This format, which was developed in consultation with users from the three regions, will simplify and streamline
application filing requirements in each Office to allow applicants to prepare a single application in the common application format for acceptance in each of the three Offices. . . .Implementation Status of the Common Application Format
EPO: The EPO is planning to implement the Common Application Format (CAF) in the beginning of 2009. Paper, PDF and XML format will be accepted.
JPO: The JPO is preparing for the introduction of the Common Application Format in early 2009, except that the sequence listing is a separate part of the description and that the request contains the number of the figure of the drawings which the applicant suggests should accompany the abstract are scheduled to be introduced in 2011.
USPTO: Current USPTO rules and procedure are consistent with the Common Application Format. While some of the requirements of the Common Application Format go beyond what the USPTO requires, the USPTO will accept an application in the Common Application Format.
Example Format
The following is an example of a patent application format which complies with the Common Application Format. For legibility purposes, each heading is indented in this paper.
Description
Title of Invention
Technical Field
0001
Background Art
0002
Summary of Invention
Technical Problem
0003
Solution to Problem
0004
0005
Advantageous Effects of Invention
0006
Brief Description of Drawings
0007
Fig. 1
Fig. 2
Description of Embodiments
0008
Examples
0009
0010
Example 1
0011
Example 2
0012
Industrial Applicability
0013
Reference Signs List
0014
Reference to Deposited Biological Material
0015
Sequence Listing Free Text
0016
Citation List Patent Literature
0017
Non Patent Literature
0018
Claims
Claim 1
Claim 2
Abstract
Drawings
Fig. 1
Fig. 2
Sequence Listing
Relation of the Common Application Format to the PLT and PCT
The Common Application Format rationalizes divergent filing requirements applied in each of the Trilateral Offices. Noting that the Patent Law Treaty (PLT) has not yet come into force for any of the Trilateral Offices, some elements of the Common Application Format harmonize diverging filing requirements for national/regional applications filed in each of the Trilateral Offices by referring to the corresponding PCT provisions, which
would apply prior to the PLT coming into effect for all of the Trilateral Offices. Other elements of the Common Application Format address issues not regulated by the PCT for which the offices have different practices. Still
other elements pertain to issues that go beyond the PCT but, in terms of future development, represent what the offices consider to be appropriate means for addressing those issues.
For further information, please contact Diana Oleksa at 571-272-3291.
Under the doctrine of the equivalents, "a product or process that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if there is 'equivalence' between the elements of the accused product or process and the claimed elements of the patented invention." Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997) (citing Graver Tank & Mfg. Co. v. Linde Air Prods. Co., 339 U.S. 605, 609 (1950)). The doctrine of prosecution history estoppel prevents a patent owner from recapturing with the doctrine of equivalents subject matter surrendered to acquire the patent. See Festo IX, 344 F.3d at 1365 (citing Festo VIII, 535 U.S. at 741).
Because the three asserted independent claims were rewritten from dependent form and because the original independent claims were cancelled, there is a presumption of prosecution history estoppel. See Honeywell II, 370 F.3d at 1134. Nonetheless Honeywell may rebut that presumption with a showing that: (1) "the alleged equivalent would have been unforeseeable at the time of the narrowing amendment" or (2) "the rationale underlying the narrowing amendment bore no more than a tangential relation to the equivalent in question." Festo IX, 344 F.3d at 1369 (quoting Festo VIII, 535 U.S. at 741).
. . . The principle of foreseeability ties patent enforcement appropriately to patent acquisition. In making this connection, foreseeability reconciles the preeminent notice function of patent claims with the protective function of the doctrine of equivalents. Thus, foreseeability in this context ensures that the doctrine does not capture subject matter that the patent drafter could have foreseen during prosecution and included in the claims. The goal of the principle is to ensure that the claims continue to define patent scope in all foreseeable circumstances, while protecting patent owners against insubstantial variations from a claimed element in unforeseeable circumstances. The
foreseeability principle thus relegates the doctrine of equivalents to its appropriate exceptional place in patent enforcement.
