Proposed Changes to Canadian Trademark Regulations: Enhancing Efficiency and Addressing Official Marks

As discussed in my short article of July 10, 2024, important changes to the Canadian Trademark Regulations have been proposed. The changes have not yet come into effect and are still subject to change. The consultation period closed on July 8, 2024. In future articles, I will discuss comments that are being debated and next steps in the implementation process.

One set of changes is directed at improving the efficiency of the trademark dispute resolution process. Another set of changes enables the Registrar to inactivate official marks.

In the remainder of this article, I set out some of the details regarding both of these proposed changes.

First, regarding changes to the dispute resolution process, those involve three main elements, namely:

Cost awards;
Confidentiality orders; and
Case management.

Cost cannot presently be awarded in trademark opposition proceedings. The changes would enable the Registrar to order costs to prevent undesirable conduct by the parties. The amendments prescribe fixed-cost awards based on the type of proceeding and the reason for awarding costs, and those awards range (in 2024) between $1,100.00 and $10,400.00. Costs would not be awarded if the proceeding is terminated before a final decision issues.

Presently, all documents filed with the Registrar are publicly accessible. This can cause parties to not file full evidence before the Opposition Board, and to only file that evidence on an appeal to the Federal Court. The proposed changes would allow the Registrar to order, at the request of a party, that certain evidence be kept confidential. The request would need to describe the evidence,  state that it has not been publicly disclosed, set out why the information is to be kept confidential, and indicate whether the other party consents to keeping the evidence confidential.

Finally, regarding case management, the proposed changes would allow the Registrar to designate certain proceedings as “case managed”. The Registrar would also have the right to give any direction or make any order to deal with matters efficiently and cost-effectively, and to fix the timeline for any step in a case-managed proceeding, despite the timeline provided under the Trademarks Act.

Second, regarding official marks, we first note that those are unique to Canadian trademark law, and “public authorities” can claim a broad scope of protection through those marks. The requirements for an entity to qualify as a “public authority” have evolved over the years and some owners may no longer qualify as public authorities. Official marks can be cited against an application and, if the applicant provides evidence that the official mark holder no longer exists, the Registrar will withdraw their objection. However, the Registrar does not presently have the authority to cancel an official mark on the basis that its owner is no longer a “public authority”. To do so, a third party must commence an action in the Federal Court. The proposed changes would allow a third party to request that a public notice issue against an official mark. A fee of $325 would be paid and a proceeding before the Opposition Board would take place to determine, for example, whether the holder of an official mark continues to be a public authority or even continues to exist. This procedure would be a cost-effective and efficient way to clear “deadwood”.  

Important Amendments to Canadian Trademark Regulations

On June 8, 2024, proposed amendments to Canada’s Trademarks Regulations were published in the Canada Gazette. The public consultation period is open until July 8, 2024, and comments will be posted on the Canada Gazette website following the end of the consultation period.

A coming-into-force date has not yet been set but the Canadian Intellectual Property Office indicates that sufficient time will be provided to ease the transition.

(more…)

Cinema and copyright: limitations of transfer agreements and exploitation licences

Facts

The first plaintiff, a company, was established in 1989. Its sole partners were:

GZ and GS, cinematographers;
SE (who had the pseudonym “L”), actor, writer, and screenwriter (second plaintiff); and
KF, director.

(more…)

Seedlings of Ideas For Artificial Intelligence: Learning From A Genetic Resources/Traditional Knowledge Treaty, The Plant Patent Act, & Nico Tanner

The World Intellectual Property Organization announced on May 24, 2024, a treaty on intellectual property, genetic resources, and associated traditional knowledge that was twenty-five years in the making.  As WIPO’s press release noted, “[n]egotiations for this Treaty began at WIPO in 2001, initiated in 1999 with a proposal by Colombia, where discussions were notable for their inclusion of Indigenous Peoples as well as local communities.” Because the treaty has importance in and of itself for the subject matter it covers, we will describe its substance. But because it also provides an example of process and structure that could help address concerns over the ownership of works created by deploying artificial intelligence (especially when coupled with an understanding of the history of laws governing US plant patents), we will also look at its evolution to help us think outside the box that some have worked themselves into on artificial intelligence works questions. Plus, I had not focused a piece on a treaty since 2016 (when I wrote about the TRIPS treaty on geographic indicators) and 2015 (when I wrote about the Trans-Pacific Partnership on trade secrets), so I seemed overdue. (more…)

The ownership debate: Intellectual property in AI. Who does it belong to?

With the rise in the use of artificial intelligence (AI) in all forms, the question is becoming more present than ever – who owns the intellectual property in a work created with the use of AI?

In Australia, there is currently no law specific to the ownership of intellectual property created in computer-generated works, whether that be art, music drafting documents, or other written works.

Is AI the ‘owner’ of created works under the Copyright Act?

Under the Copyright Act 1968 (Cth) (the Act), the author of a literary, dramatic, musical, or artistic work is the owner of any copyright subsisting in the work.

To be protected by the Act, the author of a work must be a ‘qualified person’, meaning that they are a citizen or resident of Australia or a country that Australia has promised copyright protection to under international treaties and conventions. For this reason, AI itself cannot be the author (and therefore, owner) of generated intellectual property.

Does this mean a human (or a corporation, in the case of an employee creating the works) is the ‘owner’ of created works?

Not necessarily. Although not specifically considering the use of AI, the ‘owner’ of created works was considered by the High Court in IceTV Pty Ltd v Nine Network Australia Pty Ltd [2009] HCA 14.

In this case, IceTV provided a subscription-based electronic television program guide known as the “IceGuide”, which at the time used time and title information collected from newspaper and online TV guides (aggregate guides).

Television networks provided the information from the aggregate guides to media outlets for publication, one of which was the Nine Network, which argued that IceTV’s reproduction of information from the aggregated guides amounted to the reproduction of a substantial part of the weekly schedules prepared by Nine Network staff. On this basis, Nine Network was the owner of the created works and IceTV was infringing Nine Network’s copyright.

The case eventually escalated to the High Court where it was found that factual data alone cannot be sufficient to attract protection under the Act. In order for a work to be sufficiently original to qualify for copyright protection, there must be an exertion of human skill, creativity, ‘sweat of the brow’ and must involve some independent intellectual effort.

Under this view, if in the creation of a work using AI, a person uses independent intellectual effort, creativity, and skill, that person will likely be considered the owner of the work. The same would apply if it were a group of people, who would be considered joint owners of the work.

However, in the alternate, where there is no human author because there was little involvement in the creation of the work using AI, or purely factual data was used, there will be no copyright protection afforded to the AI-created work.

Do the same rules apply to patents?

Notwithstanding that AI cannot own the intellectual property used to create a patentable item, the recent case of Thaler v Commissioner of Patents [2022] FCAFC 62 considered whether it was possible for AI to be listed as the inventor of a patent.

In this case, Dr. Stephen Thaler filed a patent application for ‘food container and devices and methods for attracting enhanced attention’, nominating his AI system DABUS as the inventor in the application. In the first instance the Commissioner of Patents rejected the application because it did not meet the requirements prescribed by the Patent Regulations 1991 (Cth) (Patent Regulations), that is, it was not possible to identify a person to who the application could be granted.

Dr Thaler appealed that decision to the Federal Circuit Court successfully on the basis that ‘inventor’ was not defined in the Patents Act 1990 (Cth) or the Patent Regulations and therefore, nothing expressly prohibited AI from being the inventor in the application. However, on further appeal to the Full Court of the Federal Circuit Court, the decision was unanimously overturned, with the Court determining that an ‘inventor’ must be a ‘natural person’. 

Dr Thaler attempted to appeal this decision to the High Court, however, leave to appeal was not granted and so the Full Court of the Federal Circuit Court’s decision stands, leaving open the opportunity for the High Court to consider issues of this type in the future. Notably, the Full Court of the Federal Circuit Court’s decision is consistent with the position of other jurisdictions to date, including the UK, the United States of America, Europe, and New Zealand.

