Ms. Malloy earned her bachelor’s degree in Industrial and Systems Engineering at the University of Florida, and is currently a J.D. Candidate at the University of Miami School of Law concentrating on intellectual property. At Miami Law, Ms. Malloy serves as President of the Student Bar Association and is on the University of Miami Law Review. Ms. Malloy also served as President of the Intellectual Property Law Society, President of the Inter-Club Council, Executive Board Secretary of the Student Bar Association, and 1L Senator during her time at Miami Law. For her time in these roles, Ms. Malloy received the Joseph H. Bogosian Student Leadership Award. As a result of her dedication to her coursework, Ms. Malloy is in the top 10% of her class, received the Dean’s Merit Scholarship, received the Litigation Skills Adjunct Faculty Scholarship, and was awarded the Dean’s Certificate of Achievement in her Patent Law course. Ms. Malloy is a law clerk at the firm and assists attorneys by drafting patent applications, performing legal research, and preparing for litigation.
The U.S. Patent and Trademark Office (“USPTO”) recently announced that it will transition to the electronic issuance of patents and trademark registrations in 2022. Such “digital certificates” have been the norm in many foreign countries for years.
Currently, the USPTO delivers or mails a printed patent to the correspondence address of record upon issuance. By switching to digital, physical delivery will be replaced by issuance via the USPTO’s patent document viewing systems. Patentees would be able to download and print their electronically issued patents. According to the USPTO, this change will expedite the process of patent issuance to within one week of the patent number being assigned.
With respect to trademarks, the USPTO anticipates that the transition to digital delivery will begin later in 2022. Electronically-issued certificates are expected to speed the registration process by at least two weeks.
For those who prefer an official certificate, however, the USPTO will continue to print them upon request for $25 per copy.
The music industry is abuzz this week due to Taylor Swift’s tactical re-release of her hit album, Red, as Red (Taylor’s Version). From 2005 to 2018, Swift was signed with Big Machine Records, the record label under which she skyrocketed to stardom. The thirteen-year contract provided that Big Machine would own the masters, or the original recordings, for the songs on Swift’s albums, which ultimately included those on: Taylor Swift (2006), Fearless (2008), Speak Now (2010), Red (2012), 1989 (2014), and Reputation (2017). On the other hand, Swift, who is famous for penning and composing her own love songs, retained the rights to her original lyrics and melodies under the agreement.
Swift left Big Machine for Universal’s Republic Records in 2018, and ensured that she secured the ownership of her future masters under the new contract. Then, in a move that shocked the music industry, Big Machine was quietly acquired in 2019 by Ithaca Holdings, a private equity group owned by Scooter Braun. Swift was unaware that her masters would fall into the hands of Braun, with whom she publicly had bad blood. Swift responded to the sale by calling Braun an “incessant, manipulative bully.” In the aftermath, there were attempts to block Swift from using the masters of her own songs, such as in her performance at the 2019 American Music Awards and in her Netflix documentary Miss Americana.
Equipped with her remaining rights, Swift resolved to re-record and re-release the albums she created under Big Machine in an attempt to regain control of her music. The re-recorded albums bear the same names as the originals, but each are marked as (Taylor’s Version).
Cover art for Red (Taylor’s Version)
Yesterday, Kathi Vidal was officially nominated by the President as the next Under Secretary for Intellectual Property and Director of the U.S. Patent and Trademark Office (USPTO). Vidal currently practices in Silicon Valley and has extensive patent litigation experience. If her nomination is confirmed by the Senate, Vidal will only be the third woman to lead the USPTO. Vidal’s nomination comes noticeably later than those made by other recent U.S. Presidents, and Commissioner for Patents Drew Hirshfeld has been performing the Director’s duties on a temporary basis since former Director Andrei Iancu’s resignation in January 2021. However, the Senate is not expected to vote for at least a few months on whether to confirm Vidal.
This month, the Walt Disney Company filed several federal lawsuits in New York and California to fend off a series of copyright termination notices served by five writers and illustrators claiming rights to Marvel characters and stories. Disney, which has owned Marvel Entertainment since 2009, is seeking to preserve its complete rights in well-known superhero characters including Iron Man, Thor, Spiderman, Doctor Strange, Ant Man, Black Widow, Hawkeye, Captain Marvel, and Falcon. With these beloved characters, the Marvel franchise has created some of the highest-grossing action movies of all time. Avengers: Endgame, for example, generated $2.79 billion at the box office worldwide.
The five writers and illustrators, all but one of whom is deceased, worked with Marvel in the ‘50s, ‘60s, and ‘70s and now attempt to “reclaim” rights in characters they allege to have helped create. To do so, they point to copyright law and argue that authors or their heirs may regain ownership of a work after a certain number of years. Some of the termination notices would reportedly take effect as soon as 2023, including one for Spiderman. Nonetheless, Disney takes the position that the work done by these writers and illustrators were works made for hire, rendering all rights Disney’s. Counsel for Disney also added that its lawsuits were filed “to confirm that the termination notices are invalid and of no legal effect.”