This court must examine, on the basis of this record, whether the use of IGV position to detect high flow and low flow was later-developed technology and thus unforeseeable at the time of the amendments during the prosecution process. The timing of Sundstrand’s product development does not settle the issue. The record shows that Sundstrand developed its equivalent between 1991 and 1995, after the relevant amendments in 1982-83. The mere temporal relationship of the equivalent to the patent acquisition and amendment process, however, does not make the equivalent unforeseeable. The record shows that Sundstrand began using IGV position to control airflow within two months of observing the double solution problem, which suggests that the IGV solution may have been known (and foreseeable) in the art. The record also shows that Sundstrand refined this way of addressing the problem over the next four years—evidence susceptible to characterization as either showing difficulty in reaching the ultimate solution or showing the natural and foreseeable application of well-known principles.
However, Honeywell contends that the district court’s determination was clearly erroneous because in the 1982-83 time frame surge control systems did not use inlet guide vane position to ascertain the existence of high or low flow situations for surge control. Honeywell is correct that the systems in the 1982-83 time period did not use inlet guide vane position for this purpose, but it was known that the control of surge was important; that systems, such as the L1011 system, had been developed for that purpose; and that inlet guide vanes were routinely used in surge control systems and affected the air flow rate. For example, U.S. Patent No. 4,164,035 ("the Glennon patent"), issued in 1979, claims a surge control system and teaches that IGV position affects airflow rate. Honeywell’s expert, Mr. Muller, also testified:Q: In fact, going back to the 1970s, it was Honeywell’s understanding that in order to efficiently control surge, you would need to take into account inlet guide vane angle and input into your surge control
system. Correct?A: Well, by using this information you can incrementally improve the operation of a surge controller, yes.
The record also shows no technical barrier to the use of IGV position to determine air flow, as Honeywell’s corporate representative, James Clark, admitted. He confirmed that Honeywell "could have [] solved [the double solution problem] using inlet guide vane position" in the 1970s. Foreseeability does not require that the accused infringing product or process be foreseeable, nor that any equivalent exist at the time; rather foreseeability only requires that one of ordinary skill in the art would have reasonably foreseen the proposed equivalent at the pertinent time. Festo X, 493 F.3d at 1382.
Sunstrand’s expert, Dr. Japiksi, whom the district court found to be credible, concluded that it was "known or foreseeable to a person of ordinary skill in the
art in 1982 to use IGV position to determine whether the flow was high or low."
Based on this testimony and the record evidence described above, the district
court concluded that "measuring IGV position . . . is a reasonably obvious way –
both at present and in 1982-83 – to determine whether the APU is experiencing
high flow or low flow." Honeywell 2006-1602 15 III, 2006 U.S. Dist LEXIS
57030, at *17. This court finds no clear error in the district court’s conclusion.
The bill requires nearly every patent applicant to (1) search the prior art and (2) submit a search report and analysis to the USPTO with its patent application. . . . Mandatory AQSs would add unjustifiable expense to the filing of many patent applications, embroil applicants in disputes over what constitutes an adequate search or analysis of the prior art, and discriminate in favor of certain applicants who would be exempt from the AQS requirement. IPO believes the case has not been made that AQSs would be cost effective for improving patent quality.However, according to "Seeking Cost-Effective Patents," by Professor Thomas G. Field, Jr.,
Inventors should not try to save money by omitting prior art searches before filing applications. Given the difficulty and cost of marketing new products, inventors must not assume, just because a product seems to be commercially unavailable, that it is novel. True, patent examiners do searches after applications are filed, but dollar-wise inventors do not pay attorney and filing fees to have examiners tell them what they could learn much more cheaply.
