Welcome to another remotely written edition of Skilled in the Art. I'm Law.com IP reporter Scott Graham. Here's what's crossing my desk today:

• Ninth Circuit drops an "Old No. 2" on Jack Daniels Properties' Tennessee carpet.

• Some Federal Circuit judges are already souring on telephonic oral arguments.

• Fish & Richardson to offer pointers on remote advocacy.

• Google says hardly anyone is downloading the allegedly pirated music of Ray Henderson and Harry Warren.

As always, you can email me your thoughts and follow me on Twitter.

 

Jack Daniels Has a Little Mess to Clean Up

Jack Daniels' bark has turned out worse than its bite in a trademark case over a whimsical dog toy.

The spirits maker, whose bottle promotes "Old No. 7 Brand Tennessee Sour Mash Whiskey," had won a permanent injunction following a four-day bench trial in 2017. U.S. District Judge Stephen McNamee blocked VIP Products from making or selling any more of its "Bad Spaniels Silly Squeaker" toys, which are emblazoned with "the Old No. 2, on your Tennessee Carpet."

McNamee ruled that VIP Products had infringed the well-known Jack Daniels trademark, whose chief enforcer recently was hired to run trademarks at the USPTO. VIP also was found to have diluted and tarnished Jack Daniels' trade dress.

But the Ninth Circuit concluded Tuesday that Jack Daniels Properties is taking itself a little too seriously.

Judge Andrew Hurwitz agreed with McNamee that the Jack Daniels trade dress and bottle design are distinctive and aesthetically non-functional. He also agreed that McNamee properly rejected VIP's defense of nominative fair use, because of the significant differences between the Jack Daniels bottles and the squeaky toys (e.g., the image of a spaniel on the toy).

But VIP has a First Amendment fair use defense, Hurwitz concluded. Because artistic expression is at issue, the traditional likelihood-of-confusion test isn't the end of the story for determining infringement.

"The Bad Spaniels dog toy, although surely not the equivalent of the Mona Lisa, is an expressive work," Hurwitz wrote.

Plus, there's a case right on point from the Fourth Circuit, in which doggy toys shaped like handbags and called "Chewy Vuiton" were found not to infringe the famous Louis Vuitton trademark. "No different conclusion is possible here," Hurwitz wrote.

Judges Wallace Tashima and Eric Miller concurred.

The case isn't completely over. The Ninth Circuit entered judgment for VIP on the dilution claim but remanded the infringement claim. Jack Daniels can still win if it can prove that VIP "explicitly misleads consumers as to the source or content of the work" under the Rogers v. Grimaldi test, though if I were Jack Daniels, I'd call off the dogs.

Dickinson Wright partner David Bray had the winning argument for VIP. D. Peter Harvey of Harvey & Co. argued the case for Jack Daniels Properties.

PTO Director Andrei Iancu

 

PTO Pushes Deadlines 30 Days for COVID-19

It didn't take long for PTO Director Andrei Iancu to use his authority under the CARES Act to extend PTO deadlines on account of COVID-19.

The PTO announced Tuesday that many patent prosecution and a few PTAB deadlines will be extended 30 days for due dates between March 27 and April 30. The same will be true for trademark-related deadlines. Delayed filings or payments will require a statement that they were due to the COVID-19 outbreak.

"Inventors and entrepreneurs are the lifeblood of our economy, and we recognize that many of them are having difficulty as a result of the effects of COVID-19," Iancu said in a statement posted on the agency's website. "Ultimately, our goal is to ensure not only that inventors and entrepreneurs can weather the storm, but that they can hit the ground running once it passes."

 

The Incredible Disappearing Argument Calendar

The Federal Circuit keeps scheduling fewer and fewer hearings next week.

Two weeks and a lifetime ago, the court announced that it would be submitting on the briefs about half of the 67 arguments it had docketed for April. Most of the rest would be handled via teleconference. At the time the court seemed on the leading edge of appellate-judging-by-social-distance.

Now, it appears that at least some of the judges don't want to deal with teleconferences either.

