1
Seventh Circuit redefines Federal Circuit refuses registration
photographer’s copyright interest to Hotels.com as generic
In Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983), the
U.S. Court of Appeals for the Seventh Circuit appeared to suggest
that the creator of a derivative work (a work based on one or more
preexisting works, such as an art reproduction or other form in
which a work is recast, transformed or adapted) needed permission
from the owner of the copyright in the preexisting underlying work
in order to register a copyright in the derivative work. The Court
has now clarified that a photographer who creates photos depicting
copyrighted subject matter with the owner’s permission has a legal
right to register the copyright in those photos, as long as the photos
satisfy the other requirements for a copyright registration and the
parties did not have an agreement providing otherwise.
The controversy concerned photos taken by Daniel Schrock, a pho-
tographer hired by Learning Curve International to take photos of
its licensed “Thomas & Friends” toy train figures for use in pro-
motional materials. After Learning Curve stopped using Schrock’s
services but continued to use some of the photos in promotional
materials, Schrock registered copyrights in the photos and sued
Learning Curve and its licensor, HIT Entertainment, for copyright
infringement.
The U.S. District Court for the Northern District of Illinois granted
summary judgment to Learning Curve and HIT on the basis that
Schrock did not own the copyrights in the photos and could not reg-
ister them (registration is a prerequisite to a copyright infringement
suit). The court held that the photos were “derivative works” of
the Thomas & Friends characters, owned by HIT, and that Schrock
needed Learning Curve’s permission to register copyrights in the
photos.
In reversing that decision, the Seventh Circuit assumed without de-
ciding that the photos were indeed derivative works and concluded
that the right to register the copyright for a derivative work arises
PHOTOGRAPHER Continued on Page 3
A r n s t e i n & L e h r i n t e ll e c t u al P r o p e r t y n e w s l e t t e r
Single word “.com” domain names are popular as they are easy to
remember. However, if that single word is the generic word for the
goods or services being offered, such as “cruise,” “tea,” “jewelry,”
or the like, adding “.com” to that word is probably not going to cre-
ate a composite word that will be a registrable trademark. The U.S.
Court of Appeals for the Federal Circuit has issued several decisions
refusing registration to such composite terms as generic, despite evi-
dence that the applicant provided to show that the public perceived
the proposed mark as distinctive and indicative of the source of the
goods or services.
The Federal Circuit recently issued another such decision, concluding
that HOTELS.COM is generic and non-registrable for the services
of “providing information for others about temporary lodging; travel
agency services, namely making reservations and bookings for tem-
porary lodging by means of telephone and the global computer net-
work.” The decision relied in part on In re Reed Elsevier Props. Inc.,
482 F.3d 1376 (Fed. Cir. 2007), in which the Federal Circuit previ-
ously denied registration for LAWYERS.COM because the term was
generic for online database services “featuring information exchange
in the fields of law, legal news and legal services.”
In this case, the trademark examiner denied registration to Hotels.
com LP for “HOTELS.COM” because it was merely descriptive of
hotel reservation services and there was insufficient evidence that it
had acquired distinctiveness. The examiner indicated that the mark
might also be generic for those services but did not make that deter-
mination. The significance of a generic finding is that, although it is
possible to register a descriptive term (either on the Principal Register
with evidence that the mark has acquired distinctiveness or on the
Supplemental Register without such evidence), a generic term cannot
be registered.
HOTELS.COM Continued on Page 2
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2
HOTELS.COM Continued from Page 1
On appeal to the Trademark Trial and Appeal Board (“TTAB”),
Hotels.com argued that HOTELS.COM is not generic because
Hotels.com does not provide lodging and meals for its web site
users and the examiner did not carry the heavy burden of proof of
showing that the term was generic. Hotels.com further contended
that HOTELS.COM had become a term widely accepted and rec-
ognized by the public and has thereby gained distinctiveness (or
“secondary meaning”).
Hotels.com’s evidence included 64 declarations from customers,
vendors and competitors stating that the term HOTELS.COM was
not a common or generic name of any product, service or field of
study. It also submitted a “national probability double blind tele-
phone survey” (of the type used to show that “Teflon” was not
generic) that resulted in its expert’s conclusion that approximately
76% of respondents regarded the mark HOTELS.COM as a brand
name for a business that makes hotel reservations and provides in-
formation about hotels. However, the TTAB rejected the declara-
tions because they were identical form documents that did not ex-
plain the conclusion. It rejected the survey results on the grounds
that the methodology did not adequately instruct the consumers in
the difference between a brand name and domain name.
The TTAB also analyzed the dictionary, encyclopedia and thesau-
rus definitions of “hotel,” “temporary lodgings,” and “.COM” in
concluding that HOTELS.COM was a generic term for the ser-
vices. In addition, the TTAB considered various other domain
names that contain the term “hotel,” as well as other web sites that
provide hotel information and reservation services and found that
“it is clear from the website and promotional materials of the ap-
plicant as well as the websites of third-parties that consumers who
are interested in finding information about hotels or making res-
ervations at hotels, would immediately understand that HOTELS.
COM identifies a website that provides such services.” The TTAB
found that, to be competitive, third parties need to use the word
“hotel” as part of their own domain names. It reasoned that the
word “hotels,” as included in a domain name, indicates the genus
of hotel information and reservation services and thus supports the
determination that HOTELS.COM is generic.
On appeal to the Federal Circuit, Hotels.com argued that the
TTAB’s reasoning was flawed because the contested term is not
simply the single word “hotels” but the composite term HOTELS.
COM. It pointed out that HOTELS.COM is used to indicate an
information source and travel agency—something other than the
plain meaning of “hotel” - so HOTELS.COM is not a generic term
for a “hotel” such that addition of “.com” negated a genericness
finding.
The Federal Circuit found that the TTAB considered that hotels
were the “focus” and a “key aspect” of the services and had re-
viewed Hotels.com’s advertisements, where it appeared that HO-
TELS.COM had the same meaning as the word “hotels” by itself.
The Court concluded that the TTAB correctly separated the word
w w w. a r n s t e i n . c o m
“hotel” from the suffix “.com,” which would not add to the regis-
trability of the term. The Court concluded that addition of “.com”
to “hotel” did not produce a new meaning in combination and did
not indicate source, only that Hotels.com operates a commercial
Internet web site that provides information about hotels.
Although the Court did not specifically consider whether the sur-
vey evidence was sufficient to show secondary meaning, it consid-
ered the entirety of the evidence before the TTAB, including the
large number of similar usages of “hotels” with a “.com” suffix,
in addition to the ordinary meaning and dictionary definition of
“hotels,” combined with the standard usage of “.com” to show a
commercial internet domain, and found that there was sufficient
evidence before the TTAB to support its findings that the mark was
indeed generic.
It appears that the Federal Circuit will not deviate from the po-
sition that even strong evidence of secondary meaning will not
save a “.com” mark joined with a generic term. Most recently,
the Court applied both the LAWYERS.COM and the HOTELS.
COM cases to reject registration of 1800MATTRESS.COM as
generic. In Re 1800MATTRESS.COM IP, LLC., 2009 U.S. App.
LEXIS 24383 (Nov. 6, 2009). It has long been the position of
the U.S. Patent and Trademark Office (“USPTO”) that addition
of a top level domain name such as .com, .net or .org will not add
to the registrability of a mark, because such terms are merely de-
scriptive of Internet commerce. Trademark Manual of Examining
Procedures § 1209.03(m). However, the USPTO does recognize
that there could be rare cases where addition of a top level domain
could improve the registrability of a mark.
An ironic note was that the TTAB disagreed with the examiner that
the evidence of secondary meaning was insufficient. If the Federal
Circuit had concluded that the mark was merely descriptive rather
than generic for the services and sent the case back to the TTAB,
the Board would have approved the application based on the mark
having acquired distinctiveness.
Source: In re Hotels.com, 573 F.3d 1300 (Fed. Cir. 2009)

