IP Blog

Intellectual Property Blog

Supreme Court to Hear:  Bad Spaniels v. Jack Daniels

The Supreme Court will decide a trademark infringement case involving a dog toy company’s “Bad Spaniels” whiskey bottles, and Jack Daniel’s Old No. 7 Black Label Tennessee whiskey bottle.  The $17 toy at issue depicts a cartoon spaniel, a reference to Jack Danie’s Old No. 7, and a disclaimer that states:  “This product is not affiliated with Jack Daniel Distillery.”  After being on the unsuccessful end at the Ninth Circuit Court of Appeals, Jack Daniel’s appealed to the Supreme Court, arguing that the toy company’s product violates the federal Lanham Act.  The toy company’s defense has centered around, among other things, the “expressive work” doctrine under the First Amendment.

USPTO Shortens Response Time for Trademark Office Actions 

In the wake of the Trademark Modernization Act of 2020 (“TMA”), the United States Patent and Trademark Office (“USPTO”) promulgated a new, shorter period for responding to Office Actions on trademark applications. The change flows directly from the USPTO’s amendment of federal regulations to provide flexibility in setting deadlines, including the option to allow for extensions.

Starting on December 3, 2022, trademark applicants will have only three (3) months to address Office Actions as opposed to the six (6) months presently allotted. A single three (3) month extension may be requested for a fee of $125.00 if filed electronically or $225.00 if the request is filed on paper. Notably, foreign applicants filing under the Madrid Protocol, a major trademark treaty, are excluded from the rule and will continue to enjoy the full six (6) month response period without the need to file an extension.

According to the USPTO, the shortened deadlines are intended to increase efficiency in response to an exponential increase in the number of trademark applications filed recently, described as “unprecedented” and a “huge surge.” The raw data indicates a 172% increase in the number of applications filed between December 2019 and December 2020. According to the USPTO, the inundation of applications has resulted in a “significant increase in unexamined application inventory,” resulting in “longer than normal wait times at various stages of the application process . . . .”

It remains to be seen whether the new response protocols will expedite the examination process or result only generating more USPTO fees.

Banksy is Victorious in a European Union Trademark Case, Keeping Trademark Rights and Maintaining Anonymity

The European Union Board of Appeals recently overturned a 2021 decision by the EU’s Intellectual Property Office (EUIPO) that found Banksy’s trademark of his well-known graffiti ape “invalid in its entirety.” This appeal stemmed from an opposition filed back in 2019 by a greeting card company called Full Colour Black. In the opposition, Full Colour Black alleged that the subject registration was filed in bad faith and that the work was not distinctive. However, as the EU’s Board of Appeals found that Full Colour Black failed to prove the trademark was filed in bad faith, Banksy now keeps the trademark rights and maintains anonymity.  

Update on Unicolors, Inc. v. H&M Hennes & Mauritz, LP

As an update to a blog entry on June 18, 2021, the U.S. Supreme Court heard Unicolors, Inc. v. H&M Hennes & Mauritz, LP in February of this year.

By way of background, H&M argued that Unicolors’ copyright registration was invalid because Unicolors improperly filed one copyright application for over thirty (30) fabric designs that were not originally published together. The legal basis for H&M’s argument was that a collection of works does not qualify as a so-called “single unit of publication” unless all individual works in the collection were first published together. Therefore, Unicolors’ registration was susceptible to invalidation.

In its decision, the Court held that the 9th Circuit was incorrect in finding that Unicolors could not benefit from the safe harbor provided by U.S.C.S. § 411(b)(1). The safe harbor states that a certificate of copyright registration is valid even if it contains inaccurate information, so long as the copyright holder lacked knowledge of the inaccuracy. The Court further determined that § 411(b) does not distinguish between a mistake of law and a mistake of fact – either can excuse an inaccuracy in a copyright registration and therefore save the registration from invalidation.

Ultimately, the Court held that Unicolors was eligible to benefit from the safe harbor because its lack of knowledge of the “single unit of publication” requirement was due to its failure to understand the law, rather than the facts.

Earlier this month, the 9th Circuit affirmed the district court’s judgment on remand and held that Unicolors’ registration came within the protection of the safe harbor provision. Further, the 9th Circuit determined that a party must show the following when seeking to invalidate a copyright registration under § 411: (1) the copyright holder submitted an inaccurate application; (2) the copyright holder knew that the application failed to comply with the requisite legal requirements; and (3) the inaccuracy was material to the decision to register the applied-for work(s).

European Unitary Patent Expected Early 2023

For more than a decade, the concept of a European patent with “unitary effect” has been negotiated, legislated, discussed, and anticipated. Regulators are now targeting a start date of April 1, 2023 to implement the rules and regulations governing the Unitary Patent System and its judicial offspring, the Unitary Patent Court. From that date forward, applicants at the European Patent Office (“EPO”) will have the option to request “unitary effect” of patent applications granted by the EPO.

Those familiar with the process will know that not much will change during the application stage. This is because the EPO already offers centralized examination of patent applications. However, under the current regulations, once a patent application is approved by the EPO, it is converted into a “bundle” of national rights that must be validated, maintained, and enforced separately in each state that is a member of the European Patent Convention. This can be a complex and expensive undertaking. The Unitary Patent System and Unitary Patent Court will simplify this process by affording patent owners the ability to centrally maintain and enforce a single patent right that is effective in many countries.

