U.S. Supreme Court Upholds Federal Court Jurisdiction Over Copyright Infringement Claims For Unregistered Works: Reed Elsevier Inc. v. Muchnick

By Belinda J. Scrimenti, Esq.

Nearly nine years after its seminal decision regarding copyright law and electronic publication in New York Times Co. v Tasini, the United States Supreme Court addressed jurisdictional issues arising from authors' post-Tasini claims. On March 2, 2010, the Court held in Reed Elsevier, Inc. v. Muchnick, that, while Section 411(a) of the Copyright Act makes registration a precondition to filing a copyright infringement suit, it is not a jurisdictional requirement. The decision likely will lead to final resolution of an $18 million settlement in the underlying litigation. The Supreme Court's unanimous holding reversed the Second Circuit Court of Appeals' decision, which held that the district court lacked jurisdiction to certify a class and approve a settlement because some of the class members' copyrighted works were unregistered...[MORE]

Court Limits Copyright Statutory Damages to Number of Registrations Owned

By Ian J. Block, Esq.

The availability of statutory damages in copyright cases provides plaintiffs with significant leverage in litigation. Statutory damages under the Copyright Act can rise as high as $150,000 per infringed work if the infringement is willful. Assigning damages based on the number of infringed works is different from setting damages based on each act of infringement. Thus, when a defendant makes multiple infringing copies of a single work the plaintiff is entitled to one statutory award for the infringement, although the plaintiff may choose to receive actual damages instead...[MORE]

Federal Judges' Practice Tips for Young Lawyers

By Ashly Iacullo, Trademark Attorney

Appearing before a federal judge can be a nerve-wracking experience for a young attorney. Fortunately, several judges of the United States District Court for the Northern District of Illinois, Eastern Division took the time to offer their advice about how young attorneys should conduct themselves and prepare for various proceedings in the courtroom. On February 3, 2010, the Intellectual Property Committee of the Young Lawyers Section of Chicago Bar Association hosted its Third Annual Judges Panel...[MORE]

Defamatory "Tweet" Complaint Dismissed

By Alexis Payne, Esq.

On January 27, 2010, the Circuit Court of Cook County dismissed a property manager's defamation claim against a disgruntled tenant over a Twitter post. The tenant, Amanda Bonnen, posted the following "tweet" on Twitter to vent her frustration with Horizon Realty, her property manager: "Who said sleeping in a moldy apartment was bad for you? Horizon realty thinks it's okay." Horizon Realty alleged it sustained $50,000 in damages as a result of the disparaging post, despite the fact that Ms. Bonnen's Twitter account only had twenty followers...[MORE]

Owners of copyright in a foreign work must obtain U.S. copyright registration in order to seek statutory damages/attorneys’ fees in U.S. courts

by Thad Chaloemtiarana, Trademark Attorney

Article Five of the Berne Convention for the Protection of Literary and Artistic Works ("Berne Convention") provides that "the enjoyment and the exercise of [rights under the Convention] shall not be subject to any formality". In the Berne Convention Implementation Act of 1988 (the "Implementation Act"), Congress brought United States copyright law into conformity with the standards of the Berne Convention. Among other things, the Implementation Act released foreign (but not U.S.) claimants from the obligation to register their foreign copyrights as a prerequisite to enforcing them in United States courts. The Implementation Act, however, did not amend Section 412 of the Copyright Act of 1976 which conditions an award of statutory damages or attorneys' fees on registration of the copyright in the United States...[MORE]

Trademark Trial and Appeal Board Provides Post-Bose Guidance for Pleading Fraud on the Patent and Trademark Office

By Andrew Downer, Trademark Attorney

Recently, the Trademark Trial and Appeal Board ("TTAB") issued a decision providing guidance on the proper way to plead a fraud claim under the new Bose standard. The case – DaimlerChrysler Corp. and Chrysler, LLC v. American Motors Corp., Canc. No. 92045099 (Jan. 14, 2010) – is the TTAB's first post-Bose decision to find a fraud claim to have been sufficiently pled. The DaimlerChrysler case also offers some interesting insights into the ability for fraud plaintiff's to obtain summary disposition of their claims...[MORE]

Fed. Cir. Overturns PTO Requirement That Applicant Provide a Picture of a Good Sold Over the Internet as a Specimen Supporting A Trademark Application

by Phillip Barengolts, Trademark Attorney

An applicant for federal registration of a trademark in the United States eventually must submit a specimen to the Patent and Trademark Office (the “Office”) showing use of the trademark in connection with the applied-for goods or services. For many years, the Office has required applicants who submit a web page showing the mark in connection with the sale of the goods over the Internet to include a picture of the goods themselves...[MORE]