Category: Intellectual Property

Intellectual Property

Freedom of Squeak: The Ninth Circuit Finds First Amendment Protection For Parody Dog Toy

Written by Marc E. Mayer and Theresa B. Bowman

In VIP Products v. Jack Daniel’s Properties, Inc., No. 18-16012 (9th Cir. March 31, 2020), the Court of Appeals for the Ninth Circuit held this week that a rubber dog toy designed to resemble a bottle of Jack Daniel’s Black Label Tennessee Whiskey — the “Bad Spaniels Silly Squeaker” — is an “expressive work” and therefore entitled to interpose a First Amendment defense against the whiskey company’s trademark infringement claims.

The lawsuit began in 2014 when Jack Daniel’s demanded that VIP Products stop selling the Bad Spaniels on trademark infringement grounds.  The manufacturer filed suit asking an Arizona District Court to weigh in and determine whether the whiskey bottle was entitled to trademark protection at all.  Jack Daniel’s responded with trademark infringement and trademark dilution claims, arguing that the dog toy diluted the commercial power, meaning and value of its brand by tarnishing what the image of the iconic whiskey bottle represents.  The District Judge agreed with Jack Daniel’s that there was a high likelihood of consumer confusion between the products and ordered VIP Products to stop making and selling the Bad Spaniels toy. Continue reading “Freedom of Squeak: The Ninth Circuit Finds First Amendment Protection For Parody Dog Toy”

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Intellectual Property

MSK Scores a Win for Activision in “Call of Duty” Trademark Litigation

Written by Lillian Lee and Timothy M. Carter

On March 31, 2020, District Judge George B. Daniels of the Southern District of New York granted MSK’s motion for summary judgment filed by Video Game Practice Co-Chairs Karin Pagnanelli and Marc E. Mayer on behalf of Activision Blizzard, Inc., Activision Publishing, Inc., and Major League Gaming Corp. (“Defendants”), dismissing all of Plaintiff AM General’s claims for trademark and trade dress infringement, unfair competition, false designation of origin, false advertising, and dilution under the Lanham Act and New York law.  AM General, the manufacturer of the High Mobility Multipurpose Wheeled Vehicle (colloquially known as the Humvee), filed its suit in November 2017, alleging that some of Activision’s popular Call of Duty games and associated strategy guides and toys depicted the Humvee without AM General’s authorization. Continue reading “MSK Scores a Win for Activision in “Call of Duty” Trademark Litigation”

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COVID-19, Intellectual Property

USPTO Extensions

The USPTO Extends Certain Trademark Deadlines Amid COVID-19 Disruptions

Written by Alesha M. Dominique and Marissa B. Lewis

The United States Patent and Trademark Office (“USPTO”) announced earlier this week a thirty-day extension of certain trademark deadlines due to the ongoing COVID-19 pandemic.  The extension applies broadly to trademark deadlines that fall between March 27, 2020 and April 30, 2020, including, in particular:

  • Responses to office actions, including notices of appeal from a final refusal;
  • Statements of use or requests to extend the time to file a statement of use;
  • Notices of opposition or requests to extend the time to file a notice of opposition;
  • Priority filings;
  • Transformations of international registration into a national trademark application;
  • Affidavits of use or excusable nonuse; and
  • Renewal applications.

Continue reading “USPTO Extensions”

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Intellectual Property

Fortnite Is Nearly Free From Pellegrino Suit Over Dance Moves

Written by Sofia Castillo

On March 31st, the Eastern District of Pennsylvania dismissed with prejudice all but one of plaintiff’s claims in Pellegrino v. Epic Games, No. 19-1806 (E.D. Pa. Mar. 31, 2020). As in several other recent cases, the dispute in Pellegrino arose out of an unauthorized use of dance moves in the popular video game Fortnite Battle Royale. Unlike those other cases, however, instead of suing for copyright infringement, professional saxophone player Leo Pellegrino brought claims for misappropriation of likeness and for trademark infringement under both the Lanham Act and Pennsylvania state law.