This week, Sony Music initiated a copyright lawsuit in the Southern District of Florida against Vital Pharmaceuticals, Inc., known for doing business as Bang Energy in the energy drink industry. In its Complaint, Sony accuses Bang of using at least 132 copyrighted sound recordings owned or exclusively licensed by Sony without authorization. For example, Sony points out Bang’s alleged use of “Please Don’t Go” by Mike Posner, “Bad” by Michael Jackson, “Roxanne” by Arizona Zervas, “Gimme More” by Britney Spears, “Say So” and “Like That” by Doja Cat, as well as “Worth It” by Fifth Harmony. Some of those songs, such as “Please Don’t Go,” have been the subject of viral so-called “TikTok trends” within that application.
This case is Sony Music Entertainment v. Vital Pharmaceuticals, Inc., Case No. 1:21-cv-22825, in the Southern District of Florida.
Yesterday, the USPTO granted Tesla, Inc. a design patent for the ornamental design of the Cybertruck, Tesla’s all-electric utility vehicle. Since the prototype’s unveiling in November 2019 at the Tesla Design Studio in Los Angeles, the Cybertruck has generated a substantial amount of buzz due to its unique appearance. The patent application for the design of the vehicle’s body was filed the same day as the Cybertruck’s reveal, and the corresponding registration has a term of fifteen years. While the Cybertruck is not expected to enter production until later this year, prospective buyers can make a $100 deposit towards purchasing the vehicle on Tesla’s website today.
(Image from Tesla’s website)
This is U.S. Patent No. D926,085.
On July 19, 2021, Nike filed suit against Customs by Ilene, known for doing business as Drip Creationz, in the Central District of California for trademark infringement, counterfeiting, dilution, false designation of origin, and unfair competition. Drip Creationz went viral for their customized “Nike Air Force 1” sneakers after that particular shoe, which was originally released by Nike in 1982, enjoyed a major comeback in street fashion during 2019 and 2020. With over one million Instagram followers, Drip Creationz has enjoyed widespread popularity amongst Millennials and Gen Z, especially due to promotion from prominent so-called “influencers” on social media.
Despite Drip Creationz’s claim that it sells “100% authentic” Air Force 1 sneakers, Nike alleges that their shoes are counterfeits of “sub-par quality.” Nike’s claims are not only limited to the sale of allegedly counterfeit shoes, however, but also go to “the core of Drip Creationz’s business–its ‘customizations.’” Specifically, Nike contends that the “images, stitching, materials, and/or colorways used by Drip Creationz are not and have never been approved, authorized, or offered by Nike.” Even further, Nike alleges that some of Drip Creationz’s customizations involve “deconstructing Air Force 1 shoes and replacing and/or adding material on the shoe, including fake and unauthorized Nike Swoosh designs as well as third party trademarks and protected images.”
Drip Creationz’s allegedly infringing Air Force 1 shoes (image provided in the Complaint).
This case is Nike, Inc. v. Customs By Ilene, Inc., Case No. 5:21-cv-01201 in the Central District of California.
The National Collegiate Athletic Association (NCAA) is a non-profit organization that has long regulated the manners in which student-athletes may be compensated by their colleges and universities for playing on “amateur” collegiate-level sports teams. The term “student-athlete” was coined in the 1950’s by Walter Byers, the NCAA’s first executive director, and it has been used in the industry and by courts to describe these players ever since. While student-athletes have historically received scholarships, the NCAA has essentially prohibited student-athletes from receiving benefits beyond the cost of education. These restrictions have also included the inability of student-athletes to profit from their name, image, and likeness pursuant to their scholarship agreements. Name, image, and likeness (“NIL”) is an intellectual property right that protects against the misappropriation of an individual’s name, image, and likeness for commercial benefit. Such NIL limitations have been a major source of conflict between the NCAA and student-athletes, with the NCAA maintaining the upper hand over the years. However, the tides just turned.
In NCAA v. Alston, a 2021 antitrust class action lawsuit filed by current and former student-athletes against the NCAA, the U.S. Supreme Court reviewed a challenge to the NCAA’s student-athlete compensation rules. Specifically, the student-athlete class argued that the NCAA’s rules were in violation of § 1 of the Sherman Antitrust Act, 15 U.S.C. § 1, which prohibits “contracts, combinations, or conspiracies in restraint of trade or commerce.” A unanimous Court reviewed “only the subset of NCAA rules restricting education-related benefits” and found the NCAA in violation of the Sherman Act on June 21, 2021. Notably, the Court highlighted the “uncontested” fact that the NCAA “enjoys monopsony control in the relevant market–such that it is capable of depressing wages below competitive levels for student-athletes and thereby restricting the quantity of student-athlete labor.”
