Articles Posted in Trademark and Copyright Litigation

A sports nutrition and wellness consulting firm sued a major manufacturer of sports drinks, arguing that the manufacturer had violated the consulting firm’s trademark when it referred to itself as “The Sports Fuel Company.” The district court granted summary judgment in favor of the manufacturer. The appellate panel affirmed, finding that the manufacturer used the phrase in question as a descriptor and not a source indicator. The panel found that this was an example of fair use.

SportFuel is a Chicago-based sports nutrition and wellness consulting firm whose clients include several of Chicago’s professional sports teams and their athletes. The company provides personalized nutritional consulting services to professional and amateur athletes and also sells SportFuel branded dietary supplements. SportFuel holds two registered trademarks for “SportFuel.” One of SportFuel’s trademarks became incontestable in 2013, and the second was registered for the first time in 2015. Continue reading ›

In an 8-1 decision, the Supreme Court ruled that a company’s bankruptcy does not allow it to rescind a trademark licensing agreement it had entered with a licensee. In so ruling, the court settled an issue that had split the federal appellate circuits and congress over the handling of trademarks licenses in bankruptcy.

The case stems from a 2012 license agreement between New Hampshire-based Tempnology LLC and New York-based Mission Product Holdings Inc. over the exclusive rights for U.S. distribution of Tempnology’s apparel and accessory products, which were designed to stay cool when worn during exercise. The products, chemical-free towels, socks, and headbands, were sold under the brand names Coolcore and Dr. Cool. The license also included the nonexclusive right for Mission Product Holdings to use Tempnology’s trademarks.

In 2014, the parties’ relationship soured, which led to the filing of arbitration. In arbitration, the arbitrator ruled that Mission Product Holdings was entitled to maintain its distribution and trademark rights through July 2016, even though it did not intend to place any further orders with Tempnology. In 2015, Tempnology filed for Chapter 11 bankruptcy, claiming that Mission Product Holdings had “starved” it of income. In bankruptcy, Tempnology attempted to rescind the license agreement under Section 365 of the Bankruptcy Code.

At the time Tempnology made the request to rescind the license agreement, the law in the various circuits was not settled, which likely prompted the high court to take on the issue in the first place. The First Circuit had long followed the Fourth Circuit’s 1985 ruling in Lubrizol Enterprises v. Richmond Metal Finishers, Inc., which held that a debtor-licensor could abrogate a licensee’s rights by rejecting the license agreement pursuant to Section 365(a) of the Bankruptcy Code. Congress later overruled Lubrizol as it related to patents and copyrights but refused to do so with regard to trademarks, insisting that more study of the issue was required due to the unique ongoing obligations of mark owners in policing their marks. Continue reading ›

Do you ever think that all pop songs sound the same? If you have, you might not be the only one who’s had that thought. Several musicians lately have sued better known musicians, claiming their success comes, at least in part, from stealing parts from older, lesser-known songs. Lately, the musicians filing the lawsuits demanding compensation for their stolen work have been successful in court, leaving many people asking about the difference between inspiration and infringement.

The latest musician to achieve success in the courtroom is Marcus Gray, who goes by Flame in the music industry. Gray wrote a Christian rap song called “Joyful Noise,” which was released in 2008. When Katy Perry released “Dark Horse” five years later, Gray sued, claiming Perry’s song had stolen important elements of “Joyful Noise,” and that the alleged theft was a significant factor in the song’s success, which included holding the top spot on Billboard’s Hot 100 list for four weeks in 2014.

Perry’s attorneys argued before a federal jury in Los Angeles that the musical elements the two songs had in common with each other, such as a few notes that were repeated in a pattern, are basic elements of music, rather than intellectual property that could be protected by copyright.

