Tag Archives: Supreme Court

USPTO To Hold Roundtable on Fraudulent Trademark Solicitations

The USPTO has announced that on July 26, 2017, the Trademark Organization and the Trademark Public Advisory Committee plan to hold a roundtable discussion on fraudulent trademark solicitations.

Fraudulent trademark solicitations have been a problem for trademark holders around the world for decades. Scammers typically mine trademark application and registration information available online from the USPTO public database to obtain contact information of rights holders or their agents. Solicitations often mimic the look of official government documents, or appear to be from companies whose names falsely suggest a connection with the USPTO, including terms such as “United States,” “Registration,” “Office,” or “Agency.” Typical solicitations include offers for legal services, monitoring services, or offers to record trademarks with customs officials, all in exchange for substantial fees. The cost of these scams to trademark holders can be substantial. In late December of last year, the Department of Justice reported on a mass-mailing scam that netted approximately $1.66 million from U.S. rights holders, and has resulted in five convictions to date. Continue reading

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Supreme Court Holds Cheerleader Uniform Designs Are Copyrightable

On March 22, 2017, the Supreme Court held that decorative designs affixed to cheerleader uniforms may be entitled to copyright protection under the Copyright Act of 1976. The decision determined the proper approach to analyzing whether and how pictorial, graphic, or sculptural features can be identified separately from the utilitarian aspects of a useful article, potentially making such features eligible for copyright protection.

Varsity Brands, Inc., Varsity Spirit Corporation, and Varsity Spirit Fashions & Supplies, Inc. (together, “Varsity Brands”) design, manufacture, and sell cheerleading uniforms.  Varsity Brands holds numerous U.S. copyright registrations for uniform designs, including the following:  Continue reading

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SCOTUS Finds “Objective Reasonableness” Pivotal, but Not Dispositive, in Determining Attorney Fees Under Copyright Act

On June 16, 2016, the Supreme Court of the United States unanimously held that, when determining whether to award attorney’s fees under § 505 of the Copyright Act, courts must give substantial—but not dispositive—weight to the “objective reasonableness” of the losing party’s position.

Supap Kirtsaeng, a citizen of Thailand, noticed publisher John Wiley & Sons sold textbooks abroad less than they cost in the United States. Kirtsaeng took advantage of his observation by enlisting family and friends still in Thailand to purchase the less expensive textbooks, ship them to the United States, where Kirtsaeng sold them for profit. Wiley sued Kirtsaeng, claiming he violated Wiley’s exclusive right to distribute the textbooks. In a case that went up to the Supreme Court, Kirtsaeng prevailed under the “first-sale doctrine” and returned to the district court victorious, seeking over $2 million in attorney’s fees under § 505 of the Copyright Act.

Section 505 of the Copyright Act allows attorney’s fees to be awarded to the prevailing party, and the Supreme Court, in Fogarty v. Fantasy, Inc., 510 U.S. 517 (1994), created a list of factors that should be considered when making a fee-shifting decision. Included amongst these factors are frivolousness, motivation, and reasonableness.

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