Month: September 2019

By Tenielle Fordyce-Ruff

Variety is the spice of life, but not necessarily legal writing.  While we might want our writing to be interesting enough to keep the reader’s attention, and we certainly want our writing to persuade the reader that our position is correct, we likely don’t want it to be too spicy.

As Mark Twain noted: “A powerful agent is the right word. Whenever we come upon one of those intensely right words in a book or newspaper the resulting effect is physical as well as spiritual, and electrically prompt.”[i]

But if we want the power to persuade the reader through our writing, how do we go about it?  While the correct answer is myriad and detailed, the answer for today is through effective word usage.  Using effective words requires us to consider denotation, colloquial language, idioms, not-really-synonymous synonyms, and consistency.

Denotation

Denotation is a word’s definition.  While several words might have similar meanings, words also have a literal or primary meaning.  That primary meaning is the word’s denotation.  Let’s go back to Twain’s choice to use “right word.”  Nobel, proper, suitable, exact, accurate, correct, and even precise are all suggested synonyms for right. Yet none of these words had the correct denotation to work effectively, even though they share certain elements in their definitions.

Let’s try some substitutions to make this concept clear.  I’ll include the substituted word’s denotation after the sentence to help you see why the use of right was the right choice.

A powerful agent is the noble word.
(Noble’s denotation is, “possessing outstanding qualities, superiority.”)

A powerful agent is the proper word.
(Proper’s denotation is, “suitability, respectable, decorous and genteel.”)

A powerful agent is the suitable word.
(Suitable’s denotation is, “adapted to the purpose.”)

None of these words clearly communicates what Twain meant or wanted to emphasize.  So, when you are searching for just the right word or want to create a powerful, emphatic sentence, go beyond just checking the thesaurus and look at the denotation of each word you’re considering.

Colloquial Language

This problem pops up in my writing when I start a piece with a “brain dump” draft.  We use informal expressions and slang all the time when speaking, and when I’m writing to get words on paper and refuse to worry about word choice for a first draft, this type of colloquial language can sneak in.

Yet if we all speak this way, why not write this way, too?  The simple answer is that legal writers write for serious and professional reasons.  Our word choice should reflect the charges of our profession. For instance, even if a criminal defendant were a horrible human, it would be ill-advised to write to the court that he was a bad dude.

Idioms

Readers expect certain words to be used together or to be used in legal writing.  For instance, even though elude and avoid are synonyms, legal writers expect to read avoid liability, not elude liability.  Or, how badly do these sentences jar you?

My client agreed with the contract.
(You expected agreed to, didn’t you?)

The manufacturer wanted to do business without fear for a lawsuit.
(You expected fear of a lawsuit, didn’t you?)

The pro se litigant filled up a legal form.
(You expected filled out, didn’t you?)

When in doubt about idiomatic expressions in legal writing, consider checking a legal usage dictionary. Or if you’re a native English speaker, consider reading the sentence out loud to see if it sounds right.[ii]

Not-really-synonymous Synonyms

This is a type of imprecision that can creep into legal writing through sloppiness and can be especially problematic when discussing how rules work. Consider this:

The plaintiff had to prove the conditions of duty, breach, causation, and damages.  The factor of duty can be proven through. . . .

The problem here is that negligence has four elements. While the reader would likely be able to determine that the writer meant element, the use of condition as if it were a synonym of element will throw the reader for a moment and detract from the power and persuasion of the writing.

Likewise, some writers use prong, part, and step imprecisely or interchangeably when describing tests.  For tests, all parts must be satisfied, only one prong need be satisfied, and the steps must be satisfied in order.

This type of imprecision can also creep in when writers try to make their writing fancier and pick a similar-sounding word that has a very different meaning.

The saline point of this article is to be sure of your word usage.

Yes, this should read: The salient point of this article is to be sure of your word usage.  I don’t think my writing is that salty!

Consistency

Every year I have a student or two who struggle to unlearn elegant variation.[iii]  You might remember this concept from high school: using different terms for the same key point to avoid boring the reader.  While this might hold true for other forms of writing, the legal audience is different.

We have all been trained to carefully read and parse statutes, and in statutory construction, different terms mean different things.  We also tend to apply this idea to other forms of legal reading. Consider this:

Problem solving is one of the most essential skills in life. Regardless of who you are or what you do, you will face obstacles. How you deal with such challenges will often be a determining factor [sic] in how successful you are at life. While problems come in a wide variety of shapes and sizes, this article can give you a rough idea of how to solve one in a general sense.[iv]

The author has used (possibly) three different terms for the same idea.  When you read this, you had to pause to determine whether the author meant obstacles for the same idea as problem, and you had to pause again for challenges to determine if there was one, two, or three different ideas in this short paragraph.

Conclusion

When cooking up your next piece of legal writing, consider carefully how spicy and salty you want the writing to be.  Your reader would likely appreciate a precise piece of writing over one where she has to stop and consider the flavor and meaning of words.

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[i] Mark Twain, Essay on William Dean Howells, at http://www.online-literature.com/twain/1325/.

[ii] Many idiomatic expresses rely on specific preposition usage with other parts of speech.  A helpful list of the most commonly used pairs in legal writing can be found in Anne Enquist & Laurel Currie Oates, Just Writing: Grammar, Punctuation, & Style for the Legal Writer 280-83 (3d ed. 2009).

[iii] “The phrase elegant variation was coined during the 1920s by Henry Watson Fowler, the British philologist and author of A Dictionary of Modern English Usage (1926). At that time, the word elegant connoted over-refinement. That connotation of elegant is now forgotten, so elegant variation has become a confusing misnomer. Today, gratuitous variation would be more accurate; however, elegant variation remains in wide use.” Joe Roy, Elegant Variation (2) at http://clear-writing-with-mr-clarity.blogspot.com/2010/11/elegant-variation-2.html.

[iv] Joe Roy, Elegant Variation (2) at http://clear-writing-with-mr-clarity.blogspot.com/2010/11/elegant-variation-2.html.

By Lindsey M. Welfley

If you’re familiar with Judge Lodge’s courtroom, you may recognize any one of these phrases:

“There’s no right way to do the wrong thing;”

“Don’t be your own worst enemy;” or

“The best place to find a helping hand is at the end of your own arm.”

These “Lodge-isms” are just a few of the ways U.S. District Judge Edward Lodge exemplifies the steadfast, upstanding character one would expect from Idaho’s longest-serving member of the judiciary. Judge Lodge has served a total of 56 years on the bench and his retirement this past July marks a career committed to judicial excellence and a dedication to the tenets of the legal profession as a whole.

Judge Edward Lodge completed his undergraduate education at the College of Idaho in 1957, after which he headed up North to attend the University of Idaho College of Law. Judge Lodge graduated with his LL.B. from the College of Law in 1961 and was admitted to the Idaho State Bar the following year. It did not take long for Judge Lodge to find his way to the bench – after practicing with Smith & Miller for just one year, Lodge assumed office as Canyon County State Probate Judge in 1963. Two years later, Judge Lodge was appointed as canyon County State District Judge – he took office just after his 31st birthday and was the youngest judge ever appointed.

Judge Lodge served on the State court bench from July 1963 to January 1988. During his nearly 25 years of service on the State court bench, Judge Lodge presided over several notable cases. One such case was State v. Karla Windsor (1984) which resulted in the sentencing of the first woman in Idaho history to the death penalty.

In January of 1988, Judge Lodge was appointed to the federal bench as a U.S. Bankruptcy Judge for the District Idaho – he was one of over 70 applicants for the vacant seat. He held this position for one year until he was commissioned as a U.S. District Judge. Lodge was recommended by Senator James McClure to fill the seat of Judge Marion Callister who had taken senior status, was nominated by George H.W. Bush and was unanimously confirmed by the Senate. Judge Lodge served as Chief Judge for the District of Idaho from 1992 to 1999 and the U.S. District Court would be where he would preside for the remainder of his distinguished career.

Just as his time on the State court bench was marked by significant cases and decisions, so too was his time in Federal court. Judge Lodge presided over cases ranging from hate crimes to murder and conspiracy. United States v. George V. Hansen (1992) was centered around former U.S. Congressman George Hansen’s conviction of fraud. United States v. State of Idaho (1998) resulted in the U.S. Supreme Court upholding the restoration of ownership of the southern third of Lake Coeur d’Alene to the Coeur d’Alene Tribe. In United States v. Kurbanov (2013) a federal jury found Fazliddin Kurbanov, 33, guilty of conspiracy to provide material support to a terrorist organization. Through and through, Judge Lodge met each of these cases with a level of discernment and wisdom that truly exemplifies the highest standards of service on the bench.\

Judge Lodge is a cowboy with a day job as a judge. He works hard, is fair and respectful to all, and he makes decisions based on the law with due consideration to the unique circumstances of those appearing before him. He exercises his judgment with compassion, intelligence and a keen sense of humor making him a pleasure to appear before and a pleasure to work with.”

District Judge Nancy Baskin

“Your reputation is like the tail of a swallow, it follows you wherever you go.”

Judge Lodge has spent the last five decades building a reputation of unabashed integrity, levelheaded wisdom, and fearless discretion. His reputation will, indeed, follow him into retirement and wherever he may go – it is certainly a reputation Idaho’s legal profession and citizenry at large are fortunate to boast.

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By Jessica A.H. Howell

A case out of the Idaho Supreme Court is making headlines around the state for a significant change in criminal procedure.[i]  On June 12, 2019, the Court issued State v. Clarke, Docket No. 45062, unanimously holding that the Idaho Constitution prohibits warrantless arrests for misdemeanor offenses committed outside an officer’s presence.[ii]  This opinion, written by Justice Horton, has victim’s rights advocacy groups, law enforcement, and prosecutors scrambling for solutions regarding the requirement that there be a warrant for such offenses, while defense attorneys are up against deadlines to file motions to suppress evidence obtained as a result of these now illegal arrests.