Whether Perry was even aware of Gray’s song when she and her five collaborators came together to write “Dark Horse” is not entirely clear, but even if she had been aware of it, could she have used it as inspiration for her own song without going so far as to steal it? These copyright lawsuits have forced juries (and the music industry) to consider the difference between inspiration and infringement, and it’s not yet clear where that line will land. Continue reading ›

This month the Copyright Alternative in Small-Claims Enforcement Act of 2019 (“CASE Act”) was introduced in the Senate (S. 1273) by a number of Senators including Dick Durbin of Illinois and in the House (H.R. 2426) by Representatives Hakeem Jeffries and Doug Collins. The CASE Act seeks to provide individual creators and small businesses, who create the vast majority of creative works but are the least able to afford costly intellectual property litigation, with an affordable forum to adjudicate small claims against copyright infringers. The CASE Act would create the equivalent of a small claims court within the United States Copyright Office. The bill (referred to informally as “the small claims bill”) closely track recommendations made by the Copyright Office in its comprehensive 2013 study on the subject. The CASE Act has received sizeable bipartisan support in both houses.

Important elements of the CASE Act include provisions that would:

  • Cap damages at $30,000 per proceeding (and preclude awards of injunctive relief);
  • Create a Copyright Claim Board (“CCB”) comprised of three judges with copyright law and alternative dispute resolution experience;
  • Make participation voluntary by allowing an alleged infringer to opt out of the small claims process (which would require the copyright owner to file an infringement claim in federal court);
  • Allow the entire proceeding to be conducted on paper, obviating in-person appearances;
  • Require parties to pay their own attorney fees, if any;
  • Discourage bad faith claims, counterclaims, and defenses by (1) permitting fee shifting awards to be entered against bad actors, and (2) barring “repeat offenders” from filing claims before the CCB for a period of time.

Continue reading ›

A fan emailed MomoMilk LLC last fall, excited because she had heard they were opening a store in her home town of Chicago. But she was soon disappointed when she realized it was not the nationally recognized bakery that was coming to Chicago, but another company altogether taking advantage of the Milk Bar trademark and brand recognition.

A few years ago, chef Christina Tosi started a restaurant and bakery called “Milk Bar” in New York City, which features shakes, milk cookies, cakes, pies, and a variety of cereal products. The bakery was an instant success and was soon opening other stores throughout the city, then in other cities across the country. It also works with third-party distributors and sells its delicious products through its website. Although it does not currently have a store in Chicago, Tosi has publicly spoken in interviews about the fact that she has been considering opening new stores in cities like Chicago and Miami where the brand has a strong fan base.

The famous bakery operates under the name MomoMilk LLC and it has owned the trademark to the stylized milk since 2014. Now another restaurant has recently opened in Chicago, also calling itself “Milk Bar” and using the trademarked style milk that MomoMilk has been using in all its branding materials for the past five years. Continue reading ›

Earlier this month, the Supreme Court hear arguments in a case that will decide the fate of a federal prohibition against granting trademark protection to immoral or scandalous material. The case Iancu v. Brunetti involves a lawsuit initiated by Los Angeles street artist Erik Brunetti who sought to challenge the U.S. Patent and Trademark Office’s decision not to register the trademark for his “FUCT” clothing line. His application had been denied, as deputy solicitor general Malcolm Stewart, who was defending the law, delicately put it, because it “would be perceived by a substantial segment of the public as the equivalent of the profane past participle form of. . . perhaps the paradigmatic word of profanity in our language.”

The U.S. Court of Appeals for the Federal Circuit struck down the century-old ban on granting trademark protection to “scandalous” and “immoral” trademarks reasoning that the ban constituted a First Amendment violation. In its December 15, 2017 decision, the Federal Circuit found that the board was correct in determining that the trademark was immoral or scandalous but that the statute’s “bar on registering immoral or scandalous marks is an unconstitutional restriction of free speech.” The Department of Justice wants the Supreme Court to reverse that decision.

The Supreme Court expressed disdain for the public display of vulgarity but seemed reluctant to use federal trademark law to stop it. The government cannot stop Brunetti from selling his wares, Solicitor General Noel J. Francisco told the court in the government’s petition and the Justice Department conceded at oral argument, also taking time to highlight the fact that Brunetti’s clothing was available even in children’s and infants’ sizes. The Justice Department attempted to frame the issue, however, not as to whether Brunetti could sell the clothing but whether the mark deserves federally registered status. Continue reading ›

Last month, the United States Supreme Court issued a unanimous opinion resolving a long-standing circuit split concerning when a copyrighted work is considered “registered” for the purposes of initiating a copyright infringement lawsuit. The Supreme Court held that a lawsuit for copyright infringement can only be filed after the U.S. Copyright Office actually issues a registration certificate for the work.