PHOTOGRAPHER Continued from Page 1
by operation of law, not through the authority of the owner of the
copyright in the objects depicted in the photos. The Court cor-
rected the impression given in Gracen that such permission was
necessary. Rather, the author of a derivative work owns a copy-
right in the “incremental expression” contributed to that work, ex-
tending to the material contributed by the author of that work, not
to any preexisting material employed in the work. That copyright
may be “thin,” as it extends only to the original expression created
by the author.
The Court also clarified another statement in Gracen it said had
been “misapplied” – that there was a “heightened standard of
originality” in a derivative work that required the work to be “sub-
stantially different” from the underlying work in order to be copy-
rightable. Derivative works, noted the Court, need not contain any
more originality than necessary to distinguish them from public
domain or other existing works in some meaningful way. As the
Court found that Schrock’s photos contained that much original-
ity, they were copyrightable. A photograph’s originality can lie in
the effect created by the photographer’s choices of perspective,
angle, lighting, shading, focus, lens and the like. Only in cases
where the goal is to reproduce the underlying work exactly, such
as in slide transparencies of paintings, would there be insufficient
individual expression to constitute originality. Photographs can
still constitute original work even if they are intended, as here, for
a purely utilitarian commercial use. Even accurate product photos
can therefore be copyrightable.
Because the Court could not determine from the record on ap-
peal if the parties’ agreements and other dealings (1) prohibited
Schrock from registering the copyright in his photos or (2) gave
Learning Curve an implied license to keep using the photos, the
Court sent the case back to the district court for additional pro-
ceedings. A contract provision barring registration of a copyright
could override what the photographer might otherwise be allowed
to do under the Copyright Act.
As noted in the opinion, there is disagreement in the courts over
whether photographs of a copyrighted work are actually deriva-
tive works or are original works. The Seventh Circuit declined to
decide the question in this case but merely assumed that they were
derivative works for purposes of the decision.
If the photographs had constituted “works for hire,” the owner of
the copyright in those photos would have been Learning Curve
or HIT (depending on the agreements between those parties), not
Schrock. However, that was not an issue in the case. Photographs
are not specifically mentioned among the categories of works in
Sec. 101 of the Copyright Act that can be defined as works made
for hire, although they could be fit into the defined category of a
collective work in the right case.
Source: Schrock v. Learning Curve International, Inc., U.S. Court of Ap-
peals for the Seventh Circuit, No. 08-1296, November 5, 2009
A r n s t e i n & L e h r i n t e ll e c t u al P r o p e r t y n e w s l e t t e r
3
Clothing designer can use his
name in competition with owner
of trademark rights
This trademark infringement and breach of contract action
demonstrates the importance of clearly spelling out, in detail, the
intent of the parties in every trademark licensing transaction.
J.A. Apparel Corp. (“JA”) thought it was unambiguously obtaining
exclusive rights to market men’s clothing under the Joseph Abboud
name when it purchased from the world-famous designer and
philanthropist the commercial use of the name “Joseph Abboud,”
and trademarks containing that name for $65.5 million. Abboud,
however, had other ideas.
Since 1988, JA manufactured, marketed and sold products using
“Joseph Abboud” trademarks under a license from Abboud.
New licenses were issued to JA by Abboud in 1996. In 2000,
Abboud sold certain assets to JA, including the “names, trade
names, service marks, logos, insignias, and designations,” related
trademark registrations and applications and “all other Intellectual
Property.” The agreement defined “Intellectual Property” as “all
of the trademark registrations, service mark registrations and
applications and copyright registrations and applications currently
used by [Abboud] in connection with the Trademarks.” JA and
Abboud also entered into a personal service agreement under
which Abboud agreed not to compete with JA until 2007.
Near the end of Abboud’s non-compete period, he made plans
to market a new line of high-end men’s clothing under the
brand “jaz” and to use his name in advertising that line so that
customers would know he was the designer. JA objected because
it believed that it had purchased all rights to use the Abboud name
in connection with the sale of men’s clothing.
The U.S. District Court for the Southern District of New York
agreed with JA that the agreement was unambiguous and therefore
refused to consider Abboud’s evidence about the meaning of the
provisions in the agreement. The District Court ruled in JA’s
favor, concluding that JA received “all of Abboud’s rights to use
his name for commercial purposes” and that Abboud’s planned
use of his name to market the “jaz” line constituted both breach of
contract and trademark infringement. Although Abboud believed
that using his name to advise consumers that he was the source
of the new goods was a descriptive “fair use,” the District Court
felt that consumers would be “utterly confused” about whether
“Joseph Abboud” products by JA and “jaz” products by Abboud
came from the same source. Abboud was enjoined from “using
his personal name to sell, market, or otherwise promote, goods,
products, and services to the consuming public.”
However, on appeal, the U.S. Court of Appeals for the Second
Circuit reversed and remanded the case to the District Court
for further proceedings. The Second Circuit determined that the
DESIGNER Continued on Page 4
| Winter 2009
4

