Posts by Larry Waters


Disparaging Trademarks and
One Rock Band’s Road to the Supreme Court:
A Panel Discussion on Lee v. Tam, Trademark Law, and the First Amendment
Presented by the University at Buffalo School of Law’s Buffalo Intellectual Property Law Journal

1.5 non-transitional NYS CLE Credits in the area of Professional Practice

Wednesday, April 26, 2017
4:00 p.m. to 6:00 p.m.
United States District Court for the Western District of New York
Jury Assembly Room
2 Niagara Square
Buffalo, New York 14202

All guests MUST register to be admitted to program.
Registration available at:

Simon Tam
Lead singer of “The Slants”
Anne Downey
Partner, Hodgson Russ LLP
Christine Haight Farley
Professor of Law at American University Washington College of Law
Shubha Ghosh
Crandall Melvin Professor of Law at Syracuse University College of Law

After hearing oral arguments on January 18, the Supreme Court is on course to decide a pivotal case concerning trademark law and the First Amendment: Lee v. Tam. The Asian-American rock band, The Slants, filed a trademark application for their band name, “The Slants,” with the United States Patent and Trademark Office. The USPTO initially refused to register the proposed mark, deeming it offensive to Asian-Americans in violation of a federal prohibition barring the registration of disparaging marks. The Slants’ founder, Simon Tam, appealed the decision, asserting that he did not violate the prohibition because he was reclaiming an offensive term on behalf of the very group historically disparaged by that term. Tam also argued that the prohibition on disparaging marks violates the First Amendment. A 2015 decision in the Federal Circuit found in Tam’s favor, stating that “the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.” The government petitioned for Supreme Court review, which was granted. Among the many issues at stake in Lee v. Tam are whether the disparagement prohibition is unconstitutionally vague, whether the federal trademark registration program is “government speech,” and whether there is any legitimate purpose behind the registration program beyond preventing consumer confusion. The outcome of this case could impact another high-profile dispute over trademark registration: the litigation over the name of the NFL’s Washington Redskins.

The lead singer of the band, Simon Tam, will be a panelist and will discuss his fight and very real perspective on the issues raised in this case. Also joining the discussion will be scholars and practitioners with an expertise in trademark law. This panel will be moderated by Professor Mark Bartholomew of the University of Buffalo School of Law. The panelists will discuss the path of this litigation’s journey through the courts, the laws implicated in this case, the validity of the arguments presented by both sides, and the impact the decision will have on intellectual property practitioners in the future. The panelists will also share their view on the case’s broader implications for trademark, copyright, and First Amendment law. Join us for a moderated panel discussion followed by a Q & A session. There will be light food and beverages provided.

St. Jude Medical Inc.- Potential Patent Infringement

St. Jude Medical Inc.- Potential Patent Infringement

By: Kristen Dombroski

On October 26, 2016, the Regents of the University of California filed a lawsuit against St. Jude Medical Inc., alleging that St. Jude Medical Inc. copied patent products and technology. University of California’s Complaint alleges patent infringement on medical devices and methods for forming a circumferential conduction block in a pulmonary vein, and ablation catheter assembly with virtual electrode comprising portholes. Specifically, the Complaint references patents 6,164,283, 5,502,576, 6,012,457, and 6,984,232, technology which is used for treating individuals with the severe heart condition atrial fibrillation. Atrial fibrillation consists of rapid, irregular heart rates, and can lead to shortness of breath and heart palpitations. It may also lead to blood clots around the heart or other organs.

The Regents of the University of California is represented by Mark T. Jansen, Esq., of Crowell and Moring LLP. Crowell and Moring LLP is an international law firm, with a variety of specialties and focus, including Intellectual Property litigation. Jansen is a partner in the firm’s Intellectual Property Group.

St. Jude Medical Inc. is a global, medical device company. It has 21 facilities worldwide, with headquarters located in St. Paul, Minnesota. St. Jude Medical Inc. treats patients with heart failure and heart disease. Attorneys for the St. Jude Medical Inc. have not yet been named.