On March 27, the day after the court circulated "telephonic orientation" letters to counsel, the court abruptly canceled at least an additional seven arguments. Along with a handful of additional cancellations earlier in the week that left only 18 cases to be argued.

The aversion to teleconferencing varies from panel to panel. Some next week will hear as many as three and even four arguments by telephone. But at least one panel each day will hear no arguments whatsoever. (The Federal Circuit doesn't reveal the identity of panel judges until the day of oral argument, so we may not know which judges canceled the telephonic hearings until rulings are issued.)

Fish & Richardson partner John Dragseth reminds me that it's important that we all cut everyone some slack while navigating this uncharted territory.

"Extra: Patent attorneys have gotten spoiled by having oral argument available in almost all cases," Dragseth says. "Sure, this is an extreme departure from that, but I think it will moderate [over] the next couple months."

Dragseth is right that CAFC is way ahead of its sister circuits when it comes to argument generally. On average, the other 12 federal appellate courts hold hearings in only 20% of cases decided on the merit—even when there's no pandemic.

But I've still got to say, the Ninth Circuit has been impressively quick in adapting its video-streamed oral arguments to these times.

Fish & Richardson's David Conrad and Susan Morrison

 

Can You Object to Me Now?

Fish & Richardson is hosting a free webinar on Wednesday entitled "Remote Advocacy in the Age of Social Distancing."

Fish partner David Conrad says that while some litigators are used to appearing by telephone, such hearings are now being used "for bigger, more important and even dispositive hearings." Inevitably, new issues are going to pop up related to non-verbal cues that lawyers and judges normally provide during hearings, he says.

"You may know when you need to continue talking, because you can see the look on the judge's faces," Conrad says. "You may be able to see the judge and say, 'I need to sit down and stop talking.'"

When arguing by telephone, "You don't have that anymore. But there could be some of that connection that comes across from the judge through his or her voice, his or her questions, [that] an experienced lawyer before that judge might be able to pick up on."

Some hearings might be postponed, but pretty soon IP lawyers will have to participate in virtual hearings on TROs and preliminary injunctions, sometimes with live witnesses, Conrad points out.

Conrad and Fish partners Susan Morrison, Jackob Ben-Ezra and Steven Katz plan to discuss how to choose the right technology and best practices for remote hearings, among other things.

 

Google: Nobody Listens to Your 'Pirated' Music

I've written a couple of times about the copyright suit against Google and Amazon over allegedly pirated music. Today, Google's Mayer Brown attorneys answered the complaints, which accuse the tech giants of turning a blind eye as music aggregators Valleyarm Digital Ltd. and Limitless International Recordings furnish pirated copies of the music of Ray Henderson and Harry Warren on their websites.

Henderson and Warren composed numerous American standards such as "Bye Bye Blackbird" and "I Only Have Eyes for You," respectively.

"Google denies that it has 'pirated' any recordings of musical works and denies that it has participated in the offering of downloads of pirated recordings," states Google's answer, signed by Mayer Brown partner John Mancini.

Google says it's common practice for companies such as itself to rely on third-party aggregators to obtain mechanical licenses for music made available on services like Google Play. The company says plaintiffs Ray Henderson Music Co. and Four Jays Music "likely" obtained payments for the mechanical licenses and didn't return them.

And, in the cruelest cut of all, Google asserts a de minimis use defense, because it "understands that at least some of the sound recordings at issue were never downloaded or were downloaded a de minimis number of times."

Amazon is slated to answer in the next few days. Perkins Coie partners Holly Simpkins and Eric Weiss and associate David Martin and King & Spalding senior associate David Mattern entered appearances for Amazon over the last week.

The plaintiffs, meanwhile, have now set their sights on Apple as well, naming the iTunes operator in a new complaint Monday and adding Harold Arlen's heirs to their roster. Arlen's works include "Over the Rainbow" and "Stormy Weather."

The plaintiffs are represented by the Law Offices of Allen Hyman; Schwartz, Ponterio & Levenson; Giskan Solotaroff & Anderson and the Mann Law Group.

That's all from Skilled in the Art today. I'll see you all again on Friday. Stay safe everybody!