IP UPDATE

Let’s Not Get It On: Battle of the Greatest Hits

by Kavya Rallabhandi | Nov 14, 2024 | Copyrights

The US Court of Appeals for the Second Circuit affirmed a district court ruling that Ed Sheeran’s 2014 hit “Thinking Out Loud” does not infringe the copyright on Marvin Gaye’s 1973 classic “Let’s Get It On.” Structured Asset Sales, LLC v. Sheeran, Case No. 23-905 (2d Cir. Nov. 1, 2024) (Calabresi, Parker, Park, JJ.)

In 1973, Ed Townsend and Marvin Gaye wrote the Motown hit “Let’s Get It On.” Townsend subsequently registered a copyright for the song’s melody, harmony, rhythm, and lyrics by sending the deposit copy of sheet music to the US Copyright Office. Townsend, Gaye, and Motown Records each held a one-third share in the copyright. Structured Asset Sales (SAS) purchases royalty interests from musical copyright holders, securitizes them, and sells the securities to other investors. SAS owns a one-ninth interest in the royalties from “Let’s Get It On.” Townsend’s remaining two-ninths share in the copyright is split between Kathryn Griffin, Helen McDonald, and the estate of Cherrigale Townsend.

In 2014 Ed Sheeran and Amy Wadge wrote the global chart-topper and Grammy-award-winning song “Thinking Out Loud.” In 2018, SAS brought a copyright infringement suit against Sheeran, Wadge, and various entities that produced, licensed, and distributed “Thinking Out Loud” (collectively, Sheeran). SAS alleged similarities in harmonies, drums, bass lines, tempos, and chord progression combined with anticipation (harmonic rhythm). SAS’s lawsuit followed the Griffin/McDonald/estate of Cherrigale Townsend’s 2017 lawsuit against Sheeran (Griffin lawsuit) alleging materially similar claims.

The district court determined that SAS’s infringement claim was limited to the scope of Townsend’s registration as reflected in the deposit copy (i.e., the sheet music) and excluded the sound recording of “Let’s Get It On.” As evidence that the songs were similar, SAS’s expert witness testified that the “Let’s Get It On” deposit copy included an inferred bass line that matched the bass line in Gaye’s sound recording of “Let’s Get It On” and the bass line in “Thinking Out Loud.” The district court rejected this testimony, concluding that “copyright law protects only that which is literally expressed, not that which might be inferred or possibly derived from what is expressed.”

The district court then denied Sheeran’s two motions for summary judgment without prejudice, determining that whether chord progression and harmonic rhythm in “Let’s Get It On” demonstrated sufficient originality and creativity to warrant copyright protection was a factual question to be determined at trial. Sheeran filed a motion for reconsideration. After the jury in the Griffin lawsuit found that Sheeran did not infringe the “Let’s Get It On” copyright, the district court granted Sheeran’s motion for reconsideration and concluded that “[t]here is no genuine issue of material fact as to whether defendants infringed the protected elements of [‘Let’s Get It On’]. The answer is that they did not.” SAS appealed.

SAS argued that the district court erred in limiting the evidence SAS could present to support its infringement claim and in granting summary judgment in favor of Sheeran. The Second Circuit rejected both arguments.

The Second Circuit explained that excluding the audio recording of “Let’s Get It On” was not error because the 1909 Copyright Act protects [...]

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Moving to Recuse? Too Little, Too Late

by Lois D. Mermelstein | Nov 14, 2024 | Patents

The US Court of Appeals for the Federal Circuit ruled that waiting until well after an adverse summary judgment motion to move for a district court judge’s recusal is untimely and moot, especially where an appeal from the adverse decision is already filed and where the recusal motion is based on public information. Cellspin Soft, Inc. v. Fitbit LLC, et al., Case No. 22-1526 (Fed Cir. Nov. 1, 2024) (Taranto, Prost, Reyna, JJ.) (nonprecedential).

Cellspin filed a complaint for patent infringement against Fitbit and others in October 2017. In February 2021, Fitbit amended its corporate disclosure statement to reflect the completion of its acquisition by Google (an indirect subsidiary of Alphabet). Almost a year later, in January 2022, Fitbit and the other defendants moved for summary judgment of noninfringement in their respective cases, and in June 2022, the district court granted summary judgment.

