“Hollywood Circuit” Court Issues En Banc Decision in Garcia v. Google: No Copyright Protection for Fleeting Dramatic Performance

Innocense 2On May 18, 2015, the Ninth Circuit sitting en banc vacated its prior decision in Garcia v. Google. The prior decision, authored by Judge Alex Kozinksi, controversially held that an actress had standing to issue a DMCA takedown notice to YouTube because she had a distinct copyright in her performance within a film, even though she was not an author of the film as a whole. The en banc decision dissolves a previously issued injunction and reaffirms a more traditional view of film authorship for copyright purposes.

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Eleventh Circuit Mops the Floor With Invalidity Ruling: Faux-Hardwood Gets Copyright Protection

woodLast year, the District Court in Home Legend v. Mannington Mills gave three reasons for its holding that the designs on faux-hardwood flooring material, which are intended to look like real maple floors, were not subject to copyright protection. On April 29, 2015, however, a unanimous Eleventh Circuit decision held that these reasons were against the grain, and shipped the matter back to District Court for pulping.

Mannington Mills (“Mannington”) creates two-dimensional photographic designs, such as its copyrighted “Glazed Maple,” that are affixed to laminated flooring material in… More

INTA.sucks: Brand Prophylaxis or Trademark “Protection” Racket?

CaptureI’m back from the International Trademark Association (INTA) Annual Meeting in beautiful (if a bit cloudy and windy) San Diego, which featured the usual array of client meetings, networking with counsel from around the world, and seeing the sights.  The convention center area, the USS Midway, and the street of the Gas Lamp Quarter were temporarily overrun with the nearly 10,000 trademark (with a smattering of patent) professionals proudly displaying their INTA badges and ribbons.

This was also the perfect opportunity for the folks at Vox Populi, also… More

Top Eight Things You Should Know About the Hague System For International Registration of Designs

CaptureU.S. applicants will soon be able to use a streamlined international filing procedure for design patents similar to the Madrid Protocol for trademark registrations.  Currently, U.S. applicants seeking to protect designs in multiple countries must file separate applications for each of the countries through their national or regional patent offices.  Starting May 13, 2015, when the Hague Agreement Concerning the International Registration of Industrial Designs goes into effect in the U.S., applicants will be able to file a single international design application (IDA) for protection in up to 64… More

The Bermuda Triangle of Online Defamation: Copyright, Clickwrap and the CDA

RippoffWe have written many times about attempts to use copyright law to do what defamation law can’t: take stuff down from the internet. Because Section 230 of the Communications Decency Act (“CDA”) prevents a defamation plaintiff from suing an internet service provider for merely hosting defamatory content, many allegedly defamed parties instead have attempted to use the Digital Millennium Copyright Act (“DMCA”) to “take down” the offending material. For example, some dentists have asked their patients to sign over the copyright to future online reviews so they can issue… More

Carta de Error! Copyright Takedown Notice To iTunes May Give Rise to Misrepresentation Liability

carta de errorSection 512(f) of the Digital Millennium Copyright Act makes parties who issue copyright takedown notices liable for any “knowing” misrepresentations in those notices. However, the Ninth Circuit in Rossi v. Motion Picture Ass’n of America, and other courts, have interpreted the term “knowing” narrowly, causing many to wonder if Section 512(f) has much practical application.

In a recent article for the ABA’s Landslide Magazine, I argued that, irrespective of Rossi, there are still several fact patterns that create a serious risk of liability under Section 512(f),… More

Supreme Court’s B&B Hardware ruling creates the potential for court deference to the TTAB — but will it happen?

sdf

Did  TTAB proceedings — until now considered a relatively obscure branch of IP litigation, conducted before an administrative body of which most attorneys are blissfully unaware — just assume greater importance?  That seems to be the general reaction to the U.S. Supreme Court’s holding in B&B Hardware v. Hargis Industries last month.

