Rejection of a Trademark License in Bankruptcy Does Not Terminate the Licensee’s Right to Use the Trademark

On May 20, 2019, the Supreme Court answered the longstanding question of what happens to a licensee’s right to use a trademark under a license agreement if a bankrupt licensor rejects the license agreement. The Court held that a licensor’s ability to reject a license agreement does not extinguish licensee’s rights under the trademark license and therefore, the licensee may continue to use the trademark under the terms of the license agreement. Continue reading

Registration is Required Before Suing for Copyright Infringement

The United States Supreme Court held in Fourth Estate Public Benefit Corp v., LLC, that the Copyright Office must either issue a (1) copyright registration certificate or (2) refuse to register a copyright before a copyright owner can sue for copyright infringement.

Prior to this decision, there was a split among the circuits concerning the interpretation of the first sentence of Section 411(a) of the Copyright Act which states, “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.”

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Duped by Goop

Before making health and wellness claims about products, companies should make sure the claims they are asserting are accurate. Accurate does not mean that customers stand by the product and agree with the claims — the asserted claims must be backed by science. If companies are not careful, they could face a false advertising suit. Continue reading

Monkey See, Monkey Do, But Monkey Can’t Sue

The Ninth Circuit recently ruled in its case concerning monkey selfie photographs.

As many remember, in 2011, while visiting an Indonesian rainforest, nature photographer David Slater left his camera unattended. According to Slater, a monkey known as Naruto, picked up Slater’s camera and took multiple “selfies”. The selfies went viral.

Picture by David Slater's camera - monkey pictured is named Naruto.

After Slater used the photographs in a book that he published, PETA sued Slater for infringing the monkey’s copyright. The questions became: Does PETA have standing to sue on behalf of Naruto? If so, is a monkey an author for purposes of the Copyright Act of 1976?

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Update: Is Pandora PayPal?

In August of last year, I wrote a blog post analyzing the likelihood of confusion factors as applied to the trademark infringement claim that PayPal filed against Pandora based on Pandora’s blue “P” logo.

In November the parties reached a settlement agreement and PayPal dismissed the lawsuit against Pandora. No details of the settlement were announced.

Recently I noticed what I thought was a new app on my iPhone; but it wasn’t a new app — it was Pandora’s app with a new logo design. If you have the Pandora music app on your smart phone, you also may have noticed that Pandora’s logo is quite different than it was before (I like it).

I can only speculate as to what the settlement agreement between Pandora and PayPal says, as it is likely confidential, but it is common in settlement agreements concerning trademark disputes that the alleged infringer is given a certain amount of time to phase out an infringing mark and rebrand. Perhaps that is what happened here.

UMBC’s 16 Over 1 Win – A Lesson in the Importance of Trademark Registration

By now just about everyone is aware that the UMBC Retrievers became the first Number 16 seed to beat a Number 1 seed in the NCAA men’s basketball tournament. Prior to this past Friday night, many may not have been aware of the existence of UMBC, and now everyone is talking about this historical win.

With the massive amounts of attention that the school is getting, the school’s officials were made aware that UMBC did not have a trademark registration for “Retrievers.” Continue reading

H&M Missed the Mark: Marketing Gone Wrong

You might remember Dove’s social media post that went viral in October 2017, showing a looping image of an African-American woman removing a dark brown t-shirt to reveal a white woman. Backlash ensued on social media and Dove quickly issued an apology admitting that the advertisement “missed the mark.”

Recently, Swedish worldwide apparel retailer H&M advertised a hoodie for sale featuring a black child, who lives in Stockholm, modeling a sweatshirt with the phrase “Coolest Monkey in the Jungle.”

Once again, many people took to social media to question how such an offensive advertisement was approved by the retailer’s marketing team. Among them was New York Times columnist Charles M. Blow who posted on Twitter, “Have you lost your damned minds?!?!?!” British-based diversity advocate, Models for Diversity, criticized H&M’s judgment in choosing this model to advertise the hoodie, tweeting, “How on earth can this be? SHAME ON YOU!”

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Under Armour v. Battle Fashions

Trademark infringement is not unheard of to Under Armour – although Under Armour is usually the one claiming infringement. The popular athletic company has brought several trademark infringement suits, including recent lawsuits against Puppy Armour, Inner Armour, Salt Armour and Ass Armour.

However, the tables recently turned when Under Armour filed a declaratory judgment action that it was not infringing. A declaratory judgment action is filed to clarify the legal rights of parties.

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