In a major win for free
speech advocates, on Monday, June 24, 2019, the United States Supreme Court
ruled that a federal statutory ban on the trademarking of words and symbols
that are “immoral” or “scandalous” violates the First Amendment.
Erik Brunetti of Los
Angeles, a fashion designer for the streetwear brand “FUCT,” brought suit after
being denied registration of the mark “F-U-C-T.” Brunetti applied for
registration of the mark in 2011, but an examining attorney of the United
Stated Patent and Trademark Office refused registration on the grounds that the
phonetically profane term was too “highly offensive” and too “vulgar.” Brunetti
appealed to the Trademark Trial and Appeal Board (the “TTAB”), but to no avail,
as the TTAB affirmed the registration refusal. Brunetti took his case to the
Court of Appeals for the Federal Circuit and sought a facial Constitutional challenge
to the Lanham Act’s ban on “immoral or scandalous” marks; the appeals court
held that the ban violated the First Amendment, and the Supreme Court granted
In a rare bipartisan
ruling, Justice Elena Kagan wrote for the majority, and in a 6-3 decision, was
joined by Ruth Bader Ginsburg, Samuel Alito, Neil Gorsuch, Brett Kavanaugh, and
Clarence Thomas. Justice Alito added a brief concurrence, and justices
Sotomayor, Roberts, and Breyer each concurred in part and dissented in part.
Cowan, DeBaets, Abrahams & Sheppard LLP is pleased to announce it has been named a Tier 1 national firm for Entertainment Law – Motion Pictures & Television for the second consecutive year by the 9th Edition of U.S. News-Best Lawyers “Best Law Firms.” CDAS is one of only 24 firms to receive this honor. Review the full list here.
CDAS was also recognized as a Tier 1 New York City Regional Firm in the areas of Copyright Law, Entertainment Law – Motion Pictures & Television and Trademark Law.
Law firms ranked in the top-tier of the “Best Law Firms” guide are recognized for professional excellence and consistently receiving high ratings from clients and peers. The U.S. News – Best Lawyers “Best Law Firms” rankings are determined by a rigorous peer-review survey comprised of more than 7.3 million evaluations from leading lawyers, as well as client evaluations, peer reviews from top attorneys and more.
Earlier this year, six CDAS attorneys were selected for inclusion in the 25th Edition of “The Best Lawyers in America:”
Frederick P. Bimbler Entertainment Law – Motion Pictures and Television
Susan H. Bodine Entertainment Law – Motion Pictures and Television; Media Law
Andrea F. Cannistraci Entertainment Law – Motion Pictures and Television
Eleanor M. Lackman Copyright Law; Trademark Law
Stephen Sheppard Entertainment Law – Motion Pictures and Television
Nancy E. Wolff Copyright Law; Trademark Law
Cowan, DeBaets, Abrahams & Sheppard LLP is delighted to announce that partners Eleanor M. Lackman and Nancy E. Wolff and both CDAS’s Entertainment and IP, Copyright and Litigation Practices have been recognized by Chambers and Partners in the Chambers USA 2018: America’s Leading Lawyers for Business guide.
Eleanor M. Lackman
Nancy E. Wolff
This is the fifth consecutive year Ms. Lackman and the second consecutive year Ms. Wolff have been ranked in the Chambers USA guide. They are both among just 41 New York lawyers ranked in the field of “Intellectual Property: Trademark, Copyright & Trade Secrets – New York.”
“Impressed sources” told Chambers that Ms. Lackman is “an absolutely incredible trademark litigator” and added: “She is very practical and always seems to make the right call.” She also has notable experience handling copyright matters, often advising clients across the media and entertainment industries.
Chambers describes Ms. Wolff as “very well-known and well-respected.” She receives plaudits for her expertise in a range of complex copyright matters and is highlighted for her particular skill across the photography and visual art industry.
CDAS’s Entertainment Practice was awarded a regional designation of “Noted Firm” in “Media & Entertainment: Film, Music, Television & Theater – New York” for the third consecutive year, while the Firm’s IP, Copyright and Litigation Practice received a “Noted Firm” designation in “Intellectual Property: Trademark, Copyright & Trade Secrets – New York” for the second consecutive year.
The annual guide ranks law firms and lawyers based on in-depth interviews with clients and lawyers, technical legal ability, professional conduct, client service, commercial astuteness, diligence, commitment, and other qualities most valued by the client.
The U.S. Court of Appeals for the Sixth Circuit recently affirmed a lower-court decision that Viacom’s use of the trademark “BUBBLE GUPPIES” for promotional merchandise for its show of the same name did not infringe on a children’s clothing brand that had registered the trademark “GUPPIES,” primarily because the “GUPPIES” mark – which had been used for many years before Viacom’s use– was relatively unknown to the public.
