Lodestar Anstalt v. Bacardi & Co., Ltd. 31 F.4th 1228 (9th Cir. 2022)
By Sydney Baba
Appellant Lodestar Anstalt (“Lodestar”) is a Liechtenstein-based company that develops beverages and spirits such as whiskey and rum. Appellee Bacardi and Company, Limited (“Bacardi”) is also a Liechtenstein- based company that develops spirits with a main focus on rum products.
In 2009, Lodestar filed for an extension of protection for their Liechtenstein-registered trademark “UNTAMED” and a design mark“consisting of a sword piercing a heart bordered by a clover which is draped upon a banner containing the stylized word ‘UNTAMED.’” TheU.S.Patent & Trademark Office (“USPTO”) granted this extension in 2011 for both marks in connection with whiskey, rum, and other distilled spirits, giving the mark parallel trademark protection in the United States.
Lodestar used their UNTAMED word mark in small iterations on the back of its products, namely on “The Wild Geese Soldiers & Heroes”whiskey and rum bottles (“Wild Geese”). UNTAMED was used as the primary, consumer-facing mark on Lodestar’s “Untamed Revolutionary Rum” (“Untamed”) product in response to Bacardi’s use of a similar mark. While the Wild Geese bottles were sold in stores in 2014, Lodestar did not sell their Untamed rum in U.S. stores until January 2015.
In January 2013, Bacardi’s wanted to utilize a new trademark, BACARDI UNTAMEABLE, not as a product label, but for the sole purpose of advertising its rum products. Despite conducting a trademark clearance search and flagging Lodestar’s UNTAMED mark as a risk prior to advertising, Bacardi proceeded with its marketing campaign and began using BACARDI UNTAMEABLE in November 2013. At this time, Lodestar’s UNTAMED product was not in commerce, so Bacardi could allege use of their mark before Lodestar.
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Sanchez v. Los Angeles Dep’t of Transp. 39 F.4th 548 (9th Cir. 2022)
By Rebecca Gonzalez
In 2018, Appellee, the Los Angeles Department of Transportation (“LADOT”), adopted the “Shared Mobility Device Pilot Program” (hereafter “Pilot Program”) in response to growing popularity of scooter-sharing. This program mandated that e-scooter companies obtain a permit from LADOT to rent e-scooters and comply with LADOT rules, regulations, indemnification, insurance, and fee requirements. As a condition of receiving a permit, LADOT required e-scooter operators to disclose real-time location data for every device through an application programming interface called Mobility Data Specification (“MDS”). MDS would be used in conjunction with the e-scooter operator’s smartphone applications to compile real-time data on each e-scooter’s location by collecting the start and end points and times of every ride taken.
In 2017, e-scooter companies such as Bird, Lime, and Lyft began renting e-scooters to the public in Los Angeles. These e-scooters did not have a fixed location and were dropped off or picked up from stations within the service area. Some companies tracked the scooter’s entire ride using built-in GPS trackers, while others used the GPS on the rider’s phone to track scooter pickup and drop-off locations. The scooters are rendered through each companies’ respective smartphone application, which charges the rider based on the distance and duration of the trip taken.
Appellant Justin Sanchez used e-scooters to commute from his home to work, visit friends, frequent businesses, and access places of leisure. Sanchez contended that the Pilot Program’s location disclosure requirement and MDS protocols supplied the government with “Orwellian precision” of e-scooters within 1.11 centimeters of users’ exact location and permitted use of that information to identify trips by individuals and retrace a rider’s whereabouts.
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Stephen Thaler v. Katherine K. Vidal 43 F.4th 1207 (Fed. Cir. 2022)
By Christina Nieves
Appellant Stephen Thaler (“Thaler”) is a software developer and operator of artificial intelligence (“AI”) systems, including the Device for the Autonomous Bootstrapping Unified Science (“DABUS”), a software program which he claims creates inventions that qualify for patent protection.
Appellee Katherine K. Vidal (“Vidal”) serves as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (“USPTO”).
In July 2019, Thaler submitted two patent applications to the USPTO for a “Neural Flame,” which he described as a “light beacon that flashes in a new and inventive manner to attract attention” and a “Fractal Container,” which he described as a beverage container based on fractal geometry.” Thaler claimed both inventions were invented solely by DABUS.
