E-commerce sites have largely avoided legal liability by claiming that because the copyright products are sold by third party sellers and not by the site itself, the site is protected because it is not the seller of the counterfeit product, but merely a marketplace provider. [15]

In early March of 2020, the House proposed a bi-partisan bill, the Shop Safe Act, which aimed at “address[ing] the problem of the sale of unsafe counterfeit goods by incentivizing [e-commerce] platforms to engage in a set of best practices for screening and vetting sellers and goods, penalizing repeat offenders, and ensuring that consumers have the best (and most accurate) information available to them when they make their online purchases.” [16] The statute would provide clarity where case law has remained obscure, namely addressing the question of “when a platform can be held contributorily liable,” [17] by ensuring that e-commerce platforms who follow the Shop Safe Act’s best practices will not be held legally liable.

Problem Solved?

The Shop Safe Act is a great step in fighting the counterfeit products problem, but since it only pertains to “goods that have a health or safety impact … on consumers,” [18] it leaves many SMB owners, like  artists, creators, and designers whose products do not pose a threat to consumer health or safety, left to grapple with the problem on their own. Whether the Shop Safe Act or other programs developed by the e-commerce sites themselves will help is left to be seen. If all the stakeholders, like the government, e-commerce platforms, business owners, and consumers, can work together to combat the problem, a solution to this ever-growing problem can hopefully be found.

 

[1] Pamela Boykoff & Clare Sebastian, Fake and dangerous kids products are turning up for sale on Amazon, CNN BUSINESS (Dec. 23, 2019, 8:25 AM), https://cnn.com/2019/12/20/tech/amazon-fake-kids-products/index.html [https://perma.cc/B2DY-9N9P].

[2] 2019 Amazon SMB Impact Report, AMAZON at 2, https://d39w7f4ix9f5s9.cloudfront.net/61/3b/1f0c2cd24f37bd0e3794c284cd2f/2019-amazon-smb-impact-report.pdf [https://perma.cc/F6Y9-VD33] (last visited Mar. 17, 2020).

[3] 2019 Amazon SMB Impact Report, supra note 2, at 7.

[4] Id. at 3.

[5] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[6] Counterfeit, MERRIAM-WEBSTER, https://merriam-webster.com/dictionary/counterfeit [https://perma.cc/KDU9-KVPC] (last visited Mar. 17, 2020).

[7] U.S. Customs and Border Protection Office of Trade, Intellectual Property Rights Fiscal Year 2018 Seizure Statistics, U.S. CUSTOMS AND BORDER PROTECTION at 6, https://www.cbp.gov/sites/default/files/assets/documents/2019-Aug/IPR_Annual-Report-FY-2018.pdf [https://perma.cc/N4J5-QVHW] (last visited Mar. 17, 2020).

[8] 2019 Amazon SMB Impact Report, supra note 2, at 7.

[9] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[10] Nicole Nguyen, Stolen Artwork Is All Over Amazon – And Creators Want The Company To Do Something About It, Buzzfeed News (Jan. 23, 2019, 12:02 PM), https://www.buzzfeednews.com/article/nicolenguyen/amazon-counterfeit-art-sellers-fakes-copyright-infringement [https://perma.cc/9FA7-G5P6].

[11] Boykoff & Sebastian, supra note 1.

[12] Id.

[13] Id.

[14] Id.

[15] Alan Rappeport, Lawmakers Propose Making E-Commerce Companies Liable for Counterfeits, The New York Times (Mar. 2, 2020), www.nytimes.com/2020/03/02/us/politics/counterfeits-bill-china-amazon.html [https://perma.cc/RWH6-7LXH].

[16] SHOP SAFE Act of 2020, 116th Cong., 2d Sess. (proposed Mar. 2, 2020).

[17] Id.

[18] Id.

0

Patentability Considerations

Written By: Andrew Campbell Lee, Ph.D.