Keeping up with the evolution of AI

It is well known that technology can develop much faster than laws and regulations. Some jurisdictions, including the UK and New Zealand, have updated their legislation to clarify that the ownership of computer-generated works is the person ‘by whom the arrangements necessary for the creation of the work are undertaken’ (UK) and the person who ‘made the arrangements necessary’ for the creation of the work (NZ). However, the same updates to legislation remain to be seen in Australia. Back to the question in the title of this article – who does AI-generated work belong to? The answer: Well, it depends.

IP ├ IP???: The Logic Of Election Year Legal Disputes Over Proprietary Intangibles

Title? Typo? Cryptic code? Equation?

Really it is a combination of three of the four. In other words, it is not a typo (You can look elsewhere in this piece for those).

One key to understanding the reference above is the mathematical logic symbol ├, which is known as the “’turnstile’…because of its resemblance to a typical turnstile if viewed from above. It is also referred to as tee.” It is meant to mean “yields” or “entails,” and here the familiar initials “IP” are used to the right of the turnstile with question marks as an indication of “intellectual property” (that “umbrella term for a set of intangible assets or assets that are not physical in nature”) and the questions it raises. The “IP” to the left of the turnstile is not tautological—it stands for “interesting politics,” leaving the tail of the title to be a logic language shorthand for “Interesting Politics Yield Intellectual Property Questions.” 

And how true that is these days. For instance, we await a US Supreme Court decision in Vidal v. Elster, a case argued November 1, 2023, and that this author has written about before (here and here) concerning whether the refusal to register a trademark (Trump Too Small) under 15 U.S.C. § 1052(c) when the mark contains criticism of a government official or public figure violates the Free Speech Clause of the First Amendment.  But, since we already hit that topic and can write more about it once the Vidal decision comes down, let’s see what else is out there. 

We have a great mix of other issues as the political season heats up. This ranges from concerns about “deep fakes” like the Faux Biden robocall to shallower AI-driven authorized messages like we are seeing in connection with India’s election. It also includes the recurring dust-ups between musical artists and politicians concerning songs played at campaign rallies. Beyond that, we have a copyright fight between a former Congressman and a late-night talk show host.  So we can jump into these issues now.  

Deepfakes or Deep Fakes ⊭ Always Something Produced By Adversaries To Do Damage

The dictionary definition of “deepfake” (sometimes written as two words) is “a video of a person in which their face or body has been digitally altered so that they appear to be someone else, typically used maliciously or to spread false information.” While some forms of them have appeared for almost as long as photographs and movies have existed, concern over deepfakes has taken on added emphasis in the age of mass media and artificial intelligence:

deepfake technology takes its name from deep learning, which is a form of AI. In deepfake AI, deep learning algorithms that teach themselves how to solve problems with large data sets, are used to swap faces in videos, images, and other digital content to make the fake appear real.

Deepfake content is created by using two algorithms that compete with one another. One is called a generator and the other one is called a discriminator. The generator creates the fake digital content and asks the discriminator to find out if the content is real or artificial. Each time the discriminator correctly identifies the content as real or fake, it passes on that information to the generator so as to improve the next deepfake.

[All You Need to Know About Deepfake AI, Nov. 21. 2022]

On the internet, you can actually watch an example of this process as the creation evolves into a better and better deepfake in real-time. Deepfakes can obviously raise concerns in the political realm, as a candidate’s opponents could create a video or audio tape including a “candidate” making statements that he or she never made that would place that candidate in a bad light in the eyes of supporters. 

For instance, as noted by law enforcement officials in that state, in connection with this year’s New Hampshire presidential primary, numerous New Hampshire residents received a robocall phone message that appeared to be a recording (it was not) of President Joe Biden urging them not to vote in the January 23, 2024, New Hampshire Presidential Primary Election. Shortly after that, the US Federal Communications Commission issued a declaratory ruling making the use of AI-generated voices in robocalls illegal under the  Telephone Consumer Protection Act. As the FCC noted in its press release at the time, “Bad actors are using AI-generated voices in unsolicited robocalls to extort vulnerable family members, imitate celebrities, and misinform voters. We’re putting the fraudsters behind these robocalls on notice….State Attorneys General will now have new tools to crack down on these scams and ensure the public is protected from fraud and misinformation.”

As noted elsewhere (with footnotes), this is but one recent legal response among many to deepfakes in the US and around the world:

In the United States, there have been some responses to the problems posed by deepfakes. In 2018, the Malicious Deep Fake Prohibition Act was introduced to the US Senate,[215] and in 2019 the DEEPFAKES Accountability Act was introduced in the House of Representatives.[16] Several states have also introduced legislation regarding deepfakes, including Virginia,[216] Texas, California, and New York.[217] On 3 October 2019, California governor Gavin Newsom signed into law Assembly Bills No. 602 and No. 730.[218][219] Assembly Bill No. 602 provides individuals targeted by sexually explicit deepfake content made without their consent with a cause of action against the content’s creator.[218] Assembly Bill No. 730 prohibits the distribution of malicious deepfake audio or visual media targeting a candidate running for public office within 60 days of their election.[219]

In November 2019 China announced that deepfakes and other synthetically faked footage should bear a clear notice about their fakeness starting in 2020. Failure to comply could be considered a crime the Cyberspace Administration of China stated on its website.[220] The Chinese government seems to be reserving the right to prosecute both users and online video platforms failing to abide by the rules.[221]

In the United Kingdom, producers of deepfake material can be prosecuted for harassment, but there are calls to make deepfake a specific crime;[222] in the United States, where charges as varied as identity theft, cyberstalking, and revenge porn have been pursued, the notion of a more comprehensive statute has also been discussed.[208]

In Canada, the Communications Security Establishment released a report which said that deepfakes could be used to interfere in Canadian politics, particularly to discredit politicians and influence voters.[223][224] As a result, there are multiple ways for citizens in Canada to deal with deepfakes if they are targeted by them.[225]

In India, there are no direct laws or regulation on AI or deepfakes, but there are provisions under the Indian Penal Code and Information Technology Act 2000/2008, which can be looked at for legal remedies, and the new proposed Digital India Act will have a chapter on AI and deepfakes in particular, as per the MoS Rajeev Chandrasekhar.[226]

In Europe, the European Union’s Artificial Intelligence Act (AI Act) takes a risk-based approach to regulating AI systems, including deepfakes. It establishes categories of “unacceptable risk,” “high risk,” “specific/limited or transparency risk”, and “minimal risk” to determine the level of regulatory obligations for AI providers and users. However, the lack of clear definitions for these risk categories in the context of deepfakes creates potential challenges for effective implementation. Legal scholars have raised concerns about the classification of deepfakes intended for political misinformation or the creation of non-consensual intimate imagery. Debate exists over whether such uses should always be considered “high-risk” AI systems, which would lead to stricter regulatory requirements. [227]

Additionally, “[a] few states have also passed legislation addressing deepfakes in political ads, with Minnesota and Texas criminalizing the use of deepfakes to influence elections. Washington State passed a law last year addressing ‘synthetic media,’ referring to audio or video recordings used in political ads.” Ivan Moreno,  3 Takeaways On How AI Is Forcing Publicity Rights To Evolve, Law360 (April 24, 2024, 8:35 PM EDT).

One might read the present section of this blog up to this point and wonder what the IP (i.e. intellectual property) angle is up to this point, as this seems more about new political norms than traditional intellectual property rights.  But that is not the case—inherent in the blocking of deepfakes of politicians (and of others) is the notion that the candidate (or the media star) has an inherent right to control his/her own name, image, voice, and likeness. So there is an IP basis for some of these emerging policies. Caution, however, demands that one consider the use of this technology by those who do actually enjoy the right to control that name, image, voice, and likeness being manipulated by AI.

