Volume 10

This volume includes scholarship from Mary T. Hannon who explores the current gender gap in U.S. patent bar.

MASTHEAD

Editor-in-Chief
Catherine Morgan

Editorial Team

Publishing Editor: Payton DuBose
Managing Editors: Ziyu Ma & Matthew Ritter
Content Editors: Rita Xia & Audrey Knutson
Audio Editor: Emma Ng
Note Editor: Sarah Kelly
Business Manager: Garrett Derian-Toth

Articles Editors:Nick Eitsert, Peyton Gilliat, Mounir Jamal, Taylor Lavender, Chris McMillan, Richa Patel, Zach Shepard, Matthew Spegele, Allison Strong, Janine Tang, Parker Zimmerman

Faculty Advisor and Primary Contact: Professor Michael Mattioli
Faculty Advisor: Professor Mark Janis


CONTENT

The Patent Bar Gender Gap: Expanding the Eligibility Requirements to Foster Inclusion and Innovation in the U.S. Patent System” by Mary T. Hannon

Season 3, Episode 5: Spark of Genius, Tiger TrademarKing – How IP Took Down the ‘Tiger King’ (Blog Post)

By: Audrey Knutson & Catherine Morgan

Hey all you cool cats and kittens! In the midst of a global pandemic, bored citizens across America were given a weird blessing to keep them busy and entertained during stay-at-home orders. A very strange, yet entertaining story of crazy exotic animal owners and their battle against self-proclaimed animal rights activists that turns into much more than a documentary about tigers. Tiger King brings up issues ranging from animal abuse, cult activities, polygamy, murdered husbands, murder-for-hire plots, suicide, and illegal animal trading. As diverse as the issues brought up by Tiger King, surprisingly, the whole story starts with a trademark and copyright lawsuit. We will dive into the specifics of this trademark suit and how it ended with a guy in jail.

First, we will try and do the impossible. We will try and explain what ‘Tiger King’ is within this small blog post. Don’t worry. The story is almost so intense and unbelievable that it is unspoilable. Feel free to read this and still need to watch and rewatch the documentary just to wrap your head around the pure madness. Tiger King is a Netflix documentary series that mainly follows Joe Exotic, the “tiger king.” Joe owns a zoo in Oklahoma which is home to over 200 tigers and many more exotic animals. Other than his famous bleach blonde mullet and handlebar mustache, he is also known for being a gun-slinging homosexual redneck with two husbands (no I’m not kidding). He is not alone in the tiger business either, as the documentary also exposes other tiger park owners such as “Doc” Antle, an eccentric (almost) cult leader with multiple wives, and Mario Tabraue, a drug kingpin known for owning tigers and selling drugs. Joe’s arch-nemesis is Carole Baskins, an animal rights activist who also happens to have an ex-husband who mysteriously “disappeared” leaving her millions. She runs a “sanctuary” for tigers once held in captivity under the name “Big Cat Rescue Corporation.” Carole and Joe duked it out with YouTube videos and advertisement campaigns painting the other as the bad guy for years. The feud comes to a head when Joe decides to re-name his tiger cub petting business “Big Cat Rescue Entertainment Group.”

In an attempt to steal business from Carole’s “Big Cat Rescue Corp.,” Joe Exotic renamed his cub petting business “Big Cat Rescue Entertainment” so when potential customers do an online search for “Big Cat Rescue” both Carole and Joe’s businesses come up. His bait and switch were successful, and Baskin said she would receive calls from individuals assuming she was involved in Joe Exotic’s business. He took it a step further and began distributing a photograph owned by “Big Cat Rescue Corp.” on the internet through YouTube videos, Facebook posts, website pages, and other video platforms. Exotic also used marketing material like advertisements and business cards claiming a Florida address in the same area code as Baskin’s Florida-based business.

In January 2011, Baskin filed her first lawsuit against Exotic in a Trademark action in Federal court in Florida. Interestingly enough, Baskin did not have a registered trademark of “Big Cat Rescue” when she sued Exotic! But she was not willing to retract her claws and instead argued that it should have common law protection because it has been used by them for years and that they had pervasive, continuous and exclusive use over the mark, and therefore should own it, otherwise it would confuse the public. This is a valid legal argument in trademark law but instead of rolling the dice Jeff Lowe Vegas Style, Exotic settles for $953,000.

