A matter of tack

Yellow_push_pinIn —Hana Financial, Inc. v. Hana Bank et al., 574 U.S. ___ (2015), the U.S. Supreme Court addressed a split between circuits on determination of whether the “tacking” doctrine is available in a given case. Plaintiff Hana Financial, Inc. sued defendant Hana Bank for trademark infringement. Hana Bank is a Korean entity that was founded in 1971 as the Korea Investment Financial Corporation. In 2002, they began operating in the United States as “Hana Bank.” Hana Financial incorporated in California in 1994 and obtained federal trademark registration of their name two years later. At trial, Hana Bank raised the tacking doctrine in defense and the jury returned a verdict in their favor that was subsequently affirmed by the Ninth Circuit Court of Appeals.

“Tacking” is a lower court doctrine holding that two marks may be tacked when they are considered to be “legal equivalents” that “create the same, continuing commercial impression” such that consumers “consider both as the same mark.” Writing for a unanimous court, Justice Sotomayer observed that when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decision maker that ought to provide the fact-intensive answer. Since “commercial impression” “must be viewed through the eyes of a consumer,” application of the “tacking” doctrine is a test that “falls comfortably within the ken of a jury.” Thus, when a jury trial has been requested (and the facts neither warrant a JMOL nor summary judgment), whether two trademarks may be tacked for purposes of determining priority will be a question for the jury.

Free Speech and Publicity Rights

While protection of free speech under the First Amendment remains one of the foundations of American society, the First Amendment is not always a defense against suits for violation of intellectual property, such as the rights to a person’s likeness (publicity rights), as the Ninth Circuit Court of Appeals recently illustrated in the Davis v. Electronic Arts case.  Electronic Arts (“EA”) makes the “NFL Madden” football videogame, which allows a player to control virtual likenesses of past and present NFL players. While EA pays significant royalties to NFL for the use of current player’s likenesses, EA does not have a license to use the likenesses of former NFL players.  When the former players sued EA for violation of their publicity rights, EA attempted to raise defenses based on the First Amendment, which the court rejected.

One of the defenses was that the use of the players’ likenesses was “transformative,” adding significant creative elements that transform the game into something more than a celebrity imitation; however, as the game replicates physical characteristics of the players and shows the players doing what they are famous for (playing football), the court rejected this defense.  Likewise, the court also rejected EA’s statutory and common law “public interest” defenses, which are based on the protection of publishing information in the interest of the public, because “NFL Madden” is not a reference source or a collection of facts about football but rather a game.  Likewise, the court rejected EA’s argument that the Roger’s test, a test that limits trademark rights when First Amendment rights are involved, should be extended to publicity rights.  Finally, the court rejected EA’s argument that the use of the players’ likenesses was protected as being “incidental” because accurate depictions of the players are central to the game.

Interestingly enough, EA previously brought up most of these arguments, and lost, in a similar case that involved NCAA Football games.  EA recycled these arguments to preserve them for a rehearing by the Ninth Circuit Court of Appeals en banc or by the Supreme Court, and whether the arguments gain any traction further in the appeal process remains to be seen.

Making Amendments to a PCT Patent Application

We sometimes receive requests to make changes to an already-filed PCT patent application. Various opportunities exist during prosecution for amending a PCT patent application depending on a nature and type of change requested. Obvious mistakes in the description, claims, or drawings of a PCT application can be rectified if correction of the mistake is requested within 26 months from the priority date of the PCT application. Mistakes are considered to be obvious if “something else was intended than what appears in the document concerned and that nothing else could have been intended than the proposed rectification.” PCT Rule 91.1(c).

However, an Applicant who wishes to make amendments to the claims of a PCT application that do not correct an obvious mistake can file the amendments under Article 19 prior to the expiration of 16 months from the priority date of the PCT application or two months from the mailing date of an International Search Report and Written Opinion, whichever is later. Additionally, amendments to the claims, as well as the description or drawings, of a PCT application can also be made after the Article 19 deadline passes, as long as a Demand for International Preliminary Examination is timely filed. Specifically, the Demand must be filed prior to expiration of 22 months from the priority date of the PCT application or within three months from the mailing date of the International Search Report and Written Opinion. Any desired amendments can then be filed at the time of filing the Demand or in reply to any notification mailed during International Preliminary Examination.

Finally, amendments can also be entered via a preliminary amendment upon entering the national stage in one or more countries, when the time has passed for filing amendments during the above-identified periods. However, unlike the amendments discussed above, a preliminary amendment must be filed in each country in which the national stage has been entered.

In summary, any amendments to the description or drawings of a PCT application must accompany a Demand unless the amendments correct an obvious mistake. However, claim amendments can be filed without the filing of a Demand, as long as the claim amendments are filed prior to the expiration of 16 months from the priority date of the PCT application or two months from the mailing date of an International Search Report and Written Opinion, whichever is later. Also, amendments to the description, claims, or drawings can be filed with a national stage entry application, but the amendments must be made in each country in which the national stage has been entered.