IP News

Bill Forbidding Funding of Any Trademark of 'The Last Best Place' Phrase Is Invalid

In Last Best Beef LLC v. Dudas, No. 1:06-399, 2006 WL 2852764 (E.D.Va. Sept. 27, 2006), the District Court for the Eastern District of Virginia ruled that a Congressional appropriations bill forbidding federal funding of the registration, issue, transfer, or enforcement of any trademark of the phrase 'Last Best Place' improperly circumvented the Lanham Act and thus was invalid legislation.

Between 2001 and 2004, Last Best Beef, LLC ('LBB') filed eight trademark applications with the USPTO for registration of the phrase 'The Last Best Place' in connection with a variety of goods and services. After the USPTO issued a Notice of Allowance for the marks, President Bush signed the Science, State, Justice, Commerce, and Related Agencies Appropriations Act of 2006 (the 'Act'), which included an amendment sponsored by Senator Conrad Burns of Montana forbidding funding of any trademark of the phrase 'The Last Best Place.' Senator Burns stated publicly that this phrase belonged to the State of Montana. Soon thereafter, the USPTO issued a Cancellation Order for the marks based upon the Act.

The district court held that '206 of the Act, which contained the prohibitive language, improperly circumvented the Lanham Act because there was no express Congressional intent to modify numerous provisions of the Lanham Act. The court was reluctant to tamper with the Lanham Act absent such express Congressional intent. Further-more, the court noted that there were at least three reasons that 'cut against this practice of carving out narrow trademark monopolies for special interests.' First, the court reasoned that it could destabilize a business's ability to brand its products and services. Second, it could turn the Trademark Act into a statute full of holes and exceptions. Third, '206 left a trademark application stranded without any of the procedures and protections afforded by the Lanham Act, such as the right to appeal.

To Be Probative of Non-Obviousness, Commercial Success Must Be Due to Feature Contemplated at the Time of Invention

On Nov. 3, 2006, in Pfizer, Inc. v. Teva Pharmaceuticals USA Inc., No. 04-754, U.S. Dist. LEXIS 80837 (D.N.J. Nov. 3, 2006), the District Court for the District of New Jersey granted Teva's motion in limine to preclude Pfizer's proffered expert testimony regarding the commercial success and unexpected results of celecoxib, the patented active ingredient in Celebrex', be-cause such testimony would not be probative of non-obviousness. First, the court held that an invention's commercial success must be due to a feature that was contemplated at the time of the invention. Because the cardiovascular benefits of Celebrex (which constituted the anticipated subject of expert testimony) were not known until well after the invention, the court reasoned that the marketplace could not have been presumed to have provided others with any incentive to perfect the invention ' and thus commercial success did not suggest non-obviousness. Second, with regard to Celebrex's alleged unexpected results ' the alleged lack of cardiovascular side effects ' the court held that these could not be probative of non-obviousness because they were not contemplated as a goal of the inventive process. The court stated that '[t]he fact that the hypothetical person of ordinary skill would have been surprised to learn that the particular combination of elements created an unexpected benefit completely unrelated to the desired outcome does not logically imply that it would not have been obvious to combine those elements to achieve the desired result.'

Artist's Incorporation of Copyrighted Photograph into Collage Painting Is Fair Use

In Blanch v. Koons, No. 05-6433, 2006 U.S. App. LEXIS 26786 (2d Cir. Oct. 26, 2006) the Second Circuit found that the defendant's incorporation of a copyrighted photograph into a collage painting constituted fair use pursuant to 17 U.S.C. '107.

The defendant, Jeff Koons, had created a collage painting, in which he copied, but altered the appearance of part of a copyrighted photograph taken by the plaintiff, Andrea Blanch. Koons, a critically acclaimed visual artist known for incorporating images taken from popular media and consumer advertising into his artwork, was previously found to be liable for copyright infringement in the late 1980s when he used images taken from commercial postcards and syndicated comic strips to create a series of sculptures.

The instant action related to a series of Koons' work titled 'Easyfun-Etheral,' in which he culled images from advertisements or his own photographs, scanned them into a computer, and digitally superimposed the scanned images against backgrounds of pastoral landscapes. He then printed color images of the resulting collages for his assistants to use as templates for applying paint to billboard-sized canvasses. One of the 'Easyfun-Etheral' paintings, 'Niagara,' depicted four pairs of women's feet and lower legs, one of which was adapted from the plaintiff's photograph. Koons offered an affidavit that he intended to 'comment on the ways in which some of our most basic appetites ' for food, play, and sex ' are mediated by popular images.'

Applying the four statutory fair use factors of 17 U.S.C. '107, the Second Circuit found the work to be fair use. With regard to the first factor, which was the purpose and character of the use, the court held that where, as here, 'the work is used as 'raw material' in the furtherance of distinct
creative or communicative objectives, the use is transformative' and thus weighed in favor of a fair use finding. The court found the second factor ' the nature of the copyrighted work ' to be of limited usefulness because 'Koons used Blanch's work in a transformative manner to comment on her image's social and aesthetic meaning rather than to exploit its creative virtues.' The court found that the third factor ' the amount and substantiality of the portion used ' weighed in favor of fair use because Koons only copied that portion of the image necessary to evoke 'a certain style of mass communication.' Finally, the court found that with regard to the fourth factor ' market effects ' Koons' work had no deleterious effect 'upon the potential market for or value of the copyrighted work.'

Matt Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP. He can be reached at 212-908-6462.

