The Supreme Court Rejects Rule Barring Federal Registration of “Generic.com” Trademarks

James GriffithCase Studies

Registration-of-“Generic.com”-Trademarks

For many years, the Trademark Office has refused registration to marks consisting of a generic word combined with a top-level domain, such as “.com,” on the grounds that the combination of two generic elements cannot create a protectable mark.  The rationale for this nearly per se rule was that such marks could not be protected any more than the combination of a generic word with another generic suffix, such as “Inc.” or “Corp.”  Read More

The Road to Protection in China Just Became A Bit Clearer

Ashley PendletonBest Practices

Earlier this month, the Supreme People’s Court, China’s highest appellate court, affirmed a 2017 ruling that ordered “Uncle Martian” to destroy all infringing product, pay $300,000 in damages, and stop using a “UM” design that mimicked, and therefore infringed upon, Under Armour’s “UA” logo. Separately, in April, the Supreme People’s Court decided that the Chinese company Qiaodan may continue to use the Romanized name and silhouette of Michael Jordan; however, the company can no longer use the two elements in conjunction with one another.Read More

YVES SAINT LAURENT TAKES A HIT

Ashley PendletonBest Practices

When dealing with creative talent, it is imperative that a company pays close attention to their employment and intellectual property agreements to be sure that the company’s operations are not disrupted if and when the talent departs. Recent litigation between Yves Saint Laurent (YSL) (and its parent entity) and YSL’s former creative director, Hedi Slimane, provide a case study in what can go wrong when issues concerning works-made-for-hire and restrictive covenants are not fully fleshed out and considered at the outset.Read More

Recovery of Attorneys’ Fees in Copyright Cases Remains Subject to Case-By-Case Analysis

James GriffithCase Studies

copyright word

The availability of attorneys’ fees for prevailing parties in copyright cases has been a hot issue for several years, and I have commented on recent developments on several occasions. This week, the Seventh Circuit issued an opinion making clear that the applicable analysis remains grounded in a fact-intensive, case-by-case approach.  Timothy B. O’Brien LLC v. Knott, No. 19-2138 (7th Cir. June 17, 2020).  Read More

Answer On Time and Respect the Rules

Jerome CrabtreeBest Practices

A recent decision from the United States Court of Appeals for the Seventh Circuit highlights the importance of complete and timely appearances, pleadings, and discovery responses. Quincy Bioscience, LLC is the maker of the dietary supplement PREVAGEN, which is also sometimes prescribed as a memory aid.  Quincy sued Ellishbooks and others for trademark infringement and related claims based on the defendants’ selling PREVAGEN branded supplements on Amazon.com that Quincy claimed were known by the defendants to be stolen.  Read More

Federal Judge Dismisses Artists’ Suit Over 2008 Universal Studios Fire

James GriffithCase Studies

universal-studio-fires-lawsuit

A federal judge in California has dismissed a class action lawsuit against Universal Music Group arising from a 2008 fire that destroyed an undetermined number of master recordings from artists including Tom Petty, 2Pac, Nirvana, and others.  Most of the other artists who were originally part of the suit, including Soundgarden, Steve Earle, Tupac Shakur, and Hole had withdrawn from the litigation earlier, but Tom Petty’s estate had remained as a party in the case.Read More

Ninth Circuit Provides Copyright Win to Led Zeppelin in Important En Banc Decision

Jerome CrabtreeCase Studies

copyright

In a highly anticipated decision, the United States Court of Appeals for the Ninth Circuit, sitting en banc, reversed a prior panel opinion (Skidmore v. Led Zeppelin, 905 F.3d 1116 (9th Cir. 2018)) that had held that a new trial was required in a high-profile copyright case involving “Stairway to Heaven,” one of the most famous rock songs in history. The full Ninth Circuit now instead upheld the 2016 jury verdict in favor of Led Zeppelin, and against the heir of Randy Wolfe, the songwriter of a 1967 composition called “Taurus.”  Skidmore v. Led Zeppelin, No. 16-56057 (9th Cir. Mar. 9, 2020) (en banc). Among other aspects of the decision, the Ninth Circuit determined that the decision by the district court judge to withhold from the jury the original “Taurus” sound recording at trial was not erroneous. Further, the Ninth Circuit elected to expressly repudiate the controversial “inverse ratio rule,” under which courts in the Ninth Circuit had set a lower bar for plaintiffs to prove substantial similarity where a higher level of access to a work could be shown. The decision is likely to provide a template for future music copyright cases and may find its way to the Supreme Court. Read More