"Patent quality should start with a focus on high quality search.” –-Ruud Peters, CEO of Philips Intellectual Property and Standards
"Quality patents start with a quality search.” -- Mark Adler, Chief IP Counsel, Rohm and Haas Company
“The process of quality examination begins with the applicant. Too little or too much
information both present serious challenges to examination quality, and both abuses are created solely by applicants. These abuses must be prevented if the system is to function properly for the benefit of the public.” -- USPTO Public Advisory Committee Report for 2007
While IPO supports meaningful inequitable conduct reform, such reform would not eliminate all of IPO's concerns over AQSs. AQSs would result in expensive litigation over inequitable conduct charges and charges of inadequate searches and analyses. The expense and risks of AQSs could deter filing of tens or hundreds of thousands of patent applications.And that's a bad thing asks the current Administration? In what appears to be a counterattack on the IPO, U.S. Secretary of Commerce Carlos M. Gutierrez sent a letter to members of the U.S. Senate on April 3, 2008 sharing the Administration’s thoughts on the Applicant Quality Submissions provision which it "beleives will prove to be the strongest step toward improved patent quality." According to yesterday's letter,
In any event, it appears that the USPTO won't have the last word on whether to require pre-filing patent searches. As noted by Judge Cacheris in permanently enjoining the United States Patent and Trademark Office from enacting the “Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications,” 72 Fed. Reg. 46,716-843 (Aug. 21, 2007)(to be codified at 37 C.F.R. pt. 1)(the “Final Rules”) under his decision in Tafas v. Dudas:The Administration strongly supports the AQS provision in the bill in its current form and believes that enactment will prove to be the strongest step toward improved patent quality. By reducing the number of poor quality and imprecise applications, applicant quality standards will result in dramatic reductions in patent pendency and backlog, as well as reduce the likelihood of excessive litigation. The current misalignment of information incentives slows and degrades the patenting process. . . .
The Administration also recognizes and supports statutory changes to the doctrine of inequitable conduct to support this provision. The inequitable conduct standard hould more clearly target actual fraud affecting the examination process and preserve judicial discretion in application of appropriate sanctions. However, the Administration strongly opposes any statutory changes to the doctrine of inequitable conduct in the absence of a strong provision requiring Applicant Quality Submissions. Applicant quality standards and inequitable conduct reform are inextricably linked. Diminishing the penalties for misrepresenting facts before the United States Patent and Trademark Office (USPTO) without also increasing the robustness of the process for eliciting quality information from applicants may lead to poorer quality pplications, in turn increasing the difficulty of conducting accurate examinations. Inequitable conduct reform alone, without Applicant Quality Submissions, would merely invite fraud on the patent system.
Sections 102 and 103 provide that “[a] person shall be entitled to a patent unless” the claimed invention lacks novelty or is obvious in view of the prior art, 35 U.S.C. §§ 102 and 103, and Section 131 states that the USPTO “shall cause an examination to be made of the application,” id. §131. The Federal Circuit has read these provisions as placing the burden of examination and the burden of proof to make a prima facie case of unpatentability on the USPTO. In re Warner, 379 F.2d 1011, 1016 (C.C.P.A. 1967). It is only after the USPTO makes a demonstration of unpatentability that the burden shifts to the applicant to rebut that showing. In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)(“[T]he examiner bears the initial burden, on review of the prior art or on any other ground, of presenting a prima facie case of unpatentability. If that burden is met, the burden of coming forward with evidence or argument shifts to the applicant.”). Thus, by requiring applicants like GSK and Tafas to perform prior art searches and by shifting the examination burden away from the USPTO, the ESD requirement manifestly changes existing law and alters applicants’ rights under Sections 102, 103, and 131. Applicants must now undertake new substantive responsibilities if they wish to file more than five independent or twenty-five total claims, which represents a significant departure from Section 112's rule of unlimited – though not unduly multiple – claims. For these reasons, the Court finds that Final Rules 75 and 265 are substantive rules. . . .
Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because the Final Rules are substantive innature, the Court finds that the Final Rules are void as “otherwise not in accordance with law” and “in excess of statutory jurisdiction [and] authority.” 5 U.S.C. § 706(2).
GSK, Tafas, and the USPTO make numerous arguments for summary judgment in their favor. After thorough examination of the parties’ briefs, the arguments of roughly two dozen amici curiae, and the extensive administrative record, the Court finds that the Final Rules are substantive in nature and exceed the scope of the USPTO’s rulemaking authority under 35 U.S.C. §2(b)(2). Consequently, the Court will grant summary judgment to GSK and Tafas and void the Final Rules as “otherwise not inaccordance with law” and “in excess of statutory jurisdiction[and] authority.” 5 U.S.C. § 706(2). In addition, because the Court believes that one who judges least judges best, it will notreach the other issues raised by the parties, resting instead onthe determination of a single dispositive issue.
