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Sweet Emotions: Supreme Court Declines to Hear Copyright Case on Protection of Fictional Characters

Earlier this month, the Supreme Court of the United States (SCOTUS) denied certiorari for a Petition seeking the Justices clean up the legal “chaos” over the protection of fictional characters under U.S. Copyright Law.  In the November Brief in Opposition, Respondents alleged “[t]he petition’s premise is false.  There is no chaos.  Instead, there is striking coherence and comity among the circuits, which freely cite each other’s decisions as a shared explication of a legal standard first articulated by Judge Learned Hand in 1930.”


In 2017, Denise Daniels and The Moodsters Company (Plaintiffs) brought suit against The Walt Disney Company (Defendant) in the U.S. District Court of Central District of California.  See Denise Daniels and The Moodsters Company v. The Walt Disney Company, et al, 17-CV-4527 PSG (SKx) (C.D. Cal. 2018).  In its complaint, the Plaintiffs’ alleged copyright infringement of the individual characters and the ensemble of characters “The Moodsters”, a cartoon world populated by characters that embody individual emotions, to help children understand and regulate their emotions.  Each Moodster is color-coded and anthropomorphic, and each represents a single emotion: happiness (yellow), sadness (blue), anger (red), fear (green), and love (pink).  In the 2015 film Inside Out, Disney Pixar introduced the public to anthropomorphized emotions living inside the head of an 11-year-old girl featuring five color-coded emotions as characters—joy (yellow), sadness (blue), anger (red), fear (purple), and disgust (green).  The District Court granted the Defendants’ Motion to Dismiss after finding the Plaintiffs’ characters lacked “specific traits on par with those of the iconic characters” that had achieved independent copyrightability, such as Sherlock Holmes, Tarzan, Superman, and James Bond.


Although characters are not an enumerated copyrightable subject matter under the Copyright Act, see 17 U.S.C. §102(a), there is a long history of extending copyright protection to graphically-depicted characters.  See, e.g.Olson v. Nat’l Broad. Co., 855 F.2d 1446, 1452 (9th Cir. 1988); Walt Disney Prods. v. Air Pirates, 581 F.2d 751, 755 (9th Cir. 1978).  Characters standing alone are not entitled to copyright protection absent the character (1) having “physical as well as conceptual qualities,” (2) being “‘sufficiently delineated’ to be recognizable as the same character whenever it appears,” AND (3) being “‘especially distinctive’ and containing ‘some unique elements of expression.’”  See DC Comics v. Towle, 802 F.3d 1012, 1020-21 (9th Cir. 2015).  Consistently recognizable characters like Godzilla or James Bond, whose physical characteristics may change over various iterations, but who maintain consistent and identifiable character traits and attributes across various productions and adaptations, meet the test. See Tono Co. v. William Morrow & Co., 33 F. Supp. 2d 1206, 1215 (C.D. Cal. 1998) (finding Godzilla is consistently a “pre- historic, fire-breathing, gigantic dinosaur alive and well in the modern world”), Metro-Goldwyn-Mayer, Inc. v. Am. Honda Motor Corp., 900 F. Supp. 1287, 1296 (C.D. Cal. 1995) (noting James Bond has consistent traits such as “his cold-bloodedness; his overt sexuality; his love of martinis ‘shaken, not stirred;’ his marksmanship; his ‘license to kill’ and use of guns; his physical strength; his sophistication”).


In 2020, the Ninth Circuit affirmed the District Court’s dismissal of the Plaintiffs’ suit because “lightly sketched” characters such as The Moodsters, which lack “consistent, identifiable character traits and attributes,” do not enjoy copyright protection.  See DC Comics v. Towle, 802 F.3d 1012, 1019, 1021 (9th Cir. 2015).  The Ninth Circuit found the notion of using a color to represent a mood or emotion is an idea that does not fall within the protection of copyright and that colors themselves are not generally copyrightable.  The Ninth Circuit concluded the Plaintiffs could not copyright the idea of colors or emotions, nor could she copyright the idea of using colors to represent emotions where these ideas are embodied in a character without sufficient delineation and distinctiveness.


Can Booking.com Serve as a Protectable Trademark?

On Friday, November 8, the Supreme Court granted the federal government’s petition for review in U.S. Patent and Trademark Office v. Booking.com. The issue to be reviewed is whether the addition of the generic top-level domain “.com” to a generic term can create a protectable trademark.