Months later, in January 2023, after the grant of summary judgment and the filing of notices of appeal from that grant, Cellspin filed a motion to recuse the district court judge based on the judge’s mutual fund investments that were likely to invest in Google. The consulting firm for which the judge’s husband worked also sold Google services, but the judge’s spouse did not do work for Google. The district court denied the motion on the merits as untimely and because the district court lacked authority to vacate the summary judgment that was already on appeal.

Applying Ninth Circuit law and reviewing for abuse of discretion, the Federal Circuit found that Cellspin’s behavior in waiting until well after it had lost on summary judgment, and almost two years after Google’s acquisition of Fitbit became final, “raises obvious concerns of lack of equity and strategic misuse of recusal.” The sources Fitbit cited for the judge’s spouse and the activities of the spouse’s employer were also public well before the summary judgment motion was granted, as were the judge’s financial disclosures.

While there is no specific time limit for seeking recusal, the Federal Circuit (citing its 1989 decision in Polaroid v. Eastman Kodak) noted that “timeliness is a well-established consideration in application of the [recusal] statute. In deciding motions to vacate orders issued by an allegedly disqualified judge, the courts have used ‘untimely’ as a synonym for ‘unfair’ when the circumstances, like those present here, are such that a grant of the motion would produce a result inequitable, unjust, and unfair.”

The Federal Circuit also noted that the risk of injustice to the parties from denying vacatur would also be essentially nonexistent here because the Federal Circuit’s concurrent holding on the summary judgment appeal against other defendants had preclusive effect, resolving Cellspin’s infringement assertions against Fitbit as well.

Practice Note: Any motion for recusal should be promptly filed when grounds for the motion become apparent.

PTO Proposes Additional Audits to Put “Specimen Farms” Out to Pasture

by Taylor MacDonald | Nov 14, 2024 | Trademarks

In response to reports that some registrants use fraudulent specimens to prove continued use in commerce, the US Patent & Trademark Office (PTO) proposed an update to its post-registration audit process. Changes in Post-Registration Audit Selection for Affidavits or Declarations of Use, Continued Use, or Excusable Nonuse in Trademark Cases, 89 Fed. Reg. 85,435 (Oct. 28, 2024).

Since its institution in 2017, the PTO’s post-registration audit process has been essentially random. Pursuant to Section 8 of the Trademark Act, trademark owners are required to file documentation in the form of affidavits of continued use indicating that the marks remain in use in connection with goods or services covered by the registration. In turn, the public relies on the trademark register for notice of marks that may be available for use and registration. The PTO conducts random audits of submitted documentation to ensure its reliability.

Since encountering various filings that revealed “systemic efforts to subvert” a trademark’s use in commerce requirement, the PTO has taken steps to expand its audit program. For example, in 2019, the office amended its examination procedures to highlight “digitally created/altered or mockup specimens” that fraudulently indicate continued use in commerce. In 2021, the PTO became aware of “specimen farms,” which are websites designed to create the illusion of commerce without providing actual sales. To combat deceptive maintenance of obsolete marks, the PTO will no longer perform only randomized audits but will also conduct audits “directed” at items that show tell-tale signs of digital alteration or specimen farm website use.

The objective of the directed audit program is “to promote the accuracy and integrity” of the trademark register. This proposed policy is open for public comments on the Federal eRulemaking Portal until November 27, 2024.

“Conquesting”: Use of Rival’s Name as Keyword Search Term Isn’t Actionable Under Lanham Act

by Karen Gover | Nov 7, 2024 | Trademarks

Noting how rare it is for trademark infringement cases to be decided on summary judgment, the US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of summary judgment finding that the plaintiff law firm failed to establish a likelihood of consumer confusion by virtue of the defendant’s purchase of a keyword search term. Lerner & Rowe PC v. Brown, Engstrand & Shely, LLC, et al., Case No. 23-16060 (9th Cir. Oct. 22, 2024) (Desai, de Alba, JJ.; Chen, Dist. J, sitting by designation) (Desai, J., concurring).

The parties in this matter are rival personal injury law firms based in Arizona. Lerner & Rowe, PC, is the larger of the two firms. It has 19 offices and has spent more than $100 million promoting its brand and trademarks in the state. Brown, Engstrand & Shely, LLC, does business as The Accident Law Group (ALG). From 2015 to 2021, ALG engaged in an internet advertising strategy called “conquesting,” whereby companies promote themselves to potential customers who search for a competitor on the internet. ALG purchased the term “Lerner & Rowe” as a keyword search term so that whenever someone searched for that term, ALG’s advertisements would appear near the top of the search results list. The ALG advertisements themselves never included the term “Lerner & Rowe.”

In 2021 Lerner & Rowe filed a complaint alleging federal and state trademark infringement, unfair competition, and unjust enrichment claims. In 2023 the district court granted summary judgment in favor of ALG as to the trademark infringement and unjust enrichment claims but denied summary judgment on the unfair competition claims. ALG moved for reconsideration, and the district court subsequently granted summary judgment as to all the claims. Lerner & Rowe appealed.

Because there was no dispute that Lerner & Rowe had a protectable interest in its marks, the Ninth Circuit’s trademark infringement analysis focused on assessing the likelihood of consumer confusion. At issue here was “initial interest confusion,” confusion that arises when an alleged infringer uses a competitor’s mark to direct attention to its own product. The Ninth Circuit used the four-factor test articulated in its 2011 decision in Network Automation v. Advanced Sys. Concepts to analyze likelihood of confusion in a keyword advertising context:

Strength of the mark.
Evidence of actual confusion.
Type of goods and degree of care likely to be exercised by the purchaser.
Labeling and appearance of the advertisements and the surrounding context on the screen displaying the results page.

Other less relevant factors include “the proximity of the goods, similarity of the marks, marketing channels used, defendant’s intent in selecting the mark, and likelihood of expansion of the product lines.”

The Ninth Circuit found, and ALG did not dispute, that Lerner & Rowe’s mark was strong, but the Court concluded that the other three factors favored ALG. As to evidence of actual confusion, Lerner & Rowe offered 236 phone calls received by ALG in which the caller mentioned Lerner & Rowe by name when asked [...]

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Equivalence Requires Element-by-Element Proof With Linking Argument

by Tessa Kroll | Nov 7, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed a district court determination that a patent owner had not provided the “particularized testimony and linking argument” required to demonstrate equivalence under the doctrine of equivalents. NexStep, Inc. v. Comcast Cable Commc’ns, LLC, Case No. 2022-1815 (Fed. Cir. Oct. 24, 2024) (Chen, Taranto, JJ.) (Reyna, J., concurring in part and dissenting in part). In his dissent, Judge Reyna criticized the majority for ignoring the totality of the evidence presented by the patent owner and imposing a new rule requiring patentees to always present expert testimony to prove infringement under the doctrine of equivalents.

NexStep owns a patent directed to a “concierge device” for assisting users with obtaining customer support for smart devices. The claims are directed to a concierge device that initiates a technical support session in response to “a single action” (i.e., a single button press) by a user. After the claimed “single action,” the concierge device conveys consumer device identification information for the product at issue, identifies an appropriate technical support team for the product, and causes the home gateway to initiate a support session for the device and forward the consumer device information during the session.

NexStep sued Comcast for patent infringement, asserting that three tools in Comcast’s mobile smartphone application infringed the concierge device patent: Xfinity Assistant, Troubleshooting Card, and Diagnostic Check. Each of these tools assists users with troubleshooting a given device in response to the user pressing a series of buttons on a smartphone’s display. At trial, NexStep argued that pressing a series of buttons literally met the single action limitation because a single action could comprise a series of steps. By way of illustration, NexStep’s expert explained that throwing a baseball – a single action – required multiple steps: “[W]hen you throw a baseball, you pick it up, you orient it, you get it in your palm, you throw it.”

The jury returned a verdict of no literal infringement but found infringement under the doctrine of equivalents. Comcast moved for judgment as a matter of law, which the district court granted after finding that NexStep had failed to offer the “particularized testimony and linking argument” required to demonstrate equivalence. NexStep appealed.

The Federal Circuit emphasized that the doctrine of equivalents provides a “limited exception” to the principle that the claim defines the scope of the patentee’s exclusivity rights, and that a finding under the doctrine of equivalents is “exceptional.” To guard against overbroad applications of this exception, the Court’s precedent imposes specific evidentiary requirements necessary to prove infringement under the doctrine. The patent owner must provide proof on an element-by-element basis and from the perspective of someone skilled in the art, “for example through testimony of experts or others versed in the technology; by documents . . . and . . . by the disclosures of the prior art.” Finally, the patent owner must provide “particularized testimony and linking argument as to the insubstantiality of the differences between the claimed invention and the [...]

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