. . . Despite the USPTO’s arguments, the Court finds that the Final Rules are neither procedural rules nor rules relating to application processing that have substantive collateral consequences, but substantiver ules that change existing law and alter the rights of applicants such as GSK and Tafas under the Patent Act. The 2+1 Rule and the5/25 Rule, which limit continuing applications, RCEs, and claims, and the ESD requirement, which shifts the examination burden onto applicants, constitute a drastic departure from the terms of the Patent Act as they are presently understood. By so departing, the Final Rules effect changes in GSK’s and Tafas’s existing rights and obligations. The Court will now explain why the provisions of the Patent Act compel this conclusion.
. . . Because the USPTO’s rulemaking authority under 35 U.S.C. § 2(b)(2) does not extend to substantive rules, and because [all of] the Final Rules are substantive in
nature, the Court finds that the Final Rules are void as “otherwise not
in accordance with law” and “in excess of statutory jurisdiction [and]
authority.” 5 U.S.C. § 706(2).
In [in Re Gilead Sciences, Inc.] an application was made for an SPC in respect of EP (UK) 0 915 894 and the combination of two antiretroviral compounds, namely tenofovir disoproxil and emtricitabine. Importantly, the second of these compounds was not mentioned anywhere in the '894 patent and the applicant therefore relied on claim 27, which covered "[tenofovir disoproxil] together with a pharmaceutically acceptable carrier and optionally other therapeutic ingredients" in support of its application. In deciding whether to grant the SPC, the question arose as to whether the combination product in question was "protected" by a basic patent in force, as is required by Article 3(a) of Council Regulation 1768/92.
Following the decision in Takeda Chemical Industries Ltd's SPC Applications (No.3) [2004] RPC 3, the Hearing Officer confirmed that what amounts to an infringement of the basic patent does not equate to what is protected by the basic patent. After all, although a claim to A will be infringed by a composition comprising the combination A + B, it would be a "sleight-of-hand" to say that the combination is protected by such a claim. What is protected is the A element of the combination. . . .
In this case the Hearing Officer held that the wording of claim 27 of the '894 patent, together with the priority date knowledge that antiretroviral compounds could be used in combination, was not enough to conclude that the '894 patent protected the combination of tenofovir disoproxil and emtricitabine. Accordingly, the SPC application was refused. The Hearing Officer went on to say that, in order for the combination product to be protected by a basic patent (and eligible for an SPC), the support for the product in the basic patent should "at least provide a clear pointer for the skilled reader in the right direction", although "it need not amount to the level of support that would be required to allow addition of a claim to the particular combination."
The agreement included a decision to reduce the international filing fee under the PCT by 5% (this means that the international filing fee will fall from 1,400 SFr to 1,330 SFr) and to increase the reduction from 75% to 90% for countries whose per capita national income is below US$3,000, as well as to Antigua and Barbuda, Bahrain, Barbados, Libyan Arab Jamahiriya, Oman, Seychelles, Singapore, Trinidad and Tobago and the United Arab Emirates. This fee reduction will be effective from 1 July 2008.But will the reduction in international filing fees for the poorest countries make any difference in international filing statistics? And what's up with Singapore? Like the IPKat, I thought that Singapore was doing too well for itself to accept that kind of ridicule. Are negotiated discounts now part of the WIPO budgetary process?
The US ambassador said in his plenary meeting statement that the US agreed to the budget after Idris informed senior staff that he would leave significant restructuring and promotions to WIPO’s senior management team, which has decided to defer such actions to the incoming director general. This could mean a significant delay in filling the 13 vacant director-level posts in WIPO, sources said. Some developed countries feared Idris would fill the posts before departing, making it potentially troublesome
for the next director general, they said.The United States also said the budget is transitional and will need to be revised at the next General Assemblies in six months to reflect agreed recommendations related to the WIPO Development Agenda, the PCT fee reduction, and decisions relating to staffing.
The resumed meeting served as a showcase for campaigners to be the next WIPO director general. Materials touting candidates’ credentials were distributed outside the room of the General Assembly, and candidates were on hand to chat and discuss the finer points of WIPO policy and management.
