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”

Get Lucky: U.S. Supreme Court Overturns ‘Defense Preclusion’ Ruling in Trademark Lawsuit

Written by Albina Gasanbekova
Edited by Robert H. Rotstein

Last week, the U.S. Supreme Court decided Lucky Brand Dungarees Inc. v. Marcel Fashions Group Inc., No. 18-1086, 2020 WL 2477020 (U.S. May 14, 2020), a trademark case involving the scope of claim preclusion as the doctrine applies to defenses.  Although recognizing that claim preclusion can apply to bar defenses, the Court explained that the so-called “defense preclusion” is an invalid application of res judicata when the earlier suit involved different trademarks, different legal theories, and different conduct occurring at different times.

Three Lawsuits and Nearly Twenty Years of Litigation

Lucky Brand and Marcel Fashions Group are competitors in the apparel industry who have been battling each other for decades.  The first lawsuit began in 2001, when Marcel, the owner of the trademark “Get Lucky,” accused Lucky Brand of violating trademark law by using the phrase “Get Lucky” in advertisements.  That litigation resulted in settlement, in which Lucky Brand agreed to stop using the words “Get Lucky” in their branding in return for Marcel Fashion’s release of certain claims against Lucky Brand.  The second lawsuit between the parties began in 2005, when Lucky Brand accused Marcel Fashions of copying its designs and logos for a new clothing line.  Marcel Fashions responded with counterclaims, alleging that Lucky Brand had continued to use Marcel’s “Get Lucky” mark in violation of the settlement agreement.  Notably, Marcel had not claimed that Lucky Brand’s use of its own marks alone—that is, independently of any use of “Get Lucky”—infringed on Marcel’s “Get Lucky” mark.  Marcel ultimately prevailed in the 2005 lawsuit, permanently enjoining Lucky Brand from using a catchphrase “Get Lucky.”

Continue reading “Get Lucky: U.S. Supreme Court Overturns ‘Defense Preclusion’ Ruling in Trademark Lawsuit”

Attorney Fees Are Recoverable in Declaratory Relief Action for Copyright Abandonment, Ninth Circuit Holds

Written by Tiana A. Bey

On May 13, 2020, the Ninth Circuit opened the door for courts to award attorney’s fees to parties seeking or defending against equitable relief actions that may implicate the Copyright Act.  In Doc’s Dream v. Dolores Press, Inc., No. 18-56073 (9th Cir. May 13, 2020), the Circuit held broadly that “any action that turns on the existence of a valid copyright and whether that copyright has been infringed” is properly within the scope of attorney’s fees recoverable pursuant to the fee-shifting provision of the Copyright Act.  And it applied that holding to the particular claim for declaratory relief before it, namely whether a party had abandoned a copyright.

Section 505 of the Copyright Act, 17 U.S.C. § 505, provides a court with discretion to “award a reasonable attorney’s fee to the prevailing party” as a part of the recoverable cost incurred “in any civil action under” the Copyright Act.  Doc’s Dream presented a “first impression” issue: whether a declaratory relief claim concerning the judicially-created “copyright abandonment” doctrine qualifies as an action under the Copyright Act.  To address this question, the Circuit had to decide whether a determination of copyright abandonment required a “construction” of the Copyright Act, and it answered in the affirmative. Continue reading “Attorney Fees Are Recoverable in Declaratory Relief Action for Copyright Abandonment, Ninth Circuit Holds”

Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test

Written by Eleanor M. Lackman and Adé Jackson

A recent precedential opinion from the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB), Shannon DeVivo v. Celeste OrtizOpposition No. 91242863 (TTAB Mar. 11, 2020), challenges the well-established concept that a single title of a book cannot be a trademark, leaving a wide opening for those who seek to register terms previously considered non-registerable.