Case Background

In State v. Clarke, a woman flagged down a police officer near a beach in Hayden, Idaho.[iii]  She reported that Mr. Clarke harassed her and groped her while she was trying to enjoy the beach with her son.[iv]  She provided the officer with a description of Mr. Clarke and advised that she wanted to press charges.[v]

The officer located Mr. Clarke, who admitted to talking to the woman and grabbing her, but Mr. Clarke maintained the touching was consensual.[vi]  Based on the woman’s complaint and Mr. Clarke’s admission that he touched her, the officer arrested Mr. Clarke for battery—a misdemeanor offense.[vii]  The officer searched Mr. Clarke incident to arrest and discovered drug paraphernalia, methamphetamine, and marijuana.[viii]

A Motion to Suppress

Mr. Clarke moved to suppress the evidence obtained after his arrest, arguing that the arrest was illegal pursuant to Article I, Section 17 of the Idaho Constitution—which prohibits unreasonable searches and seizures—and therefore the evidence of the drugs and paraphernalia was “fruit of the poisonous tree.”[ix]  The district court found the arrest permissible under both the Idaho and Federal Constitutions and under Idaho Code § 19-603(6)—which permits warrantless arrests when there is probable cause to believe an assault or battery has occurred—and found there was probable cause to support the arrest.[x]  Mr. Clarke appealed the district court’s ruling.[xi]

On Appeal

The Idaho Supreme Court analyzed Idaho Code § 19-603, which sets forth the bases upon which an arrest may be made.[xii]  Until 1979, that statute echoed the state constitutional interpretation that a warrantless arrest was lawful if the arresting officer had probable cause to believe a felony was committed or if the offender had committed a misdemeanor in an officer’s presence.[xiii]  But in 1979, Subsection 6 was added to the statute and since then, the statutory standard has diverged from the constitutional standard.[xiv]  Indeed, Subsection 6 allowed for warrantless arrests when there was probable cause to believe a misdemeanor assault or battery occurred outside the presence of an officer.[xv]

As a first step in interpreting the state constitution, the Court looked to the intent of the framers.[xvi]  This was unhelpful, since Article I, Section 17 was adopted without debate.[xvii]  The Court then reviewed common law, analyzing English texts dating back to 1765 and common law as it developed throughout the United States.[xviii]  This historic review revealed the long-standing principle that peace officers were not permitted to make warrantless arrests for any misdemeanor offense committed outside their presence.[xix]  Thus, the Court concluded, “that the framers of the Idaho Constitution understood that Article I, Section 17 prohibited warrantless arrests for completed misdemeanors.”[xx]  Accordingly, the Court vacated Mr. Clarke’s judgment of conviction.

Perhaps as a signal to the legislature, the Court recognized the significance of its holding: “‘Domestic violence is a serious crime that causes substantial damage to victims and children, as well as to the community.’ I.C § 32-1408(1).  Idaho Code § 19-603(6) permits peace officers to use their arrest powers to intervene in domestic violence situations, even though they have not personally observed the commission of a crime, and to thereby defuse potentially violent circumstances.  Nevertheless, the extremely powerful policy considerations which support upholding Idaho Code § 19-603(6) must yield to the requirements of the Idaho Constitution.”[xxi]

Far-Reaching Implications

While Clarke was analyzed within the context of a battery offense, the reasoning behind the Court’s conclusion indicates that any completed misdemeanor offense requires a warrant if committed outside the presence of an officer.  For instance, if a civilian witness calls in a DUI suspect based on a driving pattern, and law enforcement locate the suspect’s empty car parked in front of the suspect’s home, that misdemeanor offense is completed and law enforcement is required to obtain a warrant before making an arrest.  If a warrantless arrest is made, any evidence obtained as a result of that arrest, such as breathalyzer blows or a blood draw, is subject to suppression.

Prosecutors worry this new holding will prevent law enforcement from being able to remove an accused offender from his or her home in order to protect the alleged victim.  Defense attorneys, on the other hand, are concerned that law enforcement will simply charge offenses as felonies for the mere sake of being able to effectuate an arrest—knowing full well that these offenses will likely be pled down to misdemeanors.  The holding may also necessitate more magistrates to be on call to issue warrants.

Only time will reveal the practical implications of the Clarke holding.  Notably, 38 other states and the District of Columbia follow the same principle, and the principle is rooted in both English and American common law.[xxii]  While this change in criminal procedure is new to Idaho, it is not new to American jurisprudence.

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[i] See, e.g., “Idaho Supreme Court: Officer didn’t see misdemeanor? Arrest not OK,” by AP and CBS 2 News, June 13, 2019, https://idahonews.com/news/local/idaho-court-officer-didnt-see-misdemeanor-arrest-not-ok.

[ii] State v. Clarke, Docket No. 45062 (June 12, 2019).

[iii] Id.

[iv] Id.

[v] Id.

[vi]  Id.

[vii] State v. Clarke, Docket No. 45062 (June 12, 2019).

[viii] Id.

[ix] Id.

[x] Id.

[xi] Id.

[xii] State v. Clarke, Docket No. 45062 (June 12, 2019).

[xiii] Id.

[xiv] Id.

[xv]  Id.

[xvi] Id.

[xvii] State v. Clarke, Docket No. 45062 (June 12, 2019).

[xviii] Id.

[xix] Id.

[xx] Id.

[xxi] Id.

[xxii] Justin Rhodes, Common Law, Common Sense? How Federal Circuit Courts Have Misapplied the Fourth Amendment and Why Officers Must be Present to Make a Warrantless Arrest for a Misdemeanor Offense, 53 No. 4 Crim. Law Bull. art. 1, 18 (2017).

By Teague I. Donahey

In trademark cases, the primary remedial focus is typically an injunction:  the trademark owner seeks to prevent the defendant from continuing to use the trademark that has been infringed so that consumer confusion is alleviated and the parties are returned to the commercial status quo ante.  Monetary remedies usually play second fiddle.  This article will explore the monetary damages provision contained in the federal trademark laws (the Lanham Act), 15 U.S.C. § 1117(a), which includes numerous ambiguities and has been subject to multiple interpretations.

The ambiguous and poorly-conceived nature of this monetary damages provision has recently taken on greater notoriety given the current 6-6 split among the federal circuits regarding its interpretation, a split that led the Supreme Court in June 2019 to grant a petition for writ of certiorari—an unusual event in the trademark world.[i]  Although the Supreme Court will be resolving the relatively narrow question of whether willful infringement is a prerequisite for awarding profits under § 1117(a), there are many other aspects of this provision that remain open to interpretation.

When [trademark infringement] shall have been established in any civil action arising under this chapter, the plaintiff shall be entitled, . . . subject to the principles of equity, to recover (1) defendant’s profits, (2) any damages sustained by the plaintiff, and (3) the costs of the action. The court shall assess such profits and damages or cause the same to be assessed under its direction. . . . In assessing damages the court may enter judgment, according to the circumstances of the case, for any sum above the amount found as actual damages, not exceeding three times such amount.  If the court shall find that the amount of the recovery based on profits is either inadequate or excessive the court may in its discretion enter judgment for such sum as the court shall find to be just, according to the circumstances of the case.  Such sum in either of the above circumstances shall constitute compensation and not a penalty . . . .[ii]

15 U.S.C. § 1117(a)

Several aspects of this statute are significant.  First, the provision states that a plaintiff “shall” be entitled to recover both its damages and the defendant’s profits.  Second, unhelpfully, the statute does not explain in any detail what “profits” are awardable.  Third, the monetary recovery amount is left for the court to determine “subject to the principles of equity,” damages may be further enhanced by the court, and recovery under a disgorgement of profits theory may be further modified upward or downward in the court’s “discretion.”  Fourth, regardless of the rationale under which a monetary award is calculated, any such award must be “compensation” and cannot be a “penalty.”  What does all of this mean?

Splits Among the Circuits Make Consistent Interpretations Difficult

The short answer is that it is difficult for the parties in any particular case to know for sure.  For starters, there is some ambiguity concerning who has the authority to make decisions in trademark cases concerning monetary remedies, and in what context.  Section 1117(a) states that “[t]he court shall assess . . . profits and damages or cause the same to be assessed under its direction” and that all monetary recovery shall be had “subject to the principles of equity,” which is traditionally the province of the courts.[iii]  But it is unclear how this provision squares with the Supreme Court’s holding that a trademark owner has a Seventh Amendment right to a jury trial with respect to a claim for damages.[iv]

Similarly, in Fifty-Six Hope Road Music, Ltd. v. A.V.E.L.A., Inc., the Ninth Circuit squarely held that a claim for disgorgement of profits is always an equitable remedy that is within the discretion of the trial court, and it affirmed the trial court’s calculation of profits over the plaintiff’s objection that the issue should have been tried to a jury.[v]  But some courts outside the Ninth Circuit have taken the opposite approach.[vi]  In one recent case, for example, the Northern District of Illinois opined that a claim for profits served as a proxy for damages and, as such, the plaintiff had a right to a jury trial on the issue.[vii]

Courts Retain Broad Discretion Over Monetary Damages Awards

Although § 1117(a) states that profits and damages “shall” be awarded, courts have generally cited the “subject to the principles of equity” language in holding that monetary recovery is not automatically permitted to a trademark owner.[viii]  Thus, a trademark owner contemplating an infringement lawsuit cannot be guaranteed it will obtain any monetary recovery, even if liability and damages can be proven.

To the extent some amount of monetary remedy is ultimately available under “the principles of equity,” the trial court has “extremely wide discretion” to make adjustments to both damages and profits.[ix]  For instance, by its terms, § 1117(a) gives the courts discretion to enter judgment on the issue of disgorgement of profits for any sum that the court deems “just” without any further limitation, “according to the circumstances of the case.”[x]

Likewise, damages can be adjusted by the court to any sum above the amount of “actual damages,” not to exceed three times that amount.[xi]  In the patent law context, where courts are similarly permitted by statute to treble damages awards,[xii] the Supreme Court has characterized such treble damages as providing a “punitive” remedy where bad-faith or willful infringers are involved.[xiii]  But under § 1117(a), any enhanced damages must be “compensation and not a penalty.” [xiv]  If there is a Seventh Amendment right to a jury trial on the issue of actual damages, if the jury’s damages award is intended to provide full compensation, and if enhanced damages are supposed to be compensatory only, it raises the question of when judicially-enhanced damages would be justified in a trademark case.

Different Courts, Different Standards

Given such ambiguities and unanswered questions, it is not surprising that courts adjudicating trademark cases have been forced to go beyond the plain language of § 1117 and develop subsidiary rules in an effort to provide additional guidance.  But different courts around the country have crafted different rules, adding yet another layer of uncertainty.

For example, although the statute states unambiguously that both damages and profits are simultaneously available to the trademark owner, courts have held that, particularly where the parties are in direct competition, an award of both damages under a lost profits theory and a separate disgorgement of profits could result in impermissible double recovery.[xv]

Courts also have held that a plaintiff is only entitled to profits that are “attributable” to the trademark infringement.[xvi]  But this, of course, begs the corollary question:  what kinds of profits are “attributable” to infringement and what are not?  Are all profits from every infringing sale “attributable” to infringement?  The lack of clarity leaves room for Defendants to argue, for example, that some consumers made purchases of infringing products for reasons unrelated to trademark issues,[xvii] or that profits should be otherwise apportioned.[xviii]

Furthermore, in the Ninth Circuit, courts have held that profits should not be awarded under any circumstances unless there has been a finding of willful trademark infringement.[xix]  That view is not shared by courts in at least the Third, Fourth, and Fifth Circuits, which have taken the position that willfulness is a factor to be considered in the equitable analysis, but is not necessarily dispositive.[xx]

In Banjo Buddies, Inc. v. Renosky, for example, the Third Circuit held that a disgorgement of profits depends on numerous factors, including not only the defendant’s intent in infringing, but also whether sales were actually diverted, whether other remedies were adequate, whether the plaintiff unduly delayed in asserting its rights, the public interest in making infringement unprofitable, and whether the defendant’s conduct constituted “palming off.”[xxi]  Based on an application of these factors, the court affirmed the trial court’s award of profits even assuming that the infringement had not been willful.[xxii]

On the other hand, some courts in the Second Circuit have held that a showing of actual consumer confusion—as opposed to a mere likelihood of confusion, which is the legal standard for trademark infringement[xxiii]—is a prerequisite for an award of profits.[xxiv]  In Information Superhighway, Inc. v. Talk America, Inc., for example, the Southern District of New York dismissed the plaintiff’s entire claim for monetary relief because no actual consumer confusion had been shown.[xxv]

The Ninth Circuit, however, has rejected that approach.[xxvi]  In fact, the Ninth Circuit has gone so far as to suggest that an award of profits may be available to a trademark owner under an unjust enrichment theory, and that therefore the trademark owner need not even establish that the parties were in competition and that there were lost or diverted sales (a primary quantum of actual damages) before the defendant’s profits can be awarded.[xxvii]

Clarity Is Needed From Congress or the Supreme Court

Plainly, the genesis of all of this disagreement and confusion is the Lanham Act itself.  Section 1117(a) is a statutory provision sorely in need of direction from the Supreme Court and—ultimately—clarification and amendment by Congress.  Unfortunately, it is not often that Congress has the time or interest to consider the trademark laws in any depth, and the Supreme Court is an infrequent arbiter of trademark disputes.  Intellectual property practitioners can only hope that will change.  Fortunately, the Supreme Court’s grant of certiorari in the Romag Fasteners case provides an opportunity for the Court to consider the statutes and weigh in.[xxviii]  At least some clarity may soon be forthcoming.

