Our weekly SoCal IP Institute meeting on Monday, January 13, 2014 will be a discussion of trademark tacking and copyright expiration. Brief synopses appear below.
In Klinger v. Conan Doyle Estate, No. 13 C. 1226 (N. Dist. Ill. Dec. 23, 2013) (available here). Mr. Klinger sought a declaratory judgment that at least some of the Sherlock Holmes characters and story elements were in the public domain and freely available for use. The Conan Doyle Estate argued that the characters, at a minimum, were in development throughout the series, and therefore, could not yet be in the public domain. Because at least the pre-1923 character elements and stories had fallen out of copyright protection, the Northern District of Illinois applied the “increments of expression” rationale and found that the pre-1923 elements were available for use, while post-1923 story elements were not.
Hana Financial v. Hana Bank, No. 11-56678 (9th Cir. 2013) (available here). The Ninth Circuit affirmed the district court’s judgment after trial, that the properly-instructed jury was entitled to make the fact finding that the doctrine of tacking applied to establish the defendant’s priority as the first to use a trademark in the sale of goods or services. The tacking doctrine allows a party to “tack” the date of the user’s first use of a mark onto a subsequent mark to establish trademark priority, and thus ownership, where the two marks are so similar that consumers would generally regard them as being the same.
Regardless, the panel held that, while the evidence could be construed to support the plaintiff’s position, the plaintiff did not make the required showing, as the losing party in a jury trial, that its interpretation of the evidence was the only reasonable one. The panel further held that the jury received an instruction that correctly conveyed the narrowness of the tacking doctrine, and it could have reasonably concluded that the ordinary purchasers of the financial services at issue likely had a consistent, continuous commercial impression of the services the defendant offered and their origin.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, January 13, 2014 at Noon in our Westlake Village office. This activity is approved for 1 hour of California MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.