Unintended Sublicenses Through Social Media: “Embedding” and the Pitfalls of Public Posts

By Deborah Gubernick and Gabrielle Morlock In this era of social media and image sharing, it is not uncommon for account holders to make their profiles public in attempt to garner as many followers and as much attention as possible. Social media platforms can be a form of relatively low-cost personal and corporate advertising. However, as a photographer recently learned, using social media platforms can have unintended consequences that compromise intellectual property rights. Stephanie Sinclair, a professional photographer who is the exclusive U.S. copyright owner of a photo titled “Child, Bride, Mother/Child Marriage in Guatemala,” posted a copy of her   Read More »

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Ninth Circuit Holds “Bad Spaniels” Dog Toy Is an “Expressive Work”

By Anne Bolamperti and David G. Barker The Ninth Circuit Court of Appeals recently held in VIP Products LLC v. Jack Daniel’s Properties, Inc. that the “Bad Spaniels” dog toy is an expressive work entitled to First Amendment protection. The court vacated the United States District Court for the District of Arizona’s judgment that the toy infringed the Jack Daniel’s trade dress and registered bottle design. VIP Products designs and sells rubber dog toys that employ entertaining adaptations of various beverage brands.  Beginning in July 2013, VIP began selling the “Bad Spaniels” version of the toy, which resembles the iconic   Read More »

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Is “Booking.com” Generic? We’ll Booking.See

By Andy Halaby The Supreme Court’s decision in United States Patent & Trademark Office v. Booking.com to take up whether booking.com is generic, and thus unprotectable as a trademark, is intriguing. The government maintains the term is generic.  It starts with the premise that the root term “booking” is generic.  As for “.com,” the government likens it to “Company,” and invokes the Supreme Court’s 1888 decision in Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co. where the Court observed, The addition of the word ‘Company’ only indicates that parties have formed an association or partnership to deal in such goods,   Read More »

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Supreme Court to Decide Two Trademark Cases

By Shalayne Pillar and David G. Barker The Supreme Court of the United States recently granted certiorari in two trademark cases.  In Romag Fasteners v. Fossil, the Court will consider whether courts can order trademark infringers to disgorge their profits without a finding of “willful” infringement. In Lucky Brand Dungarees v. Marcel Fashion Group, the Court will consider whether claim preclusion may bar a defendant from raising a defense late in litigation. In Romag Fasteners, a jury found that Fossil infringed Romag’s trademarks.  Nevertheless, the district court refused to award $6.8 million of Fossil’s profits because Romag could not prove   Read More »

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Supreme Court Holds Bar on Immoral or Scandalous Trademarks Unconstitutional

By: Anne M. Bolamperti and David G. Barker The Supreme Court held Monday that the Lanham Act’s bar on “immoral or scandalous” trademarks is unconstitutional under the First Amendment.  Delivering the 6-3 opinion of the Court, Justice Kagan relied on the Court’s previous decision in Matal v. Tam (discussed here), which held that the Lanham Act’s ban on “disparaging” trademarks also was unconstitutional. Respondent Erik Brunetti first sought federal registration of the trademark FUCT in connection with his urban clothing line.  Claiming use since December 1991, Brunetti’s line stands for “Friends U Can’t Trust,” but sounds like an expletive in acronym   Read More »

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