B&B Hardware took an unusually aggressive approach to its trademark dispute with Hargis, which centered on the likelihood of confusion between B&B’s SEALTIGHT mark and Hargis’ SEALTITE.  B&B brought a TTAB opposition proceeding and won, preventing SEALTITE… More

Three’s Company But Two’s a Crowd: Theatrical Parodies of Copyrighted Works

3c

In our Oscar litigation post a few weeks ago, we made a passing reference to MGM v. Showcase Atlanta Coop. Prods., Inc., 479 F.Supp. 351 (N.D. Ga. 1979). In that case, the Northern District Court of Georgia held that the play Scarlett Fever was not a protected parody of Gone with the Wind, but rather an unlicensed derivative remake. When we researched this topic, we were somewhat surprised to discover almost no other published opinions exploring the line between theatrical parodies (which are fair use) and mere theatrical… More

No Purchase Necessary: Six Tips for Making Sure Your Online Prize Promotion is not an Illegal Lottery

sdThe Federal Trade Commission’s recent $9.5 million judgment against sweepstakes operator Crystal Ewing is a stark reminder that prize promotions remain fertile ground for regulatory scrutiny both on the state and federal level.  Marketers have grown ever more reliant on sweepstakes, contests, and giveaways since Ewing first came to the FTC’s attention nearly a decade ago—thanks in large part to our obsession with mobile devices and social media, and the opportunities they present for instant engagement with masses of digitally-savvy consumers.  Despite the technological advances, however, the basic legal principles… More

The Next New gTLD Just .Sucks for Brand Owners

.sucks

Hot on the trails of .porn and .adult, a new gTLD enters the fray next week — one that’s already giving PR departments heartburn.  The .sucks domain launches for sunrise registrations on March 30, 2015, and with it yet another potentially costly headache for brand owners.

What Is .Sucks?

The .sucks gTLD is similar to .xxx, .porn, and .adult, in that companies are rightfully concerned that their names and trademarks may be associated with domains and websites that could harm those brands or otherwise generate ill will.  Unlike those… More

Seeing Double Trademarks on St. Patrick’s Day? It’s Probably the Guinness

3St. Patrick’s Day is upon us, which in Boston means loads of Kelly green, a famously-litigated parade, and a huge spike in the consumption of Guinness.  The iconic dark stout travels in equally recognizable containers, each emblazoned with a Gaelic harp modeled on the famous 14th-century “Brian Boru’s” harp, currently preserved in Dublin’s Trinity College.

Such harps have been a part of Irish heraldry for over seven hundred years, so when the Dublin-based Guinness Company designed its first bottle label in 1862, using a harp must have been… More

Default Is In Our Stars: Allegedly Overreaching Copyright Claimants Fail to Show

Taking legal action to enforce a copyright is often an expensive proposition so, before you go down that road, you better make sure you own the copyright in question. But what if you have already initiated copyright infringement proceedings and later lose confidence in your claim of ownership – how do you extract yourself?  Well, here’s one option that seems to be increasingly popular (but which we don’t recommend): just don’t show up. Recently, default judgments issued for just that reason in two cases we’ve been following.

The Disappearing Dentist

dentistWe… More

.PORN and .ADULT Join .XXX to Form Unsexy Threesome for Brand Owners

Porn

Yesterday marked the sunrise launch of the .porn and .adult generic top-level domains (gTLDs), which join .xxx in the top-level domain name space as gTLDs targeted mainly at online purveyors of adult entertainment.  As with .xxx, the introduction of these adult-themed gTLDs presents yet another annoyance for trademark owners already fatigued by the weekly onslaught of gTLDs introduced over the past couple of years pursuant to ICANN’s expansion of the domain name spaceAlso as with .xxx, brand owners have some opportunities to defensively register .adult… More

Don’t Mess with Texas Trademarks

DMWTAs a native Texan, I always feel a bit nostalgic and homesick around early March.  Not only is bluebonnet season (read: spring) around the corner (if only that were true here in Boston!), but March 2 marks Texas Independence Day – the date on which, in 1836, Texas declared its independence from Mexico.  Although the Republic of Texas lasted only ten years, its fiercely independent spirit seems to live on in the tenacity with which the Lone Star State asserts trademark rights in Texas’s unique brand.  In… More

UDRP Panel Tells Snapchat to Check Itself Regarding Snapchatcheck.com

snapchat

By now you’ve probably heard of Snapchat.  But if you are not among its growing core base of users between 13 and 23 years of age (probably a good deal younger than you, constant reader) there’s a good chance you are not a Snapchat user. Snapchat is, as they said once upon a time, all the rage with the kids.  It’s a social messaging mobile app that allows users to send photos and videos — “Snaps” —  to groups of friends, which can be viewed on… More