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[i] See, e.g., Romag Fasteners, Inc, v. Fossil Inc., Docket No. 18-1233, Petition for Writ of Certiorari at 2–3 (filed Mar. 22, 2019).  

[ii] 15 U.S.C. § 1117(a).

[iii] Id. (emphasis added).

[iv] Dairy Queen, Inc. v. Wood, 369 U.S. 469, 477 (1962).

[v] Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1074–76 (9th Cir. 2015).

[vi] See, e.g., Black & Decker Corp. v. Positec USA Inc., 118 F. Supp. 3d 1056, 1060–69 (N.D. Ill. 2015) (denying motion to strike request for jury trial on disgorgement of profits as to trademark-related claims).

[vii] See id.

[viii] See, e.g., Maier Brewing Co. v. Fleischmann Distilling Corp., 390 F.2d 117, 120 (9th Cir. 1968) (“The equitable limitation upon the granting of monetary awards under the Lanham Act, 15 U.S.C. § 1117, would seem to make it clear that such a remedy should not be granted as a matter of right.”).

[ix] Friend v. H. A. Friend & Co., 416 F.2d 526, 533 (9th Cir. 1969); see also, e.g., Playboy Enters., Inc. v. Baccarat Clothing Co., 692 F.2d 1272, 1276 (9th Cir. 1982) (upholding trial court’s refusal to increase damages award).

[x] 15 U.S.C. § 1117(a).

[xi] Id.

[xii] See 35 U.S.C. § 284.

[xiii] See Halo Elecs., Inc. v. Pulse Elecs., Inc., __ U.S. __, 136 S. Ct. 1923, 1930 (2016).

[xiv] 15 U.S.C. § 1117(a).

[xv] Experience Hendrix L.L.C. v. Hendrixlicensing.com Ltd, 762 F.3d 829, 841 n.9 (9th Cir. 2014) (citing Nintendo of Amer., Inc. v. Dragon Pacific Int’l, 40 F.3d 1007, 1010 (9th Cir. 1994)).

[xvi] Maier, 390 F.2d at 124 (quoting Mishawka Rubber & Woolen Mfg. Co. v. S.S. Kresge, 316 U.S. 203, 206 (1941)); see also Manual of Model Civil Jury Instr. § 15.29 (9th Cir. 2019) (“[T]he plaintiff is entitled to any profits earned by the defendant that are attributable to the infringement.”).

[xvii] See Maier, 390 F.2d at 124 (quoting Mishawka)

[xviii] See, e.g., Marketquest Grp., Inc. v. BIC Corp., No. 11-cv-618-BAS (JLB), 2018 U.S. Dist. LEXIS 62357, at *13 (S.D. Cal. Apr. 12, 2018).

[xix] E.g., Stone Creek, Inc. v. Omnia Italian Design, Inc., 875 F.3d 426, 442 (9th Cir. 2017).

[xx] See, e.g., Banjo Buddies, Inc. v. Renosky, 399 F.3d 168, 174­–75 (3d Cir. 2005); Synergistic Int’l, LLC v. Korman, 470 F.3d 162, 175 n.13 (4th Cir. 2006); Quick Techs., Inc. v. Sage Group PLC, 313 F.3d 338, 348 (5th Cir. 2002).  Such decisions have focused on a 1999 amendment to § 1117 in which Congress made the provision applicable to “willful” violations of 15 U.S.C. § 1125(c)—the federal trademark dilution provision—but did not simultaneously modify the statute to expressly require “willful” trademark infringement.

[xxi] Banjo Buddies, 399 F.3d at 175.

[xxii] See id. at 175–76.

[xxiii] See, e.g., AMF, Inc. v. Sleekcraft Boats, 599 F.2d 341, 348–49 (9th Cir. 1979).

[xxiv] See Information Superhighway, Inc. v. Talk Amer., Inc., 395 F. Supp. 2d 44, 55 (S.D.N.Y. 2005) (citing, e.g., G.H. Mumm Champagne v. Eastern Wine Corp., 142 F.2d 499, 501 (2d Cir. 1944)).

[xxv] Information Superhighway, 395 F. Supp. 2d at 55.

[xxvi] See Gracie v. Gracie, 217 F.3d 1060, 1068 (9th Cir. 2000).

[xxvii] See Maier, 390 F.2d  at 121­–22.

[xxviii] Romag Fasteners Inc. v. Fossil Inc., Docket No. 18-1233.

By Elizabeth Herbst Schierman

Think of a “patent” and what likely comes to mind is a long, technically-complex document covering the intricacies of an invention—such as a physical machine or article of manufacture. One likely also pictures several highly-detailed patent drawings, each showing many various parts identified by number, as in the example shown in graphic 1.[i]

Such a “utility patent” generally protects the actual structure or composition of the invention or the way it is used, i.e., its utilitarian features. A lesser-known type of patent is a “design patent,” the subject of this article. A design patent protects the ornamental features of an invention (e.g., the “look” of the invention).

So, a design patent does not include extensive textual descriptions, and design patent drawings may be less intricately detailed compared to those of a utility patent. Well-crafted design patents may have simple drawings lacking any identifying (e.g., “reference”) numbers, such as the example shown in graphic 2, which is a design patent covering the Apple iPad®.[ii]

Design patents once held a reputation as being somewhat of the “one-star” patent protection option, compared to the “five-star” protection of a utility patent. Acquiring a design patent is generally much cheaper and faster than acquiring a utility patent. Both design patents and utility patents provide “patented” status for subject inventions, though the scope of protection of a design patent is very different than the scope of protection of a utility patent. It was not unheard of for unscrupulous companies, working with new inventors, to dupe customers into paying large amounts to get a “patent” on an invention, but with the end result being only a design patent with narrow practical protection.

In the current marketplace, however, the ever-growing demand for slick product designs—not just functional products—often leads large retail product manufacturers to pursue design patent protection for their products. The availability of design patent protection for graphical user interfaces (GUI) has also increased the popularity of design patents as a means for protecting aspects of software products. And, after Apple was awarded $399 million in damages for infringement of some of Apple’s design patents by Samsung,[iii] the potentially significant value of design patents reached the spotlight.

That $399 million damages award was subsequently reversed and remanded by the U.S. Supreme Court,[iv] after which a jury awarded Apple an even larger award in the then-ongoing patent battle between the two tech giants. Seeing such large damage award numbers hitting the news headlines and recognizing the potential for substantial damages awards in cases of design patent infringement, many in the intellectual property community have come to view design patents under a more favorable light.

With the renewed general interest in design patent protection should also come a renewed focus on the careful preparation of design patent applications. A widespread misconception may be at the root of the most common and costly missteps in design patent preparation: the misconception that design patents are just like utility patents but with less textual detail. This misunderstanding of design patents can lead to missed deadlines for seeking foreign protection, to overly-narrow design patents, and to being legally precluded from asserting a broad design patent claim construction when trying to enforce the design patent.

Common Mistake No. 1:  Miscalculating the foreign-filing deadline

For inventors based in the United States, filing a U.S. patent application is often the first step toward securing patent protection for an invention or design. However, a U.S. patent is enforceable only within the U.S. To have enforceable patent rights in another country or foreign region, appropriate steps must be taken to file for that foreign patent protection before it is too late.

Generally, for a U.S. invention that has been the subject of a utility patent application filed in the U.S., an inventor has a whole year—12 months—from his or her U.S. patent application’s filing date to file any foreign patent applications under the benefit of the earlier U.S. filing date.[v] For designs, on the other hand, the window for seeking foreign design patent protection is generally only six months, half the foreign-filing window for utility inventions.[vi] For the unaware, the six-month deadline comes and goes, often taking it with it the opportunity to protect the design abroad.

Being able to claim priority to an earlier application filing date (e.g., an initial U.S. application filing date) often means the difference between success and permanent failure at acquiring foreign patent protection. Most foreign countries bar inventors or other applications from seeking patents for inventions that were disclosed publicly prior to a patent application being filed.

So, practically speaking, if an inventor files a U.S. patent application, starts to publicly sell the invention as a product in the marketplace, and misses the appropriate deadline to file for foreign patent protection with a priority claim to the earlier U.S. patent application’s filing date, the sales of the invention will likely bar the inventor from the foreign patent protection. With a design patent, mistakenly assuming that the common 12-month foreign filing window for a utility patent application is the same foreign filing window for the design patent application likely means permanent loss of the potentially valuable foreign design patent rights.

Common Mistake No. 2:  Including too much detail in the design patent application’s drawings

In a utility patent application, generally, the more detail included in the drawings the better. A greater amount of detail in a utility patent application’s drawings increases the patent applicant’s opportunities to make adjustments to the patent application’s claims during “prosecution,” i.e., during negotiations with the U.S. Patent and Trademark Office as to what may be patentable about the invention. After a patent application is filed, new details about the invention cannot be added to the application, but the patent application claims can generally be re-shaped as long as the descriptions and drawings of the application provide textual and/or figurative support for the re-shaped material. Thus, when it comes to including details in the drawings of a utility patent application, the best practice is generally “the more the merrier.”

With a design patent application, on the other hand, the drawings—not the text—define the scope of the design patent’s protection, for the most part. Thus, the more detail included in the drawings, the more detail may need to be copied by a copy-cat product for it to be considered “infringing.” So, the best practice when preparing a design patent application’s drawings is often “less is more.”

A common misstep when preparing a design patent application is to prepare the drawings as if they were for a utility patent while simply leaving off the reference numbers and lead lines that would normally be included in utility patent application drawings. (See, e.g., the engineering-drawing style patent shown in graphic 3[vii].) Drawings like these, however, are likely to include several features that may actually be nonessential to the design meant to be protected. For example, the drawings may include details like engineering contour lines, screw/nail heads, intricate knob details, particular hinge shapes, etc.

