United States District Judge Carter recently held that a seizure of the Mongols Motorcycle Club (“MMC”) mark would violate the organization’s First Amendment rights, as well as the Eighth Amendment’s Excessive Fines Clause.  The logo at issue – shown below from the Court’s opinion – features a Genghis Khan caricature on a motorcycle with the words “MONGOLS” and “M.C.” prominently displayed in the logo.  Following a December 2018 trial, whereby the jurors found the Defendant Mongol Nation guilty of racketeering and conspiracy to commit racketeering (relative to murder, attempted murder and distribution of methamphetamine), the Government proceeded with the forfeiture phase of the trial requesting seizure of the organization’s ammunition, body armor, and firearms, as well as the trademark rights appurtenant to MMC membership.  Denying the Government’s request for seizure of the trademark, the Court first noted that “there is no doubt that the display of word marks or symbols on a body or leather vest is pure speech.”  United States of America v. Mongol Nation, Case No. CR-13-0106 (C.D. Cal. Feb. 28, 2019).  Further, “collective membership marks act as a symbol that communicates a person's association with the Mongol Nation, and his or her support for their views.”  Id.  Thus, the Court held that “the forced transfer of the legal rights associated with these symbols to the United States government presents immediate harms and chills the Mongol Nation's and its members' right to display the marks given the Government's threats and seizure attempts,” and therefore denied the seizure request on First Amendment grounds.  Id.

Next, the Court also analyzed the Government’s request for seizure of the MMC mark under the Eighth Amendment, which “limits the government's power to extract payments, whether in cash or in kind, as punishment for some offense."  Id.  Pointing out that the trademark was “legally acquired via first use in 1969 and [was] legally maintained via continuous use,” and that it has “immense intangible, subjective value to the Mongol Nation and its members,” the Court held that a forfeiture of the rights associated with the mark would otherwise be harsh and grossly disapproportionate, and denied the Government’s request as violative of the Eighth Amendment. 

The MMC trademark displayed in the Court’s opinion in United States of America v. Mongol Nation, Case No. CR-13-0106 (C.D. Cal. Feb. 28, 2019)

Mongols

The Supreme Court has agreed to review Mission Product Holdings Inc. v. Tempnology LLC, to address a Circuit Split on whether a bankruptcy trustee can terminate a trademark license agreement, thereby allowing a trademark licensee to lose their rights under the license contract. This decision could have a substantial impact on trademark licensees if the Court affirms the First Circuit Court of Appeal’s decision that a licensee loses its right to use a licensor’s trademarks if the licensor has filed a petition for bankruptcy and the trustee elects to reject the agreement pursuant to Section 365(a) of the Bankruptcy Code.

Section 365(a) of the Bankruptcy Code allows a bankruptcy trustee to assume or reject a debtor’s pre-bankruptcy executory contracts, depending on whether the benefits of continued performance of the contract outweigh the burdens to the bankruptcy estate. Under Section 365(a), a rejection is treated as a breach by the debtor if certain conditions are met. While the licensee is entitled to file a claim for damages in the bankruptcy action, that may be insignificant in light of the bankrupt state of the licensor.

However, the Bankruptcy Code does not specifically address the matter at issue before the Supreme Court, which is whether rejection of a trademark license agreement under the Bankruptcy Code strips the licensee of the right to use “trademarks.” While Section 365(n) expressly and specifically protects the rights of “intellectual property” licensees, “trademarks” is not defined in the Bankruptcy Code’s definition of “intellectual property.” In light of this, the First Circuit did not interpret the code’s language of “intellectual property” to include trademarks. Contrastingly, the Seventh Circuit has interpreted “intellectual property” to include trademarks, and therefore held that a licensee’s trademark rights survive any rejections of the agreement by a trustee in bankruptcy. See Sunbeam Prods. v. Chi. Am. Mfg., 686 F.3d 372 (7th Cir. 2012). Of the many actors to file amicus briefs, the U.S. Government appears to agree with the Seventh Circuit’s interpretation, and has taken the position that a trademark owner cannot revoke a licensee’s right to use the trademark via the Bankruptcy Code.

The Supreme Court is expected to begin hearing arguments in the next upcoming months.

In January, the Supreme Court agreed to hear Iancu v. Brunetti, a case that will decide whether it is constitutional for the U.S. Patent & Trademark Office to refuse trademark registration for immoral or scandalous marks. A clothing line applied to register the mark “FUCT” but was refused by the U.S. Patent & Trademark Office pursuant to Section 2(a) of the Lanham Trademark Act, which specifically bars registration of immoral or scandalous matter. To determine whether a mark is immoral or scandalous, the U.S. Patent and Trademark Office considers ordinary and common meanings. The meaning imparted by a mark must be determined in the context of the current attitudes of the day, and as such, can change over time.

The clothing line appealed the U.S. Patent and Trademark Office’s decision to refuse its mark under Section 2(a) to the United States Court of Appeals for the Federal Circuit. The Federal Circuit affirmed the U.S. Patent & Trademark Office’s decision to refuse registration under Section 2(a) of the Trademark Act, but then ruled that Section 2(a)’s bar on immoral or scandalous marks is unconstitutional under the Freedom of Speech clause of the First Amendment. The Federal Circuit found that refusing registration of trademarks which the U.S. Patent & Trademark office finds immoral or scandalous results in content-based speech regulation, which is presumptively invalid under the Constitution. The government argued that Section 2(a) does not implicate the First Amendment because trademark registration is either a government subsidy program or a limited public forum, or in the alternative, is commercial speech that implicates only an intermediate level of scrutiny. The Federal Circuit rejected these arguments, and found that “trademarks convey a commercial message, but not exclusively so,” recognizing the “expressive content” of a trademark.

The question turns on how the Supreme Court will classify an individual’s act of applying and obtaining a trademark registration, and the government’s act of granting a trademark registration. On the one hand, the granting of registration can be classified as a government act in many ways, such as a government subsidy program because it is the provision of benefits rather than money, a limited public forum where the government has opened its property for a limited purpose, i.e., trademark registration, or the regulation of commercial speech. On the other hand, should the Supreme Court consider trademark registration as an individual’s expressive speech under the First Amendment as the Federal Circuit did, Section 2(a) will likely be overturned as unconstitutional. Should it be overturned, the U.S. Patent and Trademark Office will no longer be able to refuse registration for marks it deems immoral or scandalous.

The Supreme Court is expected to hear the case this term.

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.

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