Meredith Frank Mendez

Meredith Frank Mendez

Ms. Mendez earned her bachelor’s degree from the University of Michigan, with honors, and her law degree from the University of Florida, with honors. She is Board Certified as an Expert in Intellectual Property Law and concentrates her practice in Intellectual Property Litigation, Trademark Prosecution, Copyright Law and Entertainment Law. She is a member of the Florida Bar and is licensed to practice in the Southern, Middle and Northern Districts of Florida. Ms. Mendez is also Co-Chair of the Attorney's Network of the Greater Miami Jewish Federation and a member of the International Trademark Association, the Entertainment, Arts and Sports Law Section of the Florida Bar, and LegalArt.

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.

 

The Federal Circuit has ruled that Section 2(a) of the Lanham Act, which allows the U.S. Patent and Trademark Office to deny or cancel a trademark if it disparages persons, institutions, beliefs, or national symbols, violates the First Amendment. The ruling vacated the U.S. Patent and Trademark Office’s refusal to grant a trademark registration to an Asian-American band seeking to register the mark “The Slants” on the grounds that the mark is offensive to Asian-Americans. 

Days before trial and over two years of federal court litigation, a confidential settlement has been reached that would allow the lyrics to the “Happy Birthday” song, one of the world’s most popular songs, to enter the public domain.

The origins of “Happy Birthday” date back to 1893 with the publication of “Good Morning to All,” written by Mildred Hill and her sister Patty, a kindergarten teacher in Kentucky, which had the same tune but different lyrics.Years later, the lyrics to “Happy Birthday” were adapted to the song’s melody. The “Happy Birthday” song was then published in a number of sing-along collections and music books. In 1935, the publisher of one of those books filed for a copyright for the lyrics and music. In 1988, the copyright was transferred to Warner Music.

In an interesting decision regarding whether copyright protection may extend to a sequence of yoga poses, the Ninth Circuit ruled that a sequence of yoga poses is a collection of facts and ideas that is not subject to copyright protection.

Google has won a major victory in its ten-year legal fight with authors over its Google Library Project, which digitizes and indexes millions of copyrighted books for an online library without consent from the copyright owner. Since 2004, as part of the Google Library Project, Google has scanned, rendered machine-readable, and indexed more than 20 million books, which includes both public domain and copyrighted works, for its Google Books search engine. The search engine allows users to search words or terms that yields a list of all books in the database in which those words or terms appear, as well as the number of times the word or term appears in each book. The search also provides a brief description of each book which gives some basic additional information, such as a list of the words and terms that appear with most frequency in the book. Users are also allowed a limited viewing of the text of the book to see “snippets” of text containing the searched-for terms. The search sometimes provides links to buy the book online and identifies libraries where the book can be located.

A federal jury in Los Angeles has found that Robin Thicke and Pharrell Williams committed copyright infringement by copying elements of Marvin Gaye's 1977 hit "Got to Give it Up" in their 2013 hit "Blurred Lines. The jury awarded Nona and Frankie Gaye, two of Marvin Gaye’s children, $4 million in damages plus approximately $3.3 million of the profits earned by Thicke and Williams. According to court records, “Blurred Lines” has earned profits in an excess of $16 million dollars. Under the Copyright Act, a plaintiff can seek its actual damages and the infringer’s profits that are attributable to the infringement. The damages award is believed to be one of the largest damages awards in a music copyright case.

In a 2-1 landmark decision, the United States Patent and Trademark Office cancelled six (6) "WASHINGTON REDSKINS" federal trademark registrations finding that the name “Redskins” is “disparaging to Native Americans” at the respective times they were registered, in violation of Section 2(a) of the Trademark Act.

Recording artists Robin Thicke, Pharrell Williams and T.I. filed a lawsuit in the United States District Court for the Central District of California against Defendants, Marvin Gaye's family and Bridgeport Music, the owner of some of Funkadelic's musical compositions. The lawsuit seeks a declaration from the court that their hit single “Blurred Lines” does not infringe Marvin Gaye's "Got to Give It Up” or Funkadelic's “Sexy Ways” and that the Gayes do not have an interest in the copyright to the composition "Got To Give It Up" sufficient to confer standing on them to pursue claims of infringement of that composition. The lawsuit was filed because the trio received continued threats from the Defendants that they would commence their own lawsuit if the trio did not pay a monetary settlement of Defendants’ claims of copyright infringement and the Plaintiffs believe that the songs at issue are “starkly different.”

West Encounters East, a film by firm client Stella Holmes, a Miami-based art collector and museum trustee, is currently airing on PBS stations across the country.  West Encounters East explores the Japanese diaspora to Latin America through the eyes of artists whose work emerges from the Asian-Latin American cultural mix.  The film will be airing locally in South Florida on WPBT on May 6, 2013 at 9:00 p.m. and on May 10, 2013 at 10:00 p.m.    Click here for WEE air dates and times in your area.  The 7-minute Trailer for West Encounters East can be viewed below.

It its much anticipated 6-3 decision in Kirtsaeng v. John Wiley & Sons, Inc., the Supreme Court ruled  that “the first sale doctrine applies to copies of a copyrighted work lawfully made abroad.”

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