Whatever do I mean by that? To answer that question, we turn to Indian politics. In India, as reported by the New York Times recently, Indian politicians are now using the same AI tools that deepfakers might use to make unauthorized use of another’s name, image, voice, and likeness to make on the politician’s behalf audio-visual presentations of things that candidate never actually said in languages that candidate has never actually spoken. The hope is that such candidates can use such communications to endear themselves to the particular constituency receiving such messages—even though the candidate may never have said such things in any language, much less in the primary language of the recipient. 

In other words, the person controlling through the right of publicity his or her own name, image, voice and likeness can use AI to project to the public positive images and statements that are just as synthetic and unreal as a damaging image created by opponents. Of course, from an IP perspective, one can fictionalize one’s own life to a certain respect as part of controlling one’s own name, image, voice and likeness. But if the person never said those words or spoke that language, the image of them doing so remains as fake and co-opting as J. Peterman’s biography based on Kramer’s exploits, and leads us to view deepfakes in a new light—they can “misinform voters” when created by the candidate just as easily as when created by the candidates’ opponents and when created by the holder of the right to publicity just as much as when created by the usurper of those rights. This becomes another level of falsity that can perhaps multiply the so-called Liar’s Dividend, a whole other aspect of AI-related ethics, because one can create evidence of positive statements never uttered while at the same disputing actual evidence of what was said—sounds like a politician’s dream (As noted by Cat Casey, “Liar’s Dividend” or “Deepfake Defense” is a term coined by law professors Bobby Chesney and Danielle Citron that “refers to the idea that bad actors making false claims about deepfake evidence are increasingly believable as the public learns more about deepfake threats. Simply put, the more the public learns about the believability of deepfakes, the more credible false claims become, even in the face of real evidence. As people’s trust in the veracity of visual content is further eroded, the challenge of evidence authentication increases. False claims of AI-generated content and deepfake detours have already graced the courtroom…. ‘The most insidious impact of #deepfakes may not be the fake content itself, but the ability to claim that real content is fake.’”)

Hence, the title of this subsection deploys the “negated double turnstile” logic symbol ⊭, which means “does not semantically entail” as in  “A ⊭ B says ‘A does not guarantee the truth of 𝐵.  In other words, 𝐴 does not make 𝐵 true.” Thus, this section heading “Deepfakes or Deep Fakes ⊭ Always Produced By Adversaries To Do Damage” reads “Deepfakes or Deep Fakes Are Not Always Something Produced By Adversaries To Do Damage.” Deepfakes can just as easily be created by proponents to falsely enhance or endear one to a particular constituency by making it seem like the candidate actually said something that they wanted to hear. The notion of finding liability for the misuse of one’s own right of publicity is an interesting intellectual property concept upon first stating it. But it is close enough to traditional notions of false advertising and unfair competition to seem like a prohibition with sufficient intellectual property roots to take hold.

Playing SongHaving The Endorsement, Or Does It?

Campaigning politicians love to enter or exit venues walking through floating balloons and falling confetti as some popular song enhances the moment and vibe. Often selected as part of conveying a message about, or an image of, the candidate, the list of campaign songs goes way back across US history, as just one example. Whether it was Walter Mondale looking for underdog mojo needed to score a knockout by turning to the Rocky theme “Gonna Fly Now” in 1984 against an incumbent Ronald Reagan, or Nikki Haley looking for the same thing by using “Eye of the Tiger” in 2024 Republican primaries against Donald Trump, politicians have often set their messages to music.

But musicians often object to such use. For instance, Kim Davis, the embattled county clerk jailed for refusing to issue marriage licenses for same-sex couples, had many rally around her, and she emerged during at least one of those rallies to Survivor’s “Eye of The Tiger” being played in the background. That drew a rebuke from the song’s co-author, as noted in Variety. Similarly, as also noted by Variety, “Neil Young objected to Donald Trump’s use of “Rockin’ in the Free World” at his presidential campaign announcement in June [2015].” As Associated Press has noted, Bruce Springsteen, Phil Collins, and John Fogerty have also objected to Donald Trump’s using their songs at campaign events, just as Springsteen had objected to Ronald Reagan’s using “Born In the USA years ago; other artists have also expressed discontent with their songs being played at Trump events. Some artists and songwriters have gone beyond simply voicing displeasure. For instance, as Entertainment Weekly noted, ABBA sent John McCain a cease and desist letter during the 2008 Presidential campaign. Neil Young actually sued Donald Trump in an effort to stop Trump’s use of “Keep on Rockin’ in the Free World,” as one commentator noted

Commentator Jay Gabler summed up the question and answer quite nicely before the last presidential election:

So why is this still a thing? Why can’t musicians get political candidates to stop using their music at campaign events? Well, it’s complicated, but essentially, the reality is that in almost all cases, artists actually don’t have the legal right to tell a campaign to stop playing their songs at events. The reason for that is that most major artists sign licensing deals with performance rights organizations like ASCAP and BMI.

Any public event, if they want to play music, needs to pay for a license, but once organizers have paid for that license, they can pretty much play any songs they want. If that kind of agreement weren’t in place, Neil Young and ABBA would have to strike a deal with every restaurant, bowling alley, and wedding event that wants to use their music. Obviously, that’s way too complicated, so that’s why artists sign rights agreements that cover a wide range of venues and events — including rallies, whether we’re talking politicians or monster trucks.

[Gabler, “Music News: Why can’t musicians get politicians to stop playing their songs?,” The Current, October 1, 2020]

Of course, Gabler noted that his answer still left issues for discussion:

So just telling a candidate to cut it out basically isn’t good enough. The next thing some artists have tried is revising their licensing agreements to make certain songs unavailable specifically for political events. That’s what Neil Young has done with his song “Rockin’ in the Free World,” which has been a favorite of the President’s. But there’s some legal ambiguity there, too, because music rights licensing is regulated under federal law due to antitrust concerns, so even if Neil Young wants to make exemptions to his license, it may not really be up to him.

[Gabler, “Music News: Why can’t musicians get politicians to stop playing their songs?,” The Current, October 1, 2020]

The Artist Rights Alliance in fact asked the major political parties to require their candidates to “seek consent from featured recording artists and songwriters before using their music in campaign and political settings. This is the only way to effectively protect your candidates from legal risk, unnecessary public controversy, and the moral quagmire that comes from falsely claiming or implying an artist’s support or distorting an artist’s expression in such a high stakes public way.” As the Copyright Alliance has noted, questions of fair use are also implicated.

But developments since 2020 have added some clarity. For instance, in 2020, Guyanese-British singer Eddy Grant brought suit against former President Donald Trump for Trump’s unauthorized use of Grant’s iconic song “Electric Avenue” in a video endorsing Trump’s reelection campaign posted to Trump’s personal Twitter page, as Diane Nelson reported. The Court refused to dismiss the matter on fair use or other basis. Similarly, Carolyn Wimbly Martin and Ethan Barr have noted that copyright pre-emption may complicate resort to the right of publicity for artists:

The use poses this hot-button campaign question: Can politicians freely use popular music at live rallies and live events without regard to the interests of the artists that created and performed the works?… Some experts have opined that copyright law is not the only arena in which to recover for improper political use of music. They have focused on a panoply of legal principles designed to protect celebrity image and reputation. In their view, trademark dilution, right of publicity, and false endorsement claims may provide redress. While all three legal theories are particularly viable (along with copyright law) when it comes to recorded content like TV commercials, there is a strong argument that for live events, copyright law may be a sole avenue for relief. This notion requires a closer look.

***

Similarly, approximately half of U.S. states have enacted laws to protect the reputation of prominent people, granting them a right of publicity, which permits them to sue for misappropriation of their name, image, or likeness. Accordingly, in those states, the question is likely whether an artist may claim that a live political event improperly used recordings of his or her voice (a distinctive characteristic) at a rally, or whether the use of the music may be deemed a “false endorsement” of that campaign event. See Browne v. McCain, No. CV 08-05334-RGK (Ex), 2009 U.S. Dist. LEXIS 141097, at *20 (C.D. Cal. Feb. 20, 2009). For example, California Civil Code § 3344 permits a cause of action for “knowingly us[ing] another’s name, voice, signature, photograph, or likeness, in any manner” without consent for advertising purposes. While the law is still being written here, it is possible that the publicity claims, which merge the content of the music with the performers’ persona, may be viewed as copyright claims by another name. In that case, courts may reasonably conclude that the publicity and false endorsement claims are preempted by federal copyright law. Hence, musicians are best served by starting with copyright law as the most suitable framework for their case.