Bill Forbidding Funding of Any Trademark of 'The Last Best Place' Phrase Is Invalid

In Last Best Beef LLC v. Dudas, No. 1:06-399, 2006 WL 2852764 (E.D.Va. Sept. 27, 2006), the District Court for the Eastern District of Virginia ruled that a Congressional appropriations bill forbidding federal funding of the registration, issue, transfer, or enforcement of any trademark of the phrase 'Last Best Place' improperly circumvented the Lanham Act and thus was invalid legislation.

Between 2001 and 2004, Last Best Beef, LLC ('LBB') filed eight trademark applications with the USPTO for registration of the phrase 'The Last Best Place' in connection with a variety of goods and services. After the USPTO issued a Notice of Allowance for the marks, President Bush signed the Science, State, Justice, Commerce, and Related Agencies Appropriations Act of 2006 (the 'Act'), which included an amendment sponsored by Senator Conrad Burns of Montana forbidding funding of any trademark of the phrase 'The Last Best Place.' Senator Burns stated publicly that this phrase belonged to the State of Montana. Soon thereafter, the USPTO issued a Cancellation Order for the marks based upon the Act.

The district court held that '206 of the Act, which contained the prohibitive language, improperly circumvented the Lanham Act because there was no express Congressional intent to modify numerous provisions of the Lanham Act. The court was reluctant to tamper with the Lanham Act absent such express Congressional intent. Further-more, the court noted that there were at least three reasons that 'cut against this practice of carving out narrow trademark monopolies for special interests.' First, the court reasoned that it could destabilize a business's ability to brand its products and services. Second, it could turn the Trademark Act into a statute full of holes and exceptions. Third, '206 left a trademark application stranded without any of the procedures and protections afforded by the Lanham Act, such as the right to appeal.

To Be Probative of Non-Obviousness, Commercial Success Must Be Due to Feature Contemplated at the Time of Invention

On Nov. 3, 2006, in Pfizer, Inc. v. Teva Pharmaceuticals USA Inc., No. 04-754, U.S. Dist. LEXIS 80837 (D.N.J. Nov. 3, 2006), the District Court for the District of New Jersey granted Teva's motion in limine to preclude Pfizer's proffered expert testimony regarding the commercial success and unexpected results of celecoxib, the patented active ingredient in Celebrex', be-cause such testimony would not be probative of non-obviousness. First, the court held that an invention's commercial success must be due to a feature that was contemplated at the time of the invention. Because the cardiovascular benefits of Celebrex (which constituted the anticipated subject of expert testimony) were not known until well after the invention, the court reasoned that the marketplace could not have been presumed to have provided others with any incentive to perfect the invention ' and thus commercial success did not suggest non-obviousness. Second, with regard to Celebrex's alleged unexpected results ' the alleged lack of cardiovascular side effects ' the court held that these could not be probative of non-obviousness because they were not contemplated as a goal of the inventive process. The court stated that '[t]he fact that the hypothetical person of ordinary skill would have been surprised to learn that the particular combination of elements created an unexpected benefit completely unrelated to the desired outcome does not logically imply that it would not have been obvious to combine those elements to achieve the desired result.'

Artist's Incorporation of Copyrighted Photograph into Collage Painting Is Fair Use

In Blanch v. Koons, No. 05-6433, 2006 U.S. App. LEXIS 26786 (2d Cir. Oct. 26, 2006) the Second Circuit found that the defendant's incorporation of a copyrighted photograph into a collage painting constituted fair use pursuant to 17 U.S.C. '107.

The defendant, Jeff Koons, had created a collage painting, in which he copied, but altered the appearance of part of a copyrighted photograph taken by the plaintiff, Andrea Blanch. Koons, a critically acclaimed visual artist known for incorporating images taken from popular media and consumer advertising into his artwork, was previously found to be liable for copyright infringement in the late 1980s when he used images taken from commercial postcards and syndicated comic strips to create a series of sculptures.

The instant action related to a series of Koons' work titled 'Easyfun-Etheral,' in which he culled images from advertisements or his own photographs, scanned them into a computer, and digitally superimposed the scanned images against backgrounds of pastoral landscapes. He then printed color images of the resulting collages for his assistants to use as templates for applying paint to billboard-sized canvasses. One of the 'Easyfun-Etheral' paintings, 'Niagara,' depicted four pairs of women's feet and lower legs, one of which was adapted from the plaintiff's photograph. Koons offered an affidavit that he intended to 'comment on the ways in which some of our most basic appetites ' for food, play, and sex ' are mediated by popular images.'

Applying the four statutory fair use factors of 17 U.S.C. '107, the Second Circuit found the work to be fair use. With regard to the first factor, which was the purpose and character of the use, the court held that where, as here, 'the work is used as 'raw material' in the furtherance of distinct
creative or communicative objectives, the use is transformative' and thus weighed in favor of a fair use finding. The court found the second factor ' the nature of the copyrighted work ' to be of limited usefulness because 'Koons used Blanch's work in a transformative manner to comment on her image's social and aesthetic meaning rather than to exploit its creative virtues.' The court found that the third factor ' the amount and substantiality of the portion used ' weighed in favor of fair use because Koons only copied that portion of the image necessary to evoke 'a certain style of mass communication.' Finally, the court found that with regard to the fourth factor ' market effects ' Koons' work had no deleterious effect 'upon the potential market for or value of the copyrighted work.'

Matt Berkowitz is an associate in the New York office of Kenyon & Kenyon LLP. He can be reached at 212-908-6462.