Kelly Malloy

Kelly Malloy

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. 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, 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.

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.

These sound recordings and others were allegedly used in approximately 209 videos posted to Bang’s social media accounts, including TikTok and Instagram. Taking particular aim at Bang’s alleged use on those platforms, Sony quotes TikTok’s Intellectual Property Policy and Instagram’s Terms of Use in its Complaint. Overall, Sony contends that Bang is “well aware that [its] conduct constitutes copyright infringement,” referring to the energy drink giant as “a sophisticated entity” conducting an “aggressive and conspicuous social media campaign.”

This case is Sony Music Entertainment v. Vital Pharmaceuticals, Inc., Case No. 1:21-cv-22825, in the Southern District of Florida.

Wednesday, 28 July 2021 20:04

Tesla Granted Design Patent for Cybertruck

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.

tesla

(Image from Tesla’s website)

 tesla article patent

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.yeezyfoamrunner

 

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, Footballwashington , 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.[1]

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.



[1] 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).

In Unicolors, Inc. v. H&M Hennes & Mauritz, LP., the U.S. Supreme Court (SCOTUS) granted certiorari to review copyright statute 17 U.S.C. § 411(b), which covers registration and civil infringement actions.

The case was originally filed in the Central District of California during 2016 by Unicolors over a geometric pattern that it accused fast-fashion leader H&M of copying. In December 2017, a jury entered a judgment against H&M of nearly $850,000 after finding willful infringement.[1] H&M appealed arguing that, because Unicolors allegedly included false information in its application with the Copyright Office, it did not have a valid copyright registration for the work at issue. Specifically, when it applied for registration with the Copyright Office, Unicolors included the disputed pattern in a collection as a “single unit.” Importantly, the Copyright Office requires that, to register a number of works as a single unit of publication, the works must be first published on the same date.[2] Accordingly, H&M argued that Unicolors’ single unit collection of thirty-one designs did not actually share the same date of first publication, rendering the registration invalid. The 9th Circuit reversed, finding that the district court erred in “imposing an intent-to-defraud requirement for registration invalidation” and in determining that Unicolors’ application for “a collection of works did not contain inaccuracies” that would render it invalid.[3]

The questions presented to SCOTUS are as follows: (1) whether the 9th Circuit erred in breaking with its own prior precedent and the findings of other circuits and the Copyright Office in holding that § 411(b) requires referral to the Copyright Office where there is no indicia of fraud or material error as to the work at issue in the subject copyright registration; and (2) whether the 9th Circuit misapplied the publication standard by both applying Copyright Office requirements that were not in place at the time of registration and analyzing publication as of the date of registration as opposed to the later registration application date, and, if so, whether the evidence supported referral to the Copyright Office.[4]



Unicolors, Inc. v. Hennes, 2018 U.S. Dist. LEXIS 230412, 2018 WL 6016989 (C.D. Cal., Sept. 25, 2018).

Circular 34 Multiple Works, United States Copyright Office ( https://www.google.com/url?sa=t&rct=j&q=&esrc=s&source=web&cd=&ved=2ahUKEwiy7qn7hZ_xAhXuSDABHaFsA7wQFjABegQIBRAD&url=https%3A%2F%2Fwww.copyright.gov%2Fcircs%2Fcirc34.pdf&usg=AOvVaw1t_46raKL2_nE0oHv5Vlrf) (last accessed Jun. 17, 2021 at 12:07 PM) (emphasis added).

Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., 959 F.3d 1194 (9th Cir. 2020).

 https://www.supremecourt.gov/docket/docketfiles/html/qp/20-00915qp.pdf.

Earlier this month, Starbucks filed an intent-to-use (ITU) service mark application with the USPTO for “STARBUCKS” in connection with promoting business, sports, and entertainment events of others in International Class 35 as well as providing stadium and training facilities for sports and entertainment activities in International Class 41. The application is generating buzz that Starbucks is planning to use its famous name on a stadium, like many other brands (e.g., American Airlines Center,[1] Little Caesars Arena,[2] FedExForum,[3] and Staples Center[4]). Beyond the ITU, Starbucks reportedly made no comment.[5]

 


 

http://www.americanairlinescenter.com/

 https://en.wikipedia.org/wiki/Little_Caesars_Arena

 https://fedexforum.com/

 https://www.staplescenter.com/

See, e.g., Amelia Lucas, Starbucks files trademark application for stadium naming rights, CNBC (Jun. 11, 2021 at 12:08 PM) ( https://www.cnbc.com/2021/06/11/starbucks-files-trademark-application-for-stadium-naming-rights.html) (“A Starbucks spokesperson said the company has no further details to share beyond the June 2 filing.”).

 

 

On June 4, 2021, the U.S. District Court for the Western District of North Carolina affirmed a decision by the Trademark Trial and Appeal Board (“TTAB”) that “PRETZEL CRISPS” is generic in connection with pretzel crackers. In 2004, the USPTO refused Princeton-Vanguard’s U.S. Application Serial No. 78/405,596 for “PRETZEL CRISPS” in connection with pretzels based on the position that the mark was merely descriptive. Nevertheless, the company subsequently filed U.S. Application Serial No. for “PRETZEL CRISPS” in connection with “pretzel crackers” in late 2009. Shortly thereafter, snack giant Frito-Lay filed a notice of opposition to the new application, arguing genericness. The TTAB agreed with Frito-Lay, finding “PRETZEL CRISPS” generic.

Princeton-Vanguard appealed to the Federal Circuit, which reversed the TTAB’s decision for application of the incorrect legal standard (but did not address the parties’ arguments). However, the TTAB reached the same conclusion on remand. Instead of appealing once more, Princeton-Vanguard filed a civil action in the Western District of North Carolina seeking review of the latest TTAB decision. While the Court acknowledged that Princeton-Vanguard’s product is “hugely successful,” it ultimately decided that “PRETZEL CRISPS” is generic and therefore not registerable.

This case is Snyder’s Lance, Inc. and Princeton-Vanguard, LLC v. Frito-Lay North America, Inc., Case No. 3:17-cv-00652-KDB-DSC in the Western District of North Carolina.[1]

[2]



Decision:  https://www.documentcloud.org/documents/20805098-ip-fritolay-trademarks-opinion.

Image:  https://www.walgreens.com/store/c/the-snack-factory-pretzel-chips-original/ID=prod6217047-product?ext=gooKBM_PLA+-+Grocery+(2019+Update)Grocery__pla_local&gclsrc=aw.ds&&gclid=Cj0KCQjwk4yGBhDQARIsACGfAetwqLQxdANyNU7X7oMWm0cls4VP2lT8oWJUK25X3HyT0LJtp4Q8FMaAtu5EALw_wcB (last accessed Jun. 11, 2021 at 4:01 PM).

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