Articles Posted in Trademark and Copyright Litigation

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 ›

Not all companies are sure how to apply their business practices to the Digital Age. Since most people running some of the larger, more established companies came of age in a pre-internet era, many of them are understandably stumped by what laws and rules apply to which online situations (although admittedly a lot of younger viewers aren’t sure about the rules of social media either).

The situation has improved over the years as everyone has adjusted to the new technologies, but the early part of the new century was an especially trying time for companies and individuals alike.

Take Stephanie Lenz for example. She took a video of her infant son dancing to the song, “Let’s Go Crazy,” by Prince, and then uploaded it to the internet where anyone could see it – without asking permission or paying for the use of a song to which she did not own the rights. That seemingly harmless act resulted in a copyright lawsuit that dragged on for more than ten years.

Universal Musical Publishing Group (UMPG), which owns the rights to the recordings of Prince’s songs, issued an order under the Digital Millennium Copyright Act for Lenz to take down the video.

Lenz initially complied with the order, but then she contacted the Electronic Frontier Foundation, an international non-profit group that works to protect people’s rights online. The company is based in San Francisco and argued that UMPG had ignored the fair-use exception to the copyright law when it ordered Lenz to take down the video. Continue reading ›

One of the biggest advantages to settling a lawsuit outside of court is that it removes the uncertainty of going to trial. The plaintiffs are sure to get some financial benefit, rather than risking it all at trial, and the defendants often pay a lower amount than they would have had to pay if they had left it up to a jury. Both parties get to avoid the time, expense, and hassle involved in pursuing a legal dispute that has the potential to drag on in the courts for months or even years. This is why most class action lawsuits settle before ever reaching court.

But if the parties reach a settlement agreement and one or more of the plaintiffs don’t agree with the terms of the agreement, they can choose to opt out of the class. Plaintiffs who decide not to opt out, and take the settlement, are usually prevented from filing similar lawsuits against the defendant in the future as part of the settlement agreement. It’s for this reason that, when someone decides to opt out of a class, it’s often because they want to reserve their right to sue the defendant. In most cases, they think they can get better terms, either by pursuing a lawsuit all the way through a trial or pushing for a more favorable settlement agreement.

This is the case with the recent class action copyright lawsuit against Spotify. The music streaming company recently reached a settlement agreement worth $112.55 million with a class of more than 535,000 plaintiffs. After the class members were notified of the settlement and its terms, about 1,200 members opted out of the class. Continue reading ›

A recent copyright ruling involving embedded Tweets of quarterback Tom Brady has created alarm among the digital media, where photos are embedded and linked to on a routine basis. In a copyright infringement case that could have a far-reaching impact on anyone who uses images on a blog or website, the Southern District of New York considered how photos are shown on one site but stored on another site’s server implicate the image owner’s exclusive display right under the federal Copyright Act.

District Court Judge Katherine Forrest held that when news organization defendants embedded Tweets on their web pages, they violated the plaintiff’s display right, and “the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”

Plaintiff Justin G. took a photo of New England Patriots quarterback Brady with the Boston Celtics manager in East Hampton, N.Y., in 2016. He uploaded it to his Snapchat page, where it went viral with the help of Twitter. Several news outlets including defendants Breitbart, Time Inc., and the Boston Globe then embedded the Tweeted image in their articles. Justin sued under the Copyright Act, claiming he never licensed the rights to display his photo. The other named defendants include Yahoo!, Vox Media and Gannett.

“A review of the legislative history reveals that the drafters of the 1976 Amendments [to the Act] intended copyright protection to broadly encompass new, and not yet understood, technologies,” Judge Forrest wrote, addressing the law’s application to the new frontier of social media. Continue reading ›

Sometimes truth really is stranger than fiction.

As if the idea of a monkey (a “crested macaque,” to be precise) taking a perfect selfie wasn’t strange enough, the lawsuit that followed is.

In 2011, David Slater, a British nature photographer, was taking pictures of the wildlife on the Tangkoko reserve in Indonesia when a monkey by the name of Naruto managed to get Slater’s camera away from him. Naruto took several pictures before Slater managed to get his camera back and one of those pictures turned out to be a perfect selfie – Naruto even smiled and looked right at the camera as he snapped a picture of himself.

Later on, Slater published a book that included some of the pictures Naruto had taken, which had been dubbed “monkey selfies.” That’s when the People for the Ethical Treatment of Animals (PETA) got involved.

PETA sued Slater on behalf of Naruto, trying to claim that, because Naruto had taken the picture, Naruto owned the copyright to that photo. By publishing those photos, Slater had allegedly violated Naruto’s copyright, according to PETA’s lawsuit.

A federal district judge in San Francisco dismissed PETA’s claims in early 2016, saying that, since Naruto was not a person, he could neither own a copyright. Continue reading ›