On Monday, November 8, 2021, Chris Kopitzke will lead a discussion of the Trademark Trial and Appeal Board’s ruling that reckless disregard satisfies the requisite deceptive intent to establish fraud on the USPTO, and the Ninth Circuit’s rejection of de minimus use by an infringer as a defense to the admitted copying of an entire work.

In Clutter, Inc. v. Great Management Group, LLC and Clutter, Inc. v. Great Concepts, LLC, 21 USPQ2d 1001 (TTAB 2021) [precedential], available here, the Trademark Trial and Appeal Board found that reckless disregard of the truth is sufficient to support a finding of fraud on the USPTO. In a consolidated case involving two oppositions and one cancellation, the Board cancelled a defendant’s trademark registration based on the filing of a false Declaration of Incontestability. The defendant’s attorney claimed to be unaware of the contents of the Declaration, including the assertion that “there is no proceeding involving [the registrant’s] rights pending” in the USPTO or in a court “and not finally disposed of,” and filed the Declaration when both a prior cancellation action and a civil action were pending. Neither the defendant nor its attorney corrected the false statement when they became aware of it, which also constituted fraud because they knew at that point that the USPTO had relied upon the misrepresentation in conferring a substantive benefit on the defendant to which it was not entitled.

In Bell v. Wilmott Storage Services, LLC, No. 19-55882 (9th Cir., September 9, 2021) [approved for publication], available here, a photographer filed suit alleging copyright infringement of a photograph he had taken of the Indianapolis skyline and which was made available without authorization on the defendant’s VisitUSA.com website. The district court granted summary judgment to the defendant on the basis of a de minimus “technical violation” defense, because the photo could only be reached via a pinpoint address or by reverse image search. The Ninth Circuit panel reversed and remanded on the ground that de minimus analysis should be applied at the point of deciding whether actionable copying of the plaintiff’s work occurred, not as a defense based on the extent of use by a defendant of concededly infringing material.

All are welcome to attend the program at 1:00 p.m. Pacific Time. To join the discussion, please RSVP via email to elisham @ socalip.com (remove the spaces, which have been inserted to thwart spammers) by noon the day of the program to obtain a video conference link. This activity has been approved for one hour of CLE credit.