A few weeks back, as remote working and social distancing were becoming the order of the day (and interesting phrase, given what quickly became the norm in many US states and cities, as executive orders abounded), my son tossed a statement in my direction that was both compliment and challenge: “Isaac Newton developed calculus, among other discoveries and achievements, and Shakespeare may have written King Lear, during quarantine and social distance periods. You’re not them, but you’re pretty smart so I am expecting something.” Offering him this blog post, or some of the other things I have written or said in the last few weeks, is probably not what he had in mind. But it did get me thinking about what intellectual property lawyers and others can do, and have been doing, as we practice law in the time of COVID.
Some intellectual property owners, regulators, courts and lawyers have very directly stood at the cross-rounds of intellectual property rights, patents, and the pandemic.
For instance, AbbVie is a drug manufacturer that has announced that it would not enforce its patent rights for an HIV medication knows as Kaletra if it proves effective in combatting COVID-19. Numerous other pharmaceutical companies and medical device companies around the world are wrestling with similar decisions, and relying on lawyers, in-house and outside, to advise them on the best ways to protect property and patients simultaneously, as drugs and methods are developed, and devices manufactured and improved. In fact, on March 31, 2020, a number of scientists and intellectual property lawyers took the Open COVID Pledge, noting that:
Immediate action is required to halt the COVID-19 Pandemic and treat those it has affected. It is a practical and moral imperative that every tool we have at our disposal be applied to develop and deploy technologies on a massive scale without impediment.
We therefore pledge to make our intellectual property available for use in ending the COVID-19 pandemic and minimizing the impact of the disease, free of charge and without encumbrances.
We will implement this pledge expeditiously through a formal license agreement, such as the Open COVID License.
[Open COVID Pledge (emphasis in original)]
They are seeking rights owners to join the pledge as well. Some countries, like Canada, have even laid the ground work for making such results less than voluntary, as Kevin Shipley explained in his ILN post last week.
Yet, others are trying to own the term COVID, with 33 trademark applications pending in the USPTO as of March 30, 2020 that use that term as part of the applied-for mark:
There are also over 60 CORONA- or CORONA-VIRUS-related applications filed since the February 9, 2020 application for the CORONA VIRUS SURVIVAL GUIDE (though some cigar mark applications using the word CORONA appear unrelated to the pandemic or the disease).
Regulators around the world have also reacted to the pandemic, as explained well explained well by our ILN friends from Lewis Rice. The Italian Patent and Trademark Office has suspended from February 23, 2020 to April 15, 2020 all terms provided by the Italian Industrial Property Code and that office, allowing payments, renewals and validity of intellectual property rights expiring during that period to be finalized by June 15, 2020. The EU’s intellectual property office has extended all time limits and deadlines in intellectual property matters from March 9th to April 30, 2020 until May 1, 2020, and announced that they will not hear any appeals during April either. (The EPO and Italian patent offices also joined in lowering flags to half mast on March 31st to honor victims of the pandemic) Austria has extended for two months the time limits in its patent office proceedings. Ireland closed its patent office, and deemed all closed days “excluded days” for purpose of calculating time. Likewise, India has locked down its patent office until at least April 15th, and all deadlines are extended automatically. Mexico has taken a similar approach, with all proceedings and deadlines occurring between March 24 and April 19, 2020 having been suspended. Canada has closed its relevant offices, and extended deadlines until May, 2020. Turkey, South Africa, Portugal, Kenya, the Benlux countries, Germany, France, Kazakhstan and numerous other countries have closed patent and trademark offices, extended deadlines, and taken other steps in response to the pandemic, as noted in the World Trademark Review.
In the United States, the CARES Act authorized the Director of the United States Patent and Trademark Office to “toll, waive, adjust, or modify” during the “emergency period” any “timing deadline established by title 35, United States Code, the Trademark Act, section 18 of the Leahy-Smith America Invents Act … or regulations promulgated thereunder” if the Director determines that the emergency satisfies the following conditions:
- materially affects the functioning of the Patent and Trademark Office;
- prejudices the rights of applicants, registrants, patent owners, or others appearing before the Office; or
- prevents applicants, registrants, patent owners, or others appearing before the Office from filing a document or fee with the Office.
The “emergency period” began on the date of enactment of the CARES Act, and continues through the duration of the emergency declared by President Trump on March 13, 2020 (and any renewal thereof), and concluding 60 days later. The USPTO cancelled in-person meetings as of March 13, 2020, has been closed to the public since March 16, 2020, and taken other steps in response to COVID-19. On March 31, 2020, the USPTO announced that certain patent and trademark deadlines would be extended by thirty days so as to fall after April 30, 2020, provided that the applicant for any extension certified that it was necessitated by the COVID crisis.