The case, Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC, centered on whether Fourth Estate, an online news organization, could sue Wall-Street.com for copyright infringement after the defendant canceled its license agreement but continued to display Fourth Estate’s content on its website. The fourth Estate filed its infringement suit after it had filed applications to register the articles with the Register of Copyrights but before it received registration certificates for the articles. Continue reading ›

Two lawsuits brought by “The Fresh Prince of Bel-Air” actor Alfonso Ribeiro against Epic Games, the maker of Fortnite Battle Royale, and Take-Two Interactive Software, which makes NBA 2K, appear likely to end soon after Ribeiro suffered a setback when the U.S. Copyright Office denied copyright protection to the “Carlton” dance, a dance Ribeiro made popular on the show in the 1990s as seen here. In the lawsuits, Ribeiro alleges that characters in the videogames make illegal use of the “Carlton” dance which amounts to copyright infringement. A side-by-side comparison of the “Carlton” and the move as seen in Fortnite, as well as a discussion of the lawsuits, can be seen here.

Ribeiro has submitted three copyright applications involving the “Carlton” dance to the U.S. Copyright Office. So far, the Copyright Office has rejected two of the applications and is still considering the third. In the two applications that have been rejected to date, the Copyright Office ruled that the “Carlton” dance amounts to a simple dance move, which cannot be copyrighted, as opposed to a choreographed dance routine, which can be copyrighted.

Lawyers for the video game makers named in Ribeiro’s infringement lawsuits have filed motions to dismiss which are scheduled for hearing later in March. Although not bound by the rulings of the Copyright Office, the judges in the lawsuits would almost certainly have taken the rulings into account when deciding the motions to dismiss. Perhaps this fact played into Ribeiro’s decision to dismiss his lawsuit against Epic Games, a move which Ribeiro’s legal team announced in documents filed in the lawsuit on March 7, 2019. Ribeiro’s legal team also announced similar plans to dismiss the other lawsuit filed against Take-Two Interactive Software. Continue reading ›

A manufacturer of systems that blend butane into gasoline prior to retail sale sued a competitor, accusing it of infringing on its patents. The competitor argued that the patents were invalid because the original inventors had sold their patented system to a third company more than a year before they filed for patents on the system, and because the plaintiff had allegedly engaged in inequitable conduct while prosecuting its patent claim. The Northern District of Illinois rejected the competitor’s arguments, finding that the sale of the system was made for experimental purposes and that the plaintiff’s conduct did not meet the high threshold required to invalidate the patents.

The plaintiff, Sunoco Partners, acquired its patents when it purchased the butane blending business of a company called Texon Terminals in 2010. The competitor, U.S. Venture, Inc. is in the business of mixing butane into gasoline prior to its distribution to retail outlets. In 2012, Venture retained Technics, Inc. to install a butane blending system at three of Venture’s fuel terminals located in Green Bay, Madison, and Milwaukee, Wisconsin. Sunoco later filed suit against U.S. Venture and Technics in federal court, accusing the companies of infringing on its patents when they installed the butane-blending systems at U.S. Venture’s fuel terminals. Continue reading ›

If you’re going to claim that the use of certain content counts as fair use, you should probably know what “fair use” means.

The fair use doctrine allows people limited use of copyrighted content without the need to get permission from the copyright holder first, but the law is specific about how and under what circumstances someone can claim fair use of a particular piece of content.

First, they can only use part of the content. Just reproducing the entire piece and distributing it on your own is not fair use.

Second, fair use is generally used to make a point about the content being used, such as in a parody or a review.

Third, whether the work in question is of a creative or factual nature.

Fourth, whether the person using the content for fair use intends to profit off the material in any way.

According to Judge Thomas M. Durkin, Jasmine Enterprises Inc. did not meet any of those requirements when claiming that their use of the three copyrighted photos they stole from FameFlynet constituted fair use. Continue reading ›