“IP Docketers” IP victories Gold. Study duration: 3 min. “IP Docketers” IP has again been positioned in the top tier category in IAM Patent 1000’s 2022 … Christmas is just a calendar flip away, and intellectual property (IP) owners, managers, and attorneys already have thoughts of ethereal sugar plums dancing in their heads. However much they may try, the world of intellectual property never entirely rests, and as this month’s news illustrates, it frequently offers us a mixed bag of successes and failures. Before Christmas, we check to see if somebody has a lovely present or a lump of coal in their stocking.
A brilliant star
Mariah Carey, a well-known holiday performer, has recently been courting IP controversy almost as much as she does Santa Claus. But at least one item on her wish list has been crossed off. She dismissed a $20 million multi-octave copyright infringement lawsuit brought against Carey on November 1. In a lawsuit filed on June 3, 2022, country music star Andy Stone claimed that the 1994 hit song “All I Want for Christmas is You” had stolen the “popularity” and “style” of music with the same title he had co-written five years earlier.
An early Christmas gift for Carey came from this month’s voluntary dismissal without cause. It came as her most well-known song started its yearly revival. But not everything in the glittering world of pop music is pink cheeks and gingerbread. Just two weeks after the copyright reprieve, Carey’s concurrent trademark applications for “Queen of Christmas,” “QOC,” and “Princess Christmas” were quit by the Trademark Trial and Appeal Board of (USPTO).
Or a stuffed bird?
Fellow performers Elizabeth Chan and Darlene Love promptly objected to the trademark applications after submitting them in March 2021 because they interfered with their usage of similar names and were spies in an attempt to monopolise a public holiday. Chan, who initiated the opposing action, takes pride in the moniker “Queen of Christmas” that media outlets have bestowed upon her in recognition of her enormous body of holiday music and extraordinary devotion to the genre. Chan expressed her firm belief that “no one person should cling onto anything around Christmas or monopolise it in the way that Mariah attempts to do so in perpetuity” during an August interview with Variety. Said that isn’t the right thing to do. Everyone can celebrate Christmas. It’s meant to be shared, not kept to yourself.
In the documents submitted by the opposition, Carey is brought up as saying, “I simply want to respectfully declare that I don’t consider myself [Queen of Christmas].” But I think Mary, the Virgin, is the Queen of Christmas.
Due to Carey’s failure to respond to the Board, default judgments were made on the applications, providing room for future registrations, however unlikely they may be. The “priority and likelihood of confusion” to Chan and the “false suggestion of a connection with persons, living or dead, institutions, beliefs, or national symbols,” both about Chan (Trademark Act Sections 2(d) and (a), respectively), however, also imply that did not test the merits of the grounds for opposition.
It’s interesting to note that Chan’s arguments avoided discussing the problem of one individual “owning” Christmas. It is possible, albeit more challenging, to base such opposition on the erroneous assertion that Christmas is fastening to a religious festival and a secular event, that is, to a religion and an institution. The USPTO’s Trademark Manual of Examining Procedure states in 1203.03(b)(i) that even though no legal entity can authorise the use of the mark, a misleading suggestion of a relationship may be detected when the party’s right to regulate the use of its identity is break (through). It has not been proven that Christmas revellers are part of such a “party.” this will test nerves concerning the attendees of your office’s Christmas party.
When things go south
Trademarks and now patents followed copyrights. VLSI Technology LLC triumphed in a significant patent infringement lawsuit against the industry titan Intel on November 15, 2022. VLSI, a U.S. patent holder, supported by the Japanese conglomerate SoftBank Group Corp., received a total of USD 948.8 million in damages from a federal jury in Texas for the infringement of patents relating to processor chips.
Due to the favourable conditions for non-practising companies bringing patent litigation in Waco, Texas, Intel, with headquarters in Santa Clara, California, has grown highly accustomed to the courtrooms there.
In actuality, Texas has rendered a decision in this patent issue between VLSI and Intel three times. Another jury awarded Intel a staggering USD 2.175 billion in March last year; later backed up the verdict on appeal. And just one month after the March 2021 ruling, Intel avoided paying USD 3.1 billion in damages for patent infringement. What they say about Texas having more of everything is accurate.
With 2,867 U.S. patents awarded in 2020 and 2,615 in 2021, Intel is one of the most prolific patent applicants in the world, demonstrating the value they place in their intellectual property and the highly innovative industry in which they work. Opposition is almost unavoidable with such a broad portfolio. However, as the bills above demonstrate, not even the biggest names in technology can afford to adopt a fatalistic, “win-some, lose-some” mentality.
Despite this most recent loss, Intel’s legal woes are far from over, as two more VLSI patent infringement cases, one in California and the other in Delaware, are still pending. Some have referred to VLSI’s active pursuit of this action and the holding company’s lack of involvement in chip manufacturing as “patent troll” behaviour and proof that more significant legal reform is a need in the U.S. Even though it is hard to foresee how a lawsuit will turn up, a large sum of money is invariably on the line.
Even though the year is almost over, you still have time to ensure that your name appears on the IP lovely list rather than the wrong list. To learn more about how to do this, read our other articles. Tell Santa you’re from us.