Even before NCAA v. Alston, however, several states had legislation in the works on the issue of student-athletes profiting in the NIL sphere. For example, California passed the Fair Pay to Play Act in September 2019 and Colorado adopted a similar law in March 2020, both of which were set to become effective in 2023. Florida was the third state to pass NIL legislation, but its bill had a much earlier effective date of July 1, 2021. However, in the wake of NCAA v. Alston, the NCAA announced an “interim” NIL policy on June 30, 2021, allowing student-athletes to “engage in NIL activities that are consistent with the law of the state where [their] school is located.” Now, student-athletes in some states can monetize their social media platforms, sell merchandise and autographs, and enter into endorsement deals subject to certain limitations set by their schools. This will make way for student-athletes to create their own brands by filing trademark applications.
The case referred to herein is NCAA v. Alston, No. 20-512, slip op. (U.S. Jun. 21, 2021)
On June 24, 2021, Kanye West and his multi-billion dollar fashion brand, Yeezy LLC, filed suit against Walmart Inc. for allegedly imitating the design of Yeezy’s Foam Runner shoes. The aesthetically controversial footwear was first debuted on West’s daughter, North, in 2019 before hitting the runway at London Fashion Week in February 2020. When officially released by Yeezy during June 2020, the Foam Runners retailed for $75.00, but sold out almost instantly–they now sell for nearly quadruple the original price on reseller websites. Fans of the Yeezy brand anticipate that the Foam Runner will be released again later this year in new colors.
In their Complaint, West and Yeezy allege that “Walmart is flagrantly trading off of West’s and the Yeezy brand’s popularity by offering for sale an imitation version” of the Foam Runner. The Grammy-Award winning rapper and his fashion brand further claim they are “losing market share” for the authentic Foam Runner, and that their reputation and goodwill are being harmed given the “subpar quality” of the Walmart product. The causes of action include: (1) unfair competition under California Business & Professions §§17200; and (2) quantam meruit.
After news of the lawsuit broke, a spokesperson for Walmart stated that the alleged imitation shoes were being sold by third party marketplace sellers as opposed to the retail giant itself. Walmart has since removed the items from its website.
Yeezy Foam Runner shoes (left) and Walmart shoes (right). Image provided in the Complaint.
This case is Kanye West and Yeezy LLC v. Walmart Inc., Case No. 21STCV23514, filed on June 24, 2021 in the Superior Court of the State of California for the County of Los Angeles, Central District.
As part of the re-naming effort of the National Football League (“NFL”) team formerly known as the Washington Redskins, Pro Football, Inc. (“Applicant”) filed applications with the United States Patent and Trademark Office during July 2020 for the marks “WASHINGTON FOOTBALL TEAM” and “WASHINGTON FOOTBALL TEAM” & Design, , for use in connection with: clothing in International Class 25; and entertainment in the nature of professional football exhibitions and games in International Class 41. The applications were subsequently reviewed by an Examining Attorney, and a pair of Office Actions were issued on June 18, 2021.
The Examining Attorney issued a likelihood of confusion refusal for both applications as to International Class 25 only, citing U.S. Trademark Registration No. 4,733,519 for “WASHINGTON FOOTBALL CLUB” (also for clothing in the same International Class). The Examiner took the position that the marks are confusingly similar because they are “virtually identical in sound, appearance and meaning” and “create the same commercial impression in the minds of consumers.” He also noted that “CLUB is another name for an athletic team” before listing the similarities between the goods offered under each mark.
However, the Examiner did not stop there. He next took the position that the marks are primarily geographically descriptive because “WASHINGTON is a generally known geographic location,” Applicant “is located 32 miles outside of Washington, D.C.,” and Applicant is “the professional football team for the Washington, D.C. metropolitan area.”
Finally, as to the “WASHINGTON FOOTBALL TEAM” & Design application filed on July 29, 2020, the Examiner cited two prior filed applications to warn that, if one or both of those marks register, Applicant’s may be refused for a likelihood of confusion. Those two prior filed applications are U.S. Trademark Application Serial No. 90/072,158 for “WASHINGTON TEAM FOOTBALLERS” and Serial No. 90/072,194 for “WTF WASHINGTON TEAM FOOTBALLERS”, both for use in connection with clothing in International Class 25 and filed on July 24, 2020 by applicant Marketwell Nutrition Corporation. The application for “WASHINGTON FOOTBALL TEAM” did not receive this warning, as it was filed on July 23, 2020.
Pro Football has six months to respond to the Examiner’s Office Action.
 See U.S. Trademark Application Serial No. 90/069,568, USPTO TSDR ( https://tsdr.uspto.gov/#caseNumber=90069568&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=documentSearch) (last accessed June 21, 2021 at 4:32 PM) (for “WASHINGTON FOOTBALL TEAM”).; see also U.S. Trademark Application Serial No. 90/080,449, USPTO TSDR ( https://tsdr.uspto.gov/#caseNumber=90080449&caseSearchType=US_APPLICATION&caseType=SERIAL_NO&searchType=documentSearch) (last accessed June 21, 2021 at 4:32 PM) (for “WASHINGTON FOOTBALL TEAM” & Design).