COVID-19 Client Communication, Vol. 12
Below please find our latest alerts regarding COVID-19’s effect on various policies and laws. Feel free to read and share, and contact us if there is anything we can do to help you or your business maintain compliance in this ever-evolving situation. Continue reading “COVID-19 Client Communication, Vol. 12”
Employees Put to the Test
Employers May Test Employees for COVID-19 Before Allowing Their Return to Workplace, EEOC Says Written by Jeremy Mittman and Thea Rogers The U.S. Equal Employment Opportunity Commission (“EEOC”) said in guidance released Thursday that employers may administer COVID-19 testing to employees in order to determine if they have the virus, prior to permitting them to return to the workplace. The agency stated that this latest … Continue reading Employees Put to the Test
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.
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.
Continue reading “Multicolor Marks On Product Packaging Can Be Inherently Distinctive”
Immigration Proclamation Sets Limited Curbs
President Suspends Temporary Entry of Certain Immigrants Due to COVID-19 Economic Fallout
Written by David S. Rugendorf
On Wednesday evening, April 22, 2020, President Trump issued his highly anticipated immigration proclamation, temporarily suspending some types of immigration to the United States due to COVID-19 and its resultant damage to the domestic labor market. While the language of the order suggested that future actions may be necessary, the current order is very limited in its scope and application. Very few individuals are now prevented from entering the United States who had not previously been barred from entry. A summary of the order is as follows: Continue reading “Immigration Proclamation Sets Limited Curbs”
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.
NY Court Allows Use of Third-Party Photo Embedding, Thanks to Instagram’s Terms of Service
Written by Robert H. Rotstein and Timothy M. Carter
In the past few years, the advent of social media has increasingly tested the bounds of copyright law. The issue of whether “in-line linking” or “embedding” constitutes actionable copyright infringement is no exception.
Early last week, in Stephanie Sinclair v. Ziff Davis, LLC, and Mashable, Inc., 1:18-cv-00790 (SDNY, April 13, 2020), Judge Kimba Wood held that Defendant Mashable did not engage in copyright infringement by embedding of Plaintiff photographer Stephanie Sinclair’s photograph “Child, Bride, Mother/Child Marriage in Guatemala” (the “Photograph”). The Court determined that Mashable used the Photograph, which was posted to Sinclair’s publicly viewable Instagram account, pursuant to a valid sublicense granted to Instagram by Sinclair. Accordingly, Judge Wood granted Mashable’s motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) on the grounds that Sinclair failed to state a claim for copyright infringement. Continue reading “NY Court Allows Use of Third-Party Photo Embedding, Thanks to Instagram’s Terms of Service”
COVID-19 Client Communication, Vol. 11
Below please find our latest alerts regarding COVID-19’s effect on various policies and laws. Feel free to read and share, and contact us if there is anything we can do to help you or your business maintain compliance in this ever-evolving situation. Continue reading “COVID-19 Client Communication, Vol. 11”
Accommodation Landmines Await
EEOC Issues New Guidance on COVID-19 Reasonable Accommodation and Return-to-Work Issues
Written by Jeremy Mittman and Corey Singer
On April 17, 2020, the Equal Employment Opportunity Commission (“EEOC”) issued updated guidance for employers, providing further technical assistance about complying with workplace issues during and after the COVID-19 pandemic.
Many of the EEOC’s new Q&As for employers concern how to handle employees’ accommodation requests in light of the COVID-19 pandemic. For instance, the agency advised that employers may ask questions or request medical documentation to determine if the employee has a “disability” under the Americans with Disability Act (“ADA”). Employers also may forgo or shorten the “interactive process” and grant the accommodation requests, if necessary. Continue reading “Accommodation Landmines Await”
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