In a 9-0 opinion issued by Justice Ruth Bader Ginsburg, the Supreme Court resolved a division among U.S. Courts of Appeals today on whether an owner of a work must first obtain a copyright registration from the Copyright Office before she may file suit for copyright infringement. The Copyright Act requires that “registration of the copyright claim has been made” before suit can be brought, but the U.S. Courts of Appeals were split on whether “registration” has been made when a copyright owner submits the application, materials, and fee required for registration to the Copyright Office, or only when the Copyright Office issues registration. The Supreme Court held that the Copyright Office must grant a registration before a copyright infringement suit is filed, and submitting an application to the Copyright Office is not enough to meet the “registration” requirement.

The case, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, involved a collective journalist news organization, Fourth Estate Public Benefit Corporation, which licensed works to Wall-Street.com, a news website. Fourth Estate sued Wall-Street.com in the U.S. District Court for the Southern District of Florida for copyright infringement of news articles that Wall-Street failed to remove from its website after the parties cancelled their license agreement. The Copyright Act, Title 17 U.S.C. s 411(a), states that “no civil action for infringement of the copyright in any United States work shall be instituted until… registration of the copyright claim has been made in accordance with this title.” Fourth Estate had submitted an application, deposit, and fee to the Copyright Office before filing suit, but the Copyright Office had not yet acted on the application or issued registration. Some circuits, such as the Ninth and Fifth Circuits, had allowed plaintiffs in such circumstances to bring infringement lawsuits against alleged infringers at this stage, taking what is called the “application approach,” whereas other circuits, such as the Eleventh, required that registration be issued by the Copyright Office first, taking what is called the “registration approach.” Judge Robert Scola, Jr. took the “registration approach” and dismissed the case because Fourth Estate had not yet obtained a registration for the works from the Copyright Office. Fourth Estate appealed the Eleventh Circuit and the Eleventh Circuit affirmed the dismissal, noting that “filing an application does not amount to registration.” The Supreme Court agreed to hear the case in June of last year. 

Affirming the Eleventh Circuit’s judgment, the Supreme Court unanimously held that under the Copyright Act, a copyright claimant may commence an infringement suit only when the Copyright Office registers a copyright. However, a copyright owner can recover for infringement that occurred both before and after registration.

Fourth Estate argued that a copyright owner may lose the ability of enforce his or her rights if the Copyright Act’s three-year statute of limitations runs out before the Copyright Office acts on his or her application for registration, however, Justice Ginsburg noted that the average processing time for registration applications is seven months, which would leave “ample time to sue after the Register’s decision.”

Justice Ginsburg concluded that the “Copyright Act safeguards copyright owners by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. To recover for such infringement, copyright owners must simply apply for registration and await the Register’s decision.”

According to random audits by the United States Patent and Trademark Office (USPTO), over half of active trademark and service mark registrations include some goods or services that are not actually being used in commerce. Registrations with goods or services not in use may block mark owners from registering their own marks that are in use. As part of a response to this concern, the Trademark Trial and Appeal Board (TTAB) is piloting a program for cancellation proceedings limited to abandonment and/or nonuse claims with no counterclaims.

The program implements a procedure for addressing registrations or classes not use, which can save petitioners time and money. Click here for more information on this pilot program from the TTAB. A recent precedential case that was part of the pilot program also provides further insight, TV Azteca, S.A.B. de C.V. v. Jeffrey E. Martin, 128 U.S.P.Q.2d 1786 (TTAB 2018).

In a 9-0 opinion issued by Justice Thomas, the Supreme Court held today that even where the buyer is obligated to maintain confidentiality of an invention, the inventor's "secret" sale of an invention may place the invention "on sale" for purposes of the America Invents Act, and confirmed that the America Invents Act did not change the definition of "prior art" with respect to the on-sale bar. 

Dubbed “Brexit,” the United Kingdom (“UK”) decided by national referendum in 2016 to separate from the European Union (“EU”).  However, the British Parliament has refused to approve an agreement for orderly withdrawal, so the UK is likely to leave the EU on March 30, 2019 without any terms of separation. Many brand owners have registered their marks through the EU Trade Mark (“EUTM”) system, previously known as the Community Trade Mark (“CTM”), with the expectation that protection extends to the UK. Under the current “guidance” issued by the UK, owners of EUTM registrations should receive an automatic “clone” registration in the UK, which will carry over equivalent protection and seniority. But, pending EUTM applications, will NOT be “cloned”; applicants should be offered a grace period within which to file UK applications claiming the same protection and seniority. Similar provisions are planned for International Registrations designating the EU. Despite the strong expectation of UK legislation in alignment with the guidance, trademark owners should consider immediate action to secure UK trademark rights prior to the official Brexit date. Note: Patent rights in the UK should be relatively unaffected by Brexit because the European Patent Office (“EPO”) is not a European Union institution.