According to the lawsuit, Plaintiffs Debbie and Dean Rohn have operated Guppie Kids, Inc., a children’s apparel brand, since 1990. The couple registered two trademarks for apparel-related items: one for the word “GUPPIE,” an acronym for “Growing Up Playing Pursuing Individual Excellence,” and the other for a logo: the word “GUPPIE,” in which a fish in a necktie forms the letter G. Continue reading
The U.S. Court of Appeals for the Ninth Circuit recently affirmed a lower court’s holding that Fox’s use of the name “Empire” for its hit television series is protected by the First Amendment, leaving record label Empire Distribution without any recourse on its trademark infringement claims. A copy of the full decision is available here. Of most significance is the court’s arguable expansion of the Rogers v. Grimaldi test for expressive use of trademarks into the realm of promotion and merchandise.
Empire Distribution, founded in 2010, records and releases albums in the genres of hip hop, rap, reggae, and R&B under the name “Empire.” Its portfolio of artists includes Snoop Dog, T.I., and Kendrick Lamar. In 2015, Fox premiered its Empire television show, a drama that centers on a fictional New York-based hip hop music and entertainment company called “Empire Entertainment.” The Empire show features songs and original music, which Fox releases through Columbia Records after the episode airs, and packages as soundtrack albums at the end of each season – of which there have been four and counting. Continue reading
The U.S. Court of Appeals for the Ninth Circuit this week summarily affirmed a dismissal, from two years ago, of trademark claims brought by flooring company VIRAG, S.R.L. (“Virag”) against Sony Computer Entertainment America, LLC (“Sony”). In a three-page unpublished opinion, the appeals court held that Sony’s use of the “VIRAG” trademark as set dressing in its Gran Turismo 5 and 6 video games was protected by the First Amendment and immune from liability under federal trademark law. The ruling’s brevity, however, should not detract from its significance.
In 2004, Virag, a global commercial flooring distributor, became a sponsor of the Rally of Monza, a Formula One auto race held in Monza, Italy. Starting in 2006, the plaintiff’s “VIRAG” mark was displayed on a bridge over the Monza track for each race. Virag claims that its name and trademark has not only become affiliated with its products, but also the rally. Continue reading
On June 19, 2017, the U.S. Supreme Court handed down its much-anticipated decision in Matal v. Tam, 582 U.S. __ (2017), issuing a ruling that clarifies that the door is open to trademark registration to a new category of trademarks: trademarks that may disparage others.
The facts that the Court looked at are relatively simple: The Slants, a dance-rock band whose members are Asian-Americans, sought to register their name as a trademark. Although the band argued that they chose the name because they were looking to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity, the U.S. Patent and Trademark Office (USPTO) refused to register the mark THE SLANTS on the ground that it was a derogatory or offensive term. An appeal to the USPTO’s Trademark Trial and Appeal Board failed on similar grounds. But a further appeal to the U.S. Court of Appeals for the Federal Circuit resulted in this case finding itself before the U.S. Supreme Court: the majority of the Federal Circuit, sitting en banc, found that the USPTO’s basis to refuse to register THE SLANTS was unconstitutional. Continue reading
A panel of the U.S. Court of Appeals for the Ninth Circuit ruled this month that Google’s trademark has not lapsed into the public domain by becoming generic even though today’s digital vernacular uses “google” as a verb synonymous with searching the Internet. As a general rule, generic terms used as trademarks are not protectable because they do not identify the product’s source. Also, an otherwise valid trademark like “GOOGLE” may suffer death by “genericide” when the public “appropriates” the trademark such that the “primary significance” of the mark is as a generic name for a particular type of good or service rather than an indicator of the source of that good or service. Classic examples of former trademarks that are now generic terms include aspirin, thermos, brassiere, and cellophane. On the contrary, the term “google,” at least according to the Ninth Circuit, still stands strong as a brand identifier. Continue reading
The #hashtag, once confined to Twitter, has become ubiquitous across virtually all social media platforms. The hashtag (formerly known as the “pound” sign) has revolutionized the way information is organized, discovered, and shared online. Social media users use hashtags – i.e., a keyword or phrase preceded by the hashtag symbol (#) – to identify social media posts or messages on a specific topic. The hashtag functions as a searchable link, which can be clicked on to find other posts related to that specific topic. The phenomenon is not just for millennials; brand owners have embraced the hashtag as a way to boost brand recognition, generate buzz around new products, engage with their consumers, and attract new ones.
It is no wonder that brand owners look to trademark law to protect their valuable hashtags. The United States Patent and Trademark Office (“USPTO”) has recognized the registrability of “hashtag marks,” but the legal community is still grappling with the legal nuances of this trend-turned-staple.
Cowan, DeBaets, Abrahams & Sheppard LLP is pleased to announce that Scott J. Sholder has become a Partner of the Firm
Scott J. Sholder is a partner in the firm’s Litigation Group. Scott represents individuals and companies in the entertainment, traditional and digital media, sports, and consumer products industries. His practice focuses on matters involving copyrights, trademarks, the right of publicity, and contractual and business disputes.