In the DeVivo proceeding, Celeste Ortiz sought to register the term ENGIRLNEER for cups and mugs, lanyards, and shirts and sweatshirts.  Shannon DeVivo, the owner of two pending trademark applications for the term for children’s books, notebooks, and a website offering information to young women and girls seeking careers in stem cell research opposed the application, citing likely confusion.  On an accelerated case procedure, the TTAB sustained the opposition, partly relying on the fact that DeVivo had used ENGIRLNEER on the cover of a single book, which the TTAB surprisingly found to be a trademark use. Continue reading “Judging a Book by Little More than Its Cover: TTAB Finds that Single Book May Meet Trademark-Use Test”

No Clowning Around About Copyright Authorship: Everly v. Everly

Written by Robert H. Rotstein and Orly Ravid

In Everly v. Everly, No. 19-5150 (6th Cir. 2020, May 4, 2020), the Sixth Circuit weighed into a fraternal feud that has continued long after the death of Phil Everly, who, with his brother Don, performed as the iconic rock & roll duo The Everly Brothers. The questions before the court: when Phil in 1980 granted his ownership rights to Don in the hit song Cathy’s Clown, did Don expressly repudiate Phil’s status as a co-author of the song? Or did Phil retain his rights as a co-author?

The Everly Brothers released the hit classic Cathy’s Clown in 1960.  Phil and Don were listed as co-authors, received royalties, and publicly presented themselves as co-authors. In 1980, after the brothers stopped speaking, Don asked Phil for the rights to Cathy’s Clown. The brothers executed a Release and Assignment in which Phil agreed to “release, and transfer, [  ] all of his rights, interests and claim in and to [Cathy’s Clown and other] compositions, including rights to royalties and his claim as co-composer, effective June 1, 1980.” Although after the 1980 Release and Assignment, Acuff-Rose listed only Don as author, the brothers made public statements crediting Phil as a co-author. Continue reading “No Clowning Around About Copyright Authorship: Everly v. Everly”

High Court Copyright Ruling Expands Government Edicts Doctrine

Written by Eleanor M. Lackman and Craig C. Bradley

On April 27, the U.S. Supreme Court for the first time in 130 years addressed the government edicts doctrine, a court-made rule holding that state government edicts having the force of law are not eligible for copyright protection.  

The doctrine provides that state and local government officials acting in their governmental capacity are not considered “authors” as that term is understood in copyright law.  Without authorship, no copyright protection is available for the work.  This principle has made judicial opinions and statutes freely available to publish and review free from claims of copyright infringement.

The decision in Georgia v. Public.Resource.Org, Inc., raised a new issue: not whether the law itself was copyrightable, but whether annotations and other analytical materials accompanying the law were also barred from copyright protection under the government edicts doctrine. Continue reading “High Court Copyright Ruling Expands Government Edicts Doctrine”

Principles of Equity: SCOTUS Eliminates “Willfulness” Prerequisite for Award of Trademark Profits

Written by Eleanor M. Lackman

On April 23, 2020, the Supreme Court weighed in on a question that had split the circuits:  to receive an award of profits for trademark infringement under the Lanham Act, does a plaintiff first have to show that the defendant infringed with willful intent?  All the Justices agreed that the answer is “no.”  Romag Fasteners, Inc. v. Fossil, Inc., No. 18-1233.  Instead, a court must consider “principles of equity” in deciding whether to award the equitable remedy of the defendant’s profits.  Recognizing that eliminating a threshold requirement of willfulness may create uncertainty in the law, the Court found that the statute’s language clearly mandated that lack of willfulness is not, in itself, a barrier to a profits award.  Nonetheless, willfulness remains a factor for strong consideration in deciding whether an award is equitable.

The case arose from a dispute between a supplier of fasteners for handbags and other accessories that respondent Fossil made.  Over time, Fossil’s factories in China had started to source counterfeit fasteners. Romag claimed that Fossil was doing little to guard against the practice, and Romag sued.  After trial, the jury found that Fossil had acted “in callous disregard” of Romag’s rights, but the jury rejected the claim that Fossil acted willfully.  The district court refused Romag’s request that Fossil hand over all the profits from the sales of its bags and other products containing the counterfeit fasteners, pointing out that controlling Second Circuit precedent required a plaintiff seeking profits to prove that the defendant’s violation was willful.  Other circuits took a different position from the Second Circuit, so the Court granted certiorari.

