Pattishall IP Blog

May 22, 2017

11th Circuit Requires Copyright Registration Certificate in Hand to File Infringement Action, Deepening Circuit Split

Filed under: Copyright — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:13 pm

By Jason Koransky

The Copyright Act sets what seems to be a straightforward threshold for a plaintiff to bring an infringement claim — “preregistration or registration of the copyright claim.” 17 U.S.C. § 411(a). This seemingly simple requirement, however, has led to a significant circuit split on whether “registration” occurs upon merely filing an application with the Copyright Office or when the Copyright Office actually issues a registration certificate. This split only deepened on May 18, 2017, when the Eleventh Circuit ruled in Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC (Case No. 16-13726) that a plaintiff must have a registration certificate in order to bring a claim.[1]

The Eleventh Circuit detailed the existing circuit split, and sided with the Tenth Circuit to adopt the registration requirement. In contrast, the Ninth and Fifth Circuits have both held a plaintiff needs only to have filed an application for the asserted copyright in order to bring a suit. This approach assumes that the registration itself eventually issues in due course.  The “application” rule was approved by the Eighth Circuit in dicta, while the Seventh Circuit has endorsed — also in dicta — both approaches in separate matters. Further, the First and Second Circuits have discussed this split, yet neither court has expressly endorsed an approach.

Considering the potentially long delays in obtaining a registration after filing an application with the Copyright Office, the Eleventh Circuit’s decision in Fourth Estate emphasizes that copyright owners should be diligent in filing copyright applications in a timely manner. Otherwise, if the proper venue for an infringement claim is the Eleventh Circuit, a party could be left with no recourse in court while waiting . . . and waiting . . . to obtain a copyright registration.

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[1] The decision is available for download at the court’s website, http://media.ca11.uscourts.gov/opinions/pub/files/201613726.pdf.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

May 12, 2017

Humanity Hates Trump may ________ Cards Against Humanity’s Trademark and Copyrights

Filed under: Copyright, Licensing, Trade Dress, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:42 am

By Paul A. Borovay

Chicago’s own Cards Against Humanity, the vulgar/raunchy/funny/the-opposite-of-politically-correct card game, filed a lawsuit against SCS Direct for its selling card sets called “Humanity Hates Trump.”[1]  Humanity Hates Trump – along with Humanity Hates Hillary Too!, to be non-partisan about it all – card sets are available on its website.[2]

SCS Direct displays the following disclaimer on its website:

This set is in no way endorsed or affiliated with Donald J. Trump himself or Cards Against Humanity™, a registered trademark of Cards Against Humanity LLC, nor does it represent the views of SCS Direct Inc.

The focus of the case is whether the Humanity Hates Trump cards infringe Cards Against Humanity’s trademark and copyrights.

Cards Against Humanity makes its cards available for free download through a Creative Commons license, namely, the “Attribution-Non Commercial-ShareAlike 2.0 Generic (CC BY-NC-SA 2.0)” license.[3]  While the name is a mouthful, the license is actually rather simple.  Licensees can share, copy, and adapt the Cards Against Humanity game as long as they give credit to Cards Against Humanity, make their adapted product available under the same license, and not use the borrowed material for commercial purposes.[4]

SCS Direct clearly sells its Humanity Hates Trump cards online for commercial gain, and its cards use the same simplistic, black and white appearance of the Cards Against Humanity products.

The case touches on several interesting issues.  Is Cards Against product appearance protected under trade dress law?  Are its cards protected under copyright law?  Do the Humanity Hates Trump cards “remix, transform, and build upon the [Cards Against Humanity] material,” as described in the Creative Commons license?  Or, are the Humanity Hates Trump cards a separate product not covered under the CC BY-NC-SA 2.0 license?  How much latitude do licensees have under the license, or Creative Commons licenses in general, with respect to making, offering (for free), or selling “adapted” products?  Maybe none, maybe some.  We’ll see.

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[1] Cards Against Humanity LLC v. SCS Direct Inc. et al., case number 1:17-cv-02781 (E.D.N.Y. May 8, 2017).
[2] See https://humanityhatestrump.com/.
[3] See https://cardsagainsthumanity.com/ and http://s3.amazonaws.com/cah/CAH_MainGame.pdf.
[4] The license is available on the Creative Commons website.  See https://creativecommons.org/licenses/by-nc-sa/2.0/.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

May 9, 2017

Charging Bull vs. Fearless Girl

Filed under: Copyright — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:48 am

 

