Sis Boom Bah? Cheerleading Uniforms and Copyright Protection—Star Athletica Case Decided!

Can a cheerleader uniform containing combinations of elements like chevrons, lines, stripes, and angles be protected by copyright? Well, the Supreme Court addressed this exact issue on March 22, 2017, in the case of Star Athletica, L.L.C .v Varsity Brands, Inc. And, ta da, the answer is yes where a design feature of a useful article (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression— if it were imagined separately from the useful article in which it is incorporated. And the five member majority (authored by Justice Thomas) agreed that this test was satisfied in the present case.

To appreciate the fuss, and decision, some context is needed. Useful articles are not subject to copyright protection, with the lone exceptions of boat hulls and semi-conductor chips. Section 101 of the Copyright Act in pertinent part states: “the design of a useful article, as defined in this section, shall be considered a pictorial, graphic, or sculptural work only if, and only to the extent that, such design incorporates pictorial, graphic, or sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” Continue Reading

The Supremes Have Spoken: The Defense of Laches Does Not Apply to Patent Infringement Suits…

but can only collect damages for six years prior to filing suit.

In a stunning upset of years of jurisprudence (Federal Circuit Court of Appeals, prior patent act), the U.S. Supreme Court determined that laches (an equitable remedy) cannot be applied within the “statute of limitations” period of six years (a legal remedy for damages). Laches is an equitable doctrine that is designed to deter rights owners from “sitting on their rights.” So if someone takes no action for a long time, the doctrine of laches can stop that someone from bringing an action many years later because they simply waited too long. This decision pretty much obliterates laches as a defense against a claim for patent infringement.

The case at issue is SCA Hygeine Products Akteibolag v. First Quality Baby Products, decided March 21, 2017. SCA makes adult incontinence products (adult diapers). It has U.S. Patent 6,375,646. In 2003, SCA notified First Quality that it was infringing the SCA patent. First Quality had its own earlier patent (U.S. Patent 5,415,649). First Quality replied by stating that its patent invalidated the SCA patent and, therefore, there was no infringement. SCA did not further respond and First Quality continued to develop and market its products. Continue Reading

The Defend Trade Secrets Act of 2016—A Solution in Search of a Problem?

The Defend Trade Secrets Act of 2016 became the law of the land on May 11, 2016. It was greeted with broad fanfare. Much was written about it, mostly by lawyers, with predictions of how this could change trade-secret litigation. But with nearly a year on the books, and after a close look at its effect, the new law reveals relatively little reported activity.

The substantive trade-secrets portions of the Act mimic the Uniform Trade Secrets Act that all but two states have on their books. So the absence of new substantive law under the Act is not surprising, and attention has focused on the two new parts of the Act—the drastic ex parte seizure order and the whistleblower-protection provisions. But there’s not much to report there, either, as discussed below. The Act may end up being a solution in search of a problem. Continue Reading

Copyright Office Requiring New DMCA Agent Designation by Year’s End

The Digital Millennium Copyright Act (DMCA) provides limited immunity from copyright infringement claims to certain types of websites and other online service providers. To qualify for such safe-harbor immunity, such providers must designate an agent to receive requests to remove infringing materials.

As of December 1, 2016, the Copyright Offices now requires that such providers designate their DMCA agents electronically through an online portal at the Copyright Office. And as of December 31, 2017, any previously-filed designations will be rendered ineffective unless they have been updated through that portal.

For more information about registering (or re-registering) your designated DMCA agent, click here.

The Supremes Hear Oral Argument in Portland Band The Slants’ Trademark Case

On Wednesday, January 18, 2017, the U.S. Supreme Court heard oral argument in Lee v. Tam, a case reviewing the U.S. Court of Appeals for the Federal Circuit’s en banc decision in In re Tam holding that the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. Section 1052(a), was facially invalid under the First Amendment of the United States Constitution. The issue before the Supreme Court is whether the disparagement provision, which prohibits the government from registering trademarks that contain “matter which may disparage . . . persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the First Amendment.

In 2006, Simon Shiao Tam, an Asian-American, formed The Slants, an Asian-American dance-rock band. Mr. Tam named his band The Slants to “reclaim” and “take ownership” of Asian stereotypes. In 2011, Mr. Tam filed an application (App. No. 85/472,044) seeking to register the mark THE SLANTS. Relying on the disparagement provision, the U.S. Patent and Trademark Office (PTO) rejected Mr. Tam’s application on the grounds that the band’s name was disparaging to Asian-Americans. The PTO found that even though Mr. Tam may have chosen the mark to “reappropriate the disparaging term,” “a substantial composite of persons of Asian descent would find the term offensive.” Continue Reading

LexBlog