Using utility-style drawings for design patent applications may also bring in views of aspects of the product that would not even be visible in the finished product (e.g., cross-sectional cut‑away views, interior views, exploded views). Such views obviously do not illustrate the “ornamental features” of the claimed design; so, such drawings can lead to rejections from the Patent Office. These otherwise-avoidable rejections take time, and therefore money, to address.

Even without the rejections of the drawings from the Patent Office during prosecution, the unnecessary details in utility-style drawings can lead to costly trouble when trying to enforce the design patent against a competitor. Most likely, drawings with too many details will lead a court to construe the scope of a claimed design more narrowly than it otherwise would have been (i.e., by interpreting the design as including more details than it otherwise would have had) had more careful consideration been given to the preparation of the drawings for the design application.

A competitor may be able to avoid infringement of the design patent merely by leaving out several of the details, while still embodying the more generalized features of the design. A properly crafted design patent application, with only the essential design features in the drawings, would be easier to enforce against a copy-cat competitor.

All this considered, it is important, when preparing the drawings for a design patent application, to take the time to identify and include in the drawings only the essential ornamental features of the design, to ensure that non-essential features—if they are shown—are shown in broken line with appropriate disclaimers (i.e., shown as not “claimed” parts of the design), and to remove internal or otherwise not-externally-visible features from the drawings. While a short and simple utility patent application might rightly give rise to some concern, in the mind of a patent practitioner, as to the application’s completeness, accuracy, and value, a short and seemingly-simple design patent application is a thing of beauty. (For example, take note again of the simplicity of the patent drawing from Apple’s design patent related to the iPad® shown in graphic 2.)

Common Mistake No. 3:  Including too many alternative embodiments of the design

While a utility patent may include multiple claims, a design patent is limited to only one claim: the claim for the ornamental design for the article as shown, or as shown and described.[viii] Thus, though a utility patent application often includes many drawings showing different versions of how the invention may be embodied, it is usually best to avoid the over-inclusion of alternatives in a design patent application.

If a design patent application includes several design variations in the drawings, the likelihood of receiving a restriction requirement is high. That is, a patent examiner at the U.S. Patent and Trademark Office, seeing several design embodiments in the patent application, is likely to require the design patent application to elect only one shown design, or only one group of related designs, to pursue as the patent application moves forward in the patenting process.[ix]

The nonelected design embodiments must be pursued in separate (i.e., divisional) design patent applications or else risk surrender of those embodiments to the public. That is, if design alternatives, illustrated in a design application, are considered by a patent examiner to be directed to patentably-distinct designs, the examiner will require the applicant to elect only one design (or group of designs) for that design patent application and to pursue any nonelected embodiments in additional (divisional) design applications. If the applicant fails to file and pursue separate design applications for the nonelected embodiments, the nonelected embodiments of the original application will likely be considered abandoned and available for the public to take.

For example, in 2006, Darren Bach filed a design patent application for the ornamental design of a marine windshield. The drawings of the application included various embodiments of the claimed design with different vent hole and hatch configurations[x]. See graphics 4.1-4.7.

The patent examiner assigned to Mr. Bach’s design patent application determined there were five “patentably distinct groups of designs” and required Mr. Bach to elect only one of (1) the design with four circular holes and a hatch (See graphic 4.1); (2) the design with four circular or square holes and no hatch (See graphics 4.2 and 4.7); (3) the design with no holes and a hatch (See graphic 4.3); (4) the designs with no holes and no hatch (See graphic 4.4); and (5) the designs with two oval or rectangular holes and a hatch (See graphics 4.5 and 4.6).[xi] Mr. Bach elected the first group (i.e., the design shown in graphic 4.1) with four circular holes and a hatch, canceling those shown in graphics 4.2 – 4.7, and went on to secure the design patent for the elected design.[xii] He pursued a divisional design patent for the nonelected embodiment with no holes in the corner post but did not pursue the other nonelected embodiments.[xiii]

In 2011, Mr. Bach’s company sued a competitor alleging infringement of the design patent for the originally-elected design (i.e., the design shown in graphic 4.1 with four circular holes).[xiv] The accused design, shown in graphic 5, had three trapezoidal holes on the corner post.[xv]

The trial court concluded that—by electing the embodiment with four circular holes and canceling (and no longer pursuing) the embodiments with no holes and two holes—Mr. Bach had essentially surrendered to the public the nonelected, non-pursued designs, i.e., the no holes and two-hole designs. Moreover, the trial court concluded Mr. Bach had also surrendered designs within the territory between the elected and patented four-hole embodiment and the nonelected and surrendered two-hole embodiment. So, according to the trial court, Mr. Bach effectively surrendered even three-hole designs, like that of the accused design.[xvi]

On appeal, the Court of Appeals for the Federal Circuit was not as stringent with Mr. Bach as the trial court had been. The Federal Circuit agreed that, by not pursuing the nonelected embodiments of the no-holes and two-hole designs, Mr. Bach had essentially surrendered those designs to the public.[xvii]

But, as to embodiments falling between the elected and surrendered material (e.g., a three-hole design), the court concluded those embodiments had not necessarily been surrendered because—perhaps luckily—Mr. Bach had not included drawings for those embodiments in his application and so, had not necessarily surrendered such designs when electing the four-circular-hole design. Had Mr. Bach included a three-hole design drawing and not elected it or pursued it further, or had the competitor opted for a two-hole design instead of a three, Mr. Bach would likely have been out of luck due to the mistake of over-including embodiments in the original design patent application and a lack of follow‑through after the elections.

Mr. Bach’s tale serves as a warning to design patent practitioners to carefully consider what alternative embodiment drawings to include in an application. Only those drawings that the applicant fully intends to pursue to the end should be included, and the over-inclusion tendencies that are helpful with utility patents should be avoided with design patents.

These mistakes, though common, are hardly the only pitfalls that design patent applications present for the unwary utility patent practitioner. Even so, the above mistakes and many others can be avoided merely by recognizing that design patent applications are different creatures from utility patent applications. Design patent applications should be prepared, not as mere extractions of utility patent applications, but as mindfully crafted documents with the potential for significant, valuable protection for design innovations.

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[i] Crayon Maker, U.S. Patent No. 6,902,387 B2 (filed Dec. 7, 2001) (issued Jun. 7, 2005) (original assignee being Binney & Smith, Inc.).

[ii] Electronic Device, U.S. Design Patent No. D504889 S1 (filed Mar. 17, 2004) (issued May 10, 2005) (original assignee being Apple Computer, Inc.).

[iii] Samsung Elecs. Co. v. Apple Inc., 137 S. Ct. 429, 433 (2016).

[iv] Id.

[v] See www.wipo.int/pct/en/faq/faqs.html (regarding the twelve-month period provided by the Paris Convention).  Outside of the Paris Convention, individual countries may have different periods for foreign priority claims, but a twelve-month period is one of the most common periods.

[vi] See https://www.uspto.gov/patent/initiatives/hague-agreement-concerning-international-registration-industrial-designs (discussing the six-month window under The Hague Agreement).

[vii] Crayon Maker, U.S. Design Patent No. D471572 S1 (filed Mar. 14, 2002) (issued Mar. 11, 2003) (original assignee being Binney & Smith, Inc.).

[viii] § 1503.01, Manual of Patent Examination and Procedure, USPTO.

[ix] 35 U.S.C. § 121.

[x] U.S. Serial No. 29/258,753 (filed Apr. 27, 2006).

[xi] Pac. Coast Marine Windshields Ltd. V. Malibu Boats, LLC, 739 F.3d 694, 698 (Fed. Cir. 2014).

[xii] Id.

[xiii] Id. at 699.

[xiv] Id.

[xv] Id.

[xvi] Id.

[xvii] Id. at 704.

By Kammie Cuneo

The ancient notion of a “covenant in restraint of trade” has given way to the modern non-compete agreement. Over recent decades, as the use of non-compete agreements has proliferated, states including Idaho have developed statutory frameworks to govern the enforceability of these agreements. This article provides a historical summary of the common law and the Idaho statute. The article then explores interpretations based on the limited case law available and offers observations on potential practice pointers.

Ancient and Not-So-Ancient History and Common Law

The earliest statements of the common law in England held that covenants in restraint of trade were void; this was regarded as “old and settled law” even by the time of Henry V.[i] This ancient rule was qualified by a succession of decisions in the English courts over the next few centuries, with a distinction emerging in Broad v. Jollysse and Mitchel v. Reynolds between “general” and “limited” restraints of trade. [ii]

The latter case provided the clearest expression of the common law rule adopted in England and later in this country: “A bond or promise to restrain oneself from trading in a particular place, if made upon a reasonable consideration, is good. [Unless] if it be on no reasonable consideration, or to restrain a man from trading at all” (emphasis by author) [iii].

This quote from Mitchel has been a model for the development of the law in the U.S. and specifically in Idaho—the Idaho Supreme Court calling it “a guide for courts ever since.”[iv] For most of our state’s history, Idaho courts were left to their own devices on this issue and chose to adopt and expand the aforementioned principles of common law, approvingly citing to the rule in Mitchel,[v] and applying a similar standard whereby such agreements were enforceable but disfavored.[vi]

The court provided that covenants not to compete would be “strictly construed against the employer”[vii] and required they be “supported by adequate consideration, and consistent with public policy” and reasonable.[viii] The chief requirement of the reasonableness standard was that the clause be “no more restrictive than necessary to protect the employer’s legitimate business interests.”[ix]

In addition, the covenant must be reasonable as applied to “the employer, the employee, and the public.”[x] More specifically, the covenant must be “not greater than necessary to protect the employer…not unduly harsh and oppressive to the employee; and [] not injurious to the public.”[xi] If covenants were found to be overbroad, the Supreme Court “approved of the modification of otherwise unreasonable covenants”[xii] to render them enforceable. If, however, the “covenant is so lacking in the essential terms which would protect the employee such that the trial court is no longer modifying but rewriting the covenant,”[xiii] modification is no longer acceptable.

The New Millennium and the Features of Non-Compete Legislation

Consistent with national trends and perhaps feeling that specific guidance was in order, the Idaho Legislature in 2008 passed our state’s first statute governing restrictive covenants, specifying that a non-compete agreement was enforceable with respect to a “key employee or key independent contractor” if reasonable “as to its duration, geographical area, type of employment or line of business, and does not impose a greater restraint than is reasonably necessary to protect the employer’s legitimate business interests.”[xiv]

Broadly taking cues from the common law while seeking to impose some more definite standards, the Legislature created a number of guidelines for presumptive reasonability. Under the statute, rebuttable presumptions were established that agreements limited to (1) employees or independent contractors who were among the highest paid five percent of a company’s employees or contractors, (2) a post-employment duration of 18 months,[xv] (3) the geographic areas in which “the key employee…provided services or had a significant presence or influence,” and (4) the “type of employment or line of business conducted by the key employee” are reasonable.[xvi]

For the presumption concerning key employees or independent contractors, the statute requires that the employee prove “that it has no ability to adversely affect the employer’s legitimate business interests”[xvii] in order to rebut the presumption. This feature sharply breaks from the old rule in imposing a presumptive restraint on the employee instead of placing the burden of proof on the employer.