DESIGNER Continued from Page 3 Ninth Circuit Court examines required

agreement between JA Apparel and Abboud was ambiguous proof of access to copyrighted work
enough to require consideration of Abboud’s evidence about the In reviewing a challenge to MGA Entertainment, Inc.’s (“MGA”)
meaning of the contract terms and his “fair use” defense. Where “Bratz” dolls unrelated to Mattel’s widely-publicized suit (Bryan v.
contract language is unambiguous, the parties’ intentions cannot Mattel, Inc., U.S. District Court for the Central District of California,
be determined using evidence outside the words of the contract. No. CV 04-9049, December 3, 2008), the U.S. Court of Appeals for
However, when contract language is ambiguous, evidence outside the Ninth Circuit has upheld a judgment in favor of MGA.
of the contract language, including evidence of the parties’ intent,
can be used. Since, 1993, Art Attacks, a small airbrush art business primarily spe-
cializing in custom-made T-shirts, had sold T-shirt designs from
The Second Circuit did booths at county fairs, as well as at a few Wal-Mart and other stores
not find any provision in Arizona and California. One of Art Attacks’ best selling designs
in the agreement was its “Spoiled Brats” character concept, copyrighted in 1996. The
specifically transferring Spoiled Brats character designs, which could be tailored to resemble
all of Abboud’s rights individual customers, featured cartoonish, predominately female
to use his name to refer characters with oversized eyes, disproportionally large heads and feet,
to himself in a non- makeup and bare midriffs.
trademark sense for
commercial purposes, MGA began selling dolls under the name “Bratz” in 2001. The dolls
as opposed to the also featured oversized eyes, disproportionally large heads and feet,
transfer of brand names. makeup and bare midriffs. In 2004, Art Attacks filed suit against
The agreement did not MGA alleging trademark, trade dress and copyright infringement. A
provide unambiguously jury found for MGA on the trademark claim, but could not reach a
for exclusive use of verdict on the remaining claims. MGA then moved for judgment as
the names “Abboud” a matter of law and the district court judge granted the motion. The
and “Joseph Abboud” Ninth Circuit agreed with the district court that Art Attacks failed to
outside the use of those demonstrate that MGA had access to copyrighted works or that Art
names in trademarks, Attacks’ designs constituted distinctive trade dress that had acquired
nor did it prohibit secondary meaning.
Abboud from making non-trademark use of his name after the
expiration of his non-compete agreement. The District Court must As Art Attacks had no direct evidence of copying by MGA, proof
therefore consider Abboud’s evidence of the parties’ intentions in that MGA had access” to the Spoiled Brats designs was necessary.
using the term “names” in deciding whether Abboud breached the See Three Boys Music Corp. v. Bolton, 212 F.3d 477, 481 (9th Cir. 2000).
contract. A copyright owner must show a reasonable possibility, not merely a
bare possibility, that an alleged infringer had the chance to view the
The Second Circuit also directed the District Court to reconsider protected work to prove “access.” If, as here, there is no direct evi-
Abboud’s “fair use” defense in the context of the actual advertising dence of access, circumstantial evidence may be used to prove access
mock-ups presented by the parties, and to determine whether by either (1) establishing a chain of events linking the owner’s work
Abboud’s use was (1) “other than as a mark, (2) in a descriptive to the alleged infringer or (2) showing that the owner’s work has been
sense, and (3) in good faith.” widely disseminated.

J.A. Apparel might have anticipated when it signed the deal in 2000
that Abboud, who was just 50 years old at the time, might wish to
return to the fashion design world when his non-compete expired
seven years later. The decision is also instructive for licensees
whose business depends on the exploitation of valuable brands.
Had J.A. Apparel considered this possibility, the agreement could
have been drafted to avoid this expensive and unfortunate result.
Source: J.A. Apparel Corp. v. Joseph Abboud, U.S. Court of Appeals for
the Second Circuit, No. 08-3181-CV, June 10, 2009
w w w. a r n s t e i n . c o m
However, the Ninth Circuit found that Art Attacks had failed to
prove MGA’s access to the Spoiled Brats designs through either form
of circumstantial evidence. Art Attacks neither established a chain
of events linking its copyrighted works to MGA nor showed that its
protected work had been widely disseminated.
Although an MGA designer testified that she may have attended the
Los Angeles County Fair between 1998 and 2001, when Art Attacks
was displaying the Spoiled Brats designs, Art Attacks could not prove
that the designer actually visited the Los Angeles County Fair during
that relevant time period or that the designer ever saw Art Attacks’
booth. The Court noted that there could have been a minimal chance
that the designer did visit the fair sometime during the relevant time
period but that such a chance did not create a “reasonable possibil-
ity” of access under the chain of events theory.