Pellegrino alleged that he developed a signature dance move while playing the saxophone. He further alleged that one of Fortnite’s “emotes,” the “Phone It In,” plays a saxophone while dancing and thus misappropriates and infringes that signature dance move. Continue reading “Fortnite Is Nearly Free From Pellegrino Suit Over Dance Moves”

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Intellectual Property

Court Sides With Video Game Producer Over The Use Of Athlete’s Tattoos

Written by Sofia Castillo

On March 26, 2020, the district court for the Southern District of New York issued a landmark ruling in a case closely followed by the film, video game, sports and tattoo industries. Where for several years the only direct precedent on the issue of expressive tattoos in expressive works was limited to early rulings in cases like that involving The Hangover or relegated to settlements, Solid Oak Sketches, LLC v. 2K Games, Inc. firmly resolved all doubt. In the ruling, the court granted the defendant video game publishers’ motion for summary judgment on three separate grounds, finding that the defendants’ depiction of basketball superstars’ tattoos in a “NBA2K” video game was: (1) a “de minimis” use, (2) allowed under the players’ implied license given by the tattoo artists, and (3) a fair use. This decision comes almost exactly two years after Judge Swain denied the defendants’ motion to dismiss the claims.

On the first ground, the court looked to precedent regarding “de minimis” use principles in other contexts. Ultimately, the defendants’ video evidence convinced the court that NBA2K’s depiction of tattoos on basketball superstars LeBron James, Kenyon Martin and Eric Bledsoe (and none of the other over 400 available players in the game) was “de minimis” and therefore “no reasonable trier of fact could find the Tattoos as they appear in NBA 2K were substantially similar to the Tattoo designs licensed to Solid Oak.” The court found that the small size and distorted angles of the tattoos’ display as part of the game play was “indiscernible to the average game user,” making the plaintiff’s copyright expression insufficiently observable to rise to the level of an actionable taking. Continue reading “Court Sides With Video Game Producer Over The Use Of Athlete’s Tattoos”

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Intellectual Property

Supreme Court Rules in Favor of North Carolina, Applies Sovereign Immunity

Written by Bradley J. Mullins and Adé T.W. Jackson

On Monday, the U.S. Supreme Court ruled that a provision of the Copyright Act that allows for lawsuits against state governments for copyright infringement is unconstitutional.  The justices were considering Allen, et al. v. Cooper, et al., Case No. 18-877 (Mar. 23, 2020), a case where North Carolina was being sued by a filmmaker for using his videos and photos of the wreck of Queen Anne’s Revenge — the flagship of the pirate Blackbeard.  The justices unanimously ruled that North Carolina was shielded from the lawsuit by state sovereign immunity.

Although the Eleventh Amendment gives states broad sovereign immunity against such lawsuits, the plaintiff relied on the Copyright Remedy Clarification Act (CRCA) — a statue enacted by Congress in 1990 expressly to permit infringement claims against the States.  However, Monday’s ruling invalidates the statute, with the justices determining that Congress lacked the constitutional authority required to abrogate state sovereign immunity in this way. Continue reading “Supreme Court Rules in Favor of North Carolina, Applies Sovereign Immunity”

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COVID-19, Intellectual Property

Pirates Find New Shelter

Demand for Pirated Content Surges as the Public Stays Home

Written by Eleanor M. Lackman

At a time where theaters are shut down and productions are on hold, the entertainment industry is facing another challenge: the sudden surge in demand for pirated audiovisual and game content.  According to anti-piracy firm MUSO, the number of people illegally streaming the movie Contagion increased by over 5600%.  As lockdowns and stay-home orders keep people at home in an increasing number of countries, online searches for local pirate sites have ballooned, even despite studios’ in-home release of films that were slated to premiere this month in theaters.

