Trademark & Copyright

On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021. 

Following up on our initial report last year on the possible creation of a Copyright Claims Board, we can now confirm the creation of that Board. The Consolidated Appropriations Act signed into law by President Trump on December 27, 2020 incorporates the CASE Act, establishes this new Copyright Claims Board (CCB) within the Copyright Office. 

One of the provisions included in the Consolidated Appropriations Act that President Trump signed into law on December 27, 2020 addresses the so-called “felony streaming” loophole in the Copyright Act and criminal code. 

Last week, the Food and Drug Administration (“FDA”) issued a pair of Guidance for Industry documents outlining best practices for developing proprietary names (i.e. brand names) for prescription and nonprescription human drug products. 

As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic and can be protected as a trademark under certain circumstances.

In a landmark decision, United States Patent and Trademark Office v. Booking.com B.V., the Supreme Court of the United States, by an 8-1 vote, affirmed the lower court’s determination that Booking.com could register BOOKING.COM as a trademark. 

In a recent decision from the Second Circuit, Judges Parker, Chin, and Carney side-stepped a novel question: whether human skin can be the kind of "tangible medium of expression" required for copyright protection. Instead, the court held that a photograph of a makeup artist’s application of a makeup design to a human “fixed” the design for purposes of copyright law and affirmed the district court’s dismissal of the appellant Mourabit’s unjust enrichment and unfair competition/misappropriation claims as preempted by the Copyright Act.

In a recent decision from the Southern District of New York, Judge George B. Daniels held that the strong First Amendment interests in protecting free artistic expression warranted summary judgment that Activision Blizzard’s use of Humvee vehicle models in the blockbuster Call of Duty videogames was not a violation of the Lanham Act.

On April 27, 2020, the Supreme Court held that annotations to legislative text, even if created by a private contracted party, are not copyrightable materials under 17 U.S.C. §101. Invoking the government edicts doctrine, the Court made explicit the notion that all members of government involved in lawmaking, including state legislators, are barred from being “authors” for purposes of copyright protection.

In a unanimous decision, the US Supreme Court held that a trademark owner need not prove willful infringement in order to seek lost profits from a trademark infringer. The case, Romag Fasteners Inc. v. Fossil Inc. et al., case number 18-1233, involved a long running trademark infringement dispute between the parties.

The Federal Circuit recently held in a precedential ruling that a “color mark” comprising a multiple-color pattern is capable of being inherently distinctive and of registration on the Principal Register, so long as it appears on product packaging rather than on a product itself.

Trademark due diligence is the process of analyzing information concerning a company's trademark portfolio and assessing the risks, exposures, and benefits associated with a proposed transaction. In an acquisition, both the buyer and the seller need to ensure that they each are fully informed as to the status of the trademarks at issue.

Trademark rights in the US are based on use of a mark not on registration. Failure to use your mark on a product or to offer a service to the public can result in an abandonment of your trademark rights and an inability to maintain an existing registration.

In a recent precedential decision, the TTAB held that the addition of one initial —or possibly even more than one initial—in front of a surname does not necessarily create the impression of a personal name. Rather, the Board held that a surname plus one or more initials may remain “primarily a surname” and, as such, cannot be registered on the Principal Register without proof of acquired distinctiveness.

Adding another layer of complexity to sensitively marketing in the COVID-19 environment, YouTube announced on March 11 that it will permit certain creators to monetize (i.e., enable ads on) content relating to coronavirus.  Companies and brands should review their approach in this pandemic, including refining YouTube content exclusion parameters and policing their ad environments, if they do not wish to risk association with potentially undesirable videos. 

The Second Circuit recently affirmed that a developer’s whitewashing of street art painted at the “5Pointz” warehouse complex in Long Island City was a violation of the Visual Artists Rights Act (“VARA,” codified at 17 U.S.C. § 106A).

Since 1949, a green jacket has been awarded to the winner of the Masters Tournament, one of golf’s four major championships.

On Tuesday, October 22, 2019, the US House of Representative approved, by 410-to-6, the Copyright Alternative in Small-Claims Enforcement (CASE) Act of 2019, introduced under H.R.2426 by Representative Hakeem Jeffries (D-NY).  This bill aims to “establish an alternative dispute resolution program for copyright small claims,” and creates the Copyright Claims Board, a body within the U.S. Copyright Office, to decide copyright disputes. 

As any football fan knows, Carrie Underwood has performed the introductory song for Sunday Night Football since 2013. “Waitin’ All Day For Sunday Night” was the introductory song for the 2013 and 2014 seasons, and “Oh Sunday Night” was the song performed in 2015, 2016, and 2017. On September 6, 2018, Sunday Night Football opened with Ms. Underwood singing a new introductory song entitled “Game On." Well, this “Game” is now the subject of a copyright infringement suit in Federal District Court in New York.

This past May, in a highly-anticipated decision, the Supreme Court held in Mission Product Holdings, Inc. v. Tempnology, LLC that a debtor’s rejection of an executory contract under Section 365 of the Bankruptcy Code has the same effect as a breach of contract outside of bankruptcy.  The decision resolves an inter-circuit split on the effect of a bankrupt trademark licensor’s rejection of a trademark license, a question regarded by legal experts in the trademark community as the most significant unresolved legal issue in trademark licensing.