When we published our Sue-per Bowl post, 2015 looked like it would be a good year for right of publicity claims brought by athletes. On January 6, 2015, the Ninth Circuit in Davis v. Electronic Arts held that the First Amendment did not compel dismissal of right of publicity claims brought by former NFL stars who appeared in the “historic teams” option of the Madden NFL computer game. However, things went downhill after that: other than Davis, the first six months of 2015 have not been kind to right of publicity claims in the sports world. Here is… More
Last week, the focus of the legal world was not on intellectual property, to put it mildly. However, copyright law did have a small and somewhat silent, but still important, role in the Supreme Court jurisprudence that led to the legalization of same-sex marriage in Obergefell v. Hodges. In fact, the reasoning of United States v. Windsor, the 2013 precursor to Obergefell which struck down the Defense of Marriage Act (DOMA), relied in large part on a 1956 copyright case.
Why Don’t You Marry the Girl?
In a trademark opposition that has been underway since 2009, the Yankees have successfully blocked the registration of two marks intended to parody their own: (1) the word mark, THE HOUSE THAT JUICE BUILT (instead of THE HOUSE THAT RUTH BUILT); and (2) a design mark that replaces the Yankees’ baseball bat with a syringe.
Foley Hoag was recently delighted to announce the arrival of two IP attorneys to our Paris office, Catherine Muyl and Alice Berendes. We asked them to tell us a few things we may not know about trademarks in France. Here they are:
On the French territory, two types of marks coexist: French trademarks issued by the French Trademark Office (INPI), that are valid on the French territory only, and Community trademarks issued by the Community Trademark Office which is part of the OHIM (“Office for Harmonization in the… More
Last month witnessed the resolution of two trademark infringement cases involving the relationship between political activities and the definition of “goods or services.” On May 18, 2015, State Senator Steve Hershey gave up his right to appeal to the Fourth Circuit from the District of Maryland’s decision that he was infringing the Hershey Chocolate trade dress. On May 19, 2015, however, the Fourth Circuit overturned the case on which the District of Maryland had been relying. Did the Senator settle one day too early?
Hershey v. Hershey
An application to register PRETZEL CRISPS as a mark will live another day, thanks to a Federal Circuit opinion reversing a TTAB decision that had canceled the mark on grounds of genericness.
The holder of the PRETZEL CRISPS mark, Princeton Vanguard, originally applied to register it in 2004. Not surprisingly, Princeton was diverted to the Supplemental Register given the non-distinctive nature of the mark. It later followed the standard practice of re-applying for the Principal Register based on acquired distinctiveness. At that point, however, snack titan Frito-Lay stepped in: it… More
Earlier this month, a man in Melbourne, Australia decided to take his very first selfie next to a Darth Vader poster at a local shopping center. A nearby shopper mistakenly thought that the man was taking pictures of her young children. Convinced she had espied a pedophile, the mother snuck a cellphone shot of the man and uploaded it to Facebook, along with commentary labeling him a “creep” and implying that he might be a “registered sex offender.” When word of the post reached the man, he immediately contacted the… More
On 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.
Last 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.
I’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.
U.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
We 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
Section 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.
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
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