On May 18, 2017, the Eleventh Circuit Court of Appeals dismissed a copyright infringement complaint and added further to a circuit split on when copyright “registration” occurs for purpose of filing a copyright infringement complaint. “Registration” of a copyright is required of US copyright owners prior to being able to file suit for copyright infringement (17 U.S.C. § 411(a)). However, there is no consensus on whether registration occurs when an owner files an application to register the copyright or occurs only when the Register of Copyrights actually issues a copyright registration.

In this case, Plaintiff Fourth Estate Benefit Corporation (“Fourth Estate”), a news organization, filed a complaint for copyright infringement against Wall-Street.com, also a news website. Wall-Street.com had obtained copyright licenses for a number of Fourth Estate’s articles, but failed to remove Fourth Estate’s articles upon cancelling its account with Fourth Estate as required by the license agreement. When Fourth Estate filed suit for copyright infringement, the complaint merely alleged that Fourth Estate had filed applications to obtain copyright registrations for the articles, not that any action had yet been taken on the applications by the US Copyright Office.

Continue Reading When is a Copyright “Registered” for Purposes of Filing Suit?

Selecting and protecting your “brand” should begin from the very moment a business is in the process of being formed, whether that business is a sole proprietorship, partnership, corporation, limited liability company, or some other type of entity. It makes no difference whether the entity is a for-profit or not-for-profit organization, and the size of the entity is also irrelevant. Your “brand” is your public facing identity by which you will be known and through which your reputation will be developed. The goodwill you develop in your “brand” will be one of the most important and valuable assets you own.

The first “brand” a new entity may adopt is its business name. This may be a formal corporate name obtained through a Secretary of State’s office and/or a fictitious business name, such as a trade name or a DBA. Regardless of which type of entity is adopting and using a new name, and regardless of whether the name has been cleared by a Secretary of State’s office, it is critical that an appropriate trademark search be conducted for the new name to ensure that it does not infringe upon the prior existing registered or unregistered trademark rights of a third party. Continue Reading Company “Branding” and the Benefits of Federal Trademark Registration

In a unanimous decision handed down on June 19th, the U.S. Supreme Court struck down as unconstitutional a long-standing prohibition against federal registration of “disparaging” trademarks, finding that the this provision of the Lanham Act violates the Free Speech Clause of the First Amendment.

We have been tracking this case since 2013, when the TTAB refused registration of the mark  THE SLANTS for an Oregon rock band. The Patent and Trademark Office (PTO) denied the application under  Section  2(a) of the Lanham Act which prohibited the registration of marks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” 15 U. S. C. §1052(a). The PTO found the mark to be a derogatory or offensive term for people of Asian descent. The Federal Circuit reversed the PTO, finding the disparagement clause of the Lanham Act unconstitutional, and the government appealed. Continue Reading Matal v. Tam: U.S. Supreme Court Holds Prohibition on Disparaging Trademarks Unconstitutional under First Amendment

In a decision that may have broader implications in the U.S. fashion industry, the U.S. Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc. (No. 15-866) ruled that the decorative elements on a cheerleading uniform can fall within the scope of articles protectable by copyright.

In the decision handed down on March 22, 2017, Justice Thomas, writing for the majority, ruled that the decorative elements on the cheerleading uniforms (shown below) met the threshold requirement of being  a “pictorial, graphic, or sculptural work” that can be granted a copyright if the copyrightable elements are sufficiently original and meet other requirements of the Copyright Act. Slip Op. at 10-11.

Cheerleader Uniforms Continue Reading Let’s Go, Big ©! Let’s Go! U.S. Supreme Court Backs Copyright Protection for Cheerleading Uniforms

Although most people will recognize the ubiquitous PIZZA! PIZZA! slogan mark owned by the pizza chain Little Caesar’s, the company’s collection of repeated term marks does not rise to the level of a “family of marks” according to the Trademark Trial and Appeal Board. In a precedential decision, the Board held that to grant this status to the slogan marks at issue would give Little Caesar’s excessively broad rights not justified by the facts. In re LC Trademarks, Inc. (TTAB December 29, 2016). However, the Board did clarify that proof of the existence of a “family of marks” can be a factor used to prove that otherwise descriptive marks have acquired distinctiveness. Continue Reading Pizza! Pizza!: Little Caesar’s Repeated Term Slogans Are Not a “Family of Marks”

As we reported to you last September, the U.S. Supreme Court agreed to hear the case involving the constitutionality of the provisions of the Lanham Act upon which the U.S. Trademark Office relied to deny registration of the rock band name “The Slants.” The hearing before the Court is scheduled for January 18, 2017. We are following this case closely and will report back with all developments. Stay tuned.