In a case filed by the copyright owner (Solid Oak Sketches LLC) against the NBA2k video game maker (Take Two Interactive), the issue is whether NBA players, including Lebron James, can license the image of their own tattoos.  In this digital age, video games such as NBA2K depict lifelike avatars of fans’ favorite professional sports players, complete with mirror image recreations of those players’ physical characteristics, including tattoos.  For Lebron James’ NBA2K avatar, this means that tattoos depicting the phrase “Hold My Own” on James’ left bicep, as well as the “330 Area Code” on his right forearm, are clearly visible and used throughout the video game, triggering the infringement claim.

On one side of the coin, Solid Oak claims that because the actual tattoo artists sold it the copyright to the underlying images, only Solid Oaks owns the rights to reproduce and publicly display those tattooed images, which were infringed by the video game maker.  On the flip side, Take Two asserts that Lebron James (through the NBA), allowed it to use his image, name, and likeness in the NBA2k video game, which necessarily included the subject tattoos.  Take Two also claimed that its depiction of the tattooed images were otherwise protected under the fair use doctrine.  Solid Oaks recently survived Take Two’s motion to dismiss, and future rulings in the case could have significant implications on the NBA and its players, video game companies, and tattoo artists who create the underlying images.  The lawsuit is proceeding before United States District Judge Laura Swain in the Southern District of New York.

Cartier's "LOVE" bracelets, designed in the 1960's, have acheived some reknown due to the locking mechanism that can only be opened with a screwdriver. While Cartier has had success in certain countries protecting the overall look of the bracelet itself, the Intellectual Property Office of Singapore has determined that Cartier can not excercise trademark rights over the word "LOVE." 

Last year, Cartier opposed a trademark application to register the slogan "LOVE GOLD" as a trademark in Singapore. While Cartier owns registrations for its stylized variation of "LOVE," which includes a horizontal line through the "O" to mimic the appearance of the screws adorning its bracelet, the Intellectual Property Office of Singapore has apparently determined that these rights do not extend to the word itself. The opinion states, "'[l]ove' is a word which is commonly used by jewelry traders and should not be monopolized by any trader....The word 'love,' however, should be free for traders to incorporate into their trademarks for jewelry." 

Wednesday, 02 January 2019 21:27

Nirvana Sues Over Smiley Face

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Nirvana L.L.C. has brought suit in the U.S. District Court for the Central District of California against clothing designer Marc Jacobs International, Saks Fifth Avenue, and Neiman Marcus, along with a number of unidentified “Does” over use of the well-known smiley face logo allegedly created by the late Kurt Cobain in 1991. A copy of the Complaint can be found here.

Smiley Tees - Copy

Nirvana L.L.C. includes surviving band members Dave Grohl and Krist Novoselic, and the Kurt Cobain Estate controlled by his widow, Courtney Love.

The Complaint includes counts for Copyright Infringement and False Designation of Origin under the Lanham Act, as well as Trademark Infringement and Unfair Completion under California Common Law based on Marc Jacobs’ “Bootleg Redux Grunge” collection of clothing. For further information, see here.

It will be interesting to see the extent of protection which might be afforded to something as simple as a smiley face. :) 

At issue in the case of Levi Strauss & Co. v. Yves Saint Laurent America, Inc., recently filed in the Northern District of California, is whether Levi’s trademark rights preclude jean manufacturers from stitching a label onto the vertical seam of the jean’s back pocket.  Levi’s claims that its “Tab Trademark” does in fact prohibit such copying (and seemingly regardless of where the tab is placed).  As shown in side-by-side comparison pictures displayed in the complaint, the Levi’s tab is sewn on the left side of the back-right jean pocket, whereas the Yves Saint Laurent (“YSL”) tab is stitched onto the right side of the back-right jean pocket.  See p. 5 at  https://www.scribd.com/document/393676941/Levi-Strauss-v-Yves-Saint-Laurent.  Nevertheless, and despite the generally large disparity in price points between Levi’s and YSL denim, Levi’s alleges that the YSL tab is likely to confuse consumers about the sources of YSL’s products and/or a relationship between YSL and Levi’s. 

In a constantly evolving market and with millions of dollars in play, Levi’s is no stranger to enforcing its intellectual property rights through litigation.  In fact, Levi’s has consistently bumped heads with jeans manufacturers in the past (approximately 100 lawsuits since 2001), alleging infringement either based on the display of a “tag” stitched to a back pocket, or copying Levi’s signature design (two intersecting arcs stitched into the back pockets).  As the denim giant attempts to prove that it owns a monopoly on tabs stitched onto jean back pockets, one of the ultimate questions will be whether the consuming public views the tag as a source identifier, such that it solely relates to Levi’s. 

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