On May 18, 2023, the US Supreme Court affirmed the Second Circuit’s decision that artist Andy Warhol’s silkscreen portrait of Lynn Goldsmith’s photograph of musician Prince, used for a Vanity Fair cover, was not a fair use...more
Last week the Supreme Court agreed to hear the case Unicolors, Inc. v. H & M Hennes & Mauritz, LP, which considers when inaccuracies in a US copyright application can be used to invalidate a resulting registration.
The case...more
After much media hype, Nike Inc. has settled a trademark dispute with the artist collective, MSCHF Product Studio, Inc., over claims that MSCHF deceived consumers into believing that Nike is affiliated with the collective’s...more
The rise of short-form content, and the platforms that host it, has brought with it a range of marketing and advertising opportunities for brands, artists, and companies alike. On the other hand, it has also led to a variety...more
It may come as some surprise that embedded within the over 5,500-pages of the recent COVID-19 relief and government funding bill (the Consolidated Appropriations Act) are several (not-insubstantial) changes to copyright and...more
1/11/2021
/ CASE Act ,
Consolidated Appropriations Act (CAA) ,
Copyright ,
Coronavirus/COVID-19 ,
Department of Justice (DOJ) ,
DMCA ,
Ex Partes Reexamination ,
Expungement ,
Federal Funding ,
Lanham Act ,
Relief Measures ,
Trademark Infringement ,
Trademark Modernization Act (TMA) ,
Trademarks ,
USPTO
The Supreme Court finds that a “generic.com” mark can be a protectable trademark if there is evidence that consumers recognize it as a source indicator, i.e., the mark has achieved secondary meaning in association with the...more
7/7/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
Earlier this month, the Supreme Court unanimously sided with fashion brand Lucky Brand Dungarees, Inc. (LB) resolving its decades-old dispute with Marcel Fashion Group, Inc. (Marcel).
The victory came on technical...more
Is a plaintiff in a trademark infringement suit required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to an award of defendant’s profits?
This is an important, age-old, yes-or-no...more
4/30/2020
/ § 1125(a) ,
§ 1125(c) ,
Appeals ,
Burden of Proof ,
Charge-Filing Preconditions ,
Compensatory Awards ,
Dilution ,
Lanham Act ,
Lost Profits ,
Remand ,
Remedies ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated ,
Willful Infringement
Although it is generally accepted that tattoos are copyrightable, one of the only definitive judicial statements on the issue came by way of a preliminary injunction hearing in 2011 involving Mike Tyson’s famous tribal face...more
4/17/2020
/ Athletes ,
Basketball ,
Copyright ,
Copyright Infringement ,
Copyright Registration ,
Counterclaims ,
Declaratory Judgments ,
Fair Use ,
NBA ,
Statutory Damages ,
Tattoos ,
Video Games
The Supreme Court has stricken a federal statute that abrogated a State’s immunity from copyright infringement lawsuits. The Copyright Remedy Clarification Act of 1990 (CRCA) provided that States “shall not be immune, under...more
4/7/2020
/ Abrogation ,
Authors ,
Congressional Intent ,
Copyright ,
Copyright Infringement ,
Copyright Ownership ,
Copyright Remedy Clarification Act ,
Eleventh Amendment ,
Fourteenth Amendment ,
SCOTUS ,
Sovereign Immunity ,
State and Local Government
[Updated – March 30, 2020] As local and national governments take measures to combat the spread of COVID-19, patent and trademark owners are facing potential difficulties with meeting prosecution and dispute deadlines.
The...more
As local and national governments take measures to combat the spread of COVID-19, trademark owners are facing potential difficulties with meeting prosecution and dispute deadlines. The closure of offices, retail locations,...more
In response to the significant increase in fraudulent filings, effective August 3, 2019, all foreign-domiciled applicants, registrants, or parties to trademark proceedings must be represented by a US-licensed attorney....more
7/9/2019
/ Attorney Representation Agreements ,
Canada ,
Compliance ,
Corporate Counsel ,
Foreign Trademark ,
Fraud ,
Madrid Protocol ,
New Rules ,
Patent Agents ,
Regional Attorneys ,
Trademark Application ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
WIPO
On Monday, the Supreme Court held that the ban on “immoral or scandalous” trademarks was unconstitutional under the First Amendment. The Court found that, as with the recently struck down ban on “disparaging” marks, the ban...more
7/1/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
USPTO ,
Viewpoint Discrimination