DOJ Intervenes to Defend Constitutionality of Lanham Act in Redskins’ Trademark Dispute

redskinsAnother 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.

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Posted by jmulligan
Intellectual Property
February 27, 2015


turtles_siriusA 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).

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Posted by Don Burton
Intellectual Property
February 16, 2015


supremecourt“The Federal Circuit was wrong,” wrote Justice Breyer in a majority opinion in which the United States Supreme Court’s dissatisfaction with the Federal Circuit was evident. Justice Breyer’s opinion in Teva Pharm. USA, Inc. v. Sandoz, Inc., delivered in late January, became the most recent in a long line of decisions in which the Supreme Court has overturned interpretations of patent law by the Federal Circuit. eBay Inc. v. MercExchange, LLC, 547 U.S. 388, 126 S. Ct. 1837 (2006) (injunctions); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 127 S. Ct. 1727 (2007) (obviousness); Bilski v. Kappos, 130 S. Ct. 3218 (2010); Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (U.S. 2014) (attorneys fees). Criticized over the years for giving the decisions of district courts too little deference, the Federal Circuit again did just that in Teva, causing the Supreme Court to vacate the Federal Circuit’s judgment with orders to apply the proper standard of review on remand.

Who is affected when the Federal Circuit gets it wrong? And what exactly did it do wrong in Teva?

The Federal Circuit hears all appeals where the original action arose under U.S. patent laws. Unlike other federal Courts of Appeal, the Federal Circuit’s jurisdiction in patent cases is nationwide. It could be argued that the Federal Circuit’s reversals by the Supreme Court stem from a perception that it does not confine itself to its role as a federal Court of Appeals, instead deciding issues without enough deference to the discretion or fact-finding of the trial court. The Federal Circuit’s encroachment into the territory of the trial court is exactly what raised the ire of the Supreme Court in Teva, where the high court held that the Federal Circuit was giving district courts engaging in patent claim construction less deference than they were due by reviewing their factual findings de novo. 574 U.S. ___, 135 S. Ct. 831, No. 13-854, 2015 U.S. LEXIS 628, at *11, 29 (Jan. 20, 2015). Specifically, the Federal Circuit had, wrongly, ignored the trial court’s factual determinations regarding how a person of ordinary skill in a certain industry would interpret a term in the patent at issue.

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Posted by Jade Smarda
Intellectual Property
February 5, 2015

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