On June 30, 2020, the U.S. Supreme Court held in U.S. Patent and Trademark Office v. Booking.com B.V., 591 U.S. ___ (2020) that “Booking.com” is eligible for trademark registration because consumers do not perceive “Booking.com” as a generic name. The 8-1 decision written by Justice Ginsburg rejected the U.S. Patent and Trademark Office’s argument that when a generic term is combined with a generic Internet-domain-name suffix like “.com,” the resulting combination is necessarily generic, noting that such an unyielding legal rule that entirely disregards consumer perception is incompatible with the Lanham Act.Read More
The U.S. Supreme Court confirmed that brand owners are not required to prove willful intent before obtaining a defendant’s lost profits. On April 23, 2020, the Supreme Court resolved a longstanding circuit split and unanimously held that trademark infringers may have to hand over their profits even if they did not willfully infringe.
In Romag Fasteners, Inc. v. Fossil Group, Inc., the Supreme Court was tasked with determining whether the rule that a plaintiff can win a profit remedy only after showing a defendant willfully infringed its trademark can be reconciled with the statute’s plain language. Ultimately, the Supreme Court sided with the plaintiffs, Romag Fasteners (Romag), holding that:
“[a] plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.”
In a Notice issued April 28, 2020, the U.S. Patent and Trademark Office (USPTO) further extended certain filing and payment deadlines to June 1, 2020, provided that the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak. This Notice supersedes the prior March 31, 2020 Notice that offered 30-day extensions to certain deadlines through April 30, 2020.Read More
On April 27, 2020, the U.S. Supreme Court ruled in a 5-4 decision authored by Chief Justice Roberts that copyright protection does not extend to the annotations in Georgia’s official annotated code. In the case, Georgia v. Public.Resource.Org, Inc. (No. 18-1150), the majority held that because “Georgia’s annotations are authored by an arm of the legislature in the course of its legislative duties, the government edicts doctrine puts them outside the reach of copyright protection” even though the annotations themselves do not have the force of law.Read More
A district court in the recent Sinclair case found no copyright infringement by the website Mashable, where it used one of photographer Sinclair’s Instagram photos in an article, even after an unsuccessful attempt to license the photo directly from Sinclair. Sinclair v. Ziff Davis, LLC, and Mashable, Inc., No. 1:18-CV-00790 (S.D.N.Y. April 13, 2020).Read More
Who owns a celebrity’s tattoo, and the extent to which that tattoo can be displayed in a commercial context, raises right of publicity, copyright, and trademark issues. A district court in the recent Solid Oak case found no copyright infringement where a video game incorporated tattoos as inked on professional NBA players. Solid Oak Sketches, LLC v. 2K Games, Inc., No. 16-CV-724-LTS-SDA (S.D.N.Y. March 26, 2020).
This case considered use of tattoos as part of lifelike depictions of professional athletes in video games, however the ruling easily relates to individuals with tattoos who commodify their likeness such as celebrities, social media influencers, and musicians.Read More
On March 23, 2020, the Supreme Court of the United States held that the Copyright Remedy Clarification Act of 1990 (“CRCA”) does not abrogate the states’ sovereign immunity from copyright infringement suits. The practical effect of this ruling is that copyright holders cannot sue the states for damages for copyright infringement.
Allen was decided in reliance on and accordance with Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, a 1999 case in which the Supreme Court found unconstitutional the Patent Remedy Act (“PRA”), a related statute “basically identical” to the CRCA, that eliminated the states’ sovereign immunity from patent infringement suits.
Applying the reasoning of Florida Prepaid and emphasizing stare decisis, the Supreme Court rejected the arguments that either Article I’s Intellectual Property Clause or Section 5 of the Fourteenth Amendment’s limitations on state power provide a basis for the CRCA’s abrogation of state sovereign immunity in copyright suits.Read More
On March 5, 2020, the U.S. District Court for the Northern District of Illinois entered a final judgment on a jury verdict of approximately $764.6 million in a high profile trade secret misappropriation case — Motorola Solutions, Inc. v. Hytera Communications Corp. Ltd. This judgment was made possible, in large part, by an earlier order from the district court holding that the Defend Trade Secrets Act (“DTSA”) applies to misappropriation that occurs outside the United States if (1) the misappropriator is a U.S. citizen or entity, or (2) “an act in furtherance of” the misappropriation occurred domestically. While Motorola is not the first case to recognize that the DTSA provides a private right of action for foreign misappropriation, it appears to be the first substantive analysis of extraterritorial application of the DTSA to date.
The Motorola case centered on allegations that Hytera, a Chinese rival of Motorola, misappropriated Motorola’s trade secrets to develop and sell a competing digital radio. Motorola claimed that Hytera hired three engineers away from Motorola’s Malaysian office, and that those engineers stole thousands of technical, confidential Motorola documents containing trade secrets and source code. According to Motorola, Hytera used Motorola’s trade secrets to develop a state-of-the-art digital radio that was functionally indistinguishable from Motorola’s digital radios. Hytera proceeded to sell its newly developed radios both internationally and in the United States. While the key actions that enabled Hytera’s acquisition of Motorola’s trade secrets took place overseas, certain actions related to the misappropriation occurred in the United States. In particular, Hytera advertised, promoted, and marketed products embodying the allegedly stolen trade secrets at numerous domestic trade shows.Read More
A nearly 20-year dispute between two competitors in the apparel industry will be heard by the Supreme Court Monday January 13, 2020, on the legal issue of claim preclusion – highlighting the practical pitfalls of releasing trademark infringement claims in settlement agreement between parties that continue to use the marks at issue. The case is Lucky Brands Dungarees, Inc. v. Marcel Fashion Group, Inc., Case No. 18-1086.
The practical lessons to draw from this dispute are numerous:
- the importance of initially clearing marks and implementing a plan to handle potential third party objections
- strategic enforcement as to when, and against whom, to enforce trademark rights – and squarely on point with this nearly 20 year battle now before the Supreme Court
- careful drafting of what claims are released in the context of future use of the same or similar trademarks.
On Tuesday July 31, 2019, the United States Patent and Trademark Office (USPTO) issued new Rules and Regulations under Title 37 of the Code of Federal Regulations (CFR) Parts 2, and 7. They were to take effect on December 21, 2019, but will now take effect of February 15, 2020.
The impact of the rule, as implemented, is a new requirement for all trademark applicants and registrants to:
- electronically file trademark applications, subsequent documents concerning trademark applications, and documents regarding registrations;
- provide and maintain a working e-mail address for receiving correspondence from the USPTO for each trademark application and registration; and
- provide and maintain an accurate domicile address as a backup for the USPTO to contact if an e-mail correspondence address fails to work.