Like the PPH Programs already in place between the USPTO and the JPO, UKIPO,Under the PPH, an applicant receiving a report from either the USPTO or IP Australia with at least one patentable claim in an application may request that the other office accelerate the examination of the corresponding application. The applicant benefits from the patent offices using the work previously conducted by the other office, by obtaining corresponding patents faster and more efficiently.
CIPO & KIPO, this pilot PPH Program will allow an applicant with claims which have been indicated allowable in the US to fast-track the prosecution of corresponding claims in Australia. This new mechanism will be attractive to US clients who are (a) happy with the scope of protection indicated allowable in the USPTO, and (b) keen to fast-track prosecution of corresponding claims in the APO.
. . . a textbook case of when the asserted claims involve a combination of familiar elements according to known methods that does no more than yield predictable results. KSR, 127 S. Ct. at 1739. The only difference between the Gopher Zapper and the asserted claims, as conceded by Agrizap, is the type of switch used to complete the circuit that triggers the generator. The asserted claims simply substitute a resistive electrical switch for the mechanical pressure switch employed by the Gopher Zapper. As illustrated by the Dye and Madsen patents, the use of an animal body as a resistive switch to complete a circuit for the generation of an electric charge was already well known in the prior art. In favoring resistive switches over mechanical switches, both the Dye and Madsen patents are directed to solving the same problem as the ’636 patent—the malfunction of mechanical switches in environments prone to dirt and dampness. See ’746 patent col.1 ll.43-46, ll.53-63; ’809 patent col.1 ll.31-55.
In this case, the objective evidence of nonobviousness simply cannot overcome such a strong prima facie case of obviousness. Similarly, in Leapfrog Enterprises, Inc. v. Fisher-Price, Inc. we held that the objective considerations of nonobviousness presented in that case, including substantial evidence of commercial success, praise, and long-felt need, were inadequate to overcome a strong showing of primary considerations that rendered the claims at issue invalid. 485 F.3d 1157, 1162 (Fed. Cir. 2007). Based on the foregoing, we reverse the district court’s denial of Woodstream’s motion for JMOL as to the obviousness of the asserted claims.
As noted by Professor Crouch,. . . Aristocrat also argues that, even if there is no disclosure of an algorithm in the patent, the disclosure of a microprocessor with "appropriate programming" is a sufficient disclosure of structure for means-plus-function purposes, because the evidence showed that one of ordinary skill in the art could build the device claimed in the ’102 patent based on the disclosure in the specification. That argument, however, conflates the requirement of enablement under section 112 paragraph 1 and the requirement to disclose the structure that performs the claimed function under section 112 paragraph 6.
Although the examples given in the ’102 patent might enable one of ordinary skill to make and use the invention, they do not recite the particular structure that performs the function and to which the means-plus-function claim is necessarily limited.
Whether the disclosure would enable one of ordinary skill in the art to make and use the invention is not at issue here. Instead, the pertinent question in this case is whether Aristocrat’s patent discloses structure that is used to perform the claimed function. Enablement of a device requires only the disclosure of sufficient information so that a person of ordinary skill in the art could make and use the device. A section 112 paragraph 6 disclosure, however, serves the very different purpose of limiting the scope of the claim to the particular structure disclosed, together with equivalents. The difference between the two is made clear by an exchange at oral argument. In response to a question from the court, Aristocrat’s counsel contended that, in light of the breadth of the disclosure in the specification, any microprocessor, regardless of how it was programmed, would infringe claim 1 if it performed the claimed functions recited in the means-plus-function limitations of that claim. That response reveals that Aristocrat is in essence arguing for pure functional claiming as long as the function is performed by a general purpose computer. This court’s cases flatly reject that position.. . . Aristocrat was not required to produce a listing of source code or a highly detailed description of the algorithm to be used to achieve the claimed functions in order to satisfy 35 U.S.C. § 112 ¶ 6. It was required, however, to at least disclose the algorithm that transforms the general purpose microprocessor to a "special purpose
computer programmed to perform the disclosed algorithm." WMS Gaming, 184 F.3d at 1349. Because the district court correctly held that was not done in this case, we uphold the judgment of the district court.* * *
In this case, Aristocrat acknowledges that the only portion of the specification that describes the structure corresponding to the three functions performed by the "control means" is the statement that it is within the capability of a worker in the art "to introduce the methodology on any standard microprocessor base [sic] gaming machine by means of appropriate programming." ’102 patent, col. 3, ll. 2-4. That description goes no farther than saying that the claimed functions are performed by a general purpose computer. The reference to "appropriate programming" imposes no limitation whatever, as any general purpose computer must be programmed. The term "appropriate programming" simply references a computer that is programmed so that it performs the function in question, which is to say that the function is performed by a computer that is capable of performing the function.
