UNDER PENALTY OF PERJURY…sort of…

What part of “under of penalty of perjury” does the 6th Circuit Court of Appeals not understand?

Every trademark applicant must swear under penalty of perjury that the information contained in the application is true. There are two types of applications: one where you currently use the trademark, a second where you intend to use the trademark. The latter requires that you swear—under penalty of perjury—that you have a bona fide intent to use the mark for a particular class of goods or services. It is a way to reserve rights in a mark while you prepare to use it.

Creative Harbor, LLC filed a couple of applications swearing that it intended to use the mark “WorkWire” for just about every product you could imagine. The only problem is that it later admitted that it intended to use it only in connection with a few products, and wanted to reserve the name just in case it later expanded the scope of its products. That’s a big trademark no-no, and many applications have been voided in their entireties when the applicant played loosie-goosie with the truth.

But, the 6th Circuit says Pinocchio can make misrepresentations in an application, and that is o.k. We’ll just strike the little white lies and leave the rest. Nice. Everybody’s a winner in today’s world. It is no problem that Creative—who was represented by counsel—did not quite get this under penalty of perjury nonsense.

 

Judge in Court

 

So, the 6th Circuit has created a hornet’s nest for trademark lawyers: are we now required to advised our clients that “under penalty of perjury” doesn’t mean what we thought? Must I advise every trademark applicant to expand the application to include goods or services that it doesn’t currently intend to use, but might in the future? I think that is exactly what the 6th Circuit recommends. And that is not good.

 

Not So Small Claim

Small claims courts in Tennessee are called Courts of General Sessions. Under $25k; either party can appeal to Circuit Court and the case starts all over as if the General Sessions trial never occurred. Great for eviction and collections lawyers.

If a plaintiff appeals, their damages often magically increase, and the Circuit Court complaint is amended. No problem, pile it on!

Dollar

But, what if a defendant appeals and the plaintiff then wants to bail on the litigation? Can the plaintiff voluntarily nonsuit in Circuit Court and vaporize the defendant’s appeal?

The Tennessee Court of Appeals says yes. A General Sessions appeal is to be treated as if it had originally been filed in Circuit Court. And, a plaintiff (with exceptions) can always nonsuit without permission from a defendant.

Read the opinion here.

 

 

OMG its OEM!

Stealing intellectual property is an American pastime. Music, software, ebooks, you name it—free is the right price. And mounds of shaming and litigation has done little to discourage the copyright abolitionists.

And then there is Joshua Christenson. He operated a website that offered discounted versions of Adobe software. These were not illegal copies, but actual Adobe products purchased from third parties.

Of course, Adobe was not happy about this. How could Christenson sell these products when the original license prohibited downstream sales?

So, Adobe filed suit. The only problem was that Adobe forgot to bring the actual licenses to the dance! Instead, it submitted license templates and testimony as to how Adobe routinely licenses software.

Christenson argued that he had every right to sell the software under the “first sale doctrine.” This statute allows someone who owns a particular copy to sell it to anyone they choose. Without this doctrine, I would be unable to add to my collection of Archies and Chipmunks recordings. Que triste.

But, to own something, there must be a sale, not a license. Adobe pounded a dent in the podium arguing this was no sale–just a license that prohibited downstream sales. And, that was probably right.

But, Adobe forgot to bring the licenses to the dance.

So, the judge agreed that Christenson met his initial burden of proving he owned the copies. The burden then shifted to Adobe to prove that Christenson was bound by its license.

But, Adobe forgot to bring the licenses to the dance. Christenson wins.

Adobe also asserted a trademark infringement claim. These can arise when someone illegally copies software and tries to pass it off as the real deal. But, what Christenson sold was the real deal–original Adobe software. Christenson 2, Adobe 0.

Here’s a picture of Christenson when he heard the good news:

laptop cartoon character with face hands

From reading the opinion, it appears that Adobe made litigation blunders. I have no idea why the licenses were not attached to the complaint, or why unfair competition claims were missing.

You can read the opinion here.  It is relatively short, and has nice discussions of the first sale doctrine and the fair use of trademarks. I think you can even download it in .pdf!

Redskins Run A Slant Pattern?

I had never heard of The Slants until the USPTO denied a trademark application seeking registration of their band name.  Applications can be denied if the USPTO deems a mark to be disparaging.

Would you say “no” to these dudes?

Slants

But, that is exactly what the USPTO did. In their opinion, the word “Slants” disparaged a substantial composite (not majority) of Asians in the context of contemporary attitudes.

And, that subjective, moving-target determination was made by a single trademark examining attorney.

On appeal, the Federal Circuit didn’t even address contemporary attitudes, or if the name offended anyone. Instead, it leapfrogged and ruled that Section 2(a) of the Lanham Act (disparagement) was facially unconstitutional because it violates the 1st Amendment.

This is how it works: The Slants chose their name to draw attention to and embrace their Asian heritage. Their choice was at least partially political speech. The examining attorney made a decision that the content of that speech was disparaging and offended people.

But, laws that target speech based on its content are—as they should be—presumptively invalid under the 1st Amendment. After all, is it not a bedrock of American law that one can speak even if people are offended? What’s America if we cannot freely call each other nimrods and wingnuts?

Now on to football.

The Washington Redskins trademark was cancelled because it was deemed by contemporary attitudes to be disparaging, just like The Slants. And, it was cancelled after decades of use and mounds of cash spent promoting, maintaining, and protecting the mark. However, the Redskins case is in a different court that is not bound by the Slants decision.

However, the USPTO may elect to punt the Redskins case anyways because its legal brief relies mostly on the 1981 McGinley case that held Section 2(a) was constitutional. But, the McGinley case originated in the Federal Circuit and was expressly overruled in the Slants decision. So, the USPTO is relying on a case that is now bad law!

I am sure both sides are huddling to see what’s next in their playbooks. But, many feel that the Slants decision will result in a Redskins end run and the cancellation will be reversed.

Anybody for crispy pig skins?

Toonie

Photo courtesy of Toonie.