Courts, including the United States Supreme Court, have continued to address intellectual property questions even amid closed courthouses, altered arguments, and remote working. For instance, the U.S. Supreme Court ruled on March 23, 2020 in Allen v. Cooper that copyright owners cannot sue state governments for copyright infringement. Likewise, the full 9th Circuit issued another music/copyright decision, returning on March 9th once again to the Stairway to Heaven copyright saga in Michael Skidmore v. Led Zeppelin that we started writing about four years ago, and also addressed a Jack Daniels’ related claim that could resonate with an earlier whiskey/whisky piece here as well. Similarly, a California federal court addressed beer marks on March 27th, setting up a trial by denying cross motions for summary judgment in a case that a trademarking tippler would hold dear. And, in another echo back to an earlier piece here, Judge Laura Taylor Swain of the Southern District of New York held, in Solid Oak Sketches, LLC v. 2K Games et al., “the undisputed factual record clearly supports the reasonable inference that the tattooists necessarily granted the Players non-exclusive licenses to use the Tattoos as part their likenesses…”, awarding summary judgment dismissing the tattooists’ copyrights claims. Further, in another video-game-related decision in the same court, Judge George Daniels dismissed on March 31st an auto manufacturer’s claim that Call of Duty infringed and diluted the Humvee trademark. And, as discussed further below, trade secret and restrictive covenant cases continue to abound, and preliminary injunction applications continue to be ruled upon.
While some courts were issuing opinions, others were altering the rules for hearing or even taking cases. For example, the Federal Circuit in Washington DC, which handles all appeals in United States in patent cases, has stated that:
Based on current public health guidance and efforts to continue to minimize community transmission of COVID-19 within Washington, D.C. and the National Capital Region, the court has decided that all cases scheduled for argument during the April 2020 sitting will now be conducted by telephonic conference and no in-person hearings will be held. Parties in all cases previously advised that in-person argument will receive an updated notice in their respective cases. The court will continue to release same-day audio for all arguments on its website (available at http://www.cafc.uscourts.gov/oral-argument-recordings).
The Federal Circuit then announced April 1st that “the court will be providing media and public access to the live audio of each panel scheduled for argument during the April 2020 session.” Though the US Supreme Court continues to issue opinions, it has postponed oral arguments originally scheduled for March and April, and added in a statement that “The Court will consider a range of scheduling options and other alternatives if arguments cannot be held in the Courtroom before the end of the Term.” Many other court around the United States have postponed arguments or moved to remote ones, stopped accepting hard copies of papers, and taking other steps to reduce personal interactions and physical contact. The same is true ex-US, where the European Court of Justice building and Germany’s Federal Administrative Court will be closed until at least April 19th, with many European countries (e.g., France, Ireland) closing their courts to all but emergent matters and some (e.g. Italy) even requiring that those only be handled remotely or by video conference.
So the work of the courts continues, in slightly new ways. But some state courts have limited by subject matter the filings that they will entertain during the crisis, which could leave those seeking to enforce restrictive covenants or non-compete agreements a bit short in certain jurisdictions unless they can establish diversity jurisdiction or federal trade secret claims, as one of my colleagues has noted. On a related front, a UK court granted an extension of time for the production of expert discovery in a patent case because one party’s expert had been called to join the government’s COVID task force in Belgium, and then asked the parties to start consider how this patent trial scheduled for June might be conducted remotely through existing technology. So the pandemic impacts not only lawyers and courts, but clients and witnesses as well.
The forgoing, of course, merely sets the stage for when and where we can continue to practice intellectual property law in the time of COVID—but it is our judgment on which will depend the answer of how we practice during the time of COVID. Some lawyers continued their IP cases, unabated—as Law 360 noted, in the two weeks following the March 11th WHO declaration of a pandemic, 130 new federal copyright suits were filed in the United States, with “51 of those law suits—or 39 percent of them” filed by one law firm. My own research shows 120 new trademark or tradename cases filing in federal district courts March 11th until April 1, 2020, along with 330 new patent suits in same period in those courts. So, intellectual property lawyers in the United States remain busy. As noted above, trade secret cases also continue to be brought. But whatever the nature of the case, one must consider the merits of the matter being brought.