Art Attacks argued that the Spoiled Brats designs were widely dis-
seminated in three ways: (1) on the Art Attacks booth; (2) on Spoiled
Brats T-shirts, which serve as “walking billboards”; and (3) via the
Internet on its web site.
Art Attacks displayed Spoiled Brats images along with their other
designs on the walls of its 20’ x 10’ fair booths, on store kiosks and
in a binder on the booth’s counter. Although there was evidence that
millions of people had attended the relevant county fairs, Art Attacks
had no evidence of how many people noticed the Art Attacks booths
among all the others. As for whether the T-shirts served as “walking
billboards,” the Ninth Circuit previously held that a video that sold
19,000 copies over a thirteen-year period could not be considered
widely disseminated and that book sales of no more than 2,000 cop-
ies nationwide and no more than 700 copies in Southern California
did not create more than a bare possibility of access. See Rice v. Fox
Broadcasting Co., 330 F.3d 1170, 1178 (9th Cir. 2003); Jason v. Fonda,
698 F.2d 966 (9th Cir. 1982). Art Attacks contended that books and
videos require more attention to view than T-shirts but, on average,
Art Attacks only sold about 2,000 Spoiled Brats T-shirts per year.
The Ninth Circuit concluded that approximately 2,000 T-shirts per
year were insufficient to demonstrate that the Spoiled Brats designs
were widely disseminated, no matter how little attention was required
to view a design on a shirt.
Art Attacks also attempted to argue that by maintaining a website
it had widely disseminated the Spoiled Brats designs. But in 1996
the website took two full minutes to load due to all the images it
contained. The Spoiled Brats design was only one of several images
on the page, an image that could not be viewed unless the reader
scrolled down the page after waiting for it to load. Most importantly,
the website did not contain “metatags” to identify the Art Attacks
site to Internet search engines. Without metatags, a potential viewer
who typed “Spoiled Brats” into a search engine probably would not
have been led to Art Attacks’ website.
The Ninth Circuit found that a reasonable jury could not have con-
cluded that there was more than a bare possibility that MGA had
access to Art Attack’s Spoiled Brats designs, not the required reason-
able possibility that MGA had viewed the protected work. Thus, Art
Attacks was unable to establish access to the copyrighted works by
MGA.
The Ninth Circuit also rejected Art Attacks’ contention that its prod-
uct design constituted trade dress that had acquired distinctiveness
in the mind of the public, because there was no evidence that Art
Attacks had made exclusive use of the alleged trade dress. In addi-
tion, the Ninth Circuit rejected the probative value of evidence of
actual public confusion between the Art Attacks and MGM designs
because the witnesses were Art Attacks’ employees and personal
friends of its founder.
Source: Art Attacks Ink, LLC v. MGA Entertainment Inc., U.S. Court of
Appeals for the Ninth Circuit, No. 07-56110, September 16, 2009
A r n s t e i n & L e h r i n t e ll e c t u al P r o p e r t y n e w s l e t t e r
5
Copyright licensee’s merger without
licensor’s approval causes infringement
When a company that holds a copyright or patent license merges
with another company, the parties might not consider whether the
merger constitutes a legal transfer of the license that requires the
approval of the copyright or patent owner. After all, the licensed
invention or copyrighted work might still be used by the same
personnel at the same location as prior to the merger. However,
the U.S. Court of Appeals for the Sixth Circuit has ruled that such
a merger constitutes an invalid license transfer resulting in copy-
right infringement, whether the license contains a clause requiring
the licensor to agree to transfer of the license and whether state
law considers the merger to cause the license to transfer.
Cincom Systems, Inc. develops, licenses and services software.
Cincom licensed two of its copyrighted software products to Alcan
Rolled Products Division for use on a single designated computer
in Alcan’s facility in Oswego, New York. Both companies were
Ohio-based. Ohio law governed the interpretation and enforce-
ment of the license. The license barred Alcan from transferring its
rights without Cincom’s prior written approval.
Through a long series of internal restructurings, mergers and a
name change among related companies, Alcan became a part
of Novelis Corp. The licensed software never left the licensed
computer in the Oswego facility but Alcan ceased to exist and
the facility and computer became Novelis’s property as a result of
the mergers. Alcan did not seek or obtain Cincom’s authorization
before undergoing the restructure. When Cincom discovered the
mergers, it sued Novelis for copyright infringement, contending
that the mergers caused the license to be transferred to Novelis
without Cincom’s permission. The U.S. District Court for the
Southern District of Ohio agreed and entered a judgment for near-
ly $460,000, an amount equal to Cincom’s initial licensing fee.
On appeal, Novelis argued that the transfer was lawful because
Novelis was not a competitor of Cincom and Cincom could not
object to a mere internal corporate reorganization. Novelis also
contended that, under Ohio law, Alcan’s merger did not result in a
transfer of the license.
The Sixth Circuit held that its previous decision in PPG Indus-
tries, Inc. v. Guardian Industries Corp., 597 F.2d 1090 (6th Cir.
1979) governed this case. In PPG, the Court found that a com-
pany that received a patent license in a merger was an infringer
because Ohio law provided that licenses automatically transferred
to and vested in the successor company in a merger and the license
required written consent of the patent owner prior to a transfer. In
