In 2008 and 2009, drug use among professional athletes was a big story. The “Mitchell Report,” released in late 2007, exposed widespread steroid use in baseball and had become infamous. In February 2009, Sports Illustrated had broken the news that the New York Yankees’ third baseman, Alex Rodriguez, tested positive for steroids back in 2003. Even Michael Phelps was under scrutiny, because it came out in January 2009 that he had smoked marijuana (although no one successfully argued that his drug use likely had an enhancing effect on his legendary Olympic performances). Late night television had no shortage of material. Jokesters abounded, and some even tried to take their comedy to the United States Patent and Trademark Office. Indeed, in April 2009, the New York Yankees had to oppose the attempted registration of “The House that Juice Built,” a play on the famous “House that Ruth Built,” as well as a spoof of the Yankees’ logo that replaced the baseball bat with a syringe (see http://ttabvue.uspto.gov/ttabvue/v?pno=91189692&pty=OPP&eno=86). The Yankees argued that the registrations diluted its famous marks; the registrant (a New York corporation called “IET Products and Services”) argued that it was playing clean because the “House that Juice Built” and its logo were fair-use parody. Five years later, the Trademark Trial and Appeal Board (“TTAB”) has finally declared a winner. According to the TTAB, there may be a parody defense in court, but not at the registration phase.
June 15, 2015
One district court in New York doesn’t think so, and, in light of a recent settlement agreement, the Second Circuit will not be afforded the opportunity to weigh in. In North Jersey Media Group Inc. v. Jeanine Pirro and Fox News Network, LLC, Case No. 13-cv-07153 (S.D.N.Y. Feb. 10, 2015), Judge Ramos declined to grant summary judgment in favor of defendants Judge Jeanine Pirro and Fox News Network, LLC on the plaintiff’s claim for copyright infringement. The Court found that, as a matter of law, fair use did not protect the defendants’ publication of an iconic 9/11 photograph on a Facebook page associated with the network’s program Justice with Judge Jeanine.
In Pirro, Fox News posted a photograph that juxtaposed a photograph of three firefighters raising an American flag at the ruins of the World Trade Center site on September 11, 2001, with another iconic photograph taken during World War II of four U.S. Marines raising the flag on Iwo Jima. The Court referred to the posting of the two photos side-by-side as the “Combined Image.” Interestingly, the defendants did not create the Combined Image; rather, a production assistant found the Combined Image on Google. The production assistant posted the Combined Image, unaltered, on a Facebook page that promotes the show Justice with Judge Jeanine, and added the phrase “#neverforget.”
April 16, 2015
Sixth Circuit Orders District Court to “Assess the Applicability of Octane Fitness [in Lanham Act Cases]“
On Monday, the Sixth Circuit hinted that the Supreme Court’s decision in Octane Fitness, LLC v. ICON Health & Fitness, Inc., No. 12-1184, 572 U.S. ___ (2014), which evaluated the Patent Act’s fee shifting provision, may apply to trademark cases brought under the Lanham Act. Slep-Tone Entm’t Corp. v. Karaoke Kandy Store, Inc., et al., No. 14-3117 (6th Cir. Apr. 6, 2015).
In Octane Fitness, the Court found that “an ‘exceptional’ case [for purposes of shifting fees under the Patent Act] is simply one that stands out from others with respect to the substantive strength of a party’s litigating position (considering both the governing law and the facts of the case) or the unreasonable manner in which the case was litigated.” The Court’s decision overturned a prior Federal Circuit decision (Brooks Furniture Mfg., Inc. v. Dutailier Int’l, Inc.), which provided a much more rigid framework for assessing whether to shift fees under §285 of the Patent Act.
April 7, 2015