Northern Californian judge Laurel Beeler has been assigned to hear the case. Judge Beeler is familiar with intellectual property lawsuits, as she has experience settling hundreds of intellectual property, civil rights, employment, and business disputes. Her expertise includes working as a national judicial liaison to the U.S. Office of Defender Services Joint Electronic Technology Working Group.

For additional information, and to stay current on the lawsuit, reference The Regents of the University of California v. St. Jude Medical, Inc., case number 3:15-cv-06210.



By: Ashley Czechowski

Donald Trump has trademarked “Success by Trump” cologne, the “Donald J. Trump Signature Collection” for luggage and shoe-shine kits, and he even held one for “Trump Steaks” until 2014.  And John Oliver, well-known comedian is trying to trademark “Drumpf.”

Oliver claims “Drumf” is Donald Trump’s ancestral family name and he has created the website where he sells the “Make Donald Drumpf Again” hats, which are on backorder. It also offers a Chrome browser extension to replace all instances of the word “Trump” with “Drumpf” in a news feed.

Oliver filed a trademark application February 26, 2016 for “Drumpf,” and given the processing time of trademarks at the U.S. Patent and Trademark Office, it may take up to four to five months before a preliminary decision is issued.  The trademark application was filed by Howard Shire, a partner at Kenyon & Kenyon in New York.

It should be noted that if Trump seeks to object to trademark registration, he may have to acknowledge that it’s his ancestral family name and argue that it creates confusion for the public or harms his businesses.

200 Trademarks

The first hurdle for Oliver in obtaining the trademark is to show that the word “Drumpf” isn’t just a surname, but is connected to something in commerce. Oliver incorporated Drumpf Industries LLC in Delaware to file the application, and provided notice that there is an intent to use the brand name.

While it is the only trademark application for “Drumpf,” there are over 200 live applications or registered trademarks for the word “Trump” in them, including “Trumpocalypse” and “Trump Against the World.”

The Trump name, all by itself and often with a heraldic design, is owned by the candidate and real estate developer for everything needed to stock a high priced hotel — limousine services, greeting cards, wood floor tiles, toothbrush holders, jewelry, toy cars, teas, vodka, computer games, wastepaper baskets, candles, chairs, lamps, dress shirts and spring water.

Trump is able to register the his surname because he would argue that it has acquired distinctiveness or that people associate the name with his brand of goods or products.

Thus, Oliver wants to promote the word “Drumpf” because he believes the word “Trump” has developed a connotation of rich or successful in the minds of many Americans, and has become the “cornerstone of his brand.”

“If only there were a way to uncouple that magical word from the man he really is,” Oliver said on his HBO show. “Drumpf is much less magical.”


Product Origin

Trademark law is based on the concept of identifying the origin of a product so customers aren’t confused as to where it came from. There is some debate as to when the Drumpf name became Trump — the U.K.’s Daily Mail dated it to Donald Trump’s “tax-dodging migrant grandpa,” but others have reported it was as long ago as the 17th century.

You can trademark your own name, if it’s linked to a good or service — Trump’s daughter Ivanka and wife Melania have registered trademarks for swimwear and cosmetics, respectively. His ex-wife, Ivana, owns a trademark for an online retail store.

You can also trademark someone else’s name, as long as you have their permission. Whether Trump would acknowledge the Drumpf connection to object to the application is debatable.


Consumer Confusion

Trump could argue that consumers would be confused or, even more critically, that it lessens the value of his brand and argue that it is diluting the strenght of his brand.

A key point in Oliver’s defense is the fact that he’s a known comedian. A politician can’t object to parodies or satire on their campaigns. It’s no different for trademarks — it’s a protected form of speech, much like song parodies or taking images of Barbie in a blender to make political statements.

Other people have “Trump” related trademarks too, including a California company’s “Ring Trump Tones,” the Trump Mediaeval typeface owned by Allied Corp., and the Veggie Trumps card game owned by a British man.

Ludwig Schokolade GmbH, a German company owns the trademark Trumpf for candy, chewing gum and chocolate and nougat spreads. It notes that the English translation of the word is Trump.

Self-Portrait or Portraiture?