By Robert W. Sacoff

Charging Bull vs. Fearless Girl.  Now here’s a cultural and legal tangle you don’t see every day.  On the copyright front, Fortune Magazine had an interesting article at http://fortune.com/2017/04/16/fearless-girl-copyright/ suggesting that the contrarian little girl statue confronting the charging Wall Street Bull would not violate the Visual Artist Protection Act.  Even if the Bull were considered in the category of site-specific art, which has not fared well under VARA, as a University of Michigan blog post discusses at http://artsatmichigan.umich.edu/ink/2014/02/19/site-specific-art-and-the-law/.  The socio-economic debate will likely outlive any legal challenge or threat.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 31, 2017

2017 “Women of Influence” Awards

Filed under: Pattishall — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:21 am


Ashly Boesche
was recognized as a Chicago Nominee for the 2017 “Women of Influence” Awards, an inaugural award presented by the Coalition of Women’s Initiatives in Law and Best Lawyers. Ashly is among a select few identified by her colleagues as an exceptional practitioner of law. The 2017 Women of Influence feature appears in Best Lawyers’ Spring 2017 Business Edition. Click here for more info.

 

 

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 23, 2017

“Give Me A C . . .” (for Copyrightable)

Filed under: Copyright — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 3:06 pm

By Seth I. Appel

On March 22, the Supreme Court found that Varsity Brands’ cheerleader uniform designs –arrangements of colors, shapes, stripes and chevrons, shown below  – may be subject to copyright protection.  Star Athletica, L.L.C. v. Varsity Brands, Inc., 580 U.S. __ (2017), https://www.supremecourt.gov/opinions/16pdf/15-866_0971.pdf.

Varsity Brands, the leading producer of cheerleader uniforms, brought suit for copyright infringement based on a competitor’s sale of similar uniforms.  In order to prevail, Varsity Brands had to prove that it owned valid copyrights in its designs.

Copyright protects “works of authorship” including “pictorial, graphic, and sculptural works.”  17 U.S.C. § 102(a)(5).  It typically does not protect useful articles.  However, the design of a useful article may be protected to the extent that “such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.”  17 U.S.C. § 101.

In yesterday’s  decision, the Supreme Court clarified the “separability” analysis.  It held that a feature incorporated into the design of a useful article is eligible for copyright if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work on its own or when fixed in some other medium.  Under this test, Varsity Brands’ designs were sufficiently separable to permit copyright protection.

Courts previously have struggled with the “separability” analysis, leading to different tests throughout the country.  The Supreme Court yesterday rejected the notion of “physical” separability adopted by some courts and commentators.  The statutory text of the Copyright Act, the Court explained, indicates that “separability is a conceptual undertaking.”

The Copyright Act does not expressly protect fashion designs, but yesterday’s decision will make it easier for designers to protect and enforce their creative works.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 17, 2017

Game Over for EMPORIUM ARCADE BAR service mark: “Merely Descriptive”

Filed under: TM Registration, Trademark (General), TTAB — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 9:31 am

 

 

 

 

By Jacquelyn R. Prom

On March 8, 2017, the Federal Circuit ruled[1] that the phrase ‘Emporium Arcade Bar’ is merely descriptive of arcade and bar services.

Emporium Arcade Bar is a popular Chicago bar offering a variety of old-school arcade games, pinball machines, draft beers, and cocktails. This crowd-pleasing spot opened its first location in 2012 in Wicker Park. In 2014, it opened a second location in Logan Square.

In 2014, Emporium also applied to register     as a service mark.[2] The Examining Attorney refused registration on the ground that the phrase is merely descriptive of Emporium’s arcade and bar services. Emporium tried to overcome the refusal by disclaiming the exclusive right to use ‘arcade bar’ apart from the mark as a whole. The Examining Attorney, however, required the additional disclaimer of ’emporium’ before the trademark could register. Emporium refused. It argued a disclaimer for ’emporium’ was unnecessary because the term does not immediately convey knowledge of its arcade and bar services. The Examining Attorney disagreed and issued a final refusal. Emporium appealed to the Trademark Trial and Appeal Board.

The TTAB affirmed the refusal,[3] finding ’emporium’ to be merely descriptive of arcade and bar services. Emporium again appealed, this time to the Federal Circuit.

The Federal Circuit affirmed the TTAB’s decision, ruling that the composite mark could not be registered without a disclaimer of all the wording due to each term’s descriptive nature. In reaching this conclusion, the court relied on dictionary definitions of emporium, arcade, and bar, as well as third-party trademark registrations that disclaimed ’emporium’ for restaurant, catering, and bar services.[4] The Federal Circuit also rejected Emporium’s argument that ‘Emporium Arcade Bar’ is a unitary mark. For these reasons, the court held ‘Emporium Arcade Bar’ was merely descriptive.

So for now it is game over for ‘Emporium Arcade Bar’ unless it is willing to disclaim all the wording in the composite mark, including emporium.

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[1] In re: Ddmb, Inc., Appellant, No. 2016-2037, 2017 WL 915102 (Fed. Cir. Mar. 8, 2017)

[2] Ser. No. 86/312,296

[3] In re Ddmb Inc., 86312296, 2016 WL 552609 (Jan. 29, 2016)

[4] E.g., Reg. No. 2216510 for the mark THE FLYING SAUCER DRAUGHT EMPORIUM, registered with a disclaimer of DRAUGHT EMPORIUM for “restaurant and bar services”; Reg. No. 3304948 for the mark MCDADE’S EMPORIUM, registered on the Supplemental Register with a disclaimer of EMPORIUM for “restaurant and bar services”; Reg. No. 2741163 for the mark THE FOOD EMPORIUM, registered under Section 2(f) with a claim of acquired distinctiveness and with a disclaimer of EMPORIUM for “retail grocery store and delicatessen services” and “catering and take-out delicatessen services”; and Reg. No. 2352358 for the mark GARDEN EMPORIUM, registered with a disclaimer of EMPORIUM for “catering services and restaurant services.”

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 8, 2017

Pattishall Prevails in 5th Circuit

Filed under: Litigation, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:02 pm

By Phillip Barengolts

Phil Barengolts and Jessica Ekhoff prevailed in the U.S. Court of Appeals for the Fifth Circuit for Insignia Marketing and Christine McAtee in Vetter v. McAtee, No. 15-20575 (5th Cir. March 1, 2017), http://www.ca5.uscourts.gov/opinions/pub/15/15-20575-CV0.pdf. The Court upheld Insignia Marketing’s trial victory and affirmed the denial of Vetter’s request for attorneys’ fees against our clients.  The Court held the Lanham Act’s “fee-shifting provision vests significant discretion in the district courts to grant or deny attorneys’ fees on a case-by-case basis.”  The case was held not “exceptional” under the standards announced in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

March 2, 2017

The Marshall Tucker Band is still “Searchin’ for a Rainbow”[1] – and a trademark infringement that works

Filed under: TM Registration, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 12:24 pm

Paul BorovayBy Paul A. Borovay

On March 1, 2017, a South Carolina federal judge dismissed The Marshall Tucker Band’s complaint against its publishing company alleging trademark infringement and dilution.[2]

The judge based her decision on the band’s failure to allege the publisher used the band’s trademarks in commerce.  The band relied entirely on the publisher’s trademark registrations, [3] as well as its statements to support its trademark applications that its marks were “now in use in . . . commerce.”

To establish trademark infringement under 15 U.S.C. § 1125(a) of the Lanham Act, a plaintiff must prove five elements, including that the defendant uses the mark “in commerce.”[4]  Section 15 U.S.C. § 1127 defines the term “use in commerce” to mean “the bona fide use of a mark in the ordinary course of trade, and not made merely to reserve a right in a mark.”

Stating that a mark is “now in use in . . . commerce” while prosecuting a trademark application is not the same thing as “using” a mark “in commerce.”  Judge Lewis cited Kusek v. Family Circle, Inc., 894 F. Supp. 522, 532 (D. Mass. 1995) for this notable proposition: “a federal registration [of a trademark] gives the owner of a mark legal rights and benefits, [but] its mere registration does not create the mark nor amount to ‘use’ of the mark [, and, therefore,] trademark registration per se cannot be considered as a use in commerce.”

While it has certainly been a “Long Hard Ride”[5] for The Marshall Tucker Band, the decision shows that a plaintiff cannot rely solely on defendants’ statements while prosecuting a trademark application to meet the Lanham Act’s “use in commerce” requirement.

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[1] “Searchin’ for a Rainbow” is the fourth studio album by The Marshall Tucker Band.
[2] Marshall Tucker Band Inc, The et al v. M T Industries Inc et al, No. 7:16-cv-00420 (D.S.C. March 1, 2017)
[3] See United States Trademark Reg. Nos. 4616427 and 4616428.
[4] 15 U.S.C. § 1125(a) requires the plaintiff to prove the following five elements: (1) that it possesses a mark; (2) that the defendant used the mark; (3) that the defendant’s use of the mark occurred in commerce; (4) that the defendant used the mark in connection with the sale, offering for sale, distribution, or advertising of goods or services; and (5) that the defendant used the mark in a manner likely to confuse consumers.
[5] “Long Hard Ride” is the fifth studio album by The Marshall Tucker Band.