[Carolyn Wimbly Martin and Ethan Barr, Notes and Votes: Use of Copyrighted Music at Live Political Events, Copyright Law,October 22, 2020]

So this leaves us in a bit of a quandary. Artists have certainly embraced the logic of “Playing SongHaving The Endorsement,” which reads as “Playing the song implies the performer’s or songwriter’s endorsement,” and used that as a basis to challenge, formally and informally, such use. But the question really is whether it does or not. 

That very notion may go too far. It does not seem that one would suggest that the clothing designer has endorsed a candidate who prefers that designer’s suits or ties and wears them when attending rallies. Similarly, the poet or the author quoted during a candidate’s speech would have a hard time claiming that the candidate’s quoting the poet/author’s work is readily understood to be an indicium of the writer’s support for the candidate. In fact, it is the opposite—it is the candidate endorsing the author or performer. A candidate can be a fan of an artist without creating an impression that feeling or status is mutual—think Chris Christie and Bruce Springsteen, at least in the time before the more recent friendliness some see. But, this would not be the first time that I concluded that musicians’ claims seemed to stretch the boundaries of IP law a little further than necessary, as I did here (in discussing claims against Ed Sheeran) and here (discussing claims against Led Zeppelin). Of course, that conclusion is based on a US law upbringing and perspective, and I might feel very differently if raised in a full-fledged moral rights jurisdiction where a creator’s connection to a work is more likely recognized as personal and undetachable.  It will be interesting to see how this plays out, pun intended.

Fair Use ⟥ A Fact-Sensitive Determination That ⟣ Easy

George Santos and Jimmy Kimmel are adversaries in an IP+ lawsuit in the United States District Court for the Southern District of New York. Santos is a former United States Congressman from Long Island. First elected in 2022, Santos became famous, or infamous, for the false and inflated resume on which he had been elected, and the criminal and ethical cloud that led to his expulsion from Congress on December 1, 2023. After being “expelled from the House of Representatives for a number of alleged crimes and falsehoods,” he remained a celebrity of sorts. Cashing in on that celebrity, Santos began providing, for a fee, personalized messages to “fans” and others through Cameo.com. Late-night talk show host Jimmy Kimmel (likely through a staff member) posed as fans of Santos and sought a series of video messages from Santos celebrating various fictitious life events such as asking Santos to “congratulate a friend for coming out as a ‘furry’ and adopting the persona of a platypus mixed with a beaver.” See Kimmel Atty Defends Airing ‘Patently Ridiculous’ Santos Clips, Law 360, April 18, 2024. The Kimmel-requested, Santos-created videos were then edited by Jimmy Kimmel Live! staff and aired on that show and were posted to social media. Santos filed a four-count complaint on February 17, 2024, alleging copyright infringement, fraud in the inducement, breach of contract, and unjust enrichment that some have described as silly. Kimmel moved to dismiss on April 29, 2024 (and Santos has to respond to the motion or amend the complaint by May 24, 2024).  While we cannot know yet exactly what Santos will do in response to the motion, we can focus on the copyright claim pled and the motion made against that claim (and perhaps even blend in the fraud and contract arguments that may ultimately prove decisive). 

Santos claims willful infringement by Kimmel, who does not deny rebroadcasting all or parts of the videos he solicited. The question is whether Kimmel’s broadcasting and posting is fair use. And as readers of this blogger know, we have repeatedly struggled here with fair use questions because that doctrine demands such fact-sensitive application and serves somewhat divergent interests. Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577, 581 (1994)(“[t]he fair use doctrine thus ‘permits [and requires] courts to avoid rigid application of the copyright statute when, on occasion, it would stifle the very creativity which that law is designed to foster’” and the fair use inquiry requires that any particular use of copyrighted material “be judged, case by case, in light of the ends of the copyright law”). As Lloyd Weinreb noted, “fair use depends on a calculus of incommensurables.” Fair Use, 67 Fordham L. Rev. 1291, 1306 (1999). As he went on to say, “[t]he great objection to…fair use is that it affords no predictability” and “unpredictability is costly, if for no other reason than that it engenders litigation.” Id. at 1309.

Kimmel raises a solid fair use defense since commentary, criticism, and parody lie at the heart of what he did and at the heart of fair use, though other uses are recognized as typical fair ones by the Copyright Office, statute and judicial opinions (like those collected in the US Copyright Office Fair Use Index). Indeed, Kimmel asserts that his conduct “represented a “paradigmatic example of protected fair use” and “classic fair use” because his use involved “political commentary on, and criticism of, video clips created and disseminated by a major public figure.” Kimmel Memorandum of Law (“KMOL”) at 1-2. He argued that his works were transformative, and the use fair, even though he had used unaltered Santos cameo videos.  Kimmel’s brief noted that “’faithfully reproduc[ing] an original work without alteration” can be transformative in light of the “altered purpose or context of the work, as evidenced by surrounding commentary or criticism.’ Grp. Mgmt. Servs. Ltd. v. Bloomberg L.P., 756 F.3d 73, 84 (2d Cir. 2014) (holding that publication of full audio recording of plaintiff company’s investor phone call was transformative fair use).” KMOL at 11.  As Kimmel notes at KMOL at 13-14:

the Videos are the “target[]” of the criticism and commentary conveyed by the “Will Santos Say It?” segments. The “purpose” of using the Videos – to mock the shameless willingness of a former Congressman to make internet videos saying the absurd things requested of him while under indictment for theft and fraud – is “completely different” from Santos’ ostensible purpose in creating the Videos to congratulate or otherwise communicate with the requester’s friends or family. Indeed, the Supreme Court has recognized that biting – even offensive – mockery of public officials through “exploitation of … politically embarrassing events” has long “played a prominent role in public and political debate.” Hustler Mag., Inc. v. Falwell, 485 U.S. 46, 54 (1988). In short, the use of the Videos was for a specifically enumerated statutory purpose of criticism and comment and was highly transformative.

These arguments and the case law cited concerning similar late-night and comedy situations, leave the fair use assertion well supported. KMOL at 9-21.  As one commentator notes, quoting from pages 1 and 9  of the motion papers, “’In this context,’ the motion continues, Kimmel’s decision ‘to test whether, even after being expelled and indicted, there was anything Santos would decline to publicly say in exchange for a few hundred dollars’ served as ‘a quintessential example of a fair use,’ since he was using the videos “to comment on and mock a controversial political figure to a broad audience.’”

But Kimmel will face some challenges here, as “fair” is an element of “fair use,” and he inspired the creation of these works under false pretenses. As Lloyd Weinreb also presciently observed (at 1308) in 1990, “[a]nother incommensurable element of fair use is what is typically referred to as ‘unclean hands’ but is, I think, more accurately described simply as fairness. That, I think, was the élément gris[e] that drove the factor analysis in Harper & Row [v. Nation Enters., 471 U.S. 539, 542-43, 562-63 (1985)]. As the Court perceived the facts, the editor of The Nation was a chiseler, a category only a little removed from crook or, in the nineteenth-century idiom, pirate-not so much because of the use itself but because of the manner in which he obtained the manuscript. If that perception is unchallenged, the case is over; theft is not a fair use. In the Hustler [Magazine, Inc. v. Moral Majority, Inc., 796 F.2d 1148 (9th Cir. 1986)], the centrality of plain fairness is even more apparent.” Additionally, Kimmel lured Santos into creating these videos and exposing himself to ridicule—while that in and of itself seems part of the comment and criticism on which Kimmel’s argument relies, it does not appear that Kimmel has some of the contractual protections that insulated Sacha Baron Cohen from liability after he induced Judge Roy Moore into an interview, another item that we have discussed here before.