addition, the Court determined that, as a matter of federal com-
mon law, a patent or copyright license is “presumed to be non-
assignable and non-transferable” if there are no express license
provisions to the contrary. Because Ohio law, whatever its nature,
cannot override federal law, Ohio law cannot authorize transfer of
COPYRIGHT Continued on Page 10
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6
Federal Circuit dissects use of licenses to prove damages for patent infringement
In 2002, Lucent Technologies, Inc. sued Gateway, Inc. for patent
infringement over a method for entering information into fields on
a computer screen without using a keyboard. Microsoft intervened
in the case. The jury rejected Microsoft’s claim that the patent
was invalid and found that Microsoft infringed some of the patent
claims in suit. The jury awarded Lucent nearly $358 million in a
lump-sum royalty payment as damages for infringement related
to Microsoft’s Outlook program and two other applications, Mi-
crosoft Money and Windows Mobile. The infringing feature was
called the “date picker,” a calendar tool allowing a user to choose
a date and enter it into a field in an appointment form without typ-
ing the date on a keyboard. Microsoft moved for judgment as a
matter of law but the U.S. District Court for the Southern District
of California upheld the jury’s verdict.
The U.S. Appeals Court for the Federal Circuit affirmed the jury’s
verdict that the patent claims at issue were not obvious and that
Microsoft had infringed the patent. However, the Court held that
the damages award was not supported by substantial evidence and
sent the case back for new trial on the damages issue.
The federal Patent Act provides that patent infringement damages
should be “adequate to compensate for the infringement, but in
no event less than a reasonable royalty for the use made of the
invention by the infringer….” 35 U.S.C. § 284. Two methods for
determining damages are the patent owner’s lost profits and the
reasonable royalty the owner would have received if the parties
had bargained for a license prior to the infringement. In this case,
the parties chose the reasonable royalty method, with Lucent ask-
ing for a “running royalty” based on ongoing sales or usage of the
patented method and Microsoft presenting evidence that the dam-
ages should be no greater than a $6.5 million lump-sum, paid-up
royalty.
The Federal Circuit observed that the hypothetical negotiation em-
ployed in determining a reasonable royalty “necessarily involves
an element of approximation and uncertainty.” Nevertheless, in
assessing the evidence supporting the nearly $358 million verdict,
the Court concluded that there was an insufficient basis for award-
ing what amounted to an 8% royalty on the sales price of the Out-
look program for infringement by the date picker, a tiny feature of
that program.
Applying the damages factors set forth in Georgia-Pacific Corp.
v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970), the
Federal Circuit compared the licenses Lucent had placed in evi-
dence to Microsoft’s specific Outlook product and concluded that
the hypothetical license Lucent and Microsoft would have reached
was not sufficiently comparable to those licenses for the licenses
to have supported the jury’s damage award. In particular, Lucent
provided no evidence for how often the patented method would be
used by Microsoft’s customers and little testimony explaining how
license agreements structured with running royalties could be used
to prove what lump-sum payment the parties would have accepted
w w w. a r n s t e i n . c o m
in the hypothetical negotiation.
The Court observed that a minimally-used feature, such as the
date picker, would usually support a lower lump-sum royalty pay-
ment than a feature expected to be used more frequently in the
licensed product. Because Lucent did not introduce any evidence
of expected use of the date picker feature, the jury had no support
to conclude that the parties would have estimated that it would
be frequently used or so highly valued as to command a payment
amounting to 8% of the sales price of the Outlook program.
According to
the Federal
Circuit, the
eight license
agreements
introduced
into evidence
by Lucent
were “radi-
cally differ-
ent” from the
hypothetical
agreement
at issue and
the Court
could not de-
termine the
value of the
others because their subject matter was unknown. Of the lump-
sum agreements provided by Lucent, none approached the size of
the jury’s award and they were directed at situations “vastly dif-
ferent” than the Microsoft Outlook program or at situations that
could not be determined from the testimony. A lump-sum dam-
ages award, noted the Court, requires more than an expert wit-
ness’s superficial testimony about royalty numbers, particularly
without any explanation of how the technology of those licenses
compares to the technology in the case.
The four running royalty licenses that Lucent introduced to sup-
port the jury’s verdict were fundamentally different from the Mi-
crosoft situation. Although a running royalty license can be used
as a basis to award lump-sum damages, the jury must hear testi-
mony about how to recalculate the value of those running royalties
to arrive at a lump sum award. None of the licenses introduced as
evidence supported the size of the jury’s award.
Nor did the nature of the patented invention, the character of Lu-
cent’s commercial embodiment or the benefits to users support
the award, where the infringing feature was a tiny element of one
part of the much larger and complex Outlook program with hun-
dreds of other features. Thus, the Federal Circuit concluded that
most of Microsoft’s profit from the Outlook program was attribut-
able to non-patented elements. That “glaring imbalance” must be
factored into the analysis of how much profit can be attributed to