The statute also includes certain important definitions. While highly-paid employees and contractors are presumptively “key,” the term also embraces those who, by reason of some investment or exposure by the employer (pecuniary or otherwise), “have gained a high level of inside knowledge, influence, credibility, notoriety, fame, reputation or public persona as a representative or spokesperson of the employer.”[xviii] The term “legitimate business interests” is also defined broadly to include both concrete technologies, plans, processes, contacts, and trade secrets and intangible “goodwill.”[xix]

Another notable aspect is that the statute provides for, arguably mandates, that the court “limit or modify” the agreement as necessary to reflect the intent of the parties and “render it reasonable” where the agreement has been found to be unreasonable.[xx] While the common law rule also provided for the modification of covenants, as noted above, the statutory language is closer to a mandate: “shall limit or modify.”[xxi]

The Idaho non-compete statute remains in force unchanged today, although it was briefly amended in 2016 to add a paragraph establishing a “rebuttable presumption of irreparable harm” upon breach of a non-compete agreement. The statute imposed on defendants the punishing standard of “show[ing] that the key employee… has no ability to adversely affect the employer’s legitimate business interests.”[xxii] Following widespread criticism,[xxiii] the amendment was repealed in 2018. The current statute is identical in all substantive respects to the 2008 version.

Statutory Interpretation and Practice Pointers

Unfortunately for practitioners, judicial guidance regarding the construction of either version of this statute has been relatively limited. A few notable cases are nonetheless worth examining. In making this examination, the author optimistically concludes, despite having only two data points, that the courts follow reasonableness criteria as set forth by the statute but remain strongly informed by the traditional bias against restraints of trade.

Perhaps the most directly relevant case is Brand Makers Promotional Products, LLC v Archibald, an unreported decision of the Idaho Court of Appeals under the current statute.[xxiv] Brand Makers asserted, among others, claims of fraud, conversion, unjust enrichment, and breach of contract against defendant Nathan Archibald, a former employee and co-founder of the company. The claim of breach was predicated on an allegation that Archibald had breached a non-solicitation and confidentiality agreement by directly competing with Brand Makers and by soliciting away Brand Makers’ customers. The agreement between the two mandated that Archibald avoid involvement with any competitor of the company or be engaged in any business activity which would compete with the business of Brand Makers. Archibald further explicitly agreed not to solicit away any employees, contractors, or customers.[xxv]

The court found that the agreement was unreasonable, and thus unenforceable, specifically stating that it imposed a greater restraint on Archibald than was reasonably necessary to protect Brand Makers’ interests. The court noted the following shortcomings in the agreement as the basis for its conclusion: the agreement was “silent as to the geographic limitations, type of employment, or line of business” that Archibald was prohibited from conducting.[xxvi]

Most interestingly, in contrast to the apparent mandate of the statute to modify or limit any unreasonable provisions of such agreements, the Archibald court declined to modify the agreement, and in the process seemed to narrow the scope of the statute’s blue-pencilling provisions. The court reasoned that the statute “does not require the court to insert terms into a non-compete agreement in order to render it reasonable when such terms are absent on the face of the provision”[xxvii]—a justification which highly resembles the old rule articulated in Pinnacle Performance, Inc. v. Hessing.[xxviii]

Although the decision is not precedential, it seems to indicate a tendency on the part of Idaho courts to discard restrictive covenants which are perceived as grossly insufficient notwithstanding the “limit or modify” requirement of I.C. § 44-2703. This may be viewed as a continuation of the older common law trend that disfavored non-compete agreements.

To better understand the scope and nuances of the judicial decision-making, it is instructive to compare Archibald with another case—Timberline Drilling v. American Drilling.[xxix] Timberline was decided based on the principles of common law.[xxx] Stephen Elloway, the U.S. operations manager of Timberline Drilling, signed a non-compete agreement in 2007 that prohibited him from soliciting or selling products or drilling services (1) to any of Timberline’s customers or “potential customers”, (2) for a period of five years, (3) within 100 miles of any location in which Timberline operated a drill rig at the time of termination.[xxxi]

Elloway resigned in 2008 and formed the American Drilling Corporation, which signed contracts with three mines, all customers of Timberline’s at the time of Elloway’s resignation. All of American Drilling’s employees were former employees of Timberline. A suit ensued. Both sides moved for partial summary judgment on the non-compete agreement in the District of Idaho.

The Court found that Timberline had a “protectable business interest in its customer relationships which Elloway helped to develop while working for Timberline” and that the geographic scope of the agreement was reasonable. It found the duration and inclusion of “potential customers” to be unreasonable.[xxxii] To rectify the shortcomings of this agreement, the court judicially modified the agreement, striking the words “potential customers” and shortening its duration to 18 months. The reduction of the duration to 18 months was influenced by a provision of the 2008 statute, I.C. § 44–2704(2), which the court called “instructive as to what was reasonable”[xxxiii] (although the statute was not technically applied to this agreement).

Collectively analyzing the decision in Archibald (declining to modify the agreement despite the statutory provision appearing to mandate such modification) with the decision to judicially modify the agreement in Timberline (before the mandate had become law) may reflect a tendency of courts to make fact-specific determinations. These determinations appear to be on the totality of a case when deciding whether to modify unreasonable restrictive covenants.

In Timberline, where the facts were arrayed against the defendant and the agreement was reasonable in many terms, the court chose to modify even without statutory pressure; in Archibald, where the agreement appeared manifestly deficient, the court chose not to modify even with this pressure. Although, the skeptic could also conclude that no patterns have emerged in Idaho as of yet and the difference in the decisions is explained by the choice of venue.

A final distinction on this topic is worth noting. Dating back to the ur-case Mitchel, courts have consistently differentiated restrictive covenants “ancillary to the sale of a business”[xxxiv] from those signed in the context of an employer-employee relationship.[xxxv] Although a rule establishing this difference is neither explicit in the Idaho statute nor in recent case law based on the statute, the rule was repeatedly reaffirmed under common law.

The Supreme Court in Bybee v. Isaac noted the rule thus:[xxxvi] “‘restrictive covenants in contracts limiting an employee’s natural right to pursue an occupation and thus support himself and his family will be strictly scrutinized’, but courts are less strict in construing the reasonableness of such covenants ancillary to the sale of a business.”[xxxvii] Given the Archibald courts’ reliance on the common law framework, it is not unreasonable to expect that the courts may do same regarding this distinction between the types of restrictive covenants.

Considering the broader picture of these historical developments, the mindful practitioner may note that restraint in drafting may be the key to an enforceable restraint of trade agreement in the employment context. While statutory provisions in Idaho provide for such agreements, the courts may still approach such covenants with caution. Accordingly, an enforceable covenant is likely a carefully drafted one which limits restraint to only that necessary for the protection of the legitimate business interests and which limits restrictions consistent with the presumptive reasonableness criteria stated in the statute.

Acknowledgment: I would like to thank Arman Cuneo, my former intern, for his contributions to this article.

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[i] Alger v. Thatcher, 36 Mass. 51, 52 (Mass. 1837).

[ii] Broad v. Jollysse, Cro. Jac. 596, 79 Eng. Rep. King’s Bench Div. VIII 509 (1621); Mitchel v. Reynolds, 24 Eng. Rep. 347, 348; 1 P. Wms. 181, 182 (1711) (noting that general restraints were those that prevented a man from practicing his trade throughout England).

[iii] Shannon Aaron, Using the History of Noncompetition Agreements to Guide the Future of the Inevitable Disclosure Doctrine, 17 Lewis & Clark L. Rev. 1191, 1222 (2013) (quoting from Mitchel 24 Eng. at 347, 1 P. Wms. at 181).

[iv] Shakey’s Inc. v. Martin, 91 Idaho 758, 762, 430 P.2d 504, 508 (1967).

[v] See id.

[vi] Freiburger v. JUB Engineers, Inc., 141 Idaho 415, 419, 111 P.3d 100, 104 (2005).        

[vii] Id.

[viii] Id.

[ix] Id. at 105.

[x] Insurance Ctr., Inc. v. Taylor, 94 Idaho 896, 899, 499 P.2d 1252, 1255 (1972).

[xi] Freiburger, 141 Idaho at 419, 111 P.3d at 105.

[xii] Id. at 422, 107-108; see also Insurance Ctr., Inc. v. Taylor, 94 Idaho 896, 899, 499 P.2d 1252, 1255 (1972).

[xiii] Pinnacle Performance, Inc. v. Hessing, 135 Idaho 364, 369, 17 P.3d 308, 313 (Ct. App. 2001).

[xiv] I.C. § 44-2701 (2008) (which is the same as the 2018 version).

[xv] This was also established as a maximum duration in § 44-2704(1).

[xvi] I.C. § 44-2704 (2008) (which is substantively the same as the 2018 version).

[xvii] I.C. § 44-2704(5).

[xviii] I.C. § 44-2702(1) (2008) (which is substantively the same as the 2018 version.

[xix] I.C. § 44-2702(2).

[xx] I.C. § 44-2703 (2008) (which is the same as the 2018 version).

[xxi] Id.

[xxii] H.B. 487, 63^rd Leg., 2^nd Sess. (Idaho 2016) (Business and Commerce—Breach of Contract—Contractors).

[xxiii] Betsy Z. Russell, Idaho Businesses Line Up Against Non-Compete Law; ‘Lie of The Year’; and Veyo’s Replacement; My Full Sun. Column . . ., THE SPOKESMAN-REVIEW, Dec. 17, 2017, http://www.spokesman.com/blogs/boise/2017/dec/17/idaho-businesses-line-against-non-compete-law-lie-year-and-veyos-replacement-my-full-sun-column/; see also Conor Dougherty, Noncompete Pacts, Under Siege, Find Haven in Idaho, N.Y. TIMES, Jul. 14, 2017, https://www.nytimes.com/2017/07/14/business/economy/boise-idaho-noncompete-law.html.

[xxiv] Brand Makers Promotional Products, LLC v Archibald, No. 44926, 2018 WL 5076135, at * 1 (Idaho App. Oct. 18, 2018).

[xxv] Id., at *1-*2.

[xxvi] Id., at *10.

[xxvii] Id., at *11.

[xxviii] See n. 15 supra.

[xxix] No. CV 09-18-N-EJL-MHW, 2010 WL 11531293, at *5 (D. Idaho Mar. 17, 2010).

[xxx] Id., at n. 2.

[xxxi] Id., at *3.

[xxxii] Id., at *4.

[xxxiii] Id., at *5.

[xxxiv] Shakey’s, 430 P.2d at 508.

[xxxv] Harlan M. Blake, Employee Agreements Not to Compete, 73 Harv. L. Rev. 625, 629 (1960).