In a non-precedential opinion, the U.S. Trademark Trial and Appeal Board cancelled two US trademark registrations for the mark PORTON,  finding it to be confusingly similar to the mark PATRON. Patron Spirits International AG v. Pisco Porton, LLC, Cancellatio No. 92059527 (January 4, 2017). PORTON is the brand name for a Peruvian brandy sold by Pisco Porton. PATRON is the brand name for a Mexican tequila sold by Patron Spirits International. Continue Reading Trademark Trial and Appeal Board: Non-Spanish Speakers Would Confuse PATRON and PORTON Trademarks

shutterstock_520740664In June 2016, the National Hockey League (NHL) announced that Las Vegas would be awarded an NHL franchise team, the first major professional sports team in the city and the first new expansion team for the NHL in over fifteen years.  The team announced its name in November—the “Vegas Golden Knights.”  But just a few weeks later, on December 7, the team’s trademark application for the name in connection with “entertainment services, namely, professional ice hockey exhibitions” was refused by the U.S. Patent and Trademark as likely to be confused with a registered trademark for GOLDEN KNIGHTS THE COLLEGE OF SAINT ROSE, owned by the College of Saint Rose, a Division II member of the NCAA with no hockey team.

Continue Reading NHL’s Vegas Golden Knights’ Trademark Application Refused Due To Likelihood of Confusion with the College of Saint Rose Golden Knights

On November 14, 2016, the Federal Circuit clarified confusion regarding what is necessary to satisfy the registration requirement that a mark be used “in commerce.”

Christian Faith Fellowship Church v. adidas AG involved the Church’s appeal from a Trademark Trial and Appeal Board (“TTAB”) decision cancelling its mark “ADD A ZERO.”  The Church, located in Illinois, began selling apparel bearing the phrase “ADD A ZERO” in January 2005 and later applied for and obtained a federal registration for the mark based on actual use in commerce.  In 2009, Adidas sought to register “ADIZERO” but had its application denied by the Trademark Office based on likely confusion with the Church’s “ADD A ZERO” mark.  Adidas then brought an action to cancel the Church’s mark arguing that the Church had failed to use the marks in commerce before registration. Continue Reading Federal Circuit Clarifies What Constitutes Use “In Commerce” Under the Lanham Act

Bruno Mars RecordOn Friday, October 28, 2016, musicians Mark Ronson and Bruno Mars were hit with a copyright infringement suit based on their wildly popular hit “Uptown Funk.”  The plaintiffs, consisting of one living member and the estates of the 1980s funk group, Collage, assert that Ronson and Mars copied the bass line, guitar riff, and various other elements of Collage’s 1980s work “Young Girls.”  In the complaint, the plaintiffs assert that the ensuing damage cannot be overstated due to the commercial success of “Uptown Funk.”  The only remaining member of Collage and the estates of the deceased members of the band assert that there are eleven people that should be credited for “Uptown Funk,” whereby each party should receive royalties for Ronson and Mars’ allegedly copying.

This lawsuit comes on the heels of last year’s controversial verdict out of the Central District of California where a jury found that Pharrell Williams and Robin Thicke’s “Blurred Lines” copied key elements from Marvin Gaye’s “Got to Give It Up.”  See Pharrell Williams, et al v. Bridgeport Music Inc. et al, Case No. 2:13-cv-06004 (C.D. Cal. Mar. 10, 2015).  That verdict departed from the traditional standards applied to cases involving copyright law and music in that the court subjectively considered intangible components such as the rhythm and “feel” of the song.  Traditionally, courts applied a more tangible standard that considered similarities of lyrics, melody, and harmony.  The judge awarded a $7.4 million verdict to Gaye’s estate and ongoing royalties to Gaye’s estate, which was later reduced to $5.4 million.  Williams and Thicke are currently appealing this case to the Ninth Circuit, where 212 music artists have joined an amicus brief supporting the appeal because, as reported by the Hollywood Reporter, the verdict is “very dangerous to the music community, [and] is certain to stifle future creativity, and ultimately does a disservice to past songwriters as well.”  In addition, musicologists have expressed by amicus brief that allowing the “Blurred Lines” verdict to stand is dangerous towards the music community.

The verdict in the “Blurred Lines” case has already demonstrated the potential danger artists face in the current music climate.  If the “Uptown Funk” court applies the seemingly subjective considerations that were applied in the case of “Blurred Lines,” the proverbial floodgates for the estates of deceased artists to recover for minute similarities in modern songs, and consequently raise the potential of stifling creativity in the music industry, will have been opened.  However, if the Court applies the traditional standards of copyright law in accordance with the appeal to the Ninth Circuit and the support of over 200 artists, it would “unblur” the imaginary line between the traditional and untested subjective standard.

See “Young Girls” by Collage: https://youtu.be/pfTr_fgQpvg

See also “Uptown Funk” by Bruno Mars and Mark Ronson: https://youtu.be/OPf0YbXqDm0