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

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”

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”

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”

Ninth Circuit Rules in Favor of Led Zeppelin, Clarifies Standards for Copyright Infringement

By David A. Steinberg and James Berkley

Photo Credit: istock.com/NiroDesign

On March 9, 2020, the Ninth Circuit issued its en banc decision­­­ in the long-running and closely watched copyright case concerning the rock group Led Zeppelin’s 1971 song “Stairway to Heaven.” Skidmore v. Led Zeppelin et al., Case No. 16-56057, 16-56287 (9th Cir. Mar. 9, 2020).  A 2014 lawsuit in the Central District of California alleged that “Stairway to Heaven” infringed portions of an instrumental composition titled “Taurus” that had been recorded and released in 1967 by the group Spirit.  Capping off several years of uncertainty, the Court’s en banc opinion reversed the previous 2018 ruling of a three-judge panel and reinstated the judgment entered at the district court, where a jury found that “Stairway to Heaven” does not infringe the “Taurus” musical composition.

Among many topics covered, the Ninth Circuit’s en banc opinion contains three sets of holdings that, absent a successful petition to the U.S. Supreme Court, should have continuing implications for copyright litigation in the Ninth Circuit.  These holdings may be summarized as follows: Continue reading “Ninth Circuit Rules in Favor of Led Zeppelin, Clarifies Standards for Copyright Infringement”

New Regulations Issued By The Copyright Office Affecting Thousands of Websites

By Eric Schwartz and Matthew Williams

The Copyright Office officially released an announcement Monday, October 31st, about new regulations affecting all online service providers who seek liability limitations under 17 U.S.C. § 512 (i.e., the DMCA). The regulations, which are effective as of December 1, 2016, require that all service providers (even those who have previously designated agents) file new forms prior to December 31, 2017 to (re)name their copyright designated agents, who are to receive takedown notices from copyright owners related to allegedly infringing content. This (re)designation process must be completed through the Copyright Office’s new online registration system. Paper forms will no longer be accepted. Moreover, companies must renew their agent designations every three years.

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