[xxxvi] Bybee v. Isaac, 145 Idaho 251, 178 P.3d 616 (Idaho 2008).

[xxxvii] Id. at 256, 178 P.3d at 621 (quoting Stipp v. Wallace Plating, Inc., 96 Idaho 5, 6, 523 P.2d 822, 823 (1974)).

By Kendra S. Ankrum

The America Invents Act (“AIA”), effective since 2012, established a procedure to challenge patents through inter parties review (“IPR”) before the Patent Trial and Appeal Board (“PTAB”). IPRs have become a popular, cheaper alternative to litigation to challenge the validity of patents based on prior art. Prior art includes any evidence that can establish that the patented invention is neither new nor non-obvious. That is, the invention was already known or available before the patent application was filed.

The use of IPRs to challenge patents has become a fad of sorts in recent years. The increase in IPRs has led to challenges concerning the constitutionality of PTAB proceedings to review and invalidate issued patents.

In 2018, the Supreme Court settled many questions concerning the constitutionality of the PTAB’s and the Patent and Trademark Office’s (“PTO”) authority to adjudicate and cancel patents using post-examination proceedings.[i] The Court held that patents are a public right granting a public franchise and IPR “is simply a reconsideration of that grant.”[ii] But the Court specifically limited the ruling to the constitutional challenges raised under Article III or the Seventh Amendment.[iii] Whether IPR is constitutional under the Fifth Amendment Takings Clause remains an open question.

The Takings Clause provides that “private property [shall not] be taken for public use without just compensation.”[iv] So how does the Takings Clause fit into intellectual property rights, specifically IPR invalidation of patents?

To shed some light on this issue and how the Supreme Court should resolve the question, this article summarizes how courts have interpreted challenges brought under the Fifth Amendment in non-patent intellectual property cases, such as copyrights, trademarks, and trade secrets. It will then provide a short discussion of challenges to the constitutionality of hunting license regulations and how they are instructive in considering the constitutionality of the IPR process. Finally, this article will conclude with a discussion of two cases currently moving through the court system which raise the question of whether invalidation of patents through an IPR is an unconstitutional regulatory taking under the Takings Clause.

Before continuing, it is important to note that courts analyze a regulatory takings challenge first by determining whether the property interest is subject to the Takings Clause, and, if so, through a three-part test known as the Penn Central factors.[v] These factors are the economic impact of the regulation, interference with reasonable investment-backed expectations, and the character of the government action.[vi] In most cases the economic impact and character of the government action lean in favor of finding a taking; it is the type of property interest involved or the investment-backed expectations which are often the deciding factor. The following cases follow this analysis, but the discussion is limited to the relevant factor in each case.

Copyright Regulations

In 2016, the United States District Court for the Central District of California reconciled the coexistence of copyright regulations and the Takings Clause.[vii] In Estate of Graham v. Sotheby’s, 178 F.Supp. 3d 974 (2016), art auction houses challenged a California statute granting artists five percent of future profits from the resale of their artwork as an unconstitutional taking. The court noted that a plaintiff must first demonstrate that they have a constitutionally protected property interest before a claim under the Takings Clause can be evaluated.[viii]

The state regulation under review reallocated property interests between copyright holders and downstream distributors, “a practice that constitutes the very foundation of intellectual property law . . . [and] dates as far back as 1710.”[ix] The founding fathers contemplated the exclusive rights of authors and inventors. They believed these rights were so important that they authorized Congress to create legislation to secure exclusive rights to authors and inventors for their respective works.[x]

The court held that the state regulation did not affect a constitutionally protected property interest because it simply did “what the Copyright Act has done for over a century: it transfers certain interests in intellectual property from downstream owners to original artists.”[xi] Thus, the auction houses “never possessed property interests in the entire resale value of the artwork they purchased” and the statute’s “redistribution of that interest is not an infringement on traditional property rights; instead, it is a valid regulation of intellectual property that has been practiced for hundreds of years.”[xii]

Patent law and the grant of patents likewise have a long history concerning intellectual property rights. However, there is an important distinction. In Sotheby’s, the auction houses did not have a property interest beyond the painting as an article. The original property rights were still vested in the original artists. Whereas a patent has always granted an exclusive property interest in the holder. This is an important distinction because patents create property rights more akin to those protected under the Takings Clause.

Trademark Registration

Another district court case helps shed light on the takings analysis. In the Eastern District of Virginia, the court in Pro-Football, Inc. v. Blackhorse, 112 F.Supp. 3d 439 (E.D. Va. 2015), clarified that trademark registration differs from patents and other property interests.

In this case, the Washington Redskins claimed that the invalidation of their trademark registration was a taking.[xiii] However, the court determined that “a trademark registration does not constitute a property interest under the Fifth Amendment”[xiv] and, therefore, is not a taking. The theory is that the government is not taking the use of the trademark, only the registration of that trademark. This distinction is significant because simply invalidating the registration did not take a property interest protected under the Takings Clause.[xv]

This case highlights the importance of “loss in economic value” in a takings analysis since the court noted that a trademark owner did not lose the use of the trademark. The loss of a patent can mean the loss of all or most of the value of an invention, whereas the loss of a trademark registration still allows for use and common law protection.

Notably, there are differences in the rights granted trademarks and patents because they do not share the same underlying purpose. Patents encourage innovation, whereas trademarks protect consumers from deception and confusion. While there are similarities to the exclusions offered to both patents and trademarks, the question of whether there is actually a substantial loss in economic value (i.e., an economic impact of the regulation) makes the comparison less persuasive.

Trade Secrets

In Ruckelshaus v. Monsanto, 467 U.S. 986 (1984), Monsanto submitted testing data and other trade secrets to the Environmental Protection Agency (“EPA”) to obtain approval for various insecticides.[xvi] Subsequently, after a series of legislative amendments, the EPA was authorized to make data submitted in support of approvals available to the public. Monsanto sued the EPA and asserted that the publication of its data was an unconstitutional taking. The Court held that publication of the data submitted to the EPA constituted a taking of property for which the government must pay just compensation. However, the Court limited the taking to data submitted prior to implementation of the regulation in question.[xvii]

The Monsanto Court made clear that as long as an applicant has knowledge of the regulatory conditions under which data are provided to the EPA, the “voluntary submission of data by an applicant in exchange for the economic advantages of a registration can hardly be called a taking.”[xviii] Therefore, the regulatory scheme governing EPA approvals does not interfere with an applicant’s reasonable investment backed expectations.

The rights granted to Monsanto by the EPA bear a strong resemblance, in the context of establishing a regulatory taking, to the rights granted by a patent. Patents have always been subject to federal regulations set forth by the PTO, just as approvals for pesticides have always been contingent on regulations promulgated by the EPA. This comparison becomes relevant because Monsanto is the only intellectual property related case to reach the Supreme Court on the question of the Takings Clause.

Hunting License Regulations

Government granted licenses provide a comparison between how courts analyze property interests and how the courts view the importance of a regulation’s “interference with reasonable investment-backed expectations” under the takings analysis. In Kafka v. Montana Department of Fish, Wildlife and Parks, 201 P.3d 8 (2007), the Montana Supreme Court held that the change in requirements for a Game Farm License (“GFL”) did not constitute a taking.[xix] Appellants were owners of alternative livestock game farms. Following radical changes to the statute governing GFLs, the game farm owners were no longer able to charge hunters to shoot alternative livestock on their game farms. The changes in the licensing statute eliminated the farmers’ most profitable use of alternative livestock, but not all uses.

The court stated that some licenses may implicate property interests, but the one at issue was a “mere privilege.”[xx] Furthermore, in order to qualify as a compensable property interest, “the Licenses must be transferable, exclusive, and free of any ‘express statutory language precluding the formation of a property right . . .’”[xxi] Although the statute did not contain express language disclaiming a property interest, they did “put the holder on notice that continued compliance with applicable laws and regulations is required for maintenance of the License.”[xxii] Perhaps the most important point to take from this case is the court’s focus on the fact that hunting and gaming is a highly regulated industry, which puts licensees on notice that the regulations were subject to changes.

Although patents are transferable, exclusive, and free of language disclaiming a property interest, they are subject to similar regulatory compliance standards. A patent grant has depended on statutory compliance since the original Patent Act of 1790. And since the Patent Term Restoration Act of 1981, the grant of a patent has been contingent on post-grant proceedings. Moreover, there is a long history of regulation and periodic changes in patent regulations, which put a patent holder on notice that this is a highly regulated field subject to statutory changes.

Unlike hunting regulations, patents are likely to provide holders with a compensable property interest. But similarly to the regulations in Kafka, history “put[s] the holder on notice” of the need to comply with changes in regulations. Therefore, patent holders are unlikely to establish a regulation’s interference with reasonable investment-backed expectations under a takings analysis.

IPRs and the Takings Clause

The Supreme Court has not addressed the constitutionality of IPRs, but there are two recent lower court cases which have addressed this issue. The most recent case was decided by the United States Court of Appeals on July 30, 2019. This case provided the first post-AIA opinion from the Court of Appeals on whether invalidation through an IPR proceeding constitutes a taking.[xxiii]

In Celgene Corp. v. Peter, No. 2018-1171, 2019 U.S. App. LEXIS 22517 (Fed. Cir. July 30, 2019), the PTAB found Celgene’s claims were obvious and invalidated two of Celgene’s patents. The court agreed with the PTAB’s position that “a valid patent is property for purposes of the Takings Clause.”[xxiv] This confirms long standing Supreme Court decisions holding that patents are a private property interest subject to the Takings Clause.

Celgene’s main contention was that because IPRs did not exist prior to the enactment of the AIA, subjecting their pre-AIA patents to an IPR “interfere[d] with its reasonable investment-backed expectations ….”[xxv] The court stated that pre-AIA inter partes reexamination was available since 1999 and ex parte reexamination since 1980. Both of these procedures allowed third party reexamination of an issued patent. Furthermore, the validity of a patent is, and has always been, subject to challenge in a district court.