Then, Baskin put even more legal pressure on Exotic and followed with two subsequent copyright lawsuits over the use of the “Big Cat Rescue” name, materials, and photos. For the most part, copyright violations are easier to prove than trademark infringement and Exotic’s posting and reposting of “Big Cat rescue” materials throughout the internet was a textbook case of copyright infringement because in his deposition, Exotic admitted to posting the materials. In fact, Baskin was not the owner of one of the photos in dispute! She acquired the copyright after Exotic had posted the photos, however, the timing does not change the outcome once she did indeed own the rights. Damages for copyright infringement are dictated by law, 17 U.S.C § 504(c)(1). In this case, none of the copyrighted materials were used by commerce by Baskin so the damages were relatively small. The judge awarded a final judgment of $25,000 against Exotic on one of the copyright suits and awarded $50,000 for the remaining copyright suit. Joe Exotic once said, after an employee got her arm eaten by a tiger, “I will never financially recover from this.” In fact, that statement was only foreshadowing, as Exotic would actually never financially recover from these IP lawsuits.

The tiger-loving mullet man was not expecting this heavy judgment against him. For small business owners, a judgement like this could ruin them. Trademark lawsuits can bring not only large attorney’s fees but large damages. No matter what the circumstances are that surround two businesses’ relationship with each other, they must be careful to not let anger and hatred cloud their judgement of whether or not to try and use the other’s intellectual property.

In the end, Baskin filed suits in Oklahoma to force the courts to enforce the payment of the Florida judgments. Baskin was relentless in her pursuit of Joe Exotic and his tiger empire. His wages were garnished, and his banks were subpoenaed. The already multi-millionaire would not let Exotic go, filing suits claiming impermissible transfers of Exotic’s zoo against his mother. In 2019 the affair ended with Exotic penniless and in federal prison on multiple (unrelated) criminal charges. The world has not seen arch enemies like this since Batman and the Joker, Voldemort and Harry Potter, and the Red Sox and Yankees. Did anyone win? Did Carole? Did Joe? One thing’s for certain and that is the tigers did not, and they were the true victims throughout this whole crazy ride.

Season 3, Episode 4: Spark of Genius, .COM Trademarks – Booking.com Case May Change How We View Domain Name Trademarks (Blog Post)

By: Sarah Kelly & Emma Ng

The Lanham Act clearly defines that generic terms cannot be registered as trademarks. 15 U.S.C. § 1051 et seq. However, an upcoming Supreme Court case will ask if an online business can create a protectable trademark by adding a generic top-level domain—like “.com”—to an otherwise generic term?

While the Coronavirus Pandemic has caused the Supreme Court to postpone all oral arguments, the trademark world is patiently awaiting its decision in U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46 (July 2019).

If a consumer wants to make a hotel reservation online, they will likely be directed to http://wwww.Booking.com, the website for a travel and hotel accommodations company. The online reservation service, based in Amsterdam, began using its name globally in 2006, and filed several trademark applications in 2011 and 2012 for “BOOKING.COM.” The company sought to register both the word mark and stylized versions of the mark. An examiner rejected the applications, finding the marks generic. The United States Patent and Trademark Office (“USPTO”) rejected Booking.com’s attempts to trademark its name, arguing that the common terms “booking” and “.com” do not combine to create a unique and protectable mark. Alternatively, the USPTO concluded, the company had not shown that the marks acquired a secondary meaning, and the marks were merely descriptive. The Trademark Trial and Appeal Board (“TTAB”) affirmed these rejections.

The company successfully challenged that decision in the lower courts. Booking.com appealed to the U.S. District for the Eastern District of Virginia, arguing that BOOKING.COM was eligible for protection because it was descriptive or suggestive. That court agreed.

The USPTO then appealed to the Fourth Circuit. The USPTO urged the court to find that adding a generic top-level domain (e.g., “.com”) to an otherwise generic term could never generate a non-generic mark. However, the circuit court affirmed the district court, relying in part on evidence showing consumers recognized BOOKING.COM as a brand rather than a generic service. Now it is in line to be decided by the Supreme Court when the pandemic calms down and normalcy returns. The Court must decide if a generic domain, like “.com”, added to an otherwise common term, like “booking,” can create a protectable trademark.

In its petition for certiorari, the USPTO argued that “.com” when added to “booking” was sufficient to make the term protectable as a trademark, “so long as the relevant public would understand the combination to refer to a specific business,” is contrary to “established principles of trademark law, and it conflicts with decisions of the Federal and Ninth Circuits, the only other courts of appeals that have considered the protectability of ‘generic.com’ terms.” Petition for Writ of Certiorari, U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46, 12.

The petition further noted that the Federal Circuit has found in previous cases that marks including “HOTELS.COM” and “LAWYERS.COM” were not protectable “based on highly similar evidence.” Id. at 8. The USPTO contended that certiorari should be granted to clarify the circuit split.

In opposition to the cert petition, Booking.com emphasized in its brief whether a mark is generic is a question of fact, and the factfinder had determined that BOOKING.COM was not generic. As demonstrated by the evidence presented in lower courts, consumers understood the mark to represent a brand, not a generic service. Whether the pieces of the mark are generic in isolation is not the question, the company argued; what matters is whether the mark, considered as a whole, has source significance. The company further contended that the USPTO had registered analogous marks before (e.g., STAPLES.COM, WEATHER.COM, ANCESTRY.COM).