As the section head notes, “Fair Use A Fact-Sensitive Determination That Easy,” as in “fair use will always be a fact-sensitive determination that will never be easy.”

∴ Stay Tuned As This Election Year Unfolds ∵ More IP IP Issues Are Likely To Follow

  The “therefore” ∴ and related “because” ∵ symbols illustrate the conclusion to be drawn from the forgoing—”therefore stay tuned as this election year unfolds because more interesting politics are likely to yield more intellectual property issues.”

U.S. House Unveils the Latest Attempt at a U.S. Privacy Law: The American Privacy Rights Act

The United States is among the minority of large economies in the world without a comprehensive national privacy law. In the absence of such a law, numerous states are filling the void with a complex assortment of often inconsistent privacy laws.

However, unexpected legislative developments in the U.S. House of Representatives will potentially resolve the challenges raised by the current patchwork of conflicting state laws. On April 7, 2024, House members announced a draft bill for the American Privacy Rights Act (APRA). The bill still has many hurdles to overcome and may ultimately share the same fate as prior failed attempts at a federal privacy law. But if enacted, the APRA would upend the U.S. privacy landscape.

Preemption of State Laws by APRA

The APRA’s intent is to “establish a uniform national data privacy and data security standard in the United States.” As such, it would expressly preempt state laws that cover the same requirements as the APRA. This means that comprehensive privacy laws, such as the California Consumer Privacy Act (CCPA), Colorado Privacy Act, Connecticut Data Privacy Act (CTDPA) and others, would be preempted, in whole or in part, in exchange for the federal law. State data broker laws in Vermont, California, Texas and Oregon would also likely be neutralized, since the APRA sets rules and requirements for data brokers, including the establishment of a national data broker registry.

There are, however, some notable exemptions to the APRA’s preemption standard that would preserve certain portions of states’ frameworks. Most important is the law’s exception for “provisions of laws that protect the privacy of health information, healthcare information, medical information, medical records, HIV status, or HIV testing.” This would allow the stringent requirements of the Washington My Health My Data Act and Nevada S.B. 370 to survive APRA’s passage. Recent amendments to the CTDPA that extend the law’s scope to “consumer health data” and “consumer health data controllers” would, in theory, also largely remain intact. Additionally, the APRA exempts “provisions of laws that address the privacy rights or other protections of employees or employee information,” which means that much of the CCPA could be salvaged to the extent that it applies to employee data.

APRA’s Threshold Requirements

The APRA applies to “covered entities,” which means any entity that determines the purposes of processing and is subject to the Federal Trade Commission (FTC) Act, including common carriers and certain nonprofits. Entities are exempt from the APRA, though, if they meet the criteria of a “small business,” expressly defined as an entity:

with less than $40 million in annual revenue,
that annually processes the covered data of 200,000 individuals or less (with exceptions relating to payment processing) and
that did not transfer covered data to a third party in exchange for revenue or anything of value.

The combination of the $40 million revenue and 200,000 individual thresholds would, in theory, exempt many businesses from the law’s scope. However, the additional criteria regarding transferring covered data to third parties “in exchange for revenue or anything of value” likely means that any online service that conducts targeted advertising would potentially fall within the law’s scope, no matter its size.

APRA’s Legal Obligations

The APRA imposes obligations on covered entities with respect to “covered data,” defined as “information that identifies or is linked or reasonably linkable, alone or in combination with other information, to an individual or a device that identifies or is linked or reasonably linkable to one or more individuals.” These obligations include, but are not limited to:

Data minimization — Processing of covered data is generally prohibited unless it is necessary, proportionate and limited to specific products or services or communications expected by the individual or falls under one of the law’s enumerated purposes.
Transparency — Covered entities are required to publish a privacy policy, and material changes to such a policy requires advance notice to individuals and the means to opt out of further processing of any previously collected data that would be subject to those changes.
Consumer rights — Covered entities are required to offer individuals the rights of access, deletion and correction with respect to their data. Individuals also have the right to opt out of data transfers generally, as well as the right to opt out of targeted advertising.
Service providers and third parties — The APRA appears to have adopted the CCPA’s business/service provider/third-party approach in lieu of the controller/processor model followed by most comprehensive privacy laws. Covered entities must exercise due diligence in selecting service providers and in deciding whether to transfer covered data to a third party.
Data brokers — The FTC is empowered to develop a national data broker registry, and data brokers processing the data of 5,000 or more individuals must register annually. Data brokers are also required to have a public website that includes tools for individuals to exercise their privacy rights.

Additional obligations apply to covered entities that are “large data holders,” which are covered entities that have $250 million or more in annual revenue and process large amounts of covered data of individuals and devices (as statutorily defined). Large data holders are required to:

publicly post all privacy versions from the past 10 years,
publish annual transparency reports,
provide CEO-signed certifications of compliance to the FTC,
appoint data privacy and data security officers,
conduct biennial audits and privacy impact assessments and
submit impact-risk assessments to the FTC for certain algorithmic decision-making activities.

Sensitive Data

The APRA sets heightened rules for processing “sensitive covered data.” While the law’s definition of “sensitive” shares many similarities with the CCPA, CTDPA and other laws, such as government-issued identification numbers, race/ethnicity and health data, there are some surprising departures from the established norm at the state level. Sensitive-covered data under the APRA includes:

Precise geolocation information, which is defined not only to include accuracy up to 1,850 feet or less, but also information that reveals “street-level location information of an individual or device;”
Calendar information, address book information, phone or text logs, photos, audio recordings or videos intended for private use;
A photograph, film, video recording or other similar medium that shows the naked or undergarment-clad private area of an individual;
Certain transfers of information revealing the extent or content of any individual’s access, viewing or other use of video programming with respect to an individual’s vision or hearing impairment;
Certain information that reveals the video content requested or selected by an individual and
Information revealing an individual’s online activities over time and across websites or online services that do not share common branding or over time on any website or online service operated by a covered high-impact social media company.

This last element may be the most significant for the advertising industry since it would turn common-place retargeting on the internet into the processing of sensitive data. As a result, cookie banners may become much more prevalent as companies constantly seek consent from consumers to use their browsing data in this manner. While not required by law in the United States, cookie banners are already advisable due to the significant rise in class action lawsuits alleging violations of decades-old privacy laws (such as the Video Privacy Protection Act and California Invasion of Privacy Act) that require consent in certain cases.  

The APRA’s consent obligations for sensitive data are less stringent than most of the state comprehensive privacy laws on the books. Although opt-in consent is required for any collection of biometric or genetic data, all other types of sensitive-covered data only require opt-in consent for transfers of such data to a third party.

APRA Enforcement

The APRA would be enforced by the FTC, which would be empowered to create a new bureau to carry out its authority under the law. Violations would be treated as a per se unfair or deceptive practice under Section 5 of the FTC Act. The APRA is also enforceable by state attorneys general, who must notify the FTC prior to initiating a civil action in federal court.

Critically, the APRA would provide individuals with a private right of action for violations concerning:

opt-in consents to collect or transfer sensitive data,
making material changes to a privacy policy without providing notice and the ability to opt out,
an individual’s data access, deletion, correction or opt-out rights, including retaliation against an individual for exercising such rights,
data breaches caused by failure to adopt reasonable security practices,
failure to conduct reasonable due diligence over service providers and third parties that receive covered data,
discrimination based on protected characteristics and
certain obligations relating to algorithmic decision-making.  

The Bottom Line

If passed, the APRA would largely supersede the intricate patchwork of state privacy laws, and set sweeping new standards for privacy regulation in the U.S.
While the law would simplify privacy compliance by reducing the number of laws to follow, it would also make compliance more challenging in some respects.
The APRA is still a long way from passage, and its survival is far from certain. Additional hearings and feedback from key stakeholders are expected in the coming months.

New Guidance on the Subject of Comparative Advertising and Dilution of Goodwill

In 2023, the Federal Court of Canada released its decision in Energizer Brands, LLC and Energizer Canada Inc. v. Gillette Company (2023 FC 804). The decision clarifies some of the laws applicable to comparative advertising in this country and should guide the conduct of parties that engage in this form of commercial activity.

