SCOTUS’ Tale of Two Trademarks: How a Happy Ending to IP Litigation Often Depends on Early Strategy Before USPTO
On March 24, 2015, the U.S. Supreme Court issued two decisions: Omnicare, Inc. v. Laborers Dist. Council Constr. Industry Pension Fund, No. 13-435and, less the media darling, B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352. B&B Hardware is the second trademark decision issued by the Court this term (the first being Hanna Financial, Inc. v. Hana Bank, No. 13-1211, which was issued in January and held that whether two trademarks may be tacked for purposes of determining priority is a question of fact for the jury), and is likely to alter the landscape of trademark infringement litigation. In a 7-2 decision in which Justice Alito delivered the majority opinion, the Court reversed and remanded the case to district court, finding that (1) agency decisions, generally, can ground issue preclusion; (2) the Lanham Act does not forbid issue preclusion; and (3) the same likelihood of confusion standard applies to both registration (before the Trademark Trial and Appeal Board) and infringement. The Court’s recognition on the last point, regarding the standard for the likelihood of confusion analysis, is an important one, as it may change the role of the TTAB and the decisions it makes at the registration stage, how courts will weigh those registration analyses, and how litigants may want to strategize enforcement of their marks.
March 27, 2015
Another chapter has unfolded in the 23-year-old dispute between the Washington Redskins and the Native Americans who object to the team’s mascot — a mascot that the team has used for over 80 years. Recently, the U.S. Department of Justice (“DOJ”) weighed into the controversy by providing notice that it will intervene to defend the constitutionality of the Lanham Act, 15 U.S.C. § 1052(a) (“Section 2(a)”). The DOJ’s press release is available here. A copy of the DOJ’s notice is available here. Section 2(a) disallows registration of trademarks in certain circumstances. In particular, Section 2(a) disallows trademarks if the application seeks to register a trademark that “[c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute ….” 15 U.S.C. § 1052(a).
On two occasions, the Trademark Trial and Appeal Board of the U.S. Patent and Trademark Office (“Board”) invoked Section 2(a) to cancel the Washington Redskins’ trademarks because the trademarks were disparaging to Native Americans. In 2003, a U.S. District Court reversed the Board’s 1999 cancellation. In 2006, a second set of plaintiffs challenged the Redskins’ trademarks, and persuaded the Board to schedule the cancellation of the trademarks on June 18, 2014.
February 27, 2015
A recent decision in *Flo & Eddie, Inc. v. Sirius XM Radio* (the opinion can be found here), in which the court denied Defendant summary judgment, is noteworthy in that it involves a rare (some would say it should be non-existent) copyright claim based not on federal copyright law but rather state law “common law” copyright. It is also noteworthy due to the fact that the trial judge recognized that a ruling for the copyright holder could “possibly make broadcasts of pre‑1972 records altogether unavailable,” yet felt compelled to rule in its favor anyway. Finally, it is a reminder that federal legislation to fix a perceived problem can lead to unforeseen consequences — in this case, 40 years after the legislation was enacted.
In *Flo & Eddie,* the issue is copyright in “sound recordings,” specifically, recordings by the 1960s rock band the Turtles. Copyrights usually affect the music industry only through the copyright on the “musical compositions,” i.e., music and lyrics. The owner of the copyright in the musical composition — initially the author or authors of the song, but often, through assignment, a “publisher” — is entitled to royalties on the sale of a recording (a vinyl record, a CD, a digital file). In addition, when the record is “performed” by being played on the radio, or in a public place, the owner of the copyright in the musical composition is entitled to royalties, although, in a commonly-noted irony, the owner of the copyright in the musical composition is not necessarily, or even usually, the performer; if Sirius XM, for example, played the Turtles’ record, “It Ain’t Me, Babe,” the royalty for the musical composition rights in that radio performance would be owed only to its composer, Bob Dylan (or to whomever he assigned his copyright).
February 16, 2015