Aristocrat offers two responses to the district court’s conclusion that the patent did not disclose sufficient structure. First, Aristocrat argues that the specification disclosed algorithms that were sufficient to constitute a qualifying disclosure of structure. Second, Aristocrat argues that no disclosure of specific algorithms was necessary in any event.
As to the first argument, Aristocrat contends that the language of claim 1 referring to "the game control means being arranged to pay a prize when a predetermined combination of symbols is displayed in a predetermined arrangement of symbol positions selected by a player" implicitly discloses an algorithm for the
microprocessor. That is, when the winning combination of symbols is displayed, the program should pay a prize. But that language simply describes the function to be performed, not the algorithm by which it is performed. Aristocrat’s real point is that devising an algorithm to perform that function would be within the capability of one of skill in the art, and therefore it was not necessary for the patent to designate any particular algorithm to perform the claimed function. As we have noted above, however, that argument is contrary to this court’s law.Aristocrat also points to language in claim 1 that, according to Aristocrat, "sets forth the mathematical equation that describes the result of practicing the third function." The language in question recites "defining a set of predetermined arrangements for a current game comprising each possible combination of the symbol position selected by the player which have one and only one symbol position in each column of the display means." The problem with Aristocrat’s argument is underscored by Aristocrat’s very characterization of the role of the equation: It describes the result of practicing the third function. That is, the equation is not an algorithm that describes how the function is performed, but is merely a mathematical expression that describes the outcome of performing the function. To be sure, as Aristocrat argues, the equation "restricts ‘appropriate programming’ to algorithms which result in the specified number of winning opportunities." But that argument simply concedes that the equation describes an outcome, not a means for achieving that outcome. The equation thus does not disclose the structure of the claimed device, but is only another way of describing the claimed function.
Finally, Aristocrat contends that "the written description delineates what constitutes ‘appropriate programming’ through the disclosed embodiments of the invention." Again, however, the description of the embodiments is simply a description of the outcome of the claimed functions, not a description of the structure, i.e., the computer programmed to execute a particular algorithm.
The algorithm missing from ATA’s disclosure is almost certainly within the ability of an ordinary game programmer. In fact, I believe that it would only take me (a law professor) only a few hours to create a rough algorithm showing how the ATA software program could operate. Judge Bryson shot-down that argument: “Structure for a means-plus-function element must be provided in the specification regardless of whether the structure is already well known in the art.”
"I read that some of the first groups that were persecuted by the Nazis were unions and liberals," Mr. Smith reportedly told Janet L. Conley of the Fulton County Daily Report. "I thought, 'Wow. Taking over the world, persecuting unions and liberals. Sounds like Wal-Mart.'" Wal-Mart spokesman John Simley reportedly would not discuss the case except to say that the company was still studying the ruling and that Smith's attempt to "commercialize the holocaust" was "unprecedented.". . . the juxtaposition of the similar and dissimilar—the satirical representation and the idealized image of Wal-Mart—conveys a scathing parody. In the “smiley eagle” Walocaust concept, the reference to the Holocaust and the image of the Nazi eagle clutching a smiley face at once portrays and contradicts the benign image that Wal-Mart portrays to the community. In the “SUPPORT OUR TROOPS” Wal-Qaeda concept, Smith transforms all-American “Wal-Mart” into the terrorist group “Wal-Qaeda” and satirically urges the viewer to support Wal-Qaeda’s troops, apparently
commenting both on what Smith considers to be Wal-Mart’s ruthless business tactics and its detrimental impact on the United States. Other concepts juxtapose Wal-Mart’s reputation for low prices with a reference to poor store security and the company’s family values imagery with the fact that it offers for sale inexpensive alcohol, tobacco and firearms—products known better for destroying families.The Court thus concludes that Smith’s concepts adequately evoke Wal-Mart while maintaining their differentiation, and they convey Smith’s satirical commentary; thus, they are successful parodies. See Louis Vuitton, 507 F.3d at 261. The finding that Smith’s concepts are parodies does not preclude the likelihood of confusion analysis, however; it merely influences the way the likelihood of confusion factors are applied. . . .
