On December 20, 2016, the New York Court of Appeals (New York’s highest court) issued a landmark state copyright law decision, holding in response to a certified question from the Second Circuit in Flo & Eddie, Inc. v. Sirius XM Radio, Inc., that New York law does not recognize a right of public performance for creators of sound recordings fixed before February 15, 1972. Continue Reading
The First Circuit recently issued an important interpretation of bankruptcy law that directly impacts trademark licensing rights. In In re Tempnology LLC, 559 B.R. 809 (1st Cir. BAP 2016), the First Circuit Bankruptcy Appellate Panel held that a debtor-licensor’s rejection of a trademark licensing agreement “did not vaporize” the licensee’s contractual right to use the debtor’s mark and logo. The court found that, while trademarks are “not encompassed in the categories of intellectual property entitled to special protections under § 365(n)” of the Bankruptcy Code, the licensee could still retain trademark rights under the terms of the parties’ co-marketing and distribution agreement (which contained the trademark licensing agreement) and applicable non-bankruptcy law. Continue Reading
The Supreme Court denied review of the 2d Circuit decision on the Stolichnaya trademark. See our prior blog here. Still a tough road for disputed (no longer) trademark holder because of delay.
The Supreme Court rejected the effort by the Washington Redskins to skip the 4th Circuit and Join the hearing of the USPTO appeal of the SLANTS case, both of which have been the subjects of blogs here.
The Supreme Court granted the United States Patent and Trademark Office’s petition for certiorari in In re Tam, 117 USPQ2d 1101 (Fed. Cir. 2016), discussed here and here. In that case, the USPTO denied registration of an application to register the trademark THE SLANTS for a rock/dance on the grounds that it was offensive to Asians or Asian-Americans. Continue Reading
The Southern District of New York recently booted shoe manufacturer LVL XIII Brands, Inc.’s trade dress infringement suit against Louis Vuitton Malletier S.A. in LVL XIII Brands, Inc. v. Louis Vuitton Malletier S.A.. At issue in this lawsuit was Plaintiff LVL XIII’s claim to exclusive trade dress rights in a rectangular metal toe plate on its athletic shoe and its claim that Defendant Louis Vuitton’s own use of a metal toe plate on athletic shoes created “reverse confusion” in violation of the Lanham Act. Continue Reading
In Trader Joe’s Company v. Michael Norman Hallatt, the Ninth Circuit recently found that Trader Joe’s allegations of infringing conduct occurring within Canada supported a cognizable claim under the Lanham Act.
In particular, Trader Joe’s, a well-known American grocery store chain, filed suit in federal court in Washington State in 2013, alleging trademark and unfair competition claims under the Lanham Act and Washington law for infringement occurring in Canada. According to Trader Joe’s, a Canadian resident, Michael Norman Hallatt, was purchasing Trader Joe’s branded goods in Washington, taking them to Canada, and reselling them at inflated prices in a store named “Pirate Joe’s” which he designed to mimic a Trader Joe’s store. Hallatt is alleged to have advertised with Trader Joe’s trademarks and displayed an exterior sign at Pirate Joe’s in Canada that uses a font similar to the trademarked “Trader Joe’s” insignia. Continue Reading
As we have previously blogged, the Department of Justice (“DOJ”) rejected proposed modifications to the existing Broadcast Music, Inc. (“BMI”) and American Society of Composers, Authors and Publishers (“ASCAP”) consent decrees. Nor did the DOJ purport to change any of the existing interpretations of the decrees.
As we predicted, BMI and ASCAP are challenging the DOJ action. Continue Reading
On August 4, 2016, the Department of Justice (“DOJ”) rejected changes to the 1941 consent decrees with ASCAP and BMI. These decrees have been in place since 1941, when the DOJ settled antitrust claims with ASCAP and BMI relating to joint licensing of competing songs. The American Society of Composers, Authors and Publishers (“ASCAP”) and Broadcast Music, Inc. (“BMI”) are “performing rights organizations” (PROs). PROs provide licenses to users (e.g., bar owners, television and radio stations, and internet music distributors) that allow them to publicly perform the millions of songs of the PROs of songwriter and music publisher members, without resorting to individualized licensing determinations or negotiations. But because a blanket license provides at a single price the rights to play many separately owned and competing songs, ASCAP and BMI have long raised antitrust concerns. Continue Reading
In Urbont v. Sony Music Entertainment Inc., 15-1778, the Second Circuit recently revived claims against Sony and Ghostface Killah, holding that although third parties may raise a work for hire defense, here there were factual issues that precluded summary judgment. The Court affirmed, however, summary judgment on plaintiff’s state law claims as preempted by the Copyright Act. Continue Reading