Practitioners must consider both the prior art [1] and the language [2] used in claims when preparing a patent application.  Patentable subject matter includes “any new and useful process, machine, manufacture, composition of matter, or any new and useful improvement thereof.” [3] While this language appears to have clear meaning in the engineering field for mechanical and electrical inventions, algorithmic inventions must be claimed with the Alice Corp. Pty. Ltd. v. CLS Bank Intern. decision in mind. [4]

Several court decisions impact the determination of what is patentable.  In Alice, the Supreme Court opined that abstract ideas, which are not themselves patent eligible, would not become patent eligible by “recit[ing] . . . generic computer components configured to implement the same idea.” [5] While several test constructs have been used to determine patent subject matter eligibility, [6] the two-part framework from Mayo was applied in Alice. [7]  The Mayo test includes (1) determining whether the claims are directed to ineligible subject matter (e.g., laws of nature, natural phenomena, and abstract ideas), and (2) if so, a subsequent determination must be made as to “what else is there in the claims before us.” [8]

For example, an inventor’s disclosure for a technique to keep law school students awake during lecture may include a method comprising: identifying a facial expression indicative of weariness; determining a metric based at least in part on the identified facial expression; and determining a change in lighting if the metric exceeds a predetermined threshold. [9] This process, as written, could be a thought exercise (e.g., looking at a crowd of people).  This claim would likely run into Alice issues, falling under either prong of the Mayo test.

The United States Patent and Trademark Office (“USPTO”) has provided some guidance in drafting claims with respect to subject matter eligibility. [10]  With the USPTO’s guidelines in mind, a claim may be crafted such as, for example: A method for automatically adjusting lights based on audience, the method comprising: generating image data, using imaging equipment, indicative of an image; determining, using control circuitry, a facial expression metric associated with the image and based on a plurality of reference templates; and generating, using the control circuitry, a control signal based on the facial expression metric for causing an actuator to articulate a lighting fixture. This claim avoids categorization as an abstract idea, the first prong of the Mayo test, because there is tangible input and output requiring more than a generic computer.  Further, if that same inventor describes training a neural network model to more accurately identify the weary students based on a dataset, the USPTO provides useful claim examples, including discussions, to help address these issues. [11]

 

[1] See 35 U.S.C.A. §§ 102-103 (West 2015) (regarding novelty and obviousness rejections based on prior art).

[2] See 35 U.S.C.A. § 112(b) (the claims must “particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention”).

[3] 35 U.S.C.A. § 101 (West 1952) (“whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title”).

[4] Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208, 226-27 (2014).

[5] Id. (reasoning that “the system claims are no different from the method claims in substance”).

[6] See State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (1998) (the machine or transformation test); see Bilski v. Kappos, 561 U.S. 593, 605 (2010) (which deemed the machine or transformation test of State Street a tool but not the “sole criterion”); see generally Daniel J. Burns, Patent Practice After Alice, 2016 WL 1595103, at 2 (March 2016) (providing an overview of patent practice following Alice).

[7] Alice, 573 U.S. at 217-18; see Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 77-80 (2012).

[8] Mayo, 566 U.S. at 77-78; see also Alice, 573 U.S. at 217-18.

[9] This claim is merely illustrative and has not undergone the 35 U.S.C. §§ 102-103 patentability analysis.

[10] See 2019 Revised Patent Subject Matter Eligibility Guidance, 84 Fed. Reg. 50 (Jan. 7, 2019) (hereinafter “2019 PEG”); see also October 2019 Update: Subject Matter Eligibility (October 17, 2019), https://www.uspto.gov/sites/ default/files/documents/peg_oct_2019_update.pdf (addressing comments submitted regarding the 2019 PEG).

[11] Subject Matter Eligibility Examples: Abstract Ideas (January 7, 2019), https://www.uspto.gov/sites/default/files/documents/101_examples_37to42_20190107.pdf [https://perma.cc/T9TF-LXXJ] (see particularly Example 39 for training a neural network).