the “exceedingly small” use of the data picker feature.
Another Georgia-Pacific factor is the extent to which the infringer
has made use of the patented invention and the value of that use.
Although the hypothetical negotiation is assumed to take place
prior to any infringement, the Federal Circuit noted that facts oc-
curring after the date of the infringement begins, such as how often
the invention has been used by infringers, can be considered. Al-
though the parties to the hypothetical negotiation would not have
precise data about future usage of the invention, they could have
rough estimates. That information could be considered by the jury
but, in this case, there was no such evidence so the damage award
was not correlated to the extent that consumers used the infring-
ing data picker method. Although substantial evidence supported
the jury’s verdict that Microsoft infringed, there was no evidence
about how many consumers used the invention or how many times
they did so. Moreover, Lucent did not show that the data picker
was the basis for customer demand for the Outlook program, so
the jury could not base its damage award on applying a royalty
percentage to the Microsoft’s entire sales of the Outlook program
(the “entire market value rule”) without applying a royalty rate in
proportion to the size of the data picker feature in relation to the
entire Outlook program.
As the Federal Circuit held that no reasonable jury could have
found that Lucent provided enough evidence to support nearly
$358 million in damages, the Court returned the case to the district
court for a new trial on the damages issue.
Although the Federal Circuit was careful to recognize that compa-
nies in the high-tech computer industry often make licensing deals
that do not link the royalty paid to the number of times consumers
could be expected to use a patented feature, this decision returns
many times in the course of the analysis to the importance of such
evidence and its absence in the trial record. Patent owners who
may wish to rely on a reasonable royalty theory of damages should
keep that in mind.
Source: Lucent Technologies, Inc. v. Gateway, Inc., U.S. Court of Ap-
peals for the Federal Circuit, Nos. 2008-1485, 2008-1457, 2008-1495,
September 11, 2009
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7
South Dakota considers Lanham Act
abandonment test for state
trademarks
Section 45 of the Lanham Act (15 USC §1127) provides a rebut-
table presumption that a trademark has been abandoned when the
mark has not been used for three years. Although not adopting that
presumption, the South Dakota Supreme Court has considered it in
the context of state trademark registrations.
Dakota Industries, Inc. (“DI”), a manufacturer of outerwear prod-
ucts, registered the trademark DAKOTA for its products with the
Secretary of State of South Dakota in 1968 and renewed that regis-
tration in 2006. When Cabela’s.com, Inc. (“Cabela’s”) sold cloth-
ing using “Dakota Vest” and “Dakota Jacket,” DI sued Cabela’s
for state trademark infringement. Cabela’s moved for summary
judgment, claiming that DI had abandoned the mark by failing to
make or sell any DAKOTA-branded goods after 1997 and failing
to collect royalties from licensees after 2001.
The trial court granted judgment to Cabela’s, finding that DI had
not rebutted the evidence of abandonment. DI appealed, and the
South Dakota Supreme Court affirmed that decision.
Although the Supreme Court acknowledged that abandonment is
a defense to trademark infringement which the alleged infringer
has the initial burden to establish, the Court noted that once that
initial case of abandonment has been made, the trademark owner is
required to respond to that evidence with specific facts from which
current use of the mark can be shown or inferred.
Cabela’s produced evidence from DI’s business records that DI
had not sold any DAKOTA-branded products or collected any roy-
alties from licensees of its DAKOTA mark from 2001-2006. Ca-
bela’s also produced the deposition testimony of DI’s CEO that DI
had not made or sold any DAKOTA-branded products after 1997
and that the DAKOTA mark had not been used or licensed by DI
since 2000. DI’s CEO had also testified that he was “not going
to waste any time or efforts” determining whether DI’s licensees
were continuing to use the mark or even continued to exist.
That evidence, the Supreme Court observed, was sufficient to
make a prima facie case of abandonment, requiring DI to come
forward with specific facts about its current use of the mark. The
Court noted that although the South Dakota trademark statute au-
thorized the Secretary of State to cancel a state trademark regis-
tration that has been abandoned, the statute did not provide any
particular period of non-use that would constitute abandonment.
The trial court had looked to the federal Lanham Act for guidance.
The trial court did not adopt the Lanham Act’s three-year non-use
presumption but also considered that DI’s non-use stretched for
almost six years.
DI contended that it had not abandoned the mark during either a
DAKOTA Continued on Page 10
| Winter 2009
8
Ninth Circuit rejects Hallmark’s anti-SLAPP challenge to Paris Hilton’s suit
The U.S. Court of Appeals for the Ninth Circuit has allowed Par-
is Hilton, the controversial heiress who is said to be “famous for
being famous,” to proceed with her lawsuit against greeting card
giant Hallmark, based on a birthday card captioned “Paris’s First
Day as a Waitress.” The Hallmark card portrayed a cartoon wait-
ress with a super-imposed photograph of Hilton’s face, serving a
plate of food to a restaurant customer. Hilton says “Don’t touch
that, it’s hot,” the customer replies “What’s hot?” and Hilton re-
sponds “That’s hot.” Inside the card reads “Have a smokin’ hot
birthday.” The setting of the card is allegedly based on an episode
of Hilton’s reality television show “The Simple Life,” in which
she was employed as a waitress at a “fast food joint,” and often
uttered her signature phrase “That’s hot” [registered by Hilton as a
trademark for clothing and pending registration as a trademark for
alcoholic beverages].
Hilton sued Hallmark for misappropriation of publicity under Cali-
fornia common law, false designation of origin under the Lanham
Act, 15 U.S.C. § 1125(a), and infringement of a federally regis-
tered trademark. The U.S. District Court for the Central District of
California dismissed the trademark infringement claim but allowed
the other claims to proceed.
Hallmark also moved to strike Hilton’s right of publicity claim
under California’s anti-SLAPP statute (Cal. Civ. Proc. Code §
425.16). “SLAPP” stands for “strategic lawsuit against public par-
ticipation.” Anti-SLAPP laws provide a remedy against suits that
are brought primarily to chill the valid exercise of the constitutional
rights of freedom of speech and petition for redress of grievances.
For an anti-SLAPP motion to be successful, the defendant has to
show that the plaintiff’s claim was brought under state law, that the
claim arose from the defendant’s protected conduct (such as free
speech in connection with a public issue) and that the plaintiff does
not have a probability of success on the merits of the claim. The
claim must be both legally sufficient and supported by enough facts
that a judgment could be sustained if those facts were believed.
The District Court denied Hallmark’s motion because it required
resolving too many factual issues and Hallmark appealed.
The Ninth Circuit determined that the birthday card qualified
as “speech” under First Amendment law and that the sale of the
birthday card was “in connection with a public issue or an issue of
public interest.” Although, the California Supreme Court has not
clearly established what constitutes an issue of public interest, the
anti-SLAPP statute should be interpreted broadly in light of its pur-
pose to encourage participation of matters of public importance or
consequence. Hilton admitted that she is a celebrity whose doings
interest many people but she argued that her “garden variety pri-
vate dispute over who profits from her image” does not implicate
an issue of public interest.
After looking to decisions of the California appellate courts for
guidance, the Ninth Circuit concluded that the statute did not re-
quire the defendant’s activity to involve questions of civic concern.
The topic of the free speech can be a celebrity like Paris Hilton.
It need not be a subject of some defined debate -- social or “low-
w w w. a r n s t e i n . c o m
brow” topics are sufficient. As “The anti-SLAPP stat-
Hilton is a person “in the public
eye” and “a topic of widespread,
ute should be inter-
public interest,” and because preted broadly in light
Hilton’s career is something of of its purpose to en-
concern to a substantial number
courage participation
of people, Hallmark’s birthday
card constituted free speech “in of matters of public
connection with a public issue importance or conse-
or an issue of public interest.” quence.”
Although the public interest is
not the same as mere curiosity about a public personage, if the
activities of the celebrity are public they become a public issue.
In this case, Hallmark’s card spoofed Hilton’s public persona and
signature phrase, not some private detail of Hilton’s personal life.
Hallmark was not required to show that its card commented on
an ongoing public controversy as Hilton’s lifestyle and signature
phrase are matters of widespread public interest.
Because Hallmark’s threshold showing was made, the Court next
analyzed the probability that Hilton’s claim of misappropriation of
her right of publicity would succeed, noting that the required prob-
ability of prevailing need not be high. If Hilton’s right of publicity
claim has even “minimal merit,” the Court noted, it is entitled to
proceed. Hallmark contended that even if Hilton had a minimal
claim for misappropriation of her right of publicity, Hallmark had
two winning defenses --“transformative use” and “public interest”
– that would defeat her claim. If a celebrity likeness is only one of
the raw materials from which a creative work is made, that use of
the celebrity likeness is “transformative.” If the depiction of the
celebrity is “the very sum and substance of the work in question,”
the use is not transformative. Merely merchandising a celebrity’s
image without that person’s consent does not amount to a transfor-
mative use.
The Court found that as long as Hilton could show some probabil-
ity of success in arguing that the birthday card is not transforma-
tive, Hallmark was not entitled to the transformative use defense
as a matter of law. The version of Hilton on the card did almost
exactly what she did in her reality show, serve food to a customer.
As the factual issue of whether the card is transformative or not
transformative must still be resolved, Hilton has some probability
of success.
California law provides that there is no cause of action against
publication of matters in the public interest because of the public’s
right to know and the press’s freedom to tell. The Court dismissed
Hallmark’s public interest defense because it only applies to liabil-
ity for publishing or reporting information, which the Hallmark
card does not do.
A majority of states have anti-SLAPP statutes, including Florida
and Illinois. They are most often used to defend against defama-
tion suits.
Source: Hilton v. Hallmark, 580 F.3d 874 (9th Cir. 2009)
 9