Evaluating the overall balance of the seven likelihood of confusion factors, the Court finds that Wal-Mart has failed to demonstrate a likelihood that its trademarks “WALMART,” “WAL-MART,” and “WALiMART” and its word mark “ALWAYS LOW PRICES. ALWAYS.” would be confused with Smith’s “WALOCAUST,” “WAL-QAEDA,” “FREEDOM HATER MART,” or “BENTONiVILLEBULLIES ALWAYS” concepts. In so finding, the Court concludes that factors three (similarity of the marks), five (similarity of sales methods) and six (similarity of advertising methods), weigh in Smith’s favor, with particular emphasis on how different the appearance and usage of the marks were and how vastly the parties’ advertising methods differed. The Court concludes that factors one (actual confusion), two (strength of the mark), four (similarity of product) and seven (Smith’s intent) favor neither party.
In sum, the Court is convinced that no fair-minded jury could find that a reasonable consumer is likely to be confused by the challenged marks. See Anderson, 477 U.S. at 252. As a result, the Court GRANTS summary judgment to Smith on Wal-Mart’s claims of trademark infringement, unfair business competition, cybersquatting and deceptive trade practices.
. . . A claim of dilution applies only to purely commercial speech. Mattel, 353 F.3d at 812. See also Bolger, 463 U.S. at 66-67 (finding that materials do not become “commercial speech” simply because the author had economic motivation to create them). “The question whether an economic motive existed is more than a question whether there was an economic incentive for the speaker to make the speech; the Bolger test also requires that the speaker acted substantially out of economic motivation.” Procter & Gamble Co. v. Amway Corp., 242 F.3d 539, 552-53 (5th Cir. 2001) (emphasis supplied). “Thus, for example, speech that is principally based on religious or political convictions, but which may also benefit the speaker economically, would fall short of the requirement that the speech was economically motivated” and therefore would be considered noncommercial. Id.
At least one court of appeals has specifically addressed whether a social advocate selling t-shirts that carried the group’s social message was engaging in noncommercial speech, despite the fact that the group sold the t-shirts to the public for profit. See Ayers v. City of Chicago, 125 F.3d 1010 (7th Cir. 1997). In Ayers, the court distinguished limitations on “the sale of goods that are not themselves forms of protected speech,” noting that precedent allows more restriction on sales of nonexpressive goods than it does on goods that are forms of protected speech. Id. at 1015. The court likened t-shirts carrying messages of social advocacy to “the
sandwich boards that union pickets sometimes wear.” Id. at 1014. As such,
the t-shirts were “a medium of expression prima facie protected by the free-speech clause of the First Amendment, and they do not lose their protection by being sold rather than given away.” Id. (citing Heffron v. Int’l Soc’y for Krishna Consciousness, Inc., 452 U.S. 640, 647 (1981)).The Court is convinced that a reasonable juror could only find that Smith primarily intended to express himself with his Walocaust and Wal-Qaeda concepts and that commercial success was a secondary motive at most. Smith has strongly adverse opinions about Wal-Mart; he believes that it has a destructive effect on communities, treats workers badly and has a damaging influence on the United States as a whole. He invented the term “Walocaust” to encapsulate his feelings about Wal-Mart, and he created his Walocaust designs with the intent of calling attention to his beliefs and his cause. He never expected to have any exclusive rights to the word. He created the term “Wal-Qaeda” and designs incorporating it with similar expressive intent. The Court has found those designs to be successful parodies.
Thus, Smith’s parodic work is considered noncommercial speech and therefore not subject to Wal-Mart’s trademark dilution claims, despite the fact that Smith sold the designs to the public on t-shirts and other novelty merchandise. Consequently, Smith’s motion for summary judgment on Wal-Mart’s trademark dilution claims is hereby GRANTED.
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