One thought leader in trade secret and misappropriation bar recently illustrated this when he commented on two cases reported the same day. One was a recent Illinois case called Art Ask Agency v. The Individuals, Corporations, Limited Liability Companies, Partnerships and Unincorporated Associations Identified on Schedule A Hereto, a case about counterfeit unicorn drawings where the district blasted the injunctive-seeking plaintiff because “The world is facing a real emergency. Plaintiff is not.” In fact, that Court said, quoting Elihi Root, questioned whether the matter should even have been filed “in the midst of a global pandemic” and “the fast-developing public health emergency.” No injunction issued. The other case was Office Depot, Inc. v. Babb, a Florida case granting an injunction the same day in a trade secret case. Because the case had real merit, and concerned real business investments, it exemplified for that seasoned watcher that “[t]heft of trade secrets and misappropriation of customer goodwill are potentially emergency situations that existed before the COVID-19 emergency (the U.S. Chamber of Commerce estimates that 75% of employees steal from the workplace and that most do so repeatedly) and will continue. And, as demonstrated by Office Depot v. Babb, the courts will still protect the victim of such conduct.”
But a mere comparison between the relative merits of the two cases is not the takeaway for the intellectual property lawyer practicing in the time of COVID. The takeaway, as my friend Russel Beck notes, is lawyer’s judgment is at a special premium now, and our clients need our skilled assistance and frank assessments more than ever:
The takeaway: Think before you file. Does your case involve something like misappropriation of trade secrets or customer relationships or is it a unicorn (and not the venture capital kind of unicorn)?
If it involves misappropriation, then you need to take action; you need to protect the company from further harm that is at least within the court’s ability to prevent.
But, if it’s a unicorn, maybe you need to rethink your plan.
This author agrees with that view, and has in fact recently expressed similar ones.
So, it is true that some of the pomp and circumstance of oral arguments is now missing, and key meetings now ZOOM passed without the same physical presence as before. In fact, it is not unlike the fact that St. Patrick’s Day Parades in Boston, New York and throughout Ireland were cancelled too. But, just as the most endearing advertisement in COVID era promised that “we will march again,” there will be future court appearances in person, and we will meet once more with regulators and examiners. As one in our field noted to American Lawyer, for now we must adapt: “As IP lawyers in this ‘new normal,’ we’ve had to pivot, almost daily, in response to judicial and administrative changes in procedure, and for some on our team, there are significant daily changes to home life as well. Flexibility has been the key. Our availability and accessibility remain critical, but we’ve had to shift our emphasis away from face-to-face contact, to now leveraging the best technological mediums to maintain that personal touch.”
In fact, we will need resilient lawyers beyond us intellectual property lawyers; we will need life sciences lawyers, employment lawyers, healthcare lawyers, government lawyers and many other lawyers to play a role in keeping our societies moving forward safely during the time of COVID. As I noted recently in another article, this will require more from us than merely carrying out clients’ first suggested plan:
Teach clients to know what zealous advocacy is by always fulfilling the obligations of the oath that we take to our clients to advocate, especially at this difficult time, for them. But also teach our clients what it is not by never doing anything that would undermine the oath that we take ourselves as lawyers. Using current circumstances to extract unwarranted concessions or results is far beneath us or our clients. So too is taking unneeded consideration—if a Covid-19 closure, or illness of family member, truly prevented or delayed a due response, so be it: give and take the courtesies basic decency require.
But if the real reason that something is not done comes from basic procrastination or inattention (or if some added demand stems from a harsher opportunism) unrelated to current events, make sure these dire times are never just convenient makeweight excuses.
In the novel Love in the Time Of Cholera, Gabriel Garcia-Marquez writes, “Nobody teaches life anything.” The great thing about fiction, of course, is that it can say the truest things. Though we teach life nothing, it teaches us everything, including the crash course recently on what matters most. In this crisis, our industry can exhibit the ideals that we should be most passionate about and known for, or it can recall for our society the worst images of our profession.
When many are risking so much in directly fighting the virus’ spread, calling on lawyers to do the right things is a simple ask, yet presents a hard task. But lawyers can learn resilience and, as Dr. [Larry] Richard has noted, resilient lawyers succeed. They are also lawyers who are inspired, think differently, use stress as an opportunity to connect with others, and give more than they take in relationships.
Clients are facing tough choices as they try to protect their employees’ physical health and their business’s economic well-being. Resilient lawyers strong enough to both answer clients and listen to the better angels of our nature are what the law needs in the time of Covid-19.
[James Flynn, Practicing Law In the Time Of COVID, Bloomberg Law, Daily Labor Report: Practice Insights, April 6, 2020]
Many, many of our friends, colleagues and “adversaries” are already doing that. Join them.
And if we do so, we intellectual property lawyers, like our colleagues who are providing or supporting those who provide essential goods and services, can say “Not only will we march again, but we are marching still,” resilient, committed to protecting clients’ ideas and fulfilling our own ideals. Not quite calculus or a classic part of the folio, but something to look back on with pride if we do it right. I hope my son sees it that way when this is all over.