Thaler prepared a supplemental Statement of Inventorship with his patent application to satisfy the inventor’s oath and declaration obligation required by Section 115 of the Patent Act. The statement explained that DABUS is a connectionist AI system listed as a “Creativity Machine” that reassigned DABUS’ inventor rights to Thaler. Thaler claims he was not involved in the conception of the inventions and that any adequately skilled person could have reduced DABUS’ output into practice.
The USPTO found both of Thaler’s patent applications incomplete for failing to specify a valid inventor, consequently sending Thaler a “Notice to File Missing Parts of Nonprovisional Application” for each. Thaler unsuccessfully petitioned to vacate the notices, and the USPTO denied his subsequent request for reconsideration on the basis that a machine does not qualify as an inventor.
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AK Futures, LLC v. Boyd Street Distro, LLC 35 F.4th 682 (9th Cir. 2022)
By Kathleen E. Hinkson
In October 2020, plaintiff AK Futures, LLC (“AK Futures”) created the “Cake” brand to advertise its new Delta-8 THC products, each of which features a logo depicting a two-tier cake overlaid with a stylized letter “C.” AK Futures alleged that, over the course of nine months, Cake products were responsible for $60 million in earnings.
In addition to registering the Cake logo with the U.S. Copyright Office, AK Futures had six pending trademark applications in connection to its e- cigarette products and services. The marks consisted of four treatments of the word “Cake” and two versions of the Cake brand logo.
In the summer of 2021, AK Futures discovered that defendant Boyd Street Distro, LLC (“Boyd Street”) sold e-cigarette products with similar packaging to their Cake product. AK Futures hired a private investigator to purchase the counterfeit Cake products after which their packaging manufacturing team determined that the Boyd Street packaging design was an imitation of the AK Futures Cake packaging. Boyd Street asserted that these products were counterfeits obtained from third parties.
AK Futures brought a claim against Boyd Street for copyright and trademark infringement alleging that Boyd Street sold counterfeit Cake- branded vaping products.
The Agricultural Improvement Act(“FarmAct”) regulates products with a Delta-9 concentration, including AK Futures’s Cake products which included, Delta-8 THC, a chemical compound that occurs naturally in cannabis plants that can be grown into hemp or marijuana depending on the cultivation method utilized.
Per the plain text interpretation of the Farm Act by the U.S. District Court for the Central District of California, AK Futures’s Delta-8 products do not exceed the Delta-9 THC concentration threshold of 0.3 percent and are therefore lawful.
Boyd Street argued that AK Futures cannot trademark these products because federal law prohibits the sale of delta-8 THC.
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Roche Diagnostics Corp. v. Meso Scale Diagnostics, LLC 30 F.4th 1109 (Fed. Cir. 2022)
By Nathan D. Banks
Defendant Meso Scale Diagnostics, LLC (“Meso”) was formed in 1995 from a joint research program venture agreement with IGEN International, Inc. (“IGEN”). The agreement required Meso to develop electrochemiluminescence (“ECL”) immunoassays and included a licensing agreement to retain the rights to the technology produced during the research period.
Plaintiff Roche Diagnostics Corporation (“Roche”) entered into a joint venture with IGEN in 1998, inheriting ECL licensing rights after purchasing Boehringer Mannheim GmbH (“Boehringer”), who was licensed by IGEN in 1992 to “develop, use, manufacture, and sell ECL assays in a particular field.”
IGEN terminated the 1992 Boehringer agreement in 2003 and created a new agreement with Roche that granted a non-exclusive license to their ECL technology in the human patient diagnostics field. The agreement allowed Roche to make sales out of the specified field and required Roche to label its packaging with the field restriction. After the agreement, IGEN transferred their ECL patents to the newly formed BioVeris Corporation (“BioVeris”).
Roche acquired BioVeris in 2007 and publicized its complete ownership of the patented ECL technology, thereby granting its clients unrestricted access to the technology. Roche sent their customers a letter specifying that the field restriction labels were to be ignored and would soon be removed from their ECL products. Roche then began selling their products beyond the human patient diagnostics field restriction.
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