State foreclosure of security interest in patents transfers

title without a written assignment from debtor
The U.S. Court of Appeals for the Federal Circuit has determined
that a party that obtained its rights to certain patents from a party
that obtained those rights through a security interest foreclosure
sale has good title to those patents and can sue infringers in its
own name. It is not necessary for the purchaser at foreclosure
to obtain a written assignment from the original patent owner in
order to be able to pass good title to the patents to another party
by a written assignment.
In 2001, Ozro Inc. (whose owners included Jeffrey Conklin) grant-
ed security interests covering five patents to Silicon Valley Bank
(“SVB”) and to Cross Atlantic Capital Partners, Inc. (“XACP”).
Both SVB and XACP recorded their security interests in the U.S.
Patent and Trademark Office. SVB later assigned its security in-
terest to XACP. The XACP security agreement provided that, in
the event of default by Ozro, XACP could dispose of the collateral,
including the patents, at a public or private sale. XACP could
also purchase the collateral, including the
patents, at a public sale. “Although no written
Cir. 2008), the Federal Circuit held that federal law is used to de-
termine the validity and terms of an assignment but state law con-
trols the transfer of patent ownership by any operation of law not
considered to be an assignment. Although the federal Patent Act
requires all assignments of patent interests to be in writing, there
is nothing in the Patent Act that limits transfer of patent ownership
only to assignments. Ownership can be changed by operation of
law, such as through the state intestacy laws that determine who
owns the property of a person who dies without a will. In Aka-
zawa, the Federal Circuit held that a widow and her daughters who
received title to her deceased husband’s patent through state intes-
tacy law could make a valid assignment to a third party, who could
then bring a patent infringement suit. Although an assignment of
a patent must be in writing, transfers by operation of law are not
so limited. As XACP’s foreclosure sale was properly conducted
under Massachusetts law, Sky received full title to the patents from
XACP’s assignment to Sky.
SAP argued that the Patent Act provides that

When Orzo defaulted, XACP issued a fore-

closure notice identifying the patents among
the collateral to be sold at public auction.
Prior to the auction, Jeffrey Conklin negoti-
ated with XACP for XACP to purchase the
patents at the auction and to transfer them
to Conklin’s new company, Sky Technolo-
gies LLC (“Sky”). XACP, the only bidder,
purchased all of the assets in foreclosure.
Shortly thereafter, XACP assigned its title to
the patents to Sky. Orzo never made a writ-
ten assignment of the patents to XACP.
document assigned the patents can only be owned by a patentee, his
heirs or his assigns; that is, persons to whom
patent rights to XACP, the patentee makes a written assignment. 35
the Federal Circuit U.S.C. § 154(a)(1). SAP did not question the
Akazawa ruling because the widow and daugh-
agreed that patent rights ters were heirs, a class of persons within the
can be transferred by statutory language. However, the Federal Cir-
cuit was not persuaded because that statutory
‘operation of law’ in a provision does not cover transfers of patent
proper foreclosure sale.” ownership, only the original grant of the pat-
ent. Nor does § 9-619 of the Massachusetts
UCC require a written assignment. It merely
permits such a document to be recognized as legal if it is made.

Three years later, Sky sued SAP AG and SAP America, Inc. (col-
lectively “SAP”) for patent infringement. SAP moved to dismiss
the suit, contending that Sky did not own the patents and there-
fore did not have “standing” to sue, because Ozro had never made
a written assignment of the patents to XACP. The U.S. District
Court for the Eastern District of Texas determined that title to the
patents legally passed to XACP at the foreclosure sale, as that sale
was properly conducted under the Massachusetts Uniform Com-
mercial Code, so that when XACP made the written assignment to
Sky, Sky received title to the patents.
The Federal Circuit observed that “regardless of how the parties
characterize the transaction that conveyed [the patent] rights,” a
party that has been granted all substantial rights under a patent has
legal title to the patent and, therefore, has standing to sue infring-
ers. Although no written document assigned the patent rights to
XACP, the Federal Circuit agreed that patent rights can be trans-
ferred by “operation of law” in a proper foreclosure sale.
In Akazawa v. Link New Technology Int’l, Inc., 520 F.3d 1354 (Fed
Public policy reasons also support transfer by operation of law.
The Federal Circuit concluded that invalidating foreclosures of se-
curity interests secured by patents would harm a large number of
secured creditors. In addition, restricting transfer of patents to as-
signments would lessen the value of patents because patent owners
could not use them as collateral. Moreover, it would be impracti-
cal to require secured parties to obtain written assignments after
foreclosure from businesses that might no longer exist.
As the Federal Circuit noted, a foreclosure sale must be properly
conducted for the title to patents to transfer to the purchaser at
the sale. Although it is not necessary to record a security interest
with the U.S. Patent and Trademark Office to perfect that security
interest in patents, it is good practice to do so, in addition to filing
the UCC financing statement that indicates that it covers patents
or general intangibles or includes a description of the patents that
it covers.
Source: Sky Technologies LLC v. SAP AG, U.S. Court of Appeals for the
Federal Circuit, No. 2008-1606, August 20, 2009

A r n s t e i n & L e h r i n t e ll e c t u al P r o p e r t y n e w s l e t t e r | Winter 2009

