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
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. Six years later, the documentary film Burlesque: Heart of the Glitter Tribe (the “Film”) — which … Continue reading Fair Use & Tater Tots
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
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. The Plaintiffs—two former University of … Continue reading Epic Games Obtains Early Win In Fortnite “Running Man” IP Lawsuit
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”
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.”
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”
A recent precedential opinion from the U.S. Patent & Trademark Office Trademark Trial and Appeal Board (TTAB), Shannon DeVivo v. Celeste Ortiz, Opposition 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”
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”
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”