 

 

0

Are designs used as a source identifier or purely functional?

Written By: Tabina Haider

In our ever-changing society, the fashion industry has found ways to not only keep up with change, but also facilitate it. High-profile designers, such as Gucci, Christian Louboutin, Yves Saint Laurent, and many others have created unique designs with source identifiers. A source identifier is a way for consumers to know which brand is responsible for the product. [1] Some examples of source identifiers are Gucci’s two “G’s,” Yves Saint Laurent’s “YSL” design, and Christian Louboutin’s signature red bottom shoe soles. However, there has been much controversy as to whether these designs serve exclusively as source identifiers or whether they are an aesthetic function.

There has been countless litigation involving aesthetic functionality. If a product feature is deemed functional in any way, it cannot serve as a trademark. [2] In contrast to utilitarian functionality, aesthetic functionality discusses how the look of the product feature serves a functional purpose. [3] Courts have struggled with the application of the doctrine, resulting in issued opinions which define, dispute, and contradict it.

Christian Louboutin red bottom shoe soles provide a great example. Is this design a source identifier or is there an aesthetically functional purpose? When YSL tried to make an all-red shoe, including the soles, Louboutin filed for trademark infringement. [4] YSL claimed having a red sole was functional because it served the function of creating a monochromatic shoe. [5] Even though Louboutin has a valid trademark for the red sole, it is not aesthetically functional because it is not necessary for the sole to be red. The court held it was necessary for the shoe sole to be red in order for YSL to achieve their desired monochromatic shoe. [6] Therefore, Louboutin lost its trademark rights for the red sole in monochromatic red shoes. [7]

Another example involves Glossier’s pink bubble wrap-linked zip-lock pouches which are used to market and sell its cosmetics. Every purchased product is packaged in this signature pouch. Glossier applied for a trademark to register the pink bubble wrap-linked zip-lock pouch, and the United States Patent and Trademark Office (“USPTO”) rejected the application due to the functional design of the packaging. [8] Glossier responded by asserting the bubble wrap is not a feature of the trademark, and it only sought rights in the specific pink color used for the packaging. [9] Because consumers associate the pink color of the bubble wrap and zip-lock bag combination with Glossier products, Glossier claims it can successfully obtain a trademark. [10] The USPTO is currently reviewing the Glossier case. [11]

The Ninth Circuit is expected to clarify the doctrine soon given the doctrine’s controversial and varying application on a case by case basis. [12] Clarity of the doctrine will be integral for companies owning rights to their own designs, strengthening the protections trademarks provide to fashion designers.

 

[1] it law wiki, https://itlaw.wikia.org/wiki/Source_identifier [https://perma.cc/X7RL-JQYJ].

[2] Qualitex v. Jacobson Products Co., Inc., 514 U.S. 159, 165 (1995).

[3] Christian Louboutin S.A. v. Yves Saint Laurent America Holdings, Inc., 656 F.3d 206, 219 (2d Cir. 2012).

[4] Id.

[5] Id.

[6] Id.

[7] Id.

[8] Forget a Logo, Glossier Says that Consumers Know Pink Pouches are Indicators of its Brand, THE FASHION LAW (January 28, 2020), https://www.thefashionlaw.com/home/in-new-trademark-filing-glossier-says-that-consumers-know-pink-pouches-are-indicators-of-its-brand [https://perma.cc/WK2X-PZTL].

[9] Id.

[10] Id.

[11] Id.

[12] David Bernstein, Kathryn Saba, & Emily R. Hush, Ninth Circuit Set to Clarify Aesthetic Functionality Doctrine, IP WATCH DOG (January 17, 2020), https://www.ipwatchdog.com/2020/01/17/ninth-circuit-set-clarify-aesthetic-functionality-doctrine/id=117980/ [https://perma.cc/4B4Y-JLN4].