Firm Attorneys Peter Matos, Meredith Mendez and Jonathan Woodard were successful in enforcing the valuable intellectual property rights of well-known jeweler Merit Diamond Corporation related to its highly successful Sirena® Collection in federal court in Miami, Florida. Merit sued Defendants, Sears, Roebuck & Co., Sears Holdings Management Corporation, Sears Brands, LLC, Kmart Operations LLC, Kmart Corporation, iStar Jewelry LLC, Yelnats, Inc., and Stanley Creations, Inc. for copyright and trade dress infringement due to their sale and manufacture of infringing jewelry. The Court entered a Judgment upon consent in favor of Merit requiring the Defendants to pay Merit Diamond the amount of $90,000 and permanently cease all manufacture, distribution, and sale of the infringing products. http://bit.ly/2qT9pwg
The 11th Circuit in Fourth Estate Public Benefit v. Wall-Street.com, LLC, No. 16-13726 (11th Cir. 2017) has reaffirmed its position that a copyright owner cannot file a copyright infringement lawsuit unless the Register of Copyrights registers the copyright in the works at issue.
Although registration is not required to own a copyright, it is required for a copyright owner to enforce its rights in court in a copyright infringement action. The Copyright Act provides that “registration” of a copyright is a precondition to filing suit for copyright infringement. 17 U.S.C. § 411(a).
In Fourth Estate, the plaintiff filed an application to register its works, although the Register of Copyrights did not register the works. The Court held that “registration” occurs when the Register of Copyrights registers the copyright and not merely when an owner files an application to register the copyright. Therefore, the Court affirmed the district court’s dismissal of the plaintiff’s complaint on the basis that it failed to plead compliance with the registration requirement of 17 U.S.C. § 411(a).
This decision represents a split in authority among the circuits as some circuits such as the Ninth and Fifth Circuits follow the “application approach”, which requires a copyright owner to file the deposit, application, and fee required for registration before filing a suit for infringement.
Leonard v. Stemtech Int'l, Inc, No. 15-3198 (3d Cir. 2016)
These pictures are worth more than just 1,000 words. In August, the Third Circuit affirmed a jury’s return of a $1.6 million verdict for Andrew Leonard as a result of copyright infringement by Stemtech International. The infringement stemmed from photographs that Leonard took of stem cells using electron microscopes in a highly technical type of photography. The two photographs at issue were created in 1996, then registered with the U.S. Copyright Office in 2007, when he planned to bring the lawsuit.