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?

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

Further to our post last Friday on the SLANTS trademark case, the U.S. Supreme Court today, without comment, refused the Redskins’ Petition to join the SLANTS case challenging the U.S. Trademark Office’s ban on “offensive” trademarks. Since both cases involved a provision in Section 2(a) of the Lanham Act, the football team hoped to have both cases considered concurrently by the high Court. However, this now means that the outcome of the SLANTS case will have a huge impact on the Redskins’ appeal still pending before the Fourth Circuit. Although the team’s case will not be heard with the SLANTS case, it will have the opportunity to file amicus briefs in the proceeding.

 

My colleagues at the Global IP Matters blog highlight today the decision by the 9th Circuit Court of Appeals which provides clarification of what the courts consider a “trade secret” under the new Defense of Trade Secrets Act (DTSA). The decision, handed down on July 5, indicates clearly that a compilation of publicly-available information gathered using propriety search technology is covered under the DTSA.  The DTSA amended the Economic Espionage Act (EEA) to create a federal private civil cause of action for trade secret misappropriation. The 9th Circuit’s decision can be accessed here and my colleague’s insights into what it means may be accessed here.