The dispute first arose when Booking.com applied to register trademarks containing the term BOOKING.COM in connection with online hotel reservation services. The USPTO refused registration on the ground that the term “booking” is generic for the underlying services in the application and that the addition of the generic top-level domain “.com” did not create a protectable mark. The decision was reviewed by the United States District Court for the Eastern District of Virginia, which held that BOOKING.COM was non-generic and potentially protectable as a trademark. The Fourth Circuit affirmed.

USPTO Issues New Examination Guide to Address Generic.com Terms after USPTO v. Booking.com

On June 30, 2020, the U.S. Supreme Court rejected the rule that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is automatically generic. USPTO v. Booking.com B.V., 140 S. Ct. 2298, 2020 USPQ2d 10729 (2020). In light of the Court’s decision, the USPTO recently issued Examination Guide 3-20 to address its examination procedures for “Generic.com terms.” It is worth noting that the Exam Guide pertains to a generic term and any generic top-level domain designating an entity or information (“.com,” “.net,” “.org,” “.biz,” “.info”).

While Booking.com rejected the per se rule that Generic.com terms are automatically generic, it did not otherwise significantly alter the analysis nor USPTO examination procedures regarding these generic terms. A mark must be capable of serving as a source indicator, rather than indicating that the term, as a whole, is merely the name of the class or category of the goods and/or services identified in the application. Ultimately, examining attorneys must not initially refuse registration of a Generic.com term on the Principal Register as “generic,” even if there is strong evidence of genericness. Instead, the examining attorney must refuse the mark as “merely descriptive” under Trademark Act Section 2(e)(1), requiring a showing of Acquired Distinctiveness or amendment to the Supplemental Register. The Exam Guide indicates that the suggestion to amend to the Supplemental Register will depend on whether the Generic.com term is at least capable of serving as a source indicator based on the available evidence.

The Exam Guide maintains that examining attorneys must follow the existing disclaimer policy and procedure when examining proposed marks containing Generic.com terms and other matter. If the Generic.com term is incapable of serving as a source indicator and is separable from the other matter in the proposed mark, a disclaimer of the term is appropriate, whether registration is sought on the Principal Register or Supplemental Register. However, when disclaiming a Generic.com term, the term must be disclaimed in its entirety, rather than disclaiming the generic term and the generic top-level domain separately.

While an examining attorney may not outright refuse marks on the basis of genericness, the refusal may be based on the grounds of failure to function. In doing so, “examining attorneys must also consider whether the specimen of use shows the Generic.com term being used solely as a website address and not in the trademark or service mark manner. If so, a refusal on the ground that the proposed mark fails to function as a trademark or service mark is appropriate.”

Finally, the Court in Booking.com recognized that registered Generic.com terms may be subject to a narrower scope of trademark protection. The Court noted that “[w]hen a mark incorporates generic or highly descriptive components, consumers are less likely to think that other uses of the common element emanate from the mark’s owner.” As such, examining attorneys may take this into consideration determining whether a prior registration for a Generic.com term that contains the same generic or highly descriptive terms that appear in a proposed mark should be cited under Trademark Act Section 2(d). As always, a case must be considered on its own merits, with consideration given to all relevant likelihood of confusion factors.

Read Examination Guide 3-20 here.

Supreme Court of United States showing Spider-Sense by avoiding “Stare Decisis”?

Stephen Kimble is an inventor of a web-shooting gadget that allows kids to imagine they have super powers like Spiderman. More particularly, Kimble was granted a patent in 1991 by the United States Patent and Trademark Office for an apparatus that shoots foam from the palm of the hand, to give the user an impression that a spider web is formed. As such, the Supreme Court of the United States (“SCOTUS”) has agreed to review an appeal by Kimble in regards to considering overruling a 50-year old precedent that bars the collection of royalties on patents after they expire.

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Supreme Court of the United States Grants a New Standard of Review in Patent Claim Construction

The Supreme Court of the United States (“SCOTUS”) has unequivocally addressed the current standard of review for patent claim construction. Accordingly, the Court has held that a Federal Appellate Court can only overturn a District Court’s factual findings, if those findings were determined to be clearly erroneous. As such, this new standard transforms the de novo standard used by the Federal Circuit when reviewing patent claim construction.

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