Ninth Circuit Rejects Fair Use Defense in Seuss/Star Trek “Mash-Up” Case; Netflix Settles Sherlock Holmes Case

Big doings in copyright law the week before Christmas! The Congressional approval of a new federal statute providing low-cost, accelerated adjudication of low-value copyright disputes and criminalizing infringing streaming activities will be the subject of a future blog article. Meanwhile, the Ninth Circuit Court of Appeals has reversed a lower court’s holding in a copyright case that could have had a troubling impact on the concept of fair use.

Lawyers familiar with the parody defense in copyright cases know the 1997 case Dr. Seuss Enterprises v. Penguin Books USA, Inc., which pitted the iconic children’s author against an alleged “parody” called The Cat Not in the Hat—a retelling of the O. J. Simpson murder trial in the style of the Dr. Seuss classic The Cat in the Hat.  The upshot of that case was that the book was not entitled to the fair-use defense as a parody because it did not criticize or comment on the work of Dr. Seuss, but only appropriated the popular Seuss rhymes and imagery as a medium for commentary on the Simpson trial. A work is not a “parody” if it does not make a comment on the thing it is parodying. Continue Reading

New York Takes the Stage with New Publicity Right Law

Back in 1903, New York State adopted what was arguably the first right of publicity law in the United States. It came about as a legislative reaction to the now landmark 1902 case of Roberson v. Rochester Folding Box Co., in which the state court refused to grant relief to a private citizen whose image had been used without her permission as an eye-catcher on a mailer advertising a brand of flour. The majority held that the state’s law provided no statutory or decisional support for remedying a complaint of Ms. Roberson’s kind, which sounded in violation of privacy—a right that, at that time, was only theoretical and had not been codified in any body of statutory law. A three-judge dissent argued that each individual has a natural right to the economic value of her name and likeness; in so writing, they unknowingly created the basis for what evolved into today’s right of publicity law. Continue Reading

The U.S. Patent Office Supports the Battle Against COVID-19

During the first few months of the COVID-19 pandemic, the United States Patent & Trademark Office (USPTO) made multiple efforts to assist patent applicants that were affected by the pandemic (see our previous blog coverage here). Now, as the pandemic continues to wreak global havoc, the USPTO has assumed a more formal role in efforts to battle the deadly virus by implementing a pilot program that provides financial flexibility for applicants whose inventions are geared to help combat COVID-19. This pilot program began on September 17, 2020 and will run for 12 months, though it may be extended depending on a number of factors, including an ongoing evaluation of its effectiveness. The program is specific to provisional patent applications, which we encourage innovators to keep in mind during the continuing pandemic. Continue Reading

U.S. Patent and Trademark Office Issues New Examination Guidelines in view of Booking.com

In the recent Booking.com case (see the IP Law Trends article here discussing that case), the U.S. Supreme Court held that a trademark consisting of the combination of a generic term and a generic top-level domain, like “.com,” is not automatically generic. In addition, such terms are not automatically non-generic either.

Prior to the Booking.com decision, the U.S. Patent and Trademark Office (USPTO) had been automatically rejecting attempts to register such trademarks. Given the updated direction from the Supreme Court, however, the USPTO has now issued new guidance to its examining attorneys.

Accordingly, the USPTO will no longer apply a per se rule. Instead, the examining attorneys will assess on a case-by-case basis whether consumers would perceive a “generic.com”-type mark as being generic.

In addition, the applicant may claim that its “generic.com” mark has acquired distinctiveness. The USPTO has cautioned, though, that for this type of mark “applicants will generally have a greater evidentiary burden to establish that the proposed mark has acquired distinctiveness.” Accordingly, the applicant may need to show more than just five years of use of the mark in commerce or a prior registration for the same term, both of which are common approaches to asserting acquired distinctiveness. Instead, according to the USPTO’s guidelines, “the applicant will need to provide a significant amount of actual evidence that the generic.com term has acquired distinctiveness in the minds of consumers.”

In other words, trademarks of the type “generic.com,” will be treated the same as other marks that are suspected of being generic terms.

The complete Examination Guide issued by the USPTO is at this link.

Ninth Circuit Reaffirms Copyright Estoppel Doctrine

Jersey Boys, the hit musical based on the meteoric career of the rock group The Four Seasons, was the target of a lawsuit brought in 2007 by Donna Corbello, widow of Rex Woodard, who ghost-wrote a biography of Tommy DeVito, founder and lead guitarist of the Four Seasons during their golden years, 1960-71. When Jersey Boys opened on Broadway in 2005, the DeVito bio was still unpublished. Following Woodward’s death in 1991, Corbello and Woodward’s sister, and later DeVito himself, worked to find a publisher for the book. In the course of these efforts, DeVito registered the copyright in the unpublished book in his own name, and shared a copy of the manuscript with the writers of Jersey Boys. Corbello subsequently won recognition for her husband as author of the book, and pursued her claim that Jersey Boys infringed her husband’s copyright in the unpublished book.

You’d expect this to be a fair-use case, since nonfiction works—such as news stories and historical and biographical books—enjoy less protection against third-party use than do fictional and imaginative works. In fact, copyright law is quite clear that it does not protect facts, only the specific original expression of those facts. So you can freely use a fact already reported by someone else, but you cannot reuse the exact words of the previous writer—except of course in short quotations. Thus the case might have turned on how much of Woodard’s original expression found its way into Jersey Boys and whether that constituted fair use. But no. Continue Reading

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