Skip to main content

Trademark & Copyright

Viewpoints

Filter by:

Antitrust Viewpoint Thumbnail
On June 11, 2021, the U.S. Court of Appeals for the Second Circuit dismissed the Federal Trade Commission’s (FTC) administrative order against 1-800 Contacts, Inc. The Second Circuit found that the online retailer’s trademark settlements with competitor online contact lens sellers were not “inherently suspect” and, instead, should be evaluated under the traditional rule of reason analysis. The trademark settlements specified, among other things, that 1-800 Contacts’ competitors would not bid on the company’s name as a keyword in online search advertising. This ruling has significant implications for the “inherently suspect” standard—according to the Second Circuit, “courts do not have sufficient experience with this type of conduct to permit [the FTC’s] abbreviated analysis.”
Read more
Trademark Copyright Viewpoints Thumbnail
After five years of litigation, the battle between Unicolors, a California-based fabric design company, and H&M is still going strong. Now the United States Supreme Court has agreed to decide whether an inaccuracy in Unicolors’ copyright registration invalidates its registration and thus a jury’s $1 million damages award in Unicolors’ favor.
Read more
Intellectual Property Viewpoints Thumbnail

How NFTs and Blockchain Secure Digital Sports Collectibles

May 24, 2021 | Blog | By Keith P. Carroll, Andrew D. Skale, Justin J. Leisey

Today, there are new opportunities to own a bit of sports history. It is now possible to even own a digital collectible of your favorite athlete making a play during a game.  NFTs (non-fungible tokens) are being used to provide digital provenance that affords unique ownership of sports most memorable moments. 
Read more
Trademark Copyright Viewpoints Thumbnail

United States Supreme Court Rules for Google in a Landmark Fair Use Decision

April 6, 2021 | Blog | By Michael Graif, Matthew Hurley, Geoffrey Friedman

On April 5, 2021, the United States Supreme Court issued a significant fair use decision, holding six to two that Google’s copying of 11,500 lines of code from Oracle’s Java SE API in Google’s Android platform was a fair and transformative use. 
Read more
Trademark Copyright Viewpoints Thumbnail

The Trademark Modernization Act Establishes New Trademark Cancellation Procedures

January 12, 2021 | Blog | By Michael Graif, Williams Dixon

On December 27, 2020, the Trademark Modernization Act of 2020 (“the Act”) became law as part of the Consolidated Appropriations Act, 2021. 
Read more
Trademark Copyright Viewpoints Thumbnail
Following up on our initial report last year on the possible creation of a Copyright Claims Board, we can now confirm the creation of that Board. The Consolidated Appropriations Act signed into law by President Trump on December 27, 2020 incorporates the CASE Act, establishes this new Copyright Claims Board (CCB) within the Copyright Office. 
Read more
Trademark Copyright Viewpoints Thumbnail

Protecting Lawful Streaming Act Signed Into Law

January 5, 2021 | Blog | By Seth Davidson

One of the provisions included in the Consolidated Appropriations Act that President Trump signed into law on December 27, 2020 addresses the so-called “felony streaming” loophole in the Copyright Act and criminal code. 
Read more
Trademark Copyright Viewpoints Thumbnail

FDA Issues New Guidance on Drug Naming

December 17, 2020 | Blog | By Karen K. Won

Last week, the Food and Drug Administration (“FDA”) issued a pair of Guidance for Industry documents outlining best practices for developing proprietary names (i.e. brand names) for prescription and nonprescription human drug products. 
Read more
Trademark Copyright Viewpoints Thumbnail
As we reported in our July 7, 2020 blog post on the USPTO v. Booking.com B.V decision, the U.S. Supreme Court ruled that a proposed mark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic and can be protected as a trademark under certain circumstances.
Read more
Trademark Copyright Viewpoints Thumbnail
In a landmark decision, United States Patent and Trademark Office v. Booking.com B.V., the Supreme Court of the United States, by an 8-1 vote, affirmed the lower court’s determination that Booking.com could register BOOKING.COM as a trademark. 
Read more
Trademark Copyright Viewpoints Thumbnail
In a recent decision from the Second Circuit, Judges Parker, Chin, and Carney side-stepped a novel question: whether human skin can be the kind of "tangible medium of expression" required for copyright protection. Instead, the court held that a photograph of a makeup artist’s application of a makeup design to a human “fixed” the design for purposes of copyright law and affirmed the district court’s dismissal of the appellant Mourabit’s unjust enrichment and unfair competition/misappropriation claims as preempted by the Copyright Act.
Read more
Trademark Copyright Viewpoints Thumbnail

