News

Latest firm news

Firm Partner Meredith Mendez on FAWL Board

Firm Partner, Meredith Frank Mendez, was sworn in on the Board of the South Palm Beach County Florida Association of Women Lawyers as Event Coordinator for 2024 – 2025. South Palm Beach County Chapter of FAWL was founded in 2003 to advance the professional status of women lawyers, to promote the rights of women generally, to enhance the visibility of women within the legal profession and within their communities, and to create and maintain supportive networks among women in the legal and other professions.

Supreme Court Petitioned to Review USPTO Domicile Disclosure Rule

Last week, a petition urged the U.S. Supreme Court to review the United States Patent and Trademark Office’s (USPTO) rule mandating that trademark applicants disclose their domicile address. The USPTO’s rule does provide applicants with an option to keep their domicile information private, if they simultaneously provide a separate mailing address that can be viewed by the public. This rule, in effect since August 2019, aims to authenticate applicants and reduce fraud. However, the Petitioner claims that privacy concerns are implicated for applicants that are unaware of the alternative to provide a separate mailing address (or that do not have one), which can result in applicants having their home addresses published.

Upon initial challenge, which attempted to show the USPTO’s promulgation of the rule violated the Administrative Procedure Act (APA),  the Federal Circuit upheld the rule, classifying it as procedural and thus exempt from the APA’s notice-and-comment requirements. Opponents of the rule argue that the Federal Circuit overlooked statutory obligations and privacy impacts, insisting that the rule should undergo formal rulemaking. They contend that the USPTO exceeded its authority in promulgating the rule and urge the Supreme Court to address the privacy implications of the rule, among other implications. A review by the Supreme Court could lead to a decision that significantly influences trademark application protocols and the balance between regulatory measures and privacy rights.

Supreme Court Update: Warner Chappell Music, Inc. v. Nealy, 2024 U.S. LEXIS 1978 (U.S. May 9, 2024)

In this case, Sherman Nealy, an individual, and Music Specialist, Inc., a Florida Corporation, sought damages and profits for copyright infringement against Warner Chappell Music, Inc. and Artist Publishing Group, LLC, two Delaware corporations. Nealy alleged that he held the copyrights to certain songs and that Warner Chappell’s licensing activities infringed his rights. According to Nealy, the infringement started ten years before he brought the lawsuit. Under the Copyright Act, there is a three-year statute of limitations for filing a copyright infringement lawsuit, which begins at the time the claim accrues. Nealy sought recovery for the entire time frame despite the 3-year statute of limitations in the Copyright Act. Nealy argued that the lawsuit was timely because he discovered Warner Chappell’s infringement less than three years before the lawsuit was filed, and that the statute of limitations only applied to the timeliness of bringing a claim, but not to the time frame for seeking damages if a claim was timely brought.

The District Court agreed with Nealy that the claim was timely brought, but ruled that the earliest date for which he could recover damages or profits for infringements would be three years prior to the filing of the lawsuit. The U.S. Court of Appeals for the Eleventh Circuit reversed that decision, finding the claim to have been timely brought, but rejecting the three-year damages bar on a timely claim that had been imposed by the trial court. The Supreme Court agreed to review the decision and conducted oral argument in the October 2024 Term.

On May 9, 2024, the Supreme Court, in a 6-3 majority decision authored by Justice Kagan, affirmed the Eleventh Circuit’s decision. The Court acknowledged that the issue of whether a discovery rule applies in claims brought under the Copyright Act has not to date been squarely presented to the Court, and left that for determination in a future case. But, because the parties did not tee that issue up for the Supreme Court, the majority did not decide it, explaining that it was constrained by what was argued below. Three Justices joined in a dissenting opinion, taking the position that the appeal was improvidently granted because the Court should first rule on the issue of whether there is in fact a discovery rule that would apply to claims under the Copyright Act (i.e., whether Nealy’s claim was timely brought in the first place). There is another case in the pipeline on that issue, but it remains to be seen whether the Supreme Court will agree to review it.

In the meantime, in the Nealy case, the Court held that the Plaintiff is entitled to monetary relief for all infringements, regardless of when the infringement occurred, if the claim was timely brought within three years of having discovered it.

The Court’s decision can be found here: https://www.supremecourt.gov/opinions/23pdf/22-1078_4gci.pdf

Franchise Law Convention

Firm Attorneys Meredith Mendez, Keith Kanouse, Kelly Malloy, and John Malloy attended the International Franchise Association’s 2024 Legal Symposium. Located in Washington, D.C. The legal conference covered evolving issues in Franchise Agreements and Franchise Litigation, among many other topics.