IP NEWS

Nominative Fair Use For 'Beach Boys Family and Friends' Rejected

In Brother Records Inc. v. Jardine, No. 01-57095, (9th Cir. Jan. 28, 2003), the Ninth Circuit rejected Defendant's nominative fair use defense. In 1998, Alan Jardine, a member of the Beach Boys band, started touring with his own band that he called 'Beach Boys Family and Friends.' Brother Records Inc., the company formed by the original Beach Boys band to administer their trademarks, sued for trademark infringement.

Jardine argued that his use fell within the doctrine of nominative fair use. The Ninth Circuit stated: 'where the defendant uses a trademark to describe the plaintiff's product [or service], rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.' New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992).

Unlike in New Kids however, the Ninth Circuit held that the nominative fair use defense was not available because Jardine failed to satisfy the third prong of the test as his use suggested sponsorship or endorsement by the trademark holder. The court also rejected Jardine's classic fair use defense

No Personal Jurisdiction Without Purposeful Availment

In Toys 'R' Us Inc. v. Step Two SA, No. 01-3390 (3d Cir. Jan. 27, 2003), the Third Circuit provisionally ruled that no personal jurisdiction existed over the operator of a Web site accessible from within the forum. While the Web site was 'commercially interactive' and accessible from within the forum state, the court looked for additional evidence of purposeful availment and interaction with residents in the forum state.

Citing the decision in Zippo Mfg. Co. v. Zippo Dot Com Inc., 952 F. Supp. 1119, 42 USPQ 1062 (W.D. Pa. 1997), the Court found on the record before it that Step Two had not taken any actions designed to intentionally reach customers in the forum. The court did, however, allow limited discovery to be taken for purposes of establishing jurisdiction. The court noted that if it existed, evidence of non-electronic commercial activity in the forum could supplement the Web site use to establish personal jurisdiction.

En Banc Hearing for Festo

On February 6, 2003, the Federal Circuit held an en banc hearing in the Festo case. The Supreme Court, in a unanimous decision on May 28, 2002, vacated and remanded the Federal Circuit's prior ruling that would have estopped any doctrine of equivalents claim for claims that were amended during the prosecution of a patent. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). Last September, the Federal Circuit ordered the parties to file briefs on whether the estoppel claims are issues of fact or issues of law. The Federal Circuit also asked the parties to brief:

• Whether rebuttal of the presumption of surrender is a question of law and what role the jury should play in determining whether a patent owner can rebut the presumption;
• What factors were involved in the Supreme Court's crtiteria;
• Whether remand to the district court is necessary to determine whether Festo can rebutt the charge that his amendments are narrowing amendments or whether Festo could rebut the charge in the Federal Circuit.

Aventis and Andrx Settlement

On January 27, 2003 Aventis and Andrx agreed to pay $80 million dollars to settle an antitrust suit co-led by attorneys general from Michigan and New York. In re Cardizem CD Antirust Litigation, No. 98-74043 (E.D. Mich. filed 1998). The settlement will be used to compensate consumers, state agencies and insurance companies who overpaid for the drug, Cardizem CD. Cardizem CD is widely prescribed for the treatment of chronic chest pains, high blood pressure and for the prevention of heart attacks and strokes. This would be the first time consumers would receive direct compensation from a generic drug case.

The antitrust suit alleged that Hoechst, a company Aventis bought in 2000, paid Andrx $90 million dollars not to market the generic version of Cardizem, CD. The state attorneys considered the behavior anti-competition in its worst form. The companies previously paid a $110 million dollar settlement to drug wholesalers under the same allegations.

No Lower Enablement Status for Pioneer Patents

In Plant Genetic Systems N.V. v. DeKalb Genetics Corp., 315 F.3d 1335 (Fed. Cir. 2003), the Federal Circuit held that a pioneer invention was not entitled to a lower standard of enablement than a patent without pioneer status. The patent-in-suit was directed to genetically engineered plants, plant cells and seeds. Plant Genetic Systems (PGS), relying on In re Fisher, 427 F.2d 833 (C.C.P.A. 1970), argued that a pioneering inventor should be allowed to dominate future patentable inventions that stem from his or her teachings. PGS further argued that In re Hogan, 559 F.2d 595 (C.C.P.A. 1977) supports the proposition that pioneering inventions deserve broad claims because of their broad concepts. The Federal Circuit criticized PGS for relying on dicta in both Fisher and Hogan to make its arguments. The court stated that 35 U.S.C. '112 required every patent to enable those skilled in art to practice the invention recited in the claims, but that enablement would be subject to the degree of predictability in the relevant art. Finally, the court held that there was no support in the law for PGS's assertion that its patent is entitled to both a both a broad scope of coverage coupled with a lower standard of enablement.