Although IPRs are the newest version of reexamination, it does not “differ sufficiently from the PTO reconsideration avenues available when the patents were issued to constitute a Fifth Amendment taking.”[xxvi] The court acknowledged the differences, but gave greater weight to how the procedures are similar in purpose and substance. Moreover, the court restated the Supreme Court’s characterization of “district court challenges, ex parte reexaminations, and IPRs as different forms of the same thing – reexamination.”[xxvii] Finally, the court held that retroactive application of IPR proceedings to pre-AIA patents is not an unconstitutional taking because “pre-AIA patents were granted subject to existing judicial and administrative avenues for reconsidering their validity.”[xxviii]

Conversely, in Christy v. United States, 141 Fed. Cl. 641 (2019), the Court of Federal Claims held that patents are not “property for purposes of the Takings Clause.”[xxix]  Christy sued the United States when18 of their claims were invalidated following an IPR proceeding. Christy asserted that “‘each of [its] property rights in the invalidated claims . . . were taken by the federal government for public use . . . .”[xxx]

The Christy court began by discussing Zoltek Corp. v. United States, 4442 F.3d 1345 (2007), to determine whether a patent is property under the Takings Clause. In Zoltek, the circuit court rejected the idea that patent rights are property interests under the Fifth Amendment because property rights are created from state law and patents are created by federal law.[xxxi] The Zoltek court cited a case from 1894 and legislative history to support its holding that “Congress has not expressed any intent that patent rights may be the subject of Takings Clause claims. Since patent rights derive wholly from federal law, Congress is free to define those rights . . . as it sees fit.”[xxxii]

The court disagreed with Christy’s assertion that Oil States v. Greene’s Energy Group, 138 S.Ct. 1365 (2018), acknowledged that patents are property under the Takings Clause. Instead, the court asserted that the Supreme Court did not take a position on whether patents are property for Takings Clause purposes. Rather, the Court characterized patents as a “public franchise,” with “attributes of personal property.”[xxxiii] This led the Christy court to hold that patent rights are not cognizable property interests for Takings Clause purposes.[xxxiv]

The Christy opinion seems to go against established Supreme Court precedent. Specifically, the opinion in Oil States refers to patents as a “public franchise” in the sense that Congress has the power to allow judicial review outside of an Article III court. The Court in Oil States explicitly stated that their “decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.”[xxxv]

Conclusion

With the contradiction between opinions in Celgene v. Peter and Christy v. United States, it is likely that the Supreme Court will need to answer this question in the near future to solve this circuit split. The Court will likely follow precedent in finding that patents are private property subject to the Takings Clause.

However, because of the similarities between the pre-AIA inter partes reexamination and the AIA implemented IPR, it is unlikely the Court will find a change of expectations. Without a change of expectations which rises to the level of disrupting reasonable investment-backed expectations, it is unlikely a taking under the Fifth Amendment will be found.

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[i] Oil States Energy Servs., LLC v. Greene’s Energy Grp., LLC, 138 S.Ct. 1365 (2018).

[ii] Id. at 1373.

[iii] Id. at 1379.

[iv] U.S. Const. amend, V.

[v] Penn Cent. Transp. Co. v. New York City, 438 U.S. 104 (1978).

[vi] Id. at 124.

[vii] Estate of Graham v. Sotheby’s, Inc., 178 F.Supp. 3d 974 (2016).

[viii] Id. at 991.

[ix] Id. at 994.

[x] Id.

[xi] Id.

[xii] Id.

[xiii] Pro-Football, Inc. v. Blackhorse, 112 F.Supp. 3d 439, 469 (E.D. Va. 2015).

[xiv] Id. at 467.

[xv] Id. at 489.

[xvi] Ruckelshaus v. Monsanto, 467 U.S. 986 (1984).

[xvii] Id. at 1006-07.

[xviii] Id. at 1007.

[xix] Kafka v. Mont. Dep’t of Fish, Wildlife & Parks, 201 P.3d 8 (2007).

[xx] Id. at 20.

[xxi] Id. at 22.

[xxii] Id.

[xxiii] Celgene Corp. v. Peter, No. 2018-1171, 2019 U.S. App. LEXIS 22517 (Fed. Cir. July 30, 2019).

[xxiv] Id. at 26.

[xxv] Id.

[xxvi] Id. at 30.

[xxvii] Id. at 32.

[xxviii] Id. at 29.

[xxix] Christy v. United States, 141 Fed. Cl. 641, 650 (2019).

[xxx] Id. at 657.

[xxxi] Id. at 658.

[xxxii] Id. at 658.

[xxxiii] Id. at 659.

[xxxiv] Id. at 660.

[xxxv] Oil States Energy Servs., 138 S. Ct. at 1369.

By Alexandra Hodson

Although the title of this article may insinuate that we will be delving into SCOTUS’ recent decision in Iancu v. Brunetti,139 S. Ct. 2294 (2019)—a landmark case in which the Supreme Court invalidated the Lanham Act’s bar on federal registration of “scandalous” trademarks (a riveting matter, indeed!)—the focus of this discussion involves a different, but equally exciting, dirty word in the trademark realm: Infringement (gasp!).

The Scenario: Our Journey Begins with A Flood of Inspiration

Join me in fantasyland for a moment. Let’s pretend that, instead of being the successful, well-respected lawyer that you are, you’re an eager entrepreneur looking to disrupt an industry (you can be both if you want. #fantasyland). Recently, while you were bored on a flight,[i] you scrolled through your news feed and came upon a study concluding that 80% of marriages end over toilet seat disputes.[ii] This piqued your interest. You did more research and learned that germs under toilet lids are adapting into colonies of toxic super bugs resilient enough to survive a nuclear blast, and that, due to poor handwashing, these quiet killers are spreading at an alarming rate.

Being the innovator that you are, you decide to take the plunge and give that age-old toilet design an edgy facelift. So, you set out to create your modern toilet masterpiece. After months of trial and error, the product of your efforts is a veritable work of art. The seat is crafted from stainless steel[iii] to ward off germs. It has a warming mechanism and a germ-resistant non-stick coating for comfort. The lid is also stainless steel, and on it, you’ve integrated a light sensor. The sensor is connected to a mechanism in the hinge, so that when the light comes on in the restroom, the lid lifts up.

But that’s not all! You’ve also incorporated a button into the light switch that causes the toilet seat to retract when so desired.[iv] When the light is turned off, the seat, if retracted, returns to its original position, the lid closes, and the toilet flushes itself. Voila! You’ve basically saved the world. You dub this contraption the Light-n-Up Deluxe™ brand toilet[v] and begin advertising right away.

After several years pass, and you’ve spent many thousands of dollars on marketing and promotion, your pipe dreams are finally being realized. You have various small-scale operations selling your product and a potential contract with a big-name store in the works. It’s smooth sailing from here…or so you think.

The Trouble: A Rival Attempts to Unseat You from Your Throne

Out of the blue, you receive a nastygram in the mail. A company in the Midwest has revolutionized the toilet paper industry by manufacturing TP—as the kids call it—from clouds[vi] (yes, absurd, but doesn’t that sound nice?). It recently caught wind of you and claims that your use of Light-n-Up Deluxe™ for toilets is infringing its federally-registered trademark, Light’n Up Luxury®, for personal hygiene tissues.[vii] It demands that you cease and desist your use immediately, but graciously provides you with an opportunity to dump your existing product within “a reasonable time.” What are you to do?

First and foremost, don’t panic. Trademark infringement is a legal conclusion that involves consideration of multiple factors. Thus, just because you’ve been accused of infringement by some hufflepuffs four states away does not ipso facto mean that you are infringing their mark. On the other hand, don’t dismiss their warning—they may have a valid legal claim against you. An examination of the infringement factors will help you assess whether to fight or take flight[viii] in this situation.

Testing for Infringement

Trademark law serves the dual purpose of protecting consumers from unintentionally—key word here—buying low-quality knock-offs while simultaneously protecting trademark holders from losing profits and goodwill at the hand of imitators.[ix]

Typically, two things are considered when assessing whether trademark infringement has occurred: (1) is the allegedly infringed mark a valid trademark—e.g., is Light’n Up Luxury a true source indicator of their “personal hygiene tissues,” or is it merely descriptive of the product?; and (2) are consumers likely to be confused about the origin of the alleged infringer’s product—e.g., will consumers see the toilet with your mark on it and believe that it is sold by your TP-selling adversary?[x] This second prong is creatively termed the “likelihood of confusion” test.

Although different jurisdictions have adopted their own methods of analyzing whether consumers are likely to be confused, the various tests are comprised of multiple factors and essentially embody the same concepts. For an example, see the factors from the Ninth Circuit.

Factors from the Ninth Circuit
The test from the Ninth Circuit includes the following eight factors:

(1) strength of the mark;
(2) proximity of the goods;
(3) similarity of the marks;
(4) evidence of actual confusion;
(5) marketing channels used;
(6) type of goods and the degree of care likely to be exercised by the purchaser;
(7) defendant’s intent in selecting the mark;
(8) and likelihood of expansion of the product lines.[xi]

While “some factors—such as the similarity of the marks and whether the two companies are direct competitors—will always be important,”[xii] others are given more or less weight depending on the context.[xiii] For instance, where products compete in the market, similarity of the marks is key.[xiv] However, “[w]hen the goods are related, but not competitive, several other factors are added to the calculus.”[xv]

Applying the Test to Your Scenario

For this exercise, we’ll assume that the TP maker’s mark is valid.[xvi] As a result, we must analyze the likelihood of consumer confusion as to the source of your product. We’ll do so using the Ninth Circuit’s factors. Because the products do not compete (even in fantasyland), we need to address factors other than just similarity of the marks.

For purposes of brevity, let’s say that we already know that your respective marketing channels are distinct and that there’s no evidence of actual confusion that they are the source of your product. Their mark is likely suggestive or arbitrary[xvii] so let’s assume it’s relatively strong (boooo, hiss. Strong marks are afforded greater protection). Now, we’ll assess the remaining factors to determine the likelihood of confusion in this scenario, beginning with similarity of the marks.

“Similarity of the marks is tested on three levels: sight, sound, and meaning.”[xviii] In assessing this factor, the marks “must be considered as they are encountered in the marketplace.”[xix] As a refresher, the marks at issue here are Light-n-Up Deluxe™ in relation to toilets and Light’n Up Luxury® in relation to toilet paper.[xx] Although the meanings of the marks arguably differ, and they are most likely not encountered near each other in the marketplace, they look and sound very similar. As a result, this factor will likely weigh against you. Not great so far.

The next factor we’ll address is proximity of the goods. The more related the goods are, the more likely consumers will be confused as to source, especially if the products are used together.[xxi] TP and toilets are like biscuits and gravy—you don’t always get one with the other, but it’s good when you do. Thus, because the products are complementary, this factor will also likely weigh against you.

Regarding the type of goods and degree of customer care, the more important or expensive the goods are, the more discerning a purchaser will likely be in the brand they choose.[xxii] TP is generally a low-ticket item; however, if you had a dollar from every person who’s had an unfortunate encounter with subpar toilet paper, you wouldn’t be selling toilets for a living. Thus, considering that the price of your high-end commodes is roughly $1,000 (can you even put a price on saving the world, though?), and that choosing which TP to purchase is a crucial decision, we’ll conclude that consumers have heightened spidey senses regarding brand choice both when purchasing toilets and the corresponding tissue. As a result, confusion as to source is less likely, and this factor will likely weigh in your favor.

Next, let’s address your intent in selecting the mark. This one’s easy. You certainly did not mean to capitalize on the efforts of those hufflepuffs; you didn’t even know they existed! They’d be hard-pressed to prove otherwise. Thus, this factor will likely weigh in your favor as well. Two for two, now.

Although things are looking a bit bleak, you have an ace up your sleeve. “Even where the . . . factors weigh in favor of the movant, . . . territorial divisions may prevent confusion.”[xxiii] Thankfully, you operate only in the Northwest while they operate exclusively in the Midwest, so consumer confusion is likely non-existent. Bada bing bada boom, you’re good to go, right?! Not so fast. We need to analyze one more factor to determine whether you can continue in your Light-n-Up Deluxe™ toilet-selling bliss—the likelihood of expansion factor.