Energizer sued Duracell over a sticker advertising campaign that claimed that Duracell’s batteries lasted longer than their Energizer equivalents. The Duracell advertisements referred to Energizer both directly and indirectly with phrases such as “the bunny brand” or “the next leading competitive brand”.

(more…)

Should Disclaimers Always Be Made in U.S. Trademark Applications?

Suppose you have a pending U.S. trademark application for your trademark on goods or services for your business and a term or wording in the trademark is descriptive of your goods or services. During the examination of your trademark application, the examining attorney refuses registration because the term is merely descriptive of your goods or services and requires a disclaimer. Should you always agree to the disclaimer because your trademark application will be passed onto publication? The answer is NO! and you should argue against the requirement for a disclaimer particularly if the descriptive term is a unitary or incongruous term or a double entendre.

First, how do you determine whether a term in your trademark is merely descriptive? “A term is merely descriptive if it immediately conveys knowledge of a quality, feature, function, or characteristic of the goods or services with which it is used.” In re Bayer AG, 488 F.3d 960, 82 USPQ2d 1828, 1831 (Fed. Cir. 2007) (citing In re Gyulay, 820 F.2d 1216, 3, U.S.P.Q.2d 1009, 1009 (Fed. Cir. 1987)). The terms in a trademark are merely descriptive in relation to the goods and/or services, and not in the abstract. Id. (citing In re Abcor Dev. Corp., 588 F.2d 811, 813-14, 200 U.S.P.Q. 215, 218-219 (C.C.P.A. 1978); In re MBNA Am. Bank N.A., 340 F.3d 1328, 67 U.S.P.Q.2d 1778, 1783 (Fed. Cir. 2003)).

Second, are descriptive terms subject to a disclaimer in a trademark application? According to 15 U.S.C. § 1052(e)(1), merely descriptive terms are unregistrable, and subject to disclaimer if the mark is otherwise registrable. Can an examining attorney require you to comply with a disclaimer requirement and add a disclaimer to the trademark application? Yes, an applicant can be required to disclaim an unregistrable component of a trademark otherwise registrable. Trademark Act Section 6(a), 15 U.S.C. § 1056(a). What happens if you don’t comply with the disclaimer requirement and add the disclaimer to the trademark application? Your trademark may be refused registration because you did not comply with a disclaimer requirement. See In re Omaha Nat’l Corp., 819 F.2d 1117, 2 U.S.P.Q.2d 1859, 1860 (Fed. Cir. 1987); In re Richardson Ink Co., 511 F.2d 559, 185 U.S.P.Q. 46, 47 (C.C.P.A. 1975).

Is there an exception to the disclaimer requirement? Yes, there is an exception to a disclaimer requirement based on the descriptive term being so merged with other elements of a composite mark, that they form a unitary, non-descriptive whole that renders a disclaimer unnecessary. In re EBS Data Processing, Inc., 212 U.S.P.Q. 964, 966 (T.T.A.B. 1981). What is a unitary, non-descriptive whole? “[A] unitary [phrase] simply has no ‘unregistrable component,’ but is instead an inseparable whole.” Dena Corp. v. Belvedere Int’l, Inc., 950 F.2d 1555, 21 U.S.P.Q.2d 1047, 1051 (Fed. Cir. 1991).

Under the USPTO Trademark Manual of Examining Procedure (T.M.E.P.) § 1213.05, a trademark or portion of a trademark is considered “unitary” when it creates a commercial impression separate and apart from any unregistrable component. The examining attorney must consider several factors in determining whether the term is part of a single or unitary trademark: whether lines or other design features physically connect it; the relative location of the respective elements; and the meaning of the terminology as used on or in connection with the goods or services. Dena Corp., 950 F.2d at 1561, 21 U.S.P.Q.2d at 1052.

Can the applicant argue against the disclaimer requirement in a pending trademark application with the USPTO?  Yes, the applicant can always argue against the disclaimer requirement. To establish that a disclaimer is required, the examining attorney has to present evidence that the term is merely descriptive of the goods or services. The applicant should argue that the term is unitary, congruous, or a double entendre. The examining attorney is analyzing only the term to be disclaimed, never considering the trademark in full. The applicant should argue that by doing so, the examining attorney demonstrates why it is improper for unitary marks to be broken up into separate components to analyze whether a disclaimer is required. T.M.E.P. § 1213.05. The applicant may argue that based on the limited evidence of record, the USPTO has not met the difficult burden of establishing that the term is merely descriptive for the goods or services. See In re Merrill Lynch, Pierce, Fenner, and Smith, Inc., 828 F.2d 1567, 4 U.S.P.Q.2d 1141, 1143 (Fed. Cir. 1987). Descriptiveness is a fact-intensive determination, and any doubts are to be resolved in the applicant’s favor. Id.

However, can the argument against the disclaimer requirement be successful with the USPTO?  In a recent case before the Trademark Trial and Appeal Board (“TTAB”), In re Ol Happ’s Place Restaurant, LLC, Serial No. 90738221, (Decided January 26, 2024) (Non-Precedent), the TTAB found that the wording “BARN AND GRILL” is unitary and a double entendre such that the requirement for a disclaimer of “grill” in BARN AND GRILL is unnecessary. In Ol Happ’s Place Restaurant, Ol Happ’s Place Restaurant, LLC, the applicant of the trademark application, sought registration on the Principal Register of a word and design mark

for “restaurant services; bar services”. The examining attorney refused registration based on the applicant’s failure to comply with a disclaimer requirement. The applicant refused to add a disclaimer of “GRILL” in the trademark application and appealed the final refusal. On appeal, the USPTO reasoned that the term “BARN AND GRILL” brings to mind a restaurant with a barn and a grill and also brings to mind the common term “bar and grill”. As such, the USPTO issued a decision finding that the disclaimer of “grill” was unnecessary, reversing the disclaimer requirement.

In summary, during the examination of a U.S. trademark application, an examining attorney may require an applicant to disclaim an unregistrable term of a trademark otherwise registrable if the term is merely descriptive of the goods or services. As a practice tip, the applicant should always argue against the disclaimer requirement because either the examining attorney has not established by sufficient evidence that the term is merely descriptive of the goods or services and/or that the term is unitary, incongruous, or a double entendre. In the alternative, if the applicant wants to comply with the disclaimer requirement, the applicant should state that it disagrees with the disclaimer requirement and that the disclaimer is being made under protest to the further prosecution of the application.

Comma, Comma, Comma, Comma, Comma Chameleon: How Punctuation Can Color IP & Other Legal Rights

“[T]he comma…this capricious bit of punctuation…”

United States v. Ron Pair Enterprises, Inc., 489 US 235, 249
(1989) (O’Connor, J, dissenting)

For want of a comma, we have this case.”

O’Connor  et al. v. Oakhurst Dairy et al.,
851 F.3d 69, 70 (1st Cir. 2017)

“But, when pressed, I do find I have strong views about commas.”