In reply, petitioner USPTO discusses Goodyear’s India Rubber Glove Manufacturing Co. v. Goodyear Rubber Co., decided in 1888, in which the respondent could not successfully register the trademark for the term “Booking Company” or “Booking Inc.” Reply Brief for the Petitioners,
U.S. Patent & Trademark Office v. Booking.com B.V., No. 19-46, 1 (citing 128 U.S. 598 (1888)). The term “booking” was held to be generic for the services at issue and “no matter how strongly the public” associated with the brand, the respondent could not gain exclusive rights and prevent others from engaging in “‘similar business to use similar designations.’” Id. Therefore, “BOOKING.COM” should not receive trademark protection when “Booking Inc.” could not without further reasoning distinguishing the cases, which the respondents failed to provide. While Goodyear was decided before the adoption of the Lanham Act, neither the Supreme Court’s “subsequent decisions nor the Lanham Act’s adoption” has resulted in Goodyear being overruled. Id. at 4.

On March 16, the Supreme Court postponed oral argument in U.S. Patent and Trademark Office v. Booking.com and other cases scheduled for March, and “will examine the options for rescheduling those cases in due course.”

Season 3, Episode 3: Spark of Genius, U.S. Films in China – Reasons for Rampant Copyright Infringement and Proposed Solutions (Blog Post)

By: Ziyu Ma & Rita Xia

Films, like all cultural exports, are representative of a nation’s soft power. No industries have done better than Hollywood to effectively promote the U.S. soft power overseas. China, with its 1.4 billion people, is a prime market not only for Hollywood’s cultural exports but also for its generation of billions in revenue for U.S. businesses. China is currently the second largest box office market in the world and is projected to surpass the United States in 2020. The online film market is just as valuable with more than 800 million internet users in China, almost three times that in the United States.

However, the revenue also brings rampant piracy issues. Presently, many countries utilize a pre-agreed distribution system in which each form of exploitation of a theatrical film—such as a theatrical release, DVD release, or television screening—takes place in sequence with no overlap. This industry standard provides an “exclusive window of time” for each form of exploitation and is crucial to ensure that copyright owners or licensees are able to maximize their profits without having to compete with other media at the same time. However, this system is compromised when copies of the film become available to the public through other media without proper rights or licenses. With the advance of technology, film piracy on the internet is now the main challenge for U.S. businesses. In 2016, the United States suffered a $4.2 billion loss due to piracy in China, and that number is projected to reach $9.8 billion in 2022.

Policy barriers are a major factor behind the rampant film piracy in China. Despite China’s improved efforts in recent years to combat piracy, its regulations on foreign film imports and lack of effective penalties for copyright infringement continue to incentivize piracy activities. The Chinese government uses an annual import quota to control the influx of foreign entertainment products. Over the last two decades, China has eased up on the number of U.S. films imported into China, but the annual quota has not broken double digits.

China’s stringent censorship and review process create another hurdle for U.S. film businesses. All foreign films and TV shows must be approved by China’s State Administration of Press, Publication, Radio, Film and Television (SAPPRFT) before they can be shown or distributed in China, and the standard of review can often be arbitrary. In response, some U.S. studios made necessary edits or cuts in order to get the approval stamp. However, with public demand for original, uncensored Hollywood films remaining high despite and because of these barriers, people instead turn to illegal means.

Since its accession into the World Trade Organization (WTO), China has increased efforts to crack down on piracy, including starting initiatives by the National Copyright Administration of China (NCAC) to censure unlicensed films and TV shows. However, the level of piracy has not changed significantly in part due to loopholes created by low administrative penalties and virtually nonexistent criminal prosecutions for online piracy.

In light of the recent trade tensions between the U.S and China, there is pressure within the Chinese market to slow down the importation U.S. films. The halting of imports would be financial costly to U.S. businesses and will further limit Chinese consumers’ access to U.S. content. As data of prior years has shown, consumers will not have the patience to wait but will turn to illegal channels to watch their favorite films and TV shows.

There are a few options to mitigate the impending piracy challenges. Shifting to U.S.-China co-productions is a good short-term solution to bypass the import restriction, as these co-productions count as Chinese domestic films. Seeking intervention from the WTO is another possible solution. China’s current copyright enforcement and trade regulations are not compliant with its responsibilities as a member nation of the WTO. In fact, WTO has already created measures that can address China’s transgressions. Instead of threatening China with unilateral tariffs and inciting retaliations that will potentially harm U.S. businesses, the U.S. can allow WTO to step in and place more neutral pressure on China.

