On June 30, 2020, the U.S. Supreme Court (the “Court”), in an 8-1 decision, affirmed the Fourth Circuit’s holding that “BOOKING.COM” is a protectable trademark, thereby rejecting a sweeping rule that a protectable trademark cannot be created by adding “.com” to an otherwise generic term.… Continue Reading
On May 14, 2020, the United States Supreme Court held in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., that a party is not precluded from raising new defenses, when a subsequent lawsuit between the same parties challenges different conduct and raises different claims.
The Lanham Act (“Act”) makes it clear that generic terms cannot be registered as trademarks. But can an online business create a protectable trademark by adding a generic top-level domain (e.g., “.com”) to an otherwise generic term? The Supreme Court will answer this question in USPTO v. Booking.com, No. 19-46.
The legal battle between Booking.com and the … Continue Reading
On April 27, 2020, the United States Supreme Court held, in Georgia et al. v. Public.Resource.Org., Inc., in a 5-4 decision, that copyright law does not protect annotations contained in the official annotated compilation of Georgia statutes.
On April 23, 2020, the United States Supreme Court held in Romag Fasteners, Inc. v. Fossil Group, Inc., FKA Fossil, Inc., et al., that under the Lanham Act, a plaintiff is not required to show that a defendant willfully violated plaintiff’s trademark rights as a precondition to a profits award.
On March 23, 2020, in Allen v. Cooper, the Supreme Court held that Allen, who spent over two decades, photographing the shipwreck of Queen Anne’s Revenge, better known as the flagship for the pirate Blackbeard, cannot sue the State of North Carolina (“State”) for copyright infringement of his photographs. The Court’s decision was based on its prior decision … Continue Reading
ABA (as amicus) Asks the Supreme Court to Adopt a Flexible Rule for Recapture of Profits in Trademark Cases
Intellectual Property Owners Association (as amicus) Argues That a Willfulness Requirement Is Consistent with the Statute and Principles of Equity
The American Bar Association (“ABA”) filed an amicus brief with the Supreme Court in support of the petitioner in … Continue Reading
In June 2019, the United States Supreme Court granted certiorari in Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. As set forth in our previous blog post, Romag Fasteners Inc. (“Romag”) seeks to have the Court resolve a longstanding circuit split on the issue: “[w]hether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), … Continue Reading
In June 2019, the United States Supreme Court granted certiorari in Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086. As set forth in our prior blog posts, Lucky Brand Dungarees Inc. and related companies (collectively, “Lucky”) seek a reversal of the Second Circuit Court of Appeal’s ruling that Lucky was precluded by res … Continue Reading
In June 2019, the United States Supreme Court granted certiorari in Allen v. Cooper, No. 18-877. The case presents a question “whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act … in providing remedies for authors of original expression whose federal copyrights are infringed by States.” Plaintiffs filed their Opening Brief in August 2019.… Continue Reading
On Friday, June 28, 2019, the U.S. Supreme Court agreed to consider whether, in cases where a plaintiff asserts new claims, federal preclusion principles bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties. Lucky Brand Dungarees Inc., et al. v. Marcel Fashion Group Inc., No. 18-1086. … Continue Reading
On Friday, June 28, 2019, the U.S. Supreme Court agreed to decide the circumstances necessary to support an award of a trademark infringer’s profits under section 35 of the Lanham Act, 15 U.S.C. § 1117(a). Romag Fasteners Inc. v. Fossil Inc., et al., No. 18-1233. The ruling hopefully will resolve a long-standing circuit split over whether willfulness is a … Continue Reading
On June 24, 2019, the United States Supreme Court, in Iancu v. Brunetti, reviewing the trademark application for “FUCT”, held that the Lanham’s Act’s provision, prohibiting the registration of “immoral or scandalous” trademarks, 15 U.S.C. 1052(a)(1), violated the First Amendment to the United States Constitution. This blog has followed the evolving judicial views concerning “disparaging” trademarks, culminating in the Supreme … Continue Reading
On June 24, 2019, the U.S. Supreme Court granted certiorari to decide whether states can claim copyright protection in annotated codes. State of Georgia v. Public.Resource.Org, Inc., No. 18-1150. Annotated codes, in addition to the text of the statute, include summaries of judicial opinions, regulations, and attorney general opinions related to the statute. Georgia, like many states, offers a … Continue Reading
The United States Supreme Court in Mission Product Holdings, Inc. v. Tempnology, LLC (No. 17-1657) (May 20, 2019) resolved a deep circuit split and held that a licensees’ rights under trademark licenses survive a debtor-licensor’s rejection in bankruptcy, resolving an ambiguity presented in the intersection of intellectual property law and bankruptcy law that has plagued courts for decades.… Continue Reading
The Supreme Court unanimously decided two Copyright Act cases on March 4, 2019.
- In Rimini Street, Inc. v. Oracle USA, Inc., the Court held that the provision in the Copyright Act that gives federal district courts discretion to award “full costs” to a party in copyright litigation, 17 U. S. C. §505, covers only the six categories specified in
This blog has followed the evolving judicial views concerning disparaging trademarks, culminating in the Supreme Court’s decision in in Matal v. Tam, 137 S. Ct. 1744 (June 19, 2017). Our extensive coverage can be found here. We have also followed the closely related issue of the “immoral or scandalous” clause presented in In re Brunetti, 877 F.3d … Continue Reading
In a unanimous (albeit fractured) decision written by Justice Alito, the United States Supreme struck down a provision of the Lanham (Trademark) Act barring registration of “disparaging” trademarks, handing a victory to Asian-American rock band The Slants. In Matal v. Tam, No. 15-1293 (June 19, 2017), the Court held that the Lanham Act’s prohibition on registering federal trademarks that … Continue Reading
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.… Continue Reading
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