Tattoo artist Catherine Alexander (“Alexander”) filed a lawsuit against World Wrestling Entertainment Inc. (“WWE”) and video game maker Take-Two Interactive Software Inc. (“Take-Two”) claiming they violated her intellectual property rights by reproducing her tattoo designs on the digital avatar of wrestling star Randy Orton in a series of released WWE 2K wrestling video games. See Alexander v. Take-Two Interactive Software, Inc., 489 F. Supp. 3d 812 (S.D. Ill. 2020). The lawsuit concerns five designs for which Alexander obtained copyright registrations prior to filing suit.

Continue Reading Proprietary Ink: How