The First Amendment and Social Media

Posted on by

The Texas Legislature enacted HB 20, a gobsmacking law, in September 2021, declaring social media platforms and interactive computer services to be “common carriers,” charged, as the bill reads, with a public interest of being “central forums for public debate.”

HB 20 defines social media as an internet website having more than 50 million users that is open to the public and allows users to create accounts to communicate with others through the posting of information, comments, and messages or images. Media giants like YouTube and Twitter are affected. A few days ago, the U.S. Court of Appeals for the 5th Circuit held the law to be constitutional and enforceable.

Continue reading →

How to Reduce a Copyright Liability from Major to Minor

Posted on by

A client recently had the good fortune to reduce its financial exposure for copyright infringement from $3 million to a little over $75,000. Still, $75,000 is a lot of money to pay for unauthorized reproduction of twenty photos that belonged to someone else. But on the down side, in addition to statutory damages of up to $150,000 per photo, there also was the possibility of an award of attorney’s fees, and because the facts as known pointed to the conclusion that this client was aware that the photos were not its to borrow, it was quite likely a jury would have found the infringement to be willful and would, and could, have awarded $150,000 per photograph.  Continue reading →

Bankruptcy Treatment of Trademark Licenses

Posted on by

Worth mentioning if a licensee or licensor of a mark is facing bankruptcy, is a 2019
Supreme Court decision.  Mission Product Holdings, Inc. v. Tempnology, LLC, 139 S.Ct. 1652 (2019).  Decided 8–to–1 following a split among the circuits, the Court resolved the effect of a debtor in bankruptcy’s attempted rejection of a trademark license.

The question was would the rejection constitute a breach of contract, or a recission that would bar the licensee from ongoing use of the licensed mark?  The stakes are high for most licensees that want to continue to do business using the licensor’s mark. Continue reading →

Protection of Unregistered Trade Dress

Posted on by

The requirements to protect unregistered trade dress are well established. Still, it’s worth revisiting this subject from time to time, whether for trademark novice or pro.

At one time, trade dress only included packaging or “dressing” of the goods, but modern courts have pretty much universally expanded the meaning of trade dress to include the design of a product.  For example, the shape of the Coke bottle, the red sole of a Christian Lorboutin shoe, the shape of the Weber BBQ kettle. See, Stuart Hall Co., Inc. v. Ampad,  51 F.3d. 780 (8th Cir. (1995)).  Unregistered trade dress is protected.  If not registered, the burden is the owner’s to prove if the trade dress meets all requirements to make it protectable. Lanham Act Section 43(a)(3) specifically refers to a civil action for trade dress infringement for trade dress not registered on the principal register.  If registered on the principal register, it is presumed that the trade dress is distinctive, with the owner having demonstrated secondary meaning to the examiner. Continue reading →

Unlawful Use of a Trademark in Commerce and the Affirmative Defense to Infringement

Posted on by

The Lanham Act imposes on a trademark’s owner the requirement that the mark be used lawfully in commerce. If it is not, the USPTO should refuse to register it, and if registered the registration should be canceled. As well, unlawful use of a trademark in commerce has been applied as an affirmative defense to infringement in the case of registered marks, and there is no basis to distinguish, for this purpose, registered and unregistered marks. It’s just that the tested cases have been with registered marks.

Continue reading →