Under the likelihood of expansion factor, “a ‘strong possibility’ that either party may expand his business to compete with the other will weigh in favor of finding that the present use is infringing.”[xxiv] “The question is whether the parties are likely to compete with a similar product in the same market.”[xxv] This factor is also relevant where products are closely related and one party plans to expand into the other’s geographic area, as confusion is more likely in that circumstance as well. Turning to your quandary: You’re not about to start selling toilet tissue, but if that big-name company you’re planning to sign a contract with will be selling your product in the Midwest, you may be in hot water. Lucky for you, they only run brick and mortar stores in your region and have the online presence of a luddite.

However, if those TP sellers can demonstrate imminent entry into your area or legitimate effort to break into the toilet game, your hopes and dreams may be flushed.[xxvi] Because we want your story to have a happy ending, let’s say that they admit they have no intention of moving into your market or selling your product, now or in the future. Phew—our adventure has ended! You can wipe the sweat from your brow and tell them to kindly put a lid on it.

The End: Getting a Handle on What We’ve Learned

What can we take away from this whirlwind experience? Perhaps most apparent from this scenario is that due diligence is key both when choosing a trademark and when deciding whether to expand into other markets once a trademark is established. It’s well worth the cost to conduct a thorough clearance search to avoid valid infringement claims or quashed hopes of expansion down the road.

Further, federal registration is highly recommended, as it provides perks such as the exclusive right to use the mark in connection with the goods, a presumption that the mark is valid, and the ability to license or assign the mark, among other benefits.

Finally, as in most circumstances, strength is a good thing. The more removed a mark is from describing the product (or service) the stronger it is, and the greater protection it will receive. Indeed, if a mark is too descriptive, it won’t qualify for trademark protection at all. Thus, never simply “call it as you see it” in the trademark realm—“pie” cannot be a trademark for pie, no matter how you slice it.

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[i] Hogwash, of course. A productive and zealous advocate such as yourself would never be bored in such a circumstance.

[ii] This statistic is complete fiction. However, a quick search for “marriage fights over toilet seat” is surprisingly fruitful and entertaining.

[iii] Polished steel, obviously, for aesthetic appeal. You’re not a robot.

[iv] It’s pliable…don’t ask questions.

[v] A little weak for a TM, if you ask me—you’re basically just describing what it does. See AMF Inc. v. Sleekcraft Boats, 599 F.2d 341, 349 (9th Cir. 1979).

[vi] Not the dark and stormy kind—the light and fluffy variety in which one envisions hearts and teddy bears.

[vii] They’ve not only registered their mark, but they’re also the senior user. Thus, they have priority. Shucks!

[viii] Not literal flight—we’re not in Neverland, after all.

[ix] See Qualitex Co. v. Jacobson Prod. Co., 514 U.S. 159, 163–64 (1995). “[T]rademark law. . . quickly and easily assures a potential customer that this item—the item with this mark—is made by the same producer as other similarly marked items that he or she liked (or disliked) in the past.” Id. “At the same time, the law helps assure a producer that it (and not an imitating competitor) will reap the financial, reputation-related rewards associated with a desirable product.” Id. at 164.

[x] Gordon v. Drape Creative, Inc., 909 F.3d 257, 264 (9th Cir. 2018).

[xi] Id. at 264 n.6 (quoting S. California Darts Ass’n v. Zaffina, 762 F.3d 921, 930 (9th Cir. 2014)). These are also known as the “Sleekcraft” factors, which were announced in AMF Inc., 599 F.2d at 351. Other circuits have adopted a test that closely resembles that of the Ninth Circuit. See Guthrie Healthcare Sys., 826 F.3d at 37; Arrowpoint Capital Corp. v. Arrowpoint Asset Mgmt., LLC, 793 F.3d 313, 319 (3d Cir. 2015). Although courts rarely seem to stray from the listed factors in their analyses, the lists are non-exhaustive. See Guthrie Healthcare Sys., 826 F.3d at 37; Arrowpoint Capital Corp., 793 F.3d at 319; Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137, 1145 (9th Cir. 2011).

[xii] Brookfield Commc’ns, Inc. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1054 (9th Cir. 1999).

[xiii] Id. (“Some factors are much more important than others, and the relative importance of each individual factor will be case-specific. . . . [I]t is often possible to reach a conclusion with respect to likelihood of confusion after considering only a subset of the factors.”). Further, “satisfaction of the likelihood-of-confusion standard requires a ‘probability of confusion, not a mere possibility.’ ” Guthrie Healthcare Sys., 826 F.3d at 37 (quoting Starbucks Corp. v. Wolfe’s Borough Coffee, Inc., 588 F.3d 97, 115 (2d Cir. 2009)).

[xiv] AMF Inc., 599 F.2d at 348.

[xv] Id. (footnote omitted).

[xvi] Notably, federal registration of a mark “is ‘prima facie evidence that the mark is . . . valid (i.e., protectable), that the registrant owns the mark, and that the registrant has the exclusive right to use the mark in commerce.’ ” Guthrie Healthcare Sys., 826 F.3d at 37 (quoting Lane Capital Mgmt., Inc. v. Lane Capital Mgmt., Inc., 192 F.3d 337, 345 (2d Cir. 1999)).

[xvii] We won’t wade through the specifics here, but see AMF Inc., 599 F.2d at 349, for what those terms entail.

[xviii] AMF Inc., 599 F.2d at 351.

[xix] Id.

[xx] The ™ symbol may be used on non-registered marks, while ® may only be used on federally-registered marks.

[xxi] Restatement (First) of Torts § 731 cmt. c. (1938). “[I]f the two kinds of goods are used together, such association is more expectable than when they are used separately for different purposes. Pancake flour and maple syrup are likely to be associated with one source more readily than pancake flour and women’s shoes.” Id.

[xxii] Brookfield Commc’ns, Inc., 174 F.3d at 1060.

[xxiii] Russell Rd. Food & Beverage, LLC v. Spencer, No. 2:12-CV-01514-LRH, 2013 WL 321666, at *2 (D. Nev. Jan. 28, 2013).

[xxiv] AMF Inc., 599 F.2d at 354 (quoting Restatement (First) of Torts § 731(b) & cmt. c). “When goods are closely related, any expansion is likely to result in direct competition.” Id.

[xxv] Official Airline Guides, Inc. v. Goss, 6 F.3d 1385, 1394 (9th Cir. 1993).

[xxvi] See Russell Rd. Food & Beverage, LLC, No. 2:12-CV-01514-LRH, 2013 WL 321666, at *3. “Likelihood of entry denotes an immediate, impending entry of the federal registrant into the junior user’s territory.” Id. (quoting 5 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 26:33 (4th ed. 2012)). “For instance, a federal registrant may prove that it has leased premises and is ready to begin sales, or that it has licensed the mark for the disputed territory.” Id.

By David E. Kerrick

I first wanted to be a lawyer sometime between 1957 and 1966. It was during this time that I was introduced to perhaps the greatest lawyer of all time, Perry Mason. Perry came into our house once a week on our black and white TV screen and captured my imagination completely.

Perry was a sole practitioner but never worked alone. He was assisted by two side-kicks, his beautiful secretary, Della Street, and his suave investigator, Paul Drake. Between the two of them, the critical piece of evidence was always delivered to Perry in the courtroom just in the nick of time. Perry would then cross-examine a confession out of the witness or the real killer would sometimes emerge from the gallery in tears knowing they had been caught.

Perry’s nemesis was Hamilton Burger, the Los Angeles District Attorney. Mr. Burger was assisted by the LAPD and, in particular, one senior officer, Lieutenant Tragg. Burger and Tragg always had, at the beginning of the episode, an undisputable circumstantial case against Perry’s client. But by the end of the hour, Perry and his team would present, in open court, the exonerating evidence, which always, coincidentally, provided Burger and Tragg with the identity of the person they should have been prosecuting.

Perry and Burger were superb courtroom gladiators who picked their words perfectly and effortlessly. They were great masters of the spoken English language. They could each deliver a good zinger, but there was never any comment personally against the other lawyer. Always showing the utmost respect for one another and the Court.

Burger lost graciously every episode. You could tell, though, that just one time he would like to beat the famous Perry Mason. Burger’s consolation was that Perry would make justice happen. The wrongfully accused was released and Burger now had the real killer.

Perry and Della were single, I guess. There was never any mention of spouses or children.

I would imagine to myself, sometimes, that they would make a couple, but it never happened. Perry was absorbed in his work 24/7 and Della had to assist him at the same intensity. There was never time for romance.

There were lots of cocktails and cigarettes, and Paul Drake smoked more cigarettes than anyone I have ever seen. He made it look so very cool. He was always in a suit but somehow able to blend with the witnesses that he interviewed and get the information Perry needed.

There was a different villain for every episode, the real killer. Among the regular cast, however, Lieutenant Tragg was something of a villain. He was quite zealous in his work and was always convinced that Perry’s clients deserved the gallows. Until, of course, the truth was revealed in the end.

As practicing lawyers, we can learn many lessons from Perry Mason.

Law Office Management

It is best to just take one case at a time. The phone in Perry’s office does not ring all day long, never do people drop in wanting to know when their project will be done. He is able to fully focus, finding justice for one innocent accused per week.

Wellness

Perry is always cool and collected. And despite all of the pressure that seemingly must be hanging over him, he never needs a vacation. Perry works every day, every evening, and every weekend. I assume he even works on holidays. The secret to wellness, apparently, is to not have a spouse, children, a home life, or personal obligations outside the office.

Succession Planning

When you take one case at a time, you don’t need a succession plan because when you go down there won’t be a hundred loose ends left up in the air.

Civility

The key to Perry’s success at always remaining civil is that he never litigates cases with idiots. His trials are always against the next best lawyer in town, a zealous adversary with impeccable diction and professional demeanor. In the courtroom, it then becomes a competition to see who will be the most articulate and respectful advocate. Never let them see you sweat or vent anger.

Attorney’s Fees

I never saw Perry Mason extract a fee from any of his clients. It never occurred to me at my young age that Perry would need money to pay his office rent and his help. All of that must have just happened by osmosis. The lesson here is that if you work on significant matters for significant people, the money will take care of itself. Don’t trouble yourself with billable hours.

Lawyer Advertising

Perry never advertised. It seemed that everyone in Los Angeles would know when you find yourself wrongfully accused of homicide in the deepest possible legal hole, you know by reputation alone the man to see is Perry Mason – he’s your one shot at justice. When you win stunning victories in every front page case you take, people will find you.

When the Perry Mason series had its nine-year run on television, I was 6 to 15 years old. It is true that Perry Mason is a fictional lawyer, but the power of his courtroom performance and the important nature of his work started my first interest in law and lawyers. Later, I received other encouragement along the way from real lawyers, family members, and friends. But when I think back to the very beginning of my legal apprenticeship, it was under the tutelage of the greatest lawyer of all time, Perry Mason. Who wouldn’t want to be Perry Mason?

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