Supreme Court Will Decide When Trademark Infringers May Be Ordered to Forfeit Profits

Posted in IP Litigation, Supreme Court, Trademarks

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 required element of proof and create a roadmap for profit awards in trademark cases. Continue Reading

Supreme Court Holds Ban on Immoral or Scandalous Trademarks Unconstitutional

Posted in Supreme Court, Trademarks

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 Court’s decision in Matal v. Tam, 137 S. Ct 1744 (June 19,2017) (our coverage can be found here) and the related issue of “immoral or scandalous” trademarks as last addressed by the Federal Circuit in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017)(here), and as to which the United States Supreme Court granted certiorari. Continue Reading

Supreme Court to Rule on Copyright Protection of State Annotated Legal Codes

Posted in Copyrights, Supreme Court

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 free version of the statute but charges a fee for the annotated version.

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Rejection (In Bankruptcy) Does Not Spurn Trademark Licensees

Posted in Supreme Court, Trademarks

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

Copyright Doubleheader At The Supreme Court

Posted in Copyrights, Supreme Court

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 the general costs statute, 28 U. S. C. §§1821, 1920.
  • In Fourth Estate Pub. Benefit Corp. v., the Court explained that 17 U. S. C. §411(a) direction 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” bars commencement of an infringement suit, until the Copyright Office registers a copyright. Upon registration of the copyright, however, a copyright owner can recover for infringement that occurred both before and after registration.

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Disparaging, Immoral and Scandalous Trademarks in the Supreme Court: Beyond Tam to Brunetti

Posted in Supreme Court, Trademarks

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 1330 (Fed. Cir. Dec. 15, 2017) here, where the Federal Circuit followed its earlier instincts that that the “immoral . . . or scandalous” clause is an unconstitutional violation of the First Amendment’s free speech clause. On September 7, 2018, the government filed a petition for writ of certiorari in the case, which is now captioned Iancu v. Brunetti, No. 18-302. On January 4, 2019, the Supreme Court granted the petition for review. Continue Reading

Rapunzel May Be Released From Trademark Monopoly Tower

Posted in Trademarks, TTAB

Rapunzel potentially was released from the trademark monopoly tower, not by her hair, but by trademark opposer and law professor Rebecca Curtin. In a decision issued on December 28, 2018, the United States Patent and Trademark Office, Trademark Trial and Appeal Board (the “Board”) denied trademark applicant United Trademark Holdings, Inc.’s (“Applicant”) motion to dismiss Prof. Curtin’s opposition to registration for lack of standing. Continue Reading

The Skinny on “Thins”

Posted in IP Litigation, Trademarks

According to the Federal Circuit, the skinny on the term “Thins” is that it may be generic for thinly cut snack crackers. Real Foods Pty Ltd. V. Frito-Lay North America, Inc., (October 4, 2018 Fed. Cir.).

In 2012, Real Foods Pty. Ltd. (“Real Foods”) applied to register the trademarks CORN THINS for “crispbread slices predominantly of corn, namely popped corn cakes,” and RICE THINS for “crispbread slices primarily made of rice, namely rice cakes.” [1] The words “corn” and “rice” were disclaimed from their respective applications. Frito-Lay North America, Inc. (“Frito-Lay”) opposed registration of those marks, alleging that RICE THINS and CORN THINS were (i) generic names for the goods; (ii) so highly descriptive of the goods as to be incapable of acquiring distinctiveness; and (iii) merely descriptive of the goods, and Real Foods’ evidence of acquired distinctiveness of “Thins” was inadequate and insufficient. Continue Reading

Ninth Circuit Extends Tam 1st Amendment Protections to Advertising

Posted in Advertising, IP Litigation, Trademarks

The Ninth Circuit extended the First Amendment protections enunciated by the Supreme Court in Matal v. Tam, 137 S.Ct. 1744 (2017)[1] to advertising in American Freedom Defense Initiative, et al. v. King County (9th Cir. Sept. 27, 2018).

Plaintiff American Freedom Defense Initiative is an organization co-founded by Pamela Geller and Robert Spencer, whose focus is to raise awareness and educate the public about the dangers of Islamic terrorism.  Both Geller and Spencer are strident opponents of various Islamic organizations, which they believe are terrorist front-groups.  It is therefore not surprising that they and their work, which includes sponsoring bus and billboard campaigns promoting their viewpoint, have met with considerable push-back. Continue Reading