U.S. Supreme Court Invalidates Statutory Provision against Offensive Trademarks

alice-moore-192521Although U.S. common law trademark rights are gained through use of the mark in commerce (without registration), registration of a trademark with the U.S. Patent and Trademark Office (“USPTO”) provides the owner with additional rights and benefits.  These include nationwide enforcement of the mark against infringers; constructive notice of the registrant’s claim of ownership of the mark; evidentiary presumptions of the validity of the mark, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce on or in connection with the goods or services in the registration; the status of “incontestability” once the mark has used in commerce for five years after registration; and the ability to stop importation of infringing goods into the U.S.

However, the U.S. Lanham Act (15 U.S.C. 1051), which provides for federal registration of marks, contains a number of provisions barring the registration of certain kinds of marks.  In addition to barring registration of marks confusingly similar to other registered marks or merely descriptive of the goods or services, the Act also prevents registration of marks comprising “immoral, deceptive, or scandalous matter”; marks that “disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute”; a “geographical indication which, when used on or in connection with wines or spirits, identifies a place other than the origin of the goods”; a mark that “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation”; or a mark that “consists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow” except by written consent. Continue Reading

T Minus 1 Year Until GDPR: Are You Ready for Take Off?

juliette-leufke-154599BOTTOM LINE

It remains to be seen what will happen after the GDPR becomes effective on May 25, 2018. The GDPR compliance roadmap can be helpful for any organization that collects or processes personal data, whether or not an organization in or outside of the EU believes it is subject to the GDPR. With just one year of the two-year implementation period left, organizations should be well on their way to preparing for the impact of the new regulation.

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The GS Media case: “He’s making it up as he goes along!”

rawpixel-com-252127The GS Media case: “He’s making it up as he goes along!”[1]

This is not a Brexit whinge, but when I reread the ECJ’s decision in the GS Media case[2], I do understand where 52% of my countrymen were coming from.  Generally, the EU has (IMHO) been a force for good in IP law, by trying to keep the law up to date in a period of insane technological development and promoting consistency across the member states to reduce the number of local wrinkles that businesses have to deal with.

The price for this is accepting the jurisdiction of the ECJ, a body which was one of the key targets of the venom of the Brexiteers.  But judicial interpretation and enforcement is part and parcel of any rational rule of law, so in many cases this enmity was unfounded. However, judges are there to interpret law, not to make it, and the ECJ has a nasty habit of making up law as it goes along.  Sometimes (as in the Davidoff case relating to international exhaustion[3]) the court has had to choose a yes or no answer which the legislation was completely silent about, and I can understand that.  But on a number of other occasions, the ECJ has simply made up a law to suit the purposes of the case before it.  In the UK, we had this experience in the 1970s and 80s with a well-known judge called Lord Denning; usually with the best of intentions, he would ignore or twist established common law to produce a result that fitted the case before him to produce the fairest result on the facts.   But that created a huge amount of uncertainty as to the law to apply to other cases on slightly different facts, and it took quite a while for a sensible balance to be restored.  Continue Reading

Russia accession to the Protocol amending the Agreement on trade-related aspects of intellectual property rights

freestocks-org-126848In its meeting of April 27, 2017, the Russian Government has approved the Bill “On approval of the Protocol amending the Agreement on trade-related aspects of intellectual property rights” proposed by the Russian Ministry of Foreign Affairs and the Russian Ministry of economic development and trade, and endorsed its further introduction to the State Duma1.

The WTO Protocol amending the Agreement on trade-related aspects of intellectual property rights (hereinafter – the “Protocol”)2 was adopted by WTO General Council on December 06, 2005, and opened for signature by WTO member states until December 01, 2007, with further extension until December 31, 2017.

As of the current date, many WTO member states have acceded to the Protocol, inter alia the USA, Switzerland, Brazil, China and Australia3. Continue Reading

Picking: A Few IP Collectibles Since My Last Post

ross-sokolovski-123930There is a popular television show in the United States called American Pickers, which follow the adventures of antique and collectible “pickers” Mike Wolfe and Frank Fritz.  Wolfe and Fritz travel around in a van with the logo Antique Archeology to buy, or “pick,” various items for resale, for clients, or for their own personal collections—sometimes with a plan based on background research where destinations and items are predetermined and others by chance when they are “free-styling.”  One of the beauties and challenges of an intellectual property practice is how many interesting issues, cases and developments are out there for one to explore.  And so, in a legal sense, we “pick” as well, sometimes for clients and sometimes for one’s own personal collections, sometimes while looking for specific items and sometimes while free-styling.  Continue Reading

CarGurus Enters Canada – Suit Ensues For Statutory Damages under the Canadian Copyright Act

11892290_10153570213132792_5698485790065904705_oThe plaintiff in a copyright infringement action has the option to choose to receive statutory damages rather than to establish its actual quantum of damages it has suffered. Statutory damages range from a minimum of $500 to a maximum of $20,000 for the infringements related to a given work. A plaintiff might choose statutory damages when the amount of its loss is difficult to quantify, particularly when works are downloaded in large quantities from the internet. The Canadian Copyright Act provides for various remedies for copyright infringement, including statutory damages as an alternative to compensatory damages and/or profits.