Nominative Fair Use For 'Beach Boys Family and Friends' Rejected

In Brother Records Inc. v. Jardine, No. 01-57095, (9th Cir. Jan. 28, 2003), the Ninth Circuit rejected Defendant's nominative fair use defense. In 1998, Alan Jardine, a member of the Beach Boys band, started touring with his own band that he called 'Beach Boys Family and Friends.' Brother Records Inc., the company formed by the original Beach Boys band to administer their trademarks, sued for trademark infringement.

Jardine argued that his use fell within the doctrine of nominative fair use. The Ninth Circuit stated: 'where the defendant uses a trademark to describe the plaintiff's product [or service], rather than its own, we hold that a commercial user is entitled to a nominative fair use defense provided he meets the following three requirements: First, the product or service in question must be one not readily identifiable without use of the trademark; second, only so much of the mark or marks may be used as is reasonably necessary to identify the product or service; and third, the user must do nothing that would, in conjunction with the mark, suggest sponsorship or endorsement by the trademark holder.' New Kids on the Block v. News America Publishing, Inc., 971 F.2d 302, 308 (9th Cir. 1992).

Unlike in New Kids however, the Ninth Circuit held that the nominative fair use defense was not available because Jardine failed to satisfy the third prong of the test as his use suggested sponsorship or endorsement by the trademark holder. The court also rejected Jardine's classic fair use defense

No Personal Jurisdiction Without Purposeful Availment

In Toys 'R' Us Inc. v. Step Two SA, No. 01-3390 (3d Cir. Jan. 27, 2003), the Third Circuit provisionally ruled that no personal jurisdiction existed over the operator of a Web site accessible from within the forum. While the Web site was 'commercially interactive' and accessible from within the forum state, the court looked for additional evidence of purposeful availment and interaction with residents in the forum state.

Citing the decision in Zippo Mfg. Co. v. Zippo Dot Com Inc., 952 F. Supp. 1119, 42 USPQ 1062 (W.D. Pa. 1997), the Court found on the record before it that Step Two had not taken any actions designed to intentionally reach customers in the forum. The court did, however, allow limited discovery to be taken for purposes of establishing jurisdiction. The court noted that if it existed, evidence of non-electronic commercial activity in the forum could supplement the Web site use to establish personal jurisdiction.

En Banc Hearing for Festo

On February 6, 2003, the Federal Circuit held an en banc hearing in the Festo case. The Supreme Court, in a unanimous decision on May 28, 2002, vacated and remanded the Federal Circuit's prior ruling that would have estopped any doctrine of equivalents claim for claims that were amended during the prosecution of a patent. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). Last September, the Federal Circuit ordered the parties to file briefs on whether the estoppel claims are issues of fact or issues of law. The Federal Circuit also asked the parties to brief:

• Whether rebuttal of the presumption of surrender is a question of law and what role the jury should play in determining whether a patent owner can rebut the presumption;
• What factors were involved in the Supreme Court's crtiteria;
• Whether remand to the district court is necessary to determine whether Festo can rebutt the charge that his amendments are narrowing amendments or whether Festo could rebut the charge in the Federal Circuit.

Aventis and Andrx Settlement

On January 27, 2003 Aventis and Andrx agreed to pay $80 million dollars to settle an antitrust suit co-led by attorneys general from Michigan and New York. In re Cardizem CD Antirust Litigation, No. 98-74043 (E.D. Mich. filed 1998). The settlement will be used to compensate consumers, state agencies and insurance companies who overpaid for the drug, Cardizem CD. Cardizem CD is widely prescribed for the treatment of chronic chest pains, high blood pressure and for the prevention of heart attacks and strokes. This would be the first time consumers would receive direct compensation from a generic drug case.

The antitrust suit alleged that Hoechst, a company Aventis bought in 2000, paid Andrx $90 million dollars not to market the generic version of Cardizem, CD. The state attorneys considered the behavior anti-competition in its worst form. The companies previously paid a $110 million dollar settlement to drug wholesalers under the same allegations.

No Lower Enablement Status for Pioneer Patents

In Plant Genetic Systems N.V. v. DeKalb Genetics Corp., 315 F.3d 1335 (Fed. Cir. 2003), the Federal Circuit held that a pioneer invention was not entitled to a lower standard of enablement than a patent without pioneer status. The patent-in-suit was directed to genetically engineered plants, plant cells and seeds. Plant Genetic Systems (PGS), relying on In re Fisher, 427 F.2d 833 (C.C.P.A. 1970), argued that a pioneering inventor should be allowed to dominate future patentable inventions that stem from his or her teachings. PGS further argued that In re Hogan, 559 F.2d 595 (C.C.P.A. 1977) supports the proposition that pioneering inventions deserve broad claims because of their broad concepts. The Federal Circuit criticized PGS for relying on dicta in both Fisher and Hogan to make its arguments. The court stated that 35 U.S.C. '112 required every patent to enable those skilled in art to practice the invention recited in the claims, but that enablement would be subject to the degree of predictability in the relevant art. Finally, the court held that there was no support in the law for PGS's assertion that its patent is entitled to both a both a broad scope of coverage coupled with a lower standard of enablement.