Ninth Circuit to Copyright Holders: DMCA Requires Fair Use Considerations

In an important decision affecting copyright owners, online hosts, and creators of user-generated content, the Ninth Circuit, on Monday, issued a bright line rule that copyright holders must consider the fair use doctrine before issuing takedown notices to remove otherwise infringing content in order to comply with the Digital Millennium Copyright Act (DMCA).  The Court’s

Unanimous Supreme Court Decision Keeps “Tacking” in the Hands of Juries

On January 21, 2015, in its first substantive trademark ruling in more than a decade, the United States Supreme Court unanimously held that the question of “tacking” – a doctrine by which a brand owner may modify its mark overtime without disrupting its priority of rights – is a factual one, more appropriately suited for

No Presumption of Irreparable Harm for Lanham Act Injunctions, Says Third Circuit

In a recent decision, the Third Circuit announced that it would no longer presume irreparable harm for plaintiffs requesting preliminary injunctive relief for claims arising under the Lanham Act (see Ferring Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc., No. 13-2290 (Aug. 26, 2014)).  Instead, claimants seeking to enjoin acts of trademark infringement or false advertising must

Sudden Death in Overtime

In a decision that has been met with considerable praise and controversy, on June 18, 2014, the Trademark Trial and Appeal Board of the United States Patent and Trademark Office ordered the cancellation of six U.S. federal trademark registrations owned by the NFL’s Washington Redskins on the grounds that the use of the term “redskins”

Trademark Applicants Must Pay USPTO Attorneys’ Fees in District Court Challenge, “Win, Lose or Draw”

A recent decision from the U.S. District Court for the Eastern District of Virginia serves as a cautionary tale for trademark applicants seeking to challenge adverse decisions rendered by the U.S. Patent and Trademark Office’s (“USPTO”) Trademark Trial and Appeal Board (the “TTAB”).  On January 3, 2014, the Court in Shammas v. Focarino ruled that applicants

Ninth Circuit Says “Good Riddance” to Copyright Infringement Lawsuit Against Green Day

The Ninth Circuit recently nixed a street artist’s copyright infringement lawsuit against Green Day, finding that the band’s unauthorized incorporation of the artist’s work, Scream Icon, into its concert video backdrop was sufficiently transformative to be considered a fair use under copyright law.  Dereck Seltzer v. Green Day, Inc., et al., Case No. 2:10-cv-02103.

More Than a Registrar: “Parked Pages” Program Leads Court to Deny Domain Name Registrar Safe Harbor Protection from Claims under the Anticybersquatting Consumer Protection Act (ACPA)

On June 21, 2013, a Central District of California court refused to extend ACPA safe harbor protection to popular domain name registrar, finding that it intended to profit from the registration and maintenance of various domain names that encompassed plaintiff Academy of Motion Pictures Arts and Sciences’ OSCAR, OSCARS, OSCAR NIGHT, ACADEMY AWARD and

Photographer William Eggleston Beats Claim By Collector For Creating New Prints Outside Of Edition

On March 29, 2012, U.S. District Judge Deborah Batts dismissed collector John Sobel’s complaint against celebrated fine art photographer William Eggleston. The lawsuit stemmed from allegations that Eggleston diluted the value of Sobel’s limited edition Eggleston prints when Eggleston created additional reprints derived from the same images, but of a different size, medium and print

Sweetener Manufacturer Looks to Burst Wrigley’s Bubble

On September 28, 2012, the U.S. District Court for the Northern District of Illinois found that even though there was a “better than negligible chance of prevailing” on its claim that gum manufacturer Wm. Wrigley Jr. Company infringed a sweetener manufacturer’s trademark by using the name “Swerve” for a flavor of its popular sugar-free chewing