On March 4, 2019, the United States Supreme Court held that, with certain exceptions, a copyright owner must obtain a copyright registration certificate from the Copyright Office before filing a copyright infringement suit. The unanimous opinion in Fourth Estate Public Benefit Corp. v. Wall-Street.Com, LLC, authored by Justice Ruth Bader Ginsburg, affirmed the Eleventh Circuit and resolved a split among the circuit courts of appeal.… More
Tag Archives: Registration
Copyright Protection for Creative Product Packaging
If you have ever been tasked with considering what types of intellectual property protection were available for a new packaging design, copyright may not be the first thing that came to mind. After all, it is trademark law that is designed to protect the public’s association with a commercial name or logo, and in some cases the distinctive look (or “trade dress”) of a product and/or its packaging.… More
Copyright Office Finds “Ballooned Droplet” is Really Just a Fat Apostrophe
In theory, a corporate logo should stand just as good a chance at being eligible for copyright registration and protection as any other kind of visual art. Section 913.1 of the Compendium of U.S. Copyright Office Practices expressly provides that a logo may be registered if it satisfies “the requisite qualifications for copyright,” that is, if it “embodies some creative authorship in its delineation and form.”
But in practice,… More
UEFA Starball “Curves” and “Illusions” Bounced by Copyright Office
The “Starball” logo of the Union des Associations Européennes de Football (“UEFA”) consists of a round ball made up of black stars, with white polygons in the negative space between the stars. In 2016, UEFA filed an application with the United States Copyright Office to register the Starball as a work of two-dimensional visual art. The Copyright Office was not impressed and, on July 30,… More
Enforce Your Trademarks Now Or You Might Be The Next Red Hen
If you needed another reason to take action against a third party using your trademark – and you shouldn’t need another reason – consider the Red Hen restaurant. Which Red Hen? That’s the point.
As everyone by now knows, White House press secretary Sarah Huckabee Sanders posted a tweet over the weekend stating:
Last night I was told by the owner of Red Hen in Lexington,… More
Star Athletica and the Expansion of Useful Article Protection: Copyright Office Permits Registration of Automotive Floor Liner
The Supreme Court’s decision in Star Athletica v. Varsity Brands established a new and simplified test for determining whether useful articles can obtain copyright protection. Many have wondered, in the year since it was decided, about the practical effect of the ruling. Are there really that many items that would not have merited protection before Star Athletica, but that will get it now? … More
Owner of Foreign Copyrights Must Plead Registration Exemption
What exactly is the definition of a “United States work” for copyright registration purposes? And why is a certain Albanian television company unlikely to forget that definition any time soon?
As we’ve previously discussed, plaintiffs must register their work with the Copyright Office before filing suit in a U.S. court. Section 411(a) of the Copyright Act, 17 U.S.C. § 411(a),… More
Celebrity Trademark Watch: Gene Simmons Claims Exclusive Right In Hand Gesture
Earlier this month, KISS guitarist Gene Simmons filed an application with the United States Patent and Trademark Office (“USPTO”) to register the “devil’s horns” hand gesture, which he routinely flashes at rock shows, as a trademark for “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist.” This bold move brings up a number of interesting questions, ranging from “Does the gesture really function as an indicator of source that points to Simmons?” to “How will he ever enforce it?” to “Can you really claim trademark rights in a hand gesture?” For a number of reasons,… More
Registration v. Application: A Copyright Circuit Split
Registration is not required for valid copyright ownership, but it is required before you can bring a copyright infringement lawsuit. Section 411(a) of the Copyright Act provides that:
No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title. In any case,… More
A Tale Of Two Hats: Trademark “Use In Commerce” Expanded In A Potentially Game-Changing Decision
Our readers no doubt understand that trademark use is the basis for trademark protection in the U.S. But all use is not created equal, and sometimes it’s not so easy to tell whether a trademark is actually used in a manner sufficient to qualify for federal trademark registration. A recent Federal Circuit decision promises to make this determination a little bit easier.
The U.S.… More
Happy Birthday, National Parks! Would You Like Your Trademarks Back?
August 25, 2016 marks the 100th birthday of the National Park Service, which runs the nation’s 413 national parks. Although I am not a particularly outdoorsy person, my relatives are, so here we are on summer vacation in Acadia National Park in Maine. I must admit that it is really beautiful here, and the mosquitoes have not devoured me yet. As a trademark lawyer, however, I can’t help but be reminded of what has become one of the most controversial trademark disputes of all time –… More
Top Five Reasons Why You Should File For Trademark Protection In Cuba
As the U.S. and Cuba progress towards normalizing trade relations, many U.S. companies are contemplating whether it makes sense to do business in Cuba. While some companies already plan to enter the Cuban market, others have no plans to do so. Regardless of where your company falls on that spectrum, failing to protect your brand in Cuba could create major obstacles down the road, even if you have no immediate plans to offer products or services in Cuba.… More
Domain Name Strategies for Start-Up Companies
Just as it is important for start-up companies to be mindful of early-stage trademark and copyright protection strategies (see our guides entitled “Trademark Strategies for Start-Up Companies” and “Copyright Strategies for Start-Up Companies”), savvy start-up founders will be thinking about domain name acquisition and related issues right at the beginning.
These days, it is essential for a start-up company to have at least a basic web presence,… More
Copyright Strategies for Start-Up Companies
As a leader of a start-up company, you are probably aware of the importance of protecting your company’s innovative products, services and technologies through patent filings. If you are savvy, you are also aware of the importance of having a trademark and branding strategy as well (see our guide entitled “Trademark Strategies for Start-Up Companies”). Most start-up companies overlook copyright issues, however, and this can create problems down the road. … More
Trademark Strategies for Start-Up Companies
Most innovative start-up companies appreciate that a sound patent strategy is critical to success in the marketplace, and in making the company attractive to investors and future acquirers. But they overlook the importance of having a trademark strategy right out of the gate. Trademarks are an essential part of any successful company’s branding strategy. In addition, there are a number of reasons why an early investment in trademark strategy can have big payoffs —… More