10
DAKOTA Continued from Page 3
three-year or a six-year period because the mark was in use by its
licensees. It pointed to recently seen DAKOTA-branded clothing
for sale by a company in Sioux Falls. However, DI’s attorney
admitted that those garments were sold to that company in 1997
and that DI did not have any evidence that the company was still
a licensee. Because DI failed to produce any evidence of actual
license agreements, income from licensing or affidavits from cur-
rent licensees, and no specifics about goods or licensees still in
the marketplace or alleged royalty-free oral licenses or license su-
pervision, the Supreme Court concluded that the mark was indeed
abandoned.
Section 45 of the Lanham Act also provides that a mark will be
presumed abandoned if the owner’s course of conduct causes the
mark to “lose its significance as a mark.” Allowing unlicensed
third parties to use a mark can be evidence of such lost signifi-
cance.
A state trademark registration, although providing protection for
a mark only within the boundaries of the state of registration, is
nonetheless an important tool for protection of marks that are not
used in interstate commerce or whose owner is not ready to incur
the expense of a federal registration. State trademark registrations
are relatively easy and inexpensive to obtain and maintain com-
pared to a federal registration. However, unlike federal applica-
tions, which can be based on an intent to use a mark in the future,
state trademark applications require that the mark be in current use
within the state.
The DAKOTA mark at issue in this case would probably have been
difficult to register on the U.S. Principal Register, as it would like-
ly have been considered to be geographically descriptive. State
registrars are less likely to make such objections.
Source: Dakota Industries, Inc. v. Cabela’s.com, Inc., S.D. Supreme
Court, No. 24950, May 20, 2009
COPYRIGHT Continued from Page 5
a patent or copyright license where the patent owner’s permission
is required.
Because it had not considered its PPG decision since 1979, the
Sixth Circuit took the opportunity to expand on its reasoning in
that case. The Court observed that (1) federal common law gov-
erns issues with respect to the assignability of a patent or copy-
right license, (2) state contract law governs interpretation of patent
and copyright licenses, (3) state law determines whether a merger
results in the transfer of such licenses but (4) state law cannot al-
low a patent or copyright license to transfer without the licensor’s
express authorization. The fact that Novelis was not a competitor
of Cincom is irrelevant because the license specifically prohibited
transfers without Cincom’s prior written consent. Even if the li-
cense had been silent as to transfer rights, federal common law
prohibited a transfer without the licensor’s express approval. If
Ohio law transferred the license from Alcan to Novelis as of result
of the internal restructuring/mergers, the license was breached and
w w w. a r n s t e i n . c o m
Free Domain Name Trademark
Monitoring for Valued Clients
For a limited time, Arnstein & Lehr LLP is offering a free ser-
vice for valued clients concerned about potential infringers
registering domain names with their trademarks. This new
service alerts the firm daily to top-level domain names reg-
istered with ICANN registrars that contain the client’s trade-
marks. It is offered as part of Arnstein & Lehr’s emphasis on
providing its clients with large firm expertise at mid-market
value rates.
Hundreds of thousands of new top-level internet domains
are registered every week. Often these domains contain
valuable trademarks that the registrants are not authorized to
use. Good brand management and protection dictates that
trademark owners be vigilant about misuse of their marks on
the Internet.
Services that alert trademark owners to domain registrations
using their marks can cost thousands of dollars a year. How-
ever, for a limited number of trademarks and a limited time
Arnstein & Lehr will, free of charge, add a client’s trademark
to the list of marks it monitors for use in new domain registra-
tions. Any alerts the firm receives will be forwarded on to the
client for review and legal action, if necessary, at the client’s
discretion.
Clients or potential clients interested in taking advantage
of this new free service are encouraged to contact Judith
Grubner in Chicago at 312.876.7885 or jlgrubner@arnstein.
com, or Joel Rothman in West Palm Beach at 561.650.8480
or jrothman@arnstein.com.
Novelis’s use of the software constitutes copyright infringement.
The Court noted that the changes in Ohio law following the PPG
decision were not substantive in determining whether Ohio law
causes a license to be transferred to the successor party in a merger.
What matters is whether, after the merger, the same legal entity
holds the license. If not, a transfer has occurred that, in this case,
was unlawful because Novelis did not obtain Cincom’s prior writ-
ten approval. Therefore, Novelis’s use of the software constituted
copyright infringement.
This case illustrates the danger in assuming that a license that
contains no pre-transfer approval obligations may be freely trans-
ferred. If the license has no transfer provisions at all, federal com-
mon law will bar a transfer without a prior written authorization.
Where the parties wish a license to be freely transferrable, they
must expressly provide such a term in the license.
Source: Cincom Systems, Inc. v. Novelis Corp., U.S. Court of Appeals for
the Sixth Circuit, No. 07-4142, September 25, 2009
 11

World Wide Video appeals
dismissal of case against Yoko Ono
We reported in the Summer 2009 newsletter that Yoko
Ono was allowed to keep possession of and the copy-
rights to videotapes with footage of John Lennon, Ms.
Ono and their family that World Wide Video claimed
to own. World Wide Video appealed that ruling to the
United States Court of Appeals for the First Circuit on
November 6, 2009.
Don’t wait for the next issue
to get more IP news and updates
Check out and subscribe to blogs published by Arn-
stein & Lehr attorney Joel Rothman on nutritional and
dietary supplement law at www.nutrisuplaw.com. He
also publishes the legal blog www.appslawblog.com
for companies competing in the mobile and iPhone
applications business.
Arnstein & Lehr also publishes General Counselor,
our employment law blog for in-house attorneys, busi-
ness owners and executives with special attention to
Illinois employment law. It can be found at general-
counselor.com.

The Intellectual Property Practice Group counsels clients on matters

related to the protection of trademarks, copyrights, domain names and
trade secrets, including preparation and processing of trademark and
copyright applications, unfair competition, rights of privacy and pub-
licity, review of web sites and advertising claims, and preparation and
registration of contest and game promotion rules.

Judith L. Grubner Joel B. Rothman

312.876.7885
jlgrubner@arnstein.com
Ms. Grubner is a partner in the firm’s
Chicago office. She concentrates her
practice on intellectual property, spe-
cializing in trademarks, copyrights,
domain names and sweepstakes, contests and game
promotions.
Ms. Grubner is a speaker for the Chicago and Milwaukee
Bar Associations, the Midwest Society of Professional
Consultants and Society of Professional Journalists. In
July 2009 Ms. Grubner was named to the list of Leading
Lawyers in Advertising & Media Law by Leading Lawyers
Network.
Misha Kerr is an intellectual property
associate in the firm’s West Palm Beach
office.
561.650.8480
jrothman@arnstein.com
Mr. Rothman is a Florida Bar board
certified Intellectual Property lawyer
and a partner in the firm’s West Palm
Beach office. Mr. Rothman represents
individual and corporate clients in intellectual property
infringement litigation involving patents, trademarks,
copyrights, trade secrets, trade libel and related com-
mercial matters. His litigation practice also includes
significant focus on electronic discovery issues such as
e-discovery management and motion practice relating
to e-discovery.
The editors acknowledge the contributions to this issue
of Misha Kerr and Eric Seidmon.

A r n s t e i n & L e h r i n t e ll e c t u al P r o p e r t y n e w s l e t t e r | Winter 2009

 12
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