Self-Portrait or Portraiture?

By:Danielle Kelly

Just a couple days after HBO aired its documentary, “Mapplethorpe: Look at the Pictures,” James “Bobby” Miller filed a $65 million lawsuit involving four photographs of Robert Mapplethorpe. Miller filed suit against The Robert Mapplethorpe Foundation, Sean Kelly Gallery, Skarstedt Gallery, Solomon R. Guggenheim Foundation (The Guggenheim), and Whitney Museum of American Art. In this action, he is alleging all are representing Mapplethorpe as the artist behind the photographs when Miller is the true artist. Miller also has attached to his complaint a valid Certificate of Copyright Registration issued by the Register of Copyrights.

Miller claims that in 1979 he spent the evening with Mapplethorpe and another friend, Larry Desmedt, that resulted in Miller persuading Mapplethorpe to dress in drag specifically for Miller to photograph him. Miller, also a makeup artist, applied makeup to Mapplethorpe and styled his hair and clothing, along with adjusting the lighting in the studio and operating the camera. However, after the photography session was over, Miller did not take the undeveloped film with him. Instead, Mapplethorpe told Miller his studio assistant would develop the film for Miller, but Miller never received the developed photographs. Therefore, Miller alleges that he is the owner of the copyrights for these photographs. Further, due to claiming the copyright on the four photographs, Miller claims the defendants have violated his rights to reproduce, distribute, and display the images. Miller alleges all of this was done by The Robert Mapplethorpe Foundation with the knowledge that the photographs were Miller’s creation, as he had advised them several times he was the true artist.

What’s interesting about this case is Miller’s story behind the true copyright. Miller’s claims rest on a night that he spent with two people who cannot corroborate his story because both men are deceased. Robert Mapplethorpe died in 1989 and Larry Desmedt (aka Indian Larry) died in 2004. Not only are both men deceased, but also Miller never had possession of the original images and did not leave the studio with the undeveloped film. Miller may have difficulty actually proving he is the true artist behind the four photographs, especially when a likely opposing argument is that the four self-portraits have a similar aesthetic to Mapplethorpe’s photographs and Mapplethorpe had possession of the film the whole time.

In his complaint, Miller mentions that at some point in the night he recorded his conversation with Mapplethorpe. Given the wording of the complaint, it reads as though this recorded conversation occurred earlier in the evening, before the alleged photography session. Unless this recording consists of conversation concerning Miller photographing Mapplethorpe, there does not appear to be proof at the moment that can really back Miller’s claim. Although he submitted a Certificate of Copyright Registration, this does not automatically mean that the court will hold Miller has the copyright to the photographs.

At first glance, this case appears more to be about Miller taking advantage of Mapplethorpe coming into discussion again through the HBO documentary with a story that Miller is the true artist of the four images from a night with two men who are not alive to corroborate the claims. However, with just the complaint to go off of, this could truly turn into a different story depending on what other facts may come to light.

USPTO Issues New Rules on AIA Reviews

USPTO Issues New Rules on AIA Reviews

By John T. M. DiMaio, Ph.D.

In August 2015, the USPTO proposed several new rules for AIA review petitions (post-grant and inter partes reviews). On March 31, 2016, these proposed rules became actual rules and are set to take effect on May 1, 2016.

These new rules revise several sections of 37 CFR, which the title that promulgates the Federal regulation on patents, trademarks, and copyrights. Specifically, these new rules expand the preliminary responses that patent owners were allowed to issue against a petitioner. These new responses allow patent owners to introduce new evidence to rebut a petitioner’s case. Theoretically, the expansion of preliminary responses is expected to lower the number of AIA proceedings.

Shortly after the introduction of the IPR system with the AIA, parties, such as the Coalition for Affordable Drugs, have been using the IPR system to try to invalidate pharmaceutical patents. Although the Coalition claims its actions are to reduce price costs, the Coalition is also placing short bids on the companies it is filing IPR’s against. Thus, if the Coalition manages to invalidate that party’s patent, the Coalition will receive in a windfall.