Holy Writ by Mary Norris
THE NEW YORKER, February 16, 2015

As long ago as 1818, in  United States v. Palmer, 16 U.S. 281, 293 (1818)(separate opinion of Johnson, J.), a Justice of the United States Supreme Court noted that “the use of the comma is exceedingly arbitrary and indefinite,” and a federal circuit court in 1988 noted that the comma is “often a matter of personal style,” and therefore “is a very small hook on which to hang a change in the law of substantial proportions.” In re Newbury Café, Inc, 841 F.2d 20, 22 (1st Cir. 1988). Indeed, at varying times the Supreme Court has noted some undervaluing of the legal import of punctuation. See, e.g.,  Barrett v. Van Pelt, 268 U. S. 85, 91 (1925) (“`Punctuation is a minor, and not a controlling, element in interpretation, and courts will disregard the punctuation of a statute, or re-punctuate it, if need be, to give effect to what otherwise appears to be its purpose and true meaning’ “); Ewing v. Burnet, 11 Pet. 41, 53-54 (1837) (“Punctuation is a most fallible standard by which to interpret a writing; it may be resorted to when all other means fail; but the court will first take the instrument by its four corners, in order to ascertain its true meaning: if that is apparent on judicially inspecting the whole, the punctuation will not be suffered to change it”). Following such precedents, the Supreme Court has not hesitated in the past to change or ignore the punctuation in legislation to effectuate congressional intent. See, e.g., Simpson v. United States, 435 U. S. 6, 11-12, n. 6 (1978) (ignoring punctuation and conjunction so that qualifying phrase would modify antecedent followed by comma and the word “or”); Stephens v. Cherokee Nation, 174 U. S. 445, 479-480 (1899) (ignoring punctuation so that qualifying phrase would restrict antecedent set off by commas and followed by the word “and”). As Justice Scalia and co-author Brian Garner noted in Reading Law: Interpreting Legal Texts (2012), at 139, “[n]o helpful aid to interpretation has historically received such dismissive treatment from the courts as punctuation—periods, semicolons, commas, parentheses, apostrophes.”

Despite, or maybe because of, that history, the comma recently took center stage in the United States Patent Trial and Appeal Board’s February 22, 2024 decision in Netflix Inc. v. DivX LLC, case number IPR2020-00558, a case on remand from the United States Court of Appeals for the Federal Circuit. That decision illustrated both the importance and unimportance of punctuation in understanding intellectual property rights, and provides a useful take-off point for reminding ourselves of where such matters sit in the IP world these days, and whether there are “must-know comma rules for lawyers.” 

Netflix/DivX is a patent case concerning the patentability vel non of 24 claims in U.S. Patent No. 10,225,588 B2 concerning devices and methods for playing back alternative streams of content protected through a common set of cryptographic keys. Central to the dispute were the contending interpretations of the Patent Owner and the challenging Petitioner concerning claims limitation “[I] locating encryption information that identifies encrypted portions of frames of video within the requested portions of the selected stream of protected video,” quoted at Netflix/DivX decision at 11 as it appears in patent—in other words, without commas. The Board then summarized the parties’ contentions as:

Patent Owner argues that the clause “within the requested portions of the selected stream of protected video” in limitation [l] of claim 1 modifies “locating encryption information,” and, properly construed, dictates that the “encryption information” must be “located,” “within the requested portions of the selected stream of protected video.” PO Resp. 26–39 (citing Ex. 2012 ¶ 85); PO Sur-reply 1–8. Petitioner asks us to reject Patent Owner’s arguments, and adopt our preliminary determination at the institution stage that the “within” term of limitation [l] connotes where the particular encrypted portions of frames of video must be located, not necessarily where the encryption information must be located. Pet. Reply 20–23.

[Netflix/DivX decision at 12]

The Board “determine[d] Patent Owner’s reading of the claim limitation is the better one,” holding it “reasonable that the second and third clauses of the limitation both modify the first clause (for example, as could perhaps be expressed through the use of commas as ‘locating encryption information, that identifies encrypted portions of frames of video, within the requested portions of the selected stream of protected video’),” the Board having “included commas above to illustrate Patent Owner’s understanding of the claim interpretation.” Netflix/DivX decision at 13, and fn. 10.  [I have made the Board-inserted commas bolded and enlarged the font for emphasis]. The Board held that Petitioner’s reading, “while not unreasonable, makes less sense” but nowhere presented a repunctuated version of the limitation illustrating Petitioner’s interpretation. Id. at 13-14.

And a dissenting Board member called the majority on that difference, noting that “[t]he majority opinion acknowledges that limitation [l] of independent claim 1 contains no commas, such that their placement would have been helpful to understand Patent Owner’s intent in creating and amending such a limitation” and that neither the punctuation nor the claim language in question came from the inventor. Netflix/DivX decision at 39 (page 3 of dissent). The language came through Examiner’s Amendment and the punctuation by the Board. The challenger has already appealed, and we are left wondering whether punctuation is important (as it seemed necessary for the majority to add it to explain the patent limitation’s meaning) or unimportant (the majority imposed no requirement on inventor or applicant to have provided such punctuation to illustrate that meaning in the first place). 

That US decision, and analytic approach, stands in contrast to a September 30, 2022 decision of the Board of Appeal of the European Patent Office in Matter T 1473/19 30-09-2022 between Schleifring GmbH and Siemens Healthcare GmbH concerning a patent for a contactless rotary joint. In that matter, “the contested expression, which does not contain any commas,” involved language stating that “said body having a free inner bore holding a capacitive data link.” EPO Decision at 2 (Summary item VI), 11 (paragraph 2.4). Rather than supplying commas in aid of expressing a favored interpretation, the EPO Board Appeal determined who a person skilled in the art, “on a plain reading of this expression,” would construe the operative language “[i]n the absence of any comma and any coordinating conjunction separating the various terms.” EPO Decision at 22 (para. 4.2). In other words, the lack of comma was held against the inventor/applicant’s interpretation rather than supplied in further support thereof.  EPO Decision at 28-31 (para. 5.1-7, and Order). Indeed, the EPO Board concluded that it could not allow the patent at issue to be “corrected” by supplying an “additional comma and noun group ‘said body’” without violating prohibitions on added subject matter. EPO Decision, at 25 (para. 5.1)  

Unlike the permissive Netflix/DivX decision from its US counterpart, the EPO Board’s decision illustrates that, although “punctuation saves lives!” at times, it can also kill patents.

There are any number of US patent decisions that similarly sway back and forth on the issues of whether a court can, or should, supply a needed comma or other punctuation in patent or other contexts. See, e.g., Ultimax Cement Mfg. Corp. v. CTS Cement Mfg. Corp., 587 F. 3d 1339, 1352-53 (Fed. Cir. 2009)(not indefinite because one skilled in the art would realize need to read omitted comma into formula); Credle v. Bond, 25 F. 3d 1566, 1572 (Fed. Cir. 1994) (because in one portion of patent “there is a comma, indicating the beginning of a new, distinct step to be taken in the method of producing the collapsible bags,” but “there is no such comma preceding ‘flexibly securing.’ This suggests that ‘securing’ is not a present participle signifying a distinct method step, but instead indicates the static relationship between the spout and the form,” and thus “Credle’s proposed construction of the count is at war with its grammar and syntax and thus would force an unreasonable interpretation.”), and Allen Eng’g Corp. v. Bartell Indus., 299 F.3d 1336 (Fed. Cir. 2002) (lack of punctuation in limitation mean claim failed to meet definiteness requirement). And other court panels, such the Federal Circuit in Quality Edge, Inc. v. Rollex Corp., simply concede that, for example, there are “no hard and fast grammatical rule[s]” on the import of placing–or not placing–a comma between two adjectives, and thus courts need to consider other aids of interpretation.    

This is, admittedly, somewhat indeterminate, at least as far a patent law goes, and the US Manual of Patent Examining Procedure (MPEP) has relatively little of substance to say about punctuation.  If one considers “indentation” a replacement or supplement for punctuation, one should recall that the MPEP, at 608.01(m) references the substantive impact of indentations, noting that “there may be plural indentations to further segregate sub-combinations or related steps.” Similarly, the Code of Federal Regulations,  37 C.F.R. § 1.75(i), notes that “[w]here a claim sets forth a plurality of elements . . ., each element . . . of the claim should be separated by a line indentation.” One court in 2021, in a Western District of Texas case named Shotkam LLC v. Tachyon, Inc., even combined references to these items, indentations, and “the use of a semicolon” to determine that a patent claim had three, rather than two, required elements. The Patent Trial and Appeal Board, however, continued to illustrate a more indulgent approach than its European Union Counterpart, with its March 14, 2024 decision in Metacluster LT Uab v. Bright Data Ltd, PGR2022-00061Metacluster involved a motion by the Patent Owner to “cancel claims 1–34, and substitute claims 35–66,” and to provide “written description support for several claim limitations sought to be added.” The US board not only granted to the motion but did so after providing “Preliminary Guidance” in the form of “information indicating [the Board’s] initial, preliminary, and non-binding views on whether Patent Owner had shown that it has satisfied the statutory and regulatory requirements associated with filing a motion to amend in a post-grant review and whether Petitioner (or the record) established that the substitute claims are unpatentable.” Opinion at 2-3. The Board then went on to grant the motion to amend, even though the substituted claims including “determining limitations” and “removing limitations” that were “not included” in the original application. Though these were not originally included, the US Board did not find them to represent “new matter.” Opinion at 4-5, and 9-18. Though Metacluster did not involve the adding of punctuation alone, it certainly illustrates an approach to drafting, iterative submissions, and Board guidance that differs markedly from the European Patent Office’s approach in Matter T 1473/19 30-09-2022 between Schleifring GmbH and Siemens Healthcare GmbH.