Apparently taking advantage of the situation, well-known piracy app Popcorn Time, which launched in 2015 and was quickly shut down thereafter, has just reemerged in a new version.  In its own words, Popcorn Time announced in a tweet on Tuesday: “Love in the Time of Corona Version 0.4 [sic] is out!” Popcorn Time offers an easy-to-use system that uses BitTorrent to stream movies and television shows without needing to download them.  This time, the instructions for the app include a suggestion for users to use VPNs to avoid detection by users’ ISPs, which may be held responsible for repeated acts of infringement by their users if the ISP fails to take appropriate steps to curtail it.  See, e.g., BMG Rights Management (US) LLC v. Cox Communications, Inc., 881 F.3d 293 (4th Cir. 2018). Continue reading “Pirates Find New Shelter”

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Intellectual Property

MSK Wins Reversal of “Dark Horse” Copyright Verdict

Written by Christine Lepera, Jeffrey M. Movit and Gabriella Nourafchan

Last July, a team of MSK attorneys represented Defendants in a copyright infringement trial involving allegations that the ostinato (a musical phrase that repeats) in Katy Perry’s 2013 song “Dark Horse” infringed the ostinato in Plaintiffs’ Christian rap song entitled “Joyful Noise.”  After the jury returned a verdict in favor of Plaintiffs, MSK filed a motion seeking reversal, or in the alternative, a new trial.

This week, the Court granted MSK’s motion, overturned the jury verdict, and entered judgment in Defendants’ favor.  The Court found that Plaintiffs’ copyright claim failed because the ostinato in “Joyful Noise” was commonplace expression that no music creator can monopolize.  Continue reading “MSK Wins Reversal of “Dark Horse” Copyright Verdict”

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COVID-19, Intellectual Property

COVID-19 Triggers Savings

Your Trademark and the COVID-19 Outbreak

Written by Alesha M. Dominique and Sofia Castillo

This week, the U.S. Patent and Trademark Office (USPTO) announced that it considers the effects of the Coronavirus outbreak to be an “extraordinary situation” within the meaning of 37 CFR 2.146 for affected trademark applicants and trademark owners. In response, it is waiving the petition fees (set by regulation, rather than statute) that it normally charges to revive an abandoned trademark application and to reinstate a canceled or expired trademark registration if they were abandoned or canceled/expired as a result of the impact of the Coronavirus outbreak. Other trademark-related deadlines and fees will not change.

Specifically, the USPTO is waiving the petition fee to revive an abandoned application or to reinstate a canceled or expired registration if it was abandoned or canceled/expired “due to an inability to timely respond to a trademark-related Office communication as a result of the effects of the Coronavirus outbreak.” A petition must be accompanied by a statement that explains “how the failure to respond to the Office communication was due to the effects of the Coronavirus outbreak.” Continue reading “COVID-19 Triggers Savings”

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Intellectual Property

Ninth Circuit Ends Lawsuit Involving Copyright Protection for Characters, Leaving Plaintiffs in a Bad Mood

Photo Credit: istock.com/Ja_inter

Written by Robert H. Rotstein

On March 16, 2020, the Ninth Circuit ended a lawsuit alleging that Disney’s Inside Out infringed plaintiffs’ alleged copyright in characters known as “The Moodsters.” Daniels, et al., v. The Walt Disney Company, et al., Case No. 18-55635 (9th Cir. Mar. 16, 2020). The Court elaborated on the standards governing character protection and enunciated a rigorous standard for pleading “idea submission” claims in federal court.

Plaintiffs’ five characters are color-coded anthropomorphic emotions, each representing a different emotion. Between 2007 and 2009, Plaintiffs allegedly pitched The Moodsters to Disney. In 2015, Disney released Inside Out, a film that centers on five anthropomorphized emotions that live inside the mind of an eleven-year-old girl. Continue reading “Ninth Circuit Ends Lawsuit Involving Copyright Protection for Characters, Leaving Plaintiffs in a Bad Mood”

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