Nevertheless, long-term plans are needed to implement market and policy changes and to promote better public and judicial knowledge of copyright law. There should be discussions about the possibility of eliminating the foreign film import quota or at least drastically increasing the number of film imports allowed in the near future. Moreover, the Chinese government needs to improve its criminal and civil enforcement measures against infringers. China should also work to improve the judicial and public knowledge of copyright protection and enforcement, so more people will recognize and respect the value of intellectual property and learn to see piracy in a negative light.

Season 3, Episode 2: Spark of Genius, The Likely Ramifications of Capital One’s Data Breach (Blog Post)

By: Payton Hoff & Anis Houssein

In the middle of 2019, Capital One faced more than thirty federal class actions after the bank’s announcement of a data breach that uncovered the data of about 100 million customers in Canada and the United States. Class actions have been filed in federal courts in Virginia, where Capital One is headquartered, as well as Washington, D.C., Seattle, San Francisco, New York, Philadelphia, and Tampa.

On July 19, 2019, an unauthorized entry by a data thief allowed the acquisition of Capital One’s credit card customers’ personal information. The breach affected over 100 million individuals in the United States. The information exposed was information that the bank obtained between the period of 2005 through the first three months of 2019.

Capital One announced the breach on July 29, about two weeks after company officials claim they discovered the cyberattack. Capital One said it expected up to $150 million in costs because of the breach, including charges for legal support, and had $400 million in insurance coverage.

Capital One, after the discovery of the breach, directly notified by mail all individuals whose personal information was accessed. Capital One informed these individuals that it would continue to offer free credit monitoring and identity protection software to prevent any potential use of their data.

In their lawsuits against Capital One, the customers alleged that the banking company’s failure to honor its duty under the contract that required, as is required of any bank, to engineer effective cybersecurity systems, anti-hacking technological software, and to alert users of intrusion within an hour of detection and to maintain reporting systems sufficient to protect private information from unauthorized access. Another obligation that Capital One is alleged to have failed to honor is the duty to delete any private information the bank does not need, such as rejected applications.

Capital One is also subject to federal law under the Gramm-Leach-Bliley Act (GLBA). Banks under the act are subject to specific requirements in the area of protecting private information. The act requires banks to demonstrate their processes for sharing personal data, the necessity of using the information in the banking business to potential applicants and customers, and how they are going to protect the information.

Therefore, Capital One has allegedly breached its obligations to maintain appropriate technological and other systematic programs to prevent unauthorized access to customers’ data, failing to minimize the private information that any intrusion could compromise, and failing to notify its customers of the data breach at the right time. Customers allege that Capital One provided the means for a third party to access, obtain, and misuse their private information and that all the above duties were reasonably foreseeable to any bank in the business that this kind of breaches would expose the private information to criminals.

Moreover, the allegations stated that Capital One knowingly and deliberately enriched itself by saving the costs the banking company reasonably should have spent on data security measures and the best protection system in the market to secure private information. Instead of providing a reasonable level of security, Capital One utilized cheaper, ineffective security measures at the expense of their customers. The victims, on the other hand, suffered as a direct and proximate result of Capital Ones’ decision to prioritize profits over security. The victims suffered and will continue to suffer injuries in the form of identity theft, attempted identity theft, loss of privacy, nuisance, and the expenses of mitigating those harms.

What We Think

Capital One will most likely go through the same scenario that Equifax went through in 2017. Equifax paid about $650 million to settle most lawsuits against the company because of their 2017 data breach. Equifax’s settlement has been, so far, the largest settlement of a data breach case in dollars and number of victims.

The settlement covered almost half of the inhabitants of the United States. The settlement not only compensated victims who lost funds, but also compensated people who suffered through the hassles of bank phone and credit-card customer service lines at $25 an hour. Nearly half of the settlement, $300 million, went towards victims who lost their private information to the data breach. The company also paid fines to end the investigations. Equifax paid $275 million in penalties to the Federal Trade Commission, the Consumer Financial Customer Protection Bureau, and forty-eight states.

Additionally, in the settlement, Equifax agreed to provide up to ten years of free credit monitoring services for about seven million people. However, if another million victims decide to sign up, it would cost Equifax more than $16 million. If all 147 million victims were to take part in the case, Equifax would pay more than $2 billion in total. Mr. Norman Siegel, a lawyer representing victims in the settlement, stated that “if people wanted Equifax to pay more, they should sign up for credit monitoring.” Equifax was prepared and added $125 million to the claims fund in case the initial $300 million is depleted besides potential costs for credit monitoring.

Equifax’s situation will likely be the path that Capital One will follow. With these high-profile data breaches happening only within a few years of each other, one should wonder how prepared other financial companies should be to prevent large data breaches, as the ramifications have been shown to be costly for those companies.