Skip to main content

Trademark & Copyright

Viewpoints

Filter by:

Viewpoint General

Whose Game is On? Carrie Underwood and NBC Sued Over SNF Song

July 9, 2019 | Blog | By Susan Neuberger Weller

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.
Viewpoint
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. 
Viewpoint
Earlier this week, the Supreme Court granted the State of Georgia’s petition to review the Eleventh Circuit’s decision in Code Revision Comm'n v. Public.Resource.Org, Inc., 906 F.3d 1229 (11th Cir. 2018). In that case, the Eleventh Circuit held that the privately-compiled but officially-sanctioned and adopted Official Code of Georgia Annotated (OCGA) was not protected by copyright under the “government edicts” doctrine.
Viewpoint
The U.S. Supreme Court, in a split decision, held that the federal ban on registering “scandalous” and “immoral” trademarks is an unconstitutional violation of free speech under the First Amendment of the US Constitution. The trademark FUCT is what was at issue in Iancu v. Brunetti, case number 18-302 (June 24, 2019).  Although the mark had been in use on clothing for many years, it was never accepted for registration by the US Trademark Office on grounds that it violated the ban on registration of “scandalous” and “immoral” marks under Section 1052(a) of the Lanham Act.
Viewpoint
Legalizing “hemp” under the Agricultural Improvement Act of 2018 (2018 Farm Bill) has triggered an important change for the examination of federal trademark applications concerning cannabis and cannabis-derived goods and services.  In response to the Bill’s enactment on December 20, 2018, the United States Patent and Trademark Office (USPTO) issued a new examination guide to clarify its examination procedures involving hemp goods and services.  For businesses in the cannabis industry, the examination guide (recently issued on May 2, 2019) will impact the viability of federal trademark applications filed on or after December 20, 2018 that were once previously barred.
Viewpoint General

The FUCT Mark: Is the Prohibition on Scandalous Marks Unconstitutional?

March 14, 2019 | Blog | By Susan Neuberger Weller, Adam Samansky, Serge Subach

The constitutionality of yet another portion of Section 2(a) of the Lanham Act will soon be determined. Following in the footsteps of the blockbuster decision in Matal v. Tam, 137 S. Ct. 1744 (2017) (“Tam”), the U.S. Supreme Court granted certiorari to Iancu v. Brunetti on January 4, 2019. In Matal v. Tam, the Supreme Court held that the prohibition in Section 2(a) of the Lanham Act against registering disparaging trademarks at the U.S. Trademark Office (“USPTO”) was an unconstitutional restriction on free speech. However, Section 2(a) also prohibits the registration of other categories of marks, including marks that are immoral and scandalous. It is the constitutionality of this prohibition which is at issue in Brunetti.
Viewpoint General

U.S. Supreme Court Holds That Copyrights Must Be Registered before Plaintiffs Can File Infringement Suits

March 5, 2019 | Blog | By Susan Neuberger Weller, Andrew D. Skale, Harold Laidlaw

The U.S. Supreme Court held today that bringing a suit for copyright infringement requires that the infringed work actually be registered with the U.S. Copyright Office, and that a mere application for registration will not suffice.
Viewpoint General

Significant 2018 Trademark Decisions

January 9, 2019 | Blog | By Michael Graif, Rithika Kulathila

This year the Supreme Court, United States Court of Appeals for the Federal Circuit, and the Circuit Courts penned a number of opinions impacting trademark law.  Here are some key takeaways from the past year:
Viewpoint General

Brewery Defeats Trademark Opposition by Conservative Public Figure Phyllis Schlafly

December 18, 2018 | Blog | By Michael Graif, Tiffany Knapp

Relatives of the late conservative political activist, Phyllis Schlafly, lost their appeal to prevent the Saint Louis Brewery, LLC (“the Brewery”) from trademarking the Schlafly name in connection with various beer products on November 26, 2018. 
Viewpoint
Effective August 3, 2019, the United States Patent and Trademark Office (USPTO) will require foreign entity applicants, registrants, or parties to a trademark proceeding whose domicile is not located within the United States or its territories to be represented by qualified U.S. counsel (i.e., an attorney who is an active member of a state bar in the U.S.).

Monkeys Lack Standing to Sue for Copyright Infringement

May 1, 2018 | Blog | By Susan Neuberger Weller

Well, it’s official: Naruto, the crested macaque monkey who took photographs of himself while on a reserve on the island of Sulawesi, Indonesia in 2011, lacks statutory standing under the US Copyright Act to sue for copyright infringement.
Two incredible things happened in 1992 for the NFL football team Washington Redskins. It won the Super Bowl and applied to register a trademark Washington Redskins. It has not been so lucky ever since. It has not won another Super Bowl and has not registered that mark since 1992.

When is a Copyright “Registered” for Purposes of Filing Suit?

December 6, 2017 | Blog | By Susan Neuberger Weller

On May 18, 2017, the Eleventh Circuit Court of Appeals dismissed a copyright infringement complaint and added further to a circuit split on when copyright “registration” occurs for purpose of filing a copyright infringement complaint.

Company “Branding” and the Benefits of Federal Trademark Registration

November 16, 2017 | Blog | By Susan Neuberger Weller

Selecting and protecting your “brand” should begin from the very moment a business is in the process of being formed, whether that business is a sole proprietorship, partnership, corporation, limited liability company, or some other type of entity.

Building a Health App? Part 2: Protecting Your Intellectual Property

September 26, 2017 | Blog | By Christina Sperry

This post is the second in a series of weekly blog posts covering legal issues for consideration during the early stages of development of a health app and providing best practices to help guide you through a successful launch.
In a unanimous decision handed down on June 19th, the U.S. Supreme Court struck down as unconstitutional a long-standing prohibition against federal registration of “disparaging” trademarks, finding that the this provision of the Lanham Act violates the Free Speech Clause of the First Amendment.
In a decision that may have broader implications in the U.S. fashion industry, the U.S. Supreme Court in Star Athletica, L.L.C. v. Varsity Brands, Inc. (No. 15-866) ruled that the decorative elements on a cheerleading uniform can fall within the scope of articles protectable by copyright.
Although most people will recognize the ubiquitous PIZZA! PIZZA! slogan mark owned by the pizza chain Little Caesar’s, the company’s collection of repeated term marks does not rise to the level of a “family of marks” according to the Trademark Trial and Appeal Board.

U.S. Supreme Court to Hear Arguments on January 18, 2017 in "The Slants" Case.

January 11, 2017 | Blog | By Susan Neuberger Weller

As we reported to you last September, the U.S. Supreme Court agreed to hear the case involving the constitutionality of the provisions of the Lanham Act upon which the U.S. Trademark Office relied to deny registration of the rock band name "The Slants."
In a non-precedential opinion, the U.S. Trademark Trial and Appeal Board cancelled two US trademark registrations for the mark PORTON,  finding it to be confusingly similar to the mark PATRON.
Sign up to receive email updates from Mintz.
Subscribe Now

Explore Other Viewpoints: