SCOTUS’ Tale of Two Trademarks: How a Happy Ending to IP Litigation Often Depends on Early Strategy Before USPTO

intellectual propertyOn March 24, 2015, the U.S. Supreme Court issued two decisions: Omnicare, Inc. v. Laborers Dist. Council Constr. Industry Pension Fund, No. 13-435and, less the media darling, B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352. B&B Hardware is the second trademark decision issued by the Court this term (the first being Hanna Financial, Inc. v. Hana Bank, No. 13-1211, which was issued in January and held that whether two trademarks may be tacked for purposes of determining priority is a question of fact for the jury), and is likely to alter the landscape of trademark infringement litigation. In a 7-2 decision in which Justice Alito delivered the majority opinion, the Court reversed and remanded the case to district court, finding that (1) agency decisions, generally, can ground issue preclusion; (2) the Lanham Act does not forbid issue preclusion; and (3) the same likelihood of confusion standard applies to both registration (before the Trademark Trial and Appeal Board) and infringement. The Court’s recognition on the last point, regarding the standard for the likelihood of confusion analysis, is an important one, as it may change the role of the TTAB and the decisions it makes at the registration stage, how courts will weigh those registration analyses, and how litigants may want to strategize enforcement of their marks.

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Posted by Jade Smarda
Intellectual Property
March 27, 2015

Reviewing the Rules of the Road following Uber’s 2015 Data Breach Response

uberWhen I was sixteen, the rule was that I could not drive a car until I knew how to change a tire. My dad always reminded me that it is dangerous just to drive, but not knowing how you plan to fix a flat could cause you a lot of unnecessary stress. Uber Technologies, the popular transportation app, is currently learning that while driving on the information super highway, companies should likewise know how they plan to address a data breach.

Uber disclosed on Friday, February 27, 2015 that it suffered a data breach nine months earlier on May 13, 2014 affecting approximately 50,000 of its current and former drivers. Many are criticizing Uber because although it discovered the breach on September 17, 2014, Uber waited 163 days to inform drivers whose identities and personal information are at risk. In other words, over five months passed before any of these drivers learned that their names and drivers licenses may be available to identity thieves.

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Posted by Zach Heck
Data Security
March 24, 2015


911 EmergencyOn March 19, 2015, the Ohio Supreme Court issued its decision in The Cincinnati Enquirer v. Sage, et al., 2015-Ohio-974. The Court affirmed, in part, the Twelfth District Court of Appeals’ decision that a recording of an outgoing call placed by a 911 operator is a public record under Ohio Rev. Code ยง 149.43. The Court also affirmed the appellate court’s award of $1,000 in statutory damages – the maximum allowed – and reversed the appellate court’s denial of attorneys’ fees.

In 2012, a 911 call was placed and abruptly ended by the caller hanging up. The operator attempted to call back the original number twice. The first time no one answered the phone; the second time a man, Michael Ray, answered and stated, “I am a murderer, and you need to arrest me.”

Later that same day, a reporter for the Enquirer made public records requests to the Butler County Sherriff’s Office for copies of the 911 call recordings – both incoming and outgoing calls. The sheriff’s office provided the reporter with a copy of the incoming call, but not the two outgoing calls placed by the 911 operator. The sheriff claimed that the outgoing calls were exempt from Ohio’s Public Records Act as “trial-preparation records under R.C. 149.43(A)(1)(g) and confidential law enforcement investigatory records under R.C. 149.43(A)(1)(h).” The prosecuting attorney also filed for a protective order with the common pleas judge who had been assigned to Ray’s pending murder trial. The Butler County Court of Common Pleas granted the motion for a protective order; the Enquirer filed writ of mandamus (to compel disclosure of the public records), and writ of prohibition (precluding enforcement of the protective order) with the Twelfth District Court of Appeals.

The appellate court found that the outgoing calls placed by the 911 operator were not subject to any exception under the Public Records Act, statutory damages were appropriate, but attorneys’ fees were not. Cross appeals were filed.

The Ohio Supreme Court affirmed the appellate court’s findings that the outbound calls were public records subject to disclosure. First, the Court found that the recordings were not trial preparation records. “[W]hen an investigation has multiple purposes, the records of that investigation cannot be said to be trial preparation materials.” (Internal quotations and citation omitted.) The 911 operator had testified that the purpose of her call back was “to assist the first responders and the victim.” The Court explained that “the recording could not suddenly transform into a trial-preparation record simply because it moved from [the 911 operator's] office to the prosecutor’s file.”

Second, the Court similarly rejected appellants’ argument that the outgoing calls were exempt confidential law enforcement investigatory records – specifically, investigatory work product. Appellants, however, “make no attempt to explain how the recording at issue actually constituted law-enforcement investigatory work product. And we can find no justification ourselves.” The Court reasoned that the operator was not a law enforcement official; was not questioning Ray in anticipation of litigation; and she place the calls as part of her routine duties.

Finally, the Court found that the Sixth Amendment right to a fair trial does not prohibit the release of the recordings. While the Court acknowledged that the recording contained prejudicial information, “that fact alone is insufficient for us to predict a Sixth Amendment violation.” Appellants failed to produce any evidence of prejudice; therefore, the Constitution did not prohibit release of the recordings.

Justice Pfeifer dissented from the majority, and argued that “citizens should be free from having to publicize their greatest personal tragedies in order to gain the benefit of emergency services their government provides.” Justice Pfeifer conceded that this is an issue best left for Ohio’s legislature, but he went on to argue that the recordings at issue in this case are not public records because (1) Ray was not a party to the original call placed to the 911 operator; and (2) Ray did not voluntarily initiate the call. The dissent tries to distinguish this case from the seminal decision that found 911 calls to be public records subject to disclosure, The Cincinnati Enquirer v. Hamilton Cty., 75 Ohio St.3d 374 (1996), a decision in which Justice Pfeifer concurred.

While Justice Pfeifer’s privacy concerns are valid, his deference to the legislature is appropriate. Had the majority heeded to Justice Pfeifer’s concerns, the exemptions to the Act would have begun to swallow the general rule in favor of disclosure. Further, who is to say that simply because a record is released to the media it will be broadcast? Neither the Act, nor the courts interpreting the Act, should make assumptions about the potential use of the record, if disclosed, when making the determination of whether to disclose in the first place.

The Court’s decision in Sage is significant. Over the past several years, the trial preparation and confidential law enforcement investigatory exceptions, among others, have enjoyed broad application by police departments, prosecutors and other government agencies in Ohio. The Court’s decision pulls back the reins and reminds everyone that, “[a] free and informed press enables a free and informed public.”

Posted by Erin Rhinehart
Advertising and Media
March 22, 2015

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