First Amendment May Protect Use of Trademarks As Artistic Expression

May 27, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw

In a recent decision from the Southern District of New York, Judge George B. Daniels held that the strong First Amendment interests in protecting free artistic expression warranted summary judgment that Activision Blizzard’s use of Humvee vehicle models in the blockbuster Call of Duty videogames was not a violation of the Lanham Act.
Read more
Trademark Copyright Viewpoints Thumbnail

Supreme Court Holds that States Cannot Copyright Annotated Versions of Their Statutes

April 29, 2020 | Blog | By Michael Graif, Meena Seralathan

On April 27, 2020, the Supreme Court held that annotations to legislative text, even if created by a private contracted party, are not copyrightable materials under 17 U.S.C. §101. Invoking the government edicts doctrine, the Court made explicit the notion that all members of government involved in lawmaking, including state legislators, are barred from being “authors” for purposes of copyright protection.
Read more
Trademark Copyright Viewpoints Thumbnail
In a unanimous decision, the US Supreme Court held that a trademark owner need not prove willful infringement in order to seek lost profits from a trademark infringer. The case, Romag Fasteners Inc. v. Fossil Inc. et al., case number 18-1233, involved a long running trademark infringement dispute between the parties.
Read more
Trademark Copyright Viewpoints Thumbnail
The Federal Circuit recently held in a precedential ruling that a “color mark” comprising a multiple-color pattern is capable of being inherently distinctive and of registration on the Principal Register, so long as it appears on product packaging rather than on a product itself.
Read more
Trademark Copyright Viewpoints Thumbnail
Trademark due diligence is the process of analyzing information concerning a company's trademark portfolio and assessing the risks, exposures, and benefits associated with a proposed transaction. In an acquisition, both the buyer and the seller need to ensure that they each are fully informed as to the status of the trademarks at issue.
Read more
Trademark Copyright Viewpoints Thumbnail

How to Maintain Your Trademark Rights When Your Business is Closed

April 8, 2020 | Blog | By Susan Neuberger Weller

Trademark rights in the US are based on use of a mark not on registration. Failure to use your mark on a product or to offer a service to the public can result in an abandonment of your trademark rights and an inability to maintain an existing registration.
Read more
Intellectual Property Viewpoints Thumbnail
Adding another layer of complexity to sensitively marketing in the COVID-19 environment, YouTube announced on March 11 that it will permit certain creators to monetize (i.e., enable ads on) content relating to coronavirus.  Companies and brands should review their approach in this pandemic, including refining YouTube content exclusion parameters and policing their ad environments, if they do not wish to risk association with potentially undesirable videos. 
Read more
Intellectual Property Viewpoints Thumbnail

Adding Initials to a Surname Does Not Necessarily Create a Protected Trademark

March 26, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw

In a recent precedential decision, the TTAB held that the addition of one initial —or possibly even more than one initial—in front of a surname does not necessarily create the impression of a personal name. Rather, the Board held that a surname plus one or more initials may remain “primarily a surname” and, as such, cannot be registered on the Principal Register without proof of acquired distinctiveness.
Read more
Intellectual Property Viewpoints Thumbnail

2nd Circuit Affirms 5Pointz Whitewashing Violated Visual Artists Rights Act

March 25, 2020 | Blog | By Susan Neuberger Weller, Harold Laidlaw

The Second Circuit recently affirmed that a developer’s whitewashing of street art painted at the “5Pointz” warehouse complex in Long Island City was a violation of the Visual Artists Rights Act (“VARA,” codified at 17 U.S.C. § 106A).
Read more
Sign up to receive email updates from Mintz.
Subscribe Now

Explore Other Viewpoints: