Tag Archives: fair use

Ninth Circuit Provides Roadmap for Reverse Confusion Claims

On July 7, 2017, the Ninth Circuit issued a decision clarifying issues related to pleading and proving reverse trademark confusion claims.

Marketquest Group, Inc. sued BIC over use of the phrase “The WRITE Pen Choice for 30 Years” based on Marketquest’s rights in the mark “The Write Choice.”  The district court granted BIC’s motion for summary judgment, holding that although there was some likelihood of confusion, further analysis was unnecessary because fair use provided a complete defense to Marketquest’s infringement claims. Continue reading

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Parties in Star Trek Fan Litigation Don’t Boldly Go Into the Unknown; Settle Claims

The Central District of California recently denied both parties’ motions for summary judgment in a copyright infringement case involving a fan Star Trek film, setting the dispute up for a jury trial. However, the Court’s findings that defendant Axanar Productions, Inc.’s film was objectively similar to Plaintiffs’ copyrighted Star Trek works, and that Defendants had no valid fair use defense, was sufficient to lead the parties to settlement.

Since 1966, Plaintiffs have produced six Star Trek television series totaling more than 700 episodes, and thirteen Star Trek motion pictures. Additionally, Plaintiffs have licensed numerous derivative works, including books, games, merchandise, and audio-visual works. These works incorporate stories taking place in time periods both before and after the original television series. Collectively, these works constitute the Star Trek canon, used by many Trekkers to create fan fiction.  Continue reading

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Copying Another Attorney’s Legal Brief is Not Fair Use

On September 13, 2016, the U.S. District Court for the Central District of California ruled that an intellectual property attorney had failed to show his copying of another’s legal brief was fair use.

Plaintiff Newegg, Inc. had been sued for patent infringement in the Eastern District of Texas, and Defendant Ezra Sutton represented Newegg’s codefendant Sakar International, Inc. in that litigation. Newegg and Sakar prevailed and subsequently moved for attorneys’ fees and costs. The district court denied the motion, and both parties separately appealed to the Federal Circuit. Prior to filing their opening appellate briefs, Newegg and Sutton agreed that Newegg would provide Sutton a draft of its brief only if Sutton agreed in writing that he would not copy any excerpts of Newegg’s draft and would use it only for reference and resource purposes. Then, one day before Newegg filed its brief, Sutton filed a brief on behalf of Sakar that was virtually identical to Newegg’s draft brief. Newegg sued Sutton for copyright infringement.

On Newegg’s motion for partial summary judgment, the issue before the court was whether Sutton’s copying constituted fair use of Newegg’s draft brief. The court analyzed the four statutory fair use factors: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copyrighted work used; and (4) the degree of harm to the potential market.

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