Copyright Preemption Remix – The Second Circuit Finds Implied Preemption of Right of Publicity Claim Relating to Remixes on Mixtape

Written by Elaine K. Kim and Elaine Nguyen The Second Circuit recently issued an important decision, In re Jackson, No. 19-480, — F.3d —, 2020 WL 4810706 (2d Cir. Aug. 19, 2020), in which it held that a state law right of publicity claim was barred on the ground of implied copyright preemption.  While implied preemption—also known as conflict preemption—has come up in other copyright … Continue reading Copyright Preemption Remix – The Second Circuit Finds Implied Preemption of Right of Publicity Claim Relating to Remixes on Mixtape

A Jewel of an Opinion or Missing the Mark? Second Circuit Holds that Costco’s Use of “Tiffany” May Be Descriptive

Written by Sofia Castillo and Marissa B. Lewis In Tiffany and Co et al v. Costco Wholesale Corp., No. 17-2798 (2d Cir., Aug. 17, 2020) the Second Circuit vacated and remanded for trial a 2017 decision issued by the Southern District of New York that awarded fine jewelry giant Tiffany & Co. over $21 million in damages arising from Costco’s use of the term “Tiffany” … Continue reading A Jewel of an Opinion or Missing the Mark? Second Circuit Holds that Costco’s Use of “Tiffany” May Be Descriptive

The Privilege to Speak One’s Mind: New York Broadens Its Anti-SLAPP Statute

Written by Timothy M. Carter The broad speech protections provided by the First Amendment are emblematic of a “profound national commitment to the principle that debate on public issues should be uninhibited, robust, and wide-open[.]”  New York Times v. Sullivan, 376 U.S. 254, 269–70 (1964).  While this unfettered commitment to free speech may shield a speaker from the chill of liability, practically speaking, it often … Continue reading The Privilege to Speak One’s Mind: New York Broadens Its Anti-SLAPP Statute

Trump v. Trump: Publisher is not an Agent of Author Subject to a Non-Disclosure Agreement

By Sofia Castillo On July 1, the Appellate Division of the State of New York Supreme Court issued a decision on whether an author’s non-disclosure agreement (NDA) binds a publisher and other similarly situated distributors. The decision allows publisher Simon & Schuster to proceed with the publication of Mary Trump’s book about her uncle, President Donald Trump, titled Too Much and Never Enough, How My … Continue reading Trump v. Trump: Publisher is not an Agent of Author Subject to a Non-Disclosure Agreement

SCOTUS Rejects Per Se Rule Against Trademark Protection for Generic.com Terms

Written by Eleanor M. Lackman and Samantha W. Frankel The U.S. Supreme Court has held that a generic word combined with “.com” is entitled to federal trademark registration if consumers perceive the combined mark as nongeneric.  United States Patent & Trademark Office v. Booking.com B. V., No. 19-46, 2020 WL 3518365 (U.S. June 30, 2020).  In an 8-1 decision, the Court held that because Booking.com … Continue reading SCOTUS Rejects Per Se Rule Against Trademark Protection for Generic.com Terms

When the Jacket Fits but the Copyright Registration (Maybe) Doesn’t: Ninth Circuit Clarifies Requirement to Determine Validity of Knowingly Filed Incorrect Copyright Registration

Written by Aaron D. Johnston and Orly Ravid SUMMARY The Ninth Circuit recently decided a copyright infringement case that pitted fabric designer Unicolors against clothing retail giant H&M regarding an artwork design that H&M used on a jacket and skirt in its fall 2015 collection.  The dispute involved one fabric design in a copyright registration containing 31 designs as a “single-unit registration.”  In Unicolors, Inc. … Continue reading When the Jacket Fits but the Copyright Registration (Maybe) Doesn’t: Ninth Circuit Clarifies Requirement to Determine Validity of Knowingly Filed Incorrect Copyright Registration

Fair Use & Tater Tots

Written by Timothy M. Carter In 2011, Plaintiffs Tamita Brown, Glen S. Chapman, and Jason T. Chapman composed and recorded the children’s song Fish Sticks n’ Tater Tots (the “Song”), which details a student’s journey from her classroom to her school cafeteria to eat fish sticks and tater tots for lunch.[1]  Six years later, the documentary film Burlesque: Heart of the Glitter Tribe (the “Film”) — which … Continue reading Fair Use & Tater Tots

District Court of Colorado Departs From the Rogers Test in Documentary Trademark Suit

Written by Eleanor M. Lackman and Lillian Lee On May 8, 2020, the U.S. District Court for the District of Colorado granted National Geographic’s motion to dismiss an amended complaint for trademark infringement, unfair competition, and deceptive trade practices.  Stouffer v. National Geographic Partners, LLC, No. 18-cv-3127 (May 8, 2020). In doing so, the court addressed “the question of what protections the First Amendment provides … Continue reading District Court of Colorado Departs From the Rogers Test in Documentary Trademark Suit

Epic Games Obtains Early Win In Fortnite “Running Man” IP Lawsuit

Written by Adé Jackson and Gabriella Nourafchan On Friday, May 29, 2020, the United States District Court for the District of Maryland granted Epic Games’ motion to dismiss in Brantley et al. v. Epic Games, Inc., Case No. 8:19-cv-594, one of several lawsuits filed against the videogame creator regarding the use of “emote” dance moves in its popular videogame Fortnite.[1] The Plaintiffs—two former University of … Continue reading Epic Games Obtains Early Win In Fortnite “Running Man” IP Lawsuit

Manufacturer Strikes Out on Three IP Theories Asserted to Enforce Its Claimed Rights in Product Design

Written by Mark C. Humphrey

On May 14, 2020, the Federal Circuit Court of Appeals issued a decision in Lanard Toys Limited v. Dolgencorp LLC et al., Case No. 2019-178, affirming summary judgment for the defendants and dismissing claims for design patent and copyright infringement.  The claims were grounded in a challenging intellectual property law concept: the level of protection available for objects claimed to have both aesthetic and utilitarian functions.  While the decision does little to provide additional clarity on the issue, it offers a useful snapshot of current jurisprudence, particularly in the copyright context in light of the United States Supreme Court’s Star Athletica decision, and identifies the salient distinctions between copyright law, design patent law, and trade dress law as they apply to a product design.

Lanard involves toy chalk holders made to look and function like pencils.  Since 2011, Lanard had been making and selling one such product, the “Lanard Chalk Pencil,” to national distributors including Dolgencorp LLC (parent of Dollar General) and Toys R’ Us (“TRU”).  Lanard owned patent registrations for its design, as well as a copyright for a work entitled “Pencil/Chalk Holder.”  In 2012, Ja-Ru, Inc. (“Ja-Ru”) released a similar toy chalk pencil holder that used the Lanard Chalk Pencil as a design reference.  By 2013, Dolgencorp and TRU had stopped ordering the Lanard Chalk Pencil in favor of Ja-Ru’s product. Continue reading “Manufacturer Strikes Out on Three IP Theories Asserted to Enforce Its Claimed Rights in Product Design”