Of course, there are benefits and drawbacks to be considered when requesting unitary effect of an EPO patent application. For example, the geographic reach of the unitary patent may initially only be available in the 25 states in that are in “enhanced cooperation” with the EPO. On the other hand, a regular EPO application can be validated in up to 39 member states, including some non-EU countries such as the UK, Switzerland, and Turkey. The firm works closely with colleagues in Europe to advise its clients on these and other issues affecting their global intellectual property portfolios.

Supreme Court to Hear Oral Arguments Pertaining to Prince and Andy Warhol

Andy Warhol, renowned artist who passed in 1987, created a piece of art depicting Prince, one of the most famous musicians of all time.  In creating that artwork, Warhol relied on an image taken in 1981 by photographer Lynn Goldsmith.  After suing Warhol’s foundation for copyright infringement, Goldsmith was faced with arguments that the artwork was “transformative.”  The Second Circuit Court of Appeals disagreed, however, stating that a work is not transformative if it is “both recognizably deriving from, and retaining the essential elements of, its source material.”  Absent that standard, the Second Circuit noted that movie adaptations of books could insert slight modifications to skirt copyright law.  On Wednesday (October 12), the Supreme Court of the United States will hear oral arguments surrounding whether an artwork is deemed “transformative” if it conveys a different message or meaning than the original work from which it is based off of. 

Shape of Dior’s Saddle Bag Denied Trademark Protection in the E.U.

This month, French luxury fashion house Christian Dior was denied trademark protection for the shape of its well-known “Saddle Bag” purse in the European Union. The Saddle Bag, which Dior originally debuted in its Spring/Summer 2000 collection, exploded in popularity after its re-release in 2018. The luxury community quickly dubbed the iconic bag a Dior classic, and it topped the list of hottest women’s fashion products in the third quarter of 2018.[1]

Nevertheless, the European Union Intellectual Property Office (“EUIPO”) refused to register the shape of the Saddle Bag as a trademark. In denying the application, the EUIPO stated that the mark “lack[s] distinctive character” and “does not, as a whole, deviate significantly from the norm or customs of the leather goods sector.”

 In the U.S. Patent and Trademark Office (“USPTO”), Dior has pending Trademark Application Serial No. 90/635,020 which covers the shape of the flap or top portion of the Saddle Bag. The USPTO approved the application for publication in July.

[1] Q3 2018, The Lyst Index (https://www.lyst.com/the-lyst-index/2018/q3/) (last accessed Sept. 28, 2022 at 11:25 AM).

The Battle Over the Banana Ripens: Artist Maurizio Cattelan Answers Artist Joe Morford’s Copyright Infringement Complaint.

Back in January, Miami-based artist Joe Morford filed a lawsuit in the Southern District of Florida alleging Italian artist Maurizio Cattelan’s viral duct-taped banana sculpture, Comedian, is “plagiarized”. In the Complaint, Morford argues that Cattelan’s work is substantially similar to his vertical diptych, Banana & Orange, which has been registered with the U.S. Copyright Office since 2000.

Due to Judge Robert N. Scola Jr. rejection of Cattelan’s Motion to Dismiss the case, Cattelan recently filed an answer and 19 affirmative defenses. In his defense, Cattelan asserts that Morford’s claims for copyright infringement fail because Cattelan created the work “independently” and “without knowledge of or reference to Plaintiff’s work.” Moreover, Cattelan states that if any infringement occurred, it was innocent and not willful. Though, Cattelan largely questions the validity of Morford’s copyright to begin with.

Pursuant to the Joint Interim Status Report filed on September 20, 2022, discovery is ongoing, and the parties will mediate next month.   

Photo via court documents.

The case is 21-cv-20039, Morford v. Cattelan.  

Geno Smith Applies for “I AINT WRITE BACK” Trademark

The Seattle Seahawks are coming off of a big win over the Denver Broncos, where NFL quarterback Geno Smith completed on 23/28 attempts, and connected on his first 13 passes.  In an interview with a reporter after the game – which has now gone viral – Geno commented on those who doubted his abilities, stating:  “They wrote me off, but I ain’t write back.”  Just two days after the win, Smith then filed a trademark application for that same catch-phrase in connection with retail store services, clothing, backpacks, sports equipment, and other related goods and services.  Smith’s quotation is already featured on t-shirts, sweatshirts, and other articles for sale.

Oprah Winfrey’s Company Sues “Oprahdemics” Podcast Creators

On August 9, 2022, Oprah Winfrey’s company, Harpo Inc., filed a lawsuit in New York federal court alleging trademark infringement, dilution, unfair competition, and cybersquatting against co-creators and co-hosts of the “Oprahdemics” podcast. The podcast aims to talk about all things Oprah, which Harpo Inc. alleges confuses listeners into believing it is actually endorsed by Oprah. Harpo Inc. further argues that this false association could cause exponential increases in sales, otherwise known as the “The Oprah Effect” or “The O Factor”. Accordingly, Harpo Inc. has demanded the podcast change its name to avoid further dilution of the Oprah brand.

The case is 1:22-cv-06787, Harpo, Inc. v. Jackson, et al.