So this begs the question of whether the US approach includes specific directions and rules on meaning, language and punctuation or not. I guess you could say, or sing, that “I am a man without conviction” as to whether such determinacy exists, and “I’m a man who doesn’t know/How to sell a contradiction” like adding something that was not previously is different from adding new matter. [I guess advice is just to say that one can “come and go, you come and go.”]. With patent not offering the determinacy sought, perhaps one can find more structured and determinate punctuation rules in other intellectual property areas, such a trademark. That may be worth a look.

In contrast to the MPEP, Trademark Manual of Examining Procedure, or TMEP, deals repeatedly and substantively with the impact of punctuation on trademark rights, as well as one the items submitted to the trademark office as proof of a trademark’s content/elements or proof of its use. For example, in section 1213.05(b)(ii)(C), the TMEP notes that the “use of punctuation, such as a question mark, exclamation point, colon, dash, or period, as well as the meaning of the punctuation itself, may be a factor weighing either in favor of or against a mark or a portion of a mark” as it is considered in the application process.  Likewise, under section 807.12(a)(i), “[p]unctuation in the mark on the drawing must also appear on the specimen because a mark sought to be registered under §1 must be “used in commerce,” and if the punctuation on the drawing does not appear on the specimen, the mark on the drawing is not used in commerce.” Other provisions, such section 1209.03, deal with the impact of punctuation on descriptiveness analysis. Further, punctuation is an important aspect of expressing, listing and defining the goods and services to which trademarks will apply, as seen in sections 1402.01(a) and 1902.02(f). The EU Intellectual Property Office Guidelines, at section 4.2.5, also deal expressly with punctuation in this context, noting that the “use of correct punctuation is very important in a list of goods and services — almost as important as the words.”

With that sort of background and grounding, one might hope that trademark cases concerning punctuation come out more definitively than those involving patents. But Adventis, Inc. v. Consol. Prop. Holdings, Inc., 2006 WL 1134129 (W.D. Va. Apr. 24, 2006), suggests otherwise. In that case, one of the issues presented involved the addition of an exclamation point (!) to a previously-adopted word mark. Though the Adventis Court noted that “the exclamation point would have been protected under the registration” defendant had obtained “[i]f the defendants had registered the word ‘Big Lots’ with an exclamation point,” it also noted that a “word mark registration, however, does not invariably permit the holder to unabashedly add letters, words, symbols, or graphics to a word mark and receive protection for these additions.” But the Adventis Court continued, asking the question as to whether such a change would nonetheless have left the two mark “convey[ing] the same continuing commercial impression,” allowing a tacking of period of uses. On that question, the Adventis Court also had its perspectives “come and go,” noting first that the “court would agree with the defendants that the addition of an exclamation point when used as a punctuation mark would generally not alter the commercial impression of a mark whose major feature is the words themselves,” but then that, “[i]f, however, the exclamation point is more than a mere punctuation mark and is intended to be a new design feature, then the addition of the exclamation point could impart a differing commercial impression.” After some further observations such as “the exclamation point used in the 987 mark is placed between the words ‘Big’ and ‘Lots,’” the “court knows of no instance when it is grammatically correct to place an exclamation point in the middle of a sentence or between two words that denote a single proper noun,” and the “exclamation point is independently featured on advertising and in-store signs,” the Adventis Court found questions of fact precluded summary judgment. Consequently, as in the patent field, the impact of punctuation is somewhat more of a ? than a definitive !, if you get the point. 

But there should be answer, as commas can cost companies millions, or so the story goes. And knowing the rules should let you save your IP, according some watchdogs.  Right?

But, alas, that isn’t how it has worked in legal matters. In fact, commas can confuse even more than IP rights.  Punctuation and grammar have spawned or contributed to sports rivalries and implicated multi-million dollar swings, as seen in the NBA/ABA merger battles around an indemnity agreement that read “The Nets shall have the right, without further approval of Center, to play their home games at any location within the Net’s home territory in New York, other than in the Counties of New York, Bronx, Queens, Kings or Westchester or at any location in New Jersey, or any location in New Jersey” and whether that last phrase (“or any location in New Jersey”) referenced where the New York Nets could, or could not, move without further approval of the Knicks and Madison Square Garden, i.e. the Center. See Besser, Is There A Grammarian In The House, in Besser, Old Lawyers Never Die, They Just Lose Their Appeal (1996), at 35-37; see also Sam Goldaper, Order Restraining Knicks In Nets’ Move Continued,NY Times, July 14, 1977, at 23. Commas have also contributed to the constitutional conundrum around the 2d Amendment, because history leaves unclear how many commas are in the amendment:

Essentially, the older written versions [of the Second Amendment] I’ve seen in books – like Joseph Story’s – have one [comma] while more recent ones use three. I’m told the version on public display in Washington, DC has three, but that that is an anomaly to others of the period and to those sent around for ratification. I have seen one of them, and it contained one comma. Anyway, my question was, do the number of commas make a difference in the Second’s meaning?

***

Strict constructionists… might do better to interpret the 2nd Amendment based not on what they learned about commas in college but on what the framers actually thought about commas in the 18th century.

The most popular grammars in the framers’ day were written by Robert Lowth (1762) and Lindley Murray (1795). Though both are concerned with correcting writing mistakes, neither dwells much on punctuation. Lowth calls punctuation “imperfect,” with few precise rules and many exceptions. Murray adds that commas signal a pause for breath. Here’s an example of such a pause, from the Constitution: “The judicial power of the United States, shall be vested in one Supreme Court” (Article III, Section 1). But times change. If a student put that comma in a paper today, it would be marked wrong.

[Van Alstyne, A Constitutional Conundrum of Second Amendment Commas, 10 GREEN BAG 2D 469, 470-72 (2007); see also, generally, 469-477]

This means that punctuation, especially commas, have a long history of confounding us and that that will probably continue.

In the end, what was true in 1990 when Richard Wydick asked “Should Lawyers Punctuate?” is true now: “One can find recent case law in the United States to support almost any view of punctuation,” and it isn’t much different elsewhere. And, as Wydick further noted, it remains true that “commas (or the lack of them) cause more trouble than all the other punctuations marks put together.” Getting the meaning (as reflected in the grammar and punctuation) right and set consistently “every day is like survival” for the rule of law:

The rule of law is commonly identified with respect for a set of fundamental values deemed essential for maintaining a just and stable society. These values include:…[4]  Predictability: The rule of law requires that the legal system be predictable, so that individuals can plan their lives and businesses accordingly. This means that laws and legal decisions must be consistent and predictable, and that individuals can rely on the law to make decisions and resolve disputes.

[What are the most commonly identified rule of law values?, inTwenty questions (and answers) on the rule of law…, at Jurist: Legal News and Commentary—Reporting The Rule of Law In Crisis]

That means, as we slog through punctuation problems and grammatical quagmires as IP lawyers, we’re left hoping for  better “[comma] karma, [comma] karma, karma …” because clarity and consistency are not fostered if meaning simply changes back and forth, chameleon-like, depending on the surroundings that punctuate any particular legal or factual setting.