CarGurus is the second largest digital marketplace provider for new and used vehicles in the United States. In 2015, it entered the Canadian market and became a direct competitor of the Canadian company, Trader Corporation, which operates “digital marketplaces” for new and used vehicles in Canada through its websites “autotrader.ca” and “autohebdo.net” and related mobile applications.

In this litigation (Trader v. CarGurus, 2017 ONSC1841 dated April, 2017), Trader alleged that CarGurus infringed Trader’s copyright in 196,740 photos taken pursuant to its Capture Service.  Trader sought a declaration of copyright infringement and a permanent injunction restraining CarGurus from using Trader’s photos.  Trader also claimed statutory damages under the Copyright Act in the amount of $98,370,000 ($500 per infringing photo) and punitive damages of $1 million. Continue Reading

Can You Register a Copyright on an Artistic Element in an Industrial Design?

sebastian-davenport-handley-146343Suppose that you have expressed your idea into a tangible form such as two-dimensional artistic elements incorporated into an industrial design.  Although your copyright exists upon the moment of creation, do you have a valid copyright?  Should you register your copyright on the two-dimensional artistic elements with the U.S. Copyright Office?  Can you stop a competitor from using your two-dimensional artistic elements in their industrial design?  The answer is YES!

In the United States, to establish copyright infringement, “two elements must be proven: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original.” Feist Publ’ns. Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 361, 111 S.Ct. 1282, 1296, 113 L.Ed.2d 358 (1991). “If the plaintiff does not have direct proof of copying, the plaintiff may show copying by demonstrating that the defendants had access to the copyrighted work and that the works are ‘substantially similar.’” Herzog v. Castle Rock Entm’t, 193 F.3d, 1241, 1248 (11th Cir. 1999). Continue Reading


clem-onojeghuo-220471The Federal Trade Commission (FTC) sent more than 90 letters to celebrities, athletes and other influencers – as well as to marketers – highlighting the need for influencers to “clearly and conspicuously” disclose their relationships to brands when they promote or endorse them on social media. The FTC letters mark the first time that the FTC has reached out directly to social media influencers, indicating that influencers could be subject to their own FTC actions if they fail to disclose their relationships on social media.


The FTC’s Endorsement Guides, which apply to endorsers and marketers, provide that if there is a “material connection” between an endorser and the marketer of a product that might affect the weight or credibility that consumers give an endorsement, that connection should be “clearly and conspicuously” disclosed. A material connection includes a business or family relationship, a monetary payment and even the provision of free products to an endorser. Continue Reading

IP Court has clarified that the use of a “plot generating object” in a movie may constitute copyright infringement

jakob-owens-199505In mid-February, the Russian Intellectual Property Court issued an interesting decision, in which it indicated when filmmakers have to obtain a copyright owner’s consent for use of a movie prop.

Under the auspices of the case, Pan Press Publisher filed a lawsuit against Ren-TV TV Channel and AN-film Production Company claiming that its book cover design was illegally used in an episode of a comic TV series.

The first instance and appeal courts satisfied the claims, despite the respondents’ defence that the book cover had not brought any sense or artistic value, which should have led the courts to classify it as an ordinary movie prop and apply the fair use doctrine. Continue Reading


tamarcus-brown-131431Lombardo et al v. Dr. Seuss Enterprises, L.P., case number 1:16-cv-09974, in the U.S. District Court for the Southern District of New York, is an interesting case for intellectual property practitioners, especially those involved in copyright matters and curious as to how the parody/fair use discussion started in my last post for ILN IP Insider continues to play out.

The story begins with producers getting ready to open a show entitled Who’s Holiday: A New Comedy In Couplets — a comedy that is either a parody of, or pastiche to, Dr. Seuss’ beloved How The Grinch Stole Christmas story.  Dr. Seuss Enterprises had not been asked for permission to tell such a story or use such characters.  So they had their lawyers, among other things, send a cease and desist letter to the play’s producers and the theater that those producers had booked had booked.  Though it was probably actually a typical lawyer’s letter frequently used in intellectual property matters, we imagine it could have said:

Through this letter we must insist
That your infringing conduct should desist.

In fact to assure that you do not persist,
We include in our letter a list,
Stating concerns that should not be dismissed.

We are not playing about your play,
And care little about your saying what you say.

Your claim to parody is abstruse,
You just cannot utilize Dr. Seuss
Because it subjects our rights to abuse. 

We require surrender, not a truce,
Or our Rambo lawyers we’ll unloose. 

So in the end, if you do not cease,
You will have no peace,
And litigation expense will increase. Continue Reading