 

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

August 15, 2016

2016 INTA/Pattishall Medal For Teaching Excellence: Annette Kur

Filed under: Pattishall, Trademark (General) — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:08 am

rws_high_resby Robert W. Sacoff, Partner

As a student at Northwestern University School of Law, I had the good fortune to take Beverly Pattishall’s course on “Trademarks, Trade Identity and Unfair Competition.” This year, I chaired the INTA Pattishall Medal Committee. Here’s a little background on Mr. Pattishall, the Medal and the 2016 recipient, Dr. Annette Kur.

Mr. Pattishall (1916-2002) was born in Atlanta, Georgia, educated at Northwestern and the University of Virginia, and rose to the rank of Lieutenant-Commander in the U.S. Navy, commanding combat ships in World War II. After the war he returned to Chicago and began his distinguished legal career, focusing on trademark and unfair competition cases, and also devoted his energies to teaching the subject in law school courses. He unveiled this fascinating and important field of law to me and many others, at a time when it was not widely taught in depth in law schools. An active trial lawyer, he brought his classes to life with case experiences and litigation tips from the trenches.

To honor his educational contributions, the Pattishall, McAuliffe firm created the Pattishall Medal for Teaching Excellence in 1997, in conjunction with INTA’s Brand Names Education Foundation. This quadrennial Medal is awarded to top educators in the field, who have been nominated by their peers and students based on their:

  • Professional and academic recognition
  • Peer and student evaluation
  • Innovation in methodology and commitment to education in the field of trademarks and trade identity

Past recipients of the Medal are:

  • 1997 Arthur J. Greenbaum
  • 2000 J. Thomas McCarthy
  • 2004 Roger Schecter
  • 2008 Graeme Dinwoodie
  • 2012 David Vaver

(more…)

April 12, 2016

Pattishall Prevails for Bayer in Landmark Unfair Competition Case

Filed under: Litigation, Pattishall — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 1:47 pm

Phil Barengolts and Bradley Cohn prevailed in the U.S. Court of Appeals for the Fourth Circuit for Bayer Consumer Care AG and Bayer Healthcare LLC in Belmora LLC v. Bayer Consumer Care AG and Bayer Healthcare LLC, No. 15-1335 (4th Cir. March 23, 2016). The Court held that ownership of a U.S. trademark is not a prerequisite for asserting unfair competition and related claims under Section 43(a) of the Lanham Act, or to cancel a trademark registration for misrepresentation under Section 14(3). This is an important clarification of U.S. unfair competition law.

Bayer Consumer Care sells naproxen sodium pain reliever in Mexico under the trademark FLANAX, which is well known in that country. Bayer does not sell FLANAX in the United States, instead selling ALEVE. Bayer sued a U.S. company, Belmora LLC, for using the FLANAX mark in the U.S. to falsely suggest to U.S. consumers–in particular, Mexican-Americans–that Belmora’s FLANAX pain reliever was the same as Bayer’s Mexican FLANAX pain reliever. Bayer sued for unfair competition and false advertising, and petitioned to cancel Belmora’s trademark registration for FLANAX because of Belmora’s misrepresentation.

On March 23, the Fourth Circuit held Bayer was entitled to sue Belmora, reversing the trial court ruling that Bayer could not proceed with its claims because it does not own the FLANAX mark in the U.S. The Fourth Circuit found that “the plain language of § 43(a) does not require that a plaintiff possess or have used a trademark in U.S. commerce as an element of the cause of action.” Based on that finding, and relying on the Supreme Court’s 2014 landmark decision in Lexmark v. Static Control, the Fourth Circuit held Bayer’s claims fell within the Lanham Act’s zone of interest and that Bayer had alleged injuries that were proximately caused by Belmora’s actions.

Many courts previously assumed a party must own a U.S. trademark to bring Section 43(a) claims. However, the Fourth Circuit held that assumption is wrong. A defendant who passes off its products as the plaintiff’s is liable under Section 43(a), regardless of whether the plaintiff actually owns a U.S. trademark. For instance, as the Fourth Circuit explained, a plaintiff can sue a defendant who uses a generic (and hence unprotectable) word to falsely associate its products with the plaintiff’s. Or, as in the present case, a plaintiff can sue a defendant who uses the plaintiff’s non-U.S. trademark to create a false association in the United States.

The Fourth Circuit noted that in a situation where merely “a few isolated consumers . . . confuse a mark with one seen abroad,” the owner of the non-U.S. trademark will “face difficulty” in establishing a Section 43(a) claim. But “the story is different when a defendant, as alleged here, has — as a cornerstone of its business — intentionally passed off its goods in the United States as the same product commercially available in foreign markets in order to influence purchases by American consumers.” In such a situation, the owner of the non-U.S. trademark has viable Section 43(a) claims.

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