Continue reading “Principles of Equity: SCOTUS Eliminates “Willfulness” Prerequisite for Award of Trademark Profits”

Court Holds Vicarious Copyright Liability Claim Can Move Forward Against Major ISP

Written by Marc E. Mayer, Leo M. Lichtman, and Orly Ravid

Last week, the music industry enjoyed a high profile victory in its efforts to combat music piracy allegedly facilitated by Internet service providers (ISPs), including cable and telecommunications companies that provide Internet access to members of the public.  In Warner Records Inc. et al. v. Charter Comm’ns, Inc., No. 1:19-cv-00874, Judge R. Brook Jackson in the U.S. District Court of Colorado adopted a Magistrate’s Judge’s ruling from October 2019 allowing claims of vicarious copyright infringement against Charter Communications, one of this country’s largest ISPs, to proceed beyond the pleading stage.

The Charter Communications lawsuit was initiated last year by Warner Records and a group of several dozen record companies and music publishers, who collectively have produced or control the rights to millions of sound recordings and musical compositions.  In their Complaint, the plaintiffs allege that Charter is contributorily and vicariously liable for the infringement of thousands of copyrighted works that were unlawfully reproduced and distributed by its subscribers via peer-to-peer (P2P) file sharing programs such as BitTorrent.  According to the Complaint, Charter has known for years that subscribers were using its network to pirate music—including particular customers that were repeatedly infringing the plaintiffs’ copyrights—by virtue of the thousands of infringement notices that were sent to Charter detailing specific instances of infringement on its network.  The plaintiffs claim that despite those notices, Charter nonetheless failed to take appropriate action to curb the infringement in order to avoid the loss of subscriber revenue. Continue reading “Court Holds Vicarious Copyright Liability Claim Can Move Forward Against Major ISP”

Multicolor Marks On Product Packaging Can Be Inherently Distinctive

Written by Alesha M. Dominique and Sofia Castillo

On April 8th, the U.S. Court of Appeals for the Federal Circuit, in In re Forney Industries, Inc., held that multicolor marks can be inherently distinctive when used on product packaging.

In 2014, Forney Industries (“Forney”), a company that manufactures tools and accessories for welding and machining, applied to register a multicolor mark for its packaging and labels consisting of a black banner immediately followed by the color yellow, progressively fading into red. The trademark examining attorney refused to register the multicolor mark after concluding it was not inherently distinctive, and required that Forney Industries submit “sufficient proof of acquired distinctiveness.” The Trademark Trial and Appeal Board (TTAB) affirmed the refusal, and Forney appealed to the Federal Circuit.

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A De Minimis Defense Grows in Brooklyn: Display of Street Art in Action Movie Not Infringement

Written by Eleanor M. Lackman and Theresa B. Bowman 

On March 30, 2020, in Blaney, et al., v. XYZ Films, et al., the U.S. District Court for the Eastern District of New York dismissed copyright infringement and false endorsement claims arising out of the depiction of a well-known Brooklyn mural in the dystopian, thriller motion picture Bushwick.  While the defendants undeniably filmed, and thus reproduced, the mural in the motion picture, the court held that such copying was both de minimis and fair use and therefore not copyright infringement.  In dismissing the false endorsement claims, the court determined that the defendants’ use of the mural created little risk of confusion that the murals’ creator and subject, both peace activists, endorsed the defendants’ motion picture.

The decision bolsters the ability of movie and TV production companies to depict, accurately and briefly, iconic or well-known community sites as part of background “establishing shots.”  Meanwhile, the outcome might inject some uncertainty into whether artists can pursue licensing revenue for works depicted in those films and TV shows.

Continue reading “A De Minimis Defense Grows in Brooklyn: Display of Street Art in Action Movie Not Infringement”