Many groups, including the pharmaceutical companies whom are affected by these actions, believe the Coalition is abusing the IPR proceeding for its own financial gain, filing unwarranted petitions. For more information about AIA proceedings, please read our latest issue of the Buffalo Intellectual Property Law Journal, which had several articles focusing on the new AIA proceedings.

“High-Stakes Battle”


“A high-stakes battle between two drug companies over the multibillion-dollar sales of new hepatitis C treatments is kicking off in a California courtroom this week.  On one side, Gilead Sciences claims that it should not have to share any of the sales of its new hepatitis C drugs, Svaldi and Harvoni.  Last year, combined worldwide sales of the two drugs were $19.1 billion.  On the other side, Merck & Co. claims it should receive a share of the profits.

Merck’s claim is based on the active ingredient in Gilead’s drugs, sofosbuvir.  Merck claims sofosbuvir infringes on two patents owned by Merck covering related compounds.  Merck is suing for royalties.

This suit is atypical in the world of patent battles.  Patent battles usually involve branded drugmakers trying to block generic competitors from selling cheap copies of their drugs.  This suit pits branded drugmaker against branded drugmaker.  The massive profits enjoyed by drug companies may pave the way for similar suits as companies fight for market share.”

Music Copyright Infringement- TufAmerica, Inc. Lawsuit

Music Copyright Infringement- TufAmerica, Inc. Lawsuit

By: Kristen Dombroski

   On March 9, 2016, a New York federal judge held that the record label TufAmerica, Inc. hadn’t properly demonstrated that it had the rights to the Beastie Boys’ music. TufAmerica, Inc. originally filed a copyright suit on May 3, 2012, claiming that the band and its’ record label, Universal Music Group, Inc. used samples of Trouble Funks’ songs (“Say What” and “Drop the Bomb”) in 4 Beastie Boys songs. TufAmerica, Inc. is Trouble Funks’ record label.

The court granted the Beastie Boys’ motion to dismiss TufAmerica, Inc.’s claim on their songs “The New Style” and “Car Thief.” This suit followed, over the copyright on their songs “Shadrach” and “Hold It Now, Hit It.” In TufAmerica, Inc. v. Diamond et. al., Judge Alison Nathan held that there was insufficient evidence to constitute infringement. The Beastie Boys received $602,828 for attorneys’ fees and costs. Their record label, Universal Music Group, Inc., received $242,769 for attorneys’ fees and costs.

TufAmerica, Inc. is a litigious record label that has filed past copyright actions against other artists and their record labels, including Jay Z, Christina Aguilera, and Kanye West. Additionally, TufAmerica, Inc. has filed past actions against Song Music Entertainment and, as well as Biglaw firms BakerHostetler, Troutman Sanders LLP, and Gibbons P.C.

House of Cards Trademark Infringement Suit

House of Cards Trademark Infringement Suit

Written by: Danielle Kelly

D2 Holdings, an intellectual property holding company, filed a trademark infringement suit on March 3, 2016 in Massachusetts District Court against the producer of the TV show House of Cards. D2 Holdings claims MRC II Distribution Co. LP (“MRC”), producer/distributor of the series, infringed its registered “House of Cards” trademark by licensing the phrase to third-party companies that make merchandise, such as t-shirts, and to International Games Technology Inc. that makes slot machine and social gaming apps based on the series.

D2 Holdings further claims that MRC tried and failed to register the “House of Cards” trademark three times because D2 Holdings has priority over MRC’s use of the mark. D2 Holdings had first used the “House of Cards” mark almost four years before MRC pursued registering the mark. Additionally, D2 Holdings had licensed the mark to Granary Way Media LLC in 2007 for its Internet radio show. However, the House of Cards TV show did not air on Netflix until February 2013.

In its complaint multiple claims are brought, including trademark infringement, trademark dilution, and unfair competition. For these claims, D2 Holdings is seeking triple damages for knowing and willful conduct. Support for willful conduct includes D2 Holdings approaching MRC in October to negotiate a potential licensing agreement, which resulted in no substantive response. D2 Holdings is also seeking a preliminary and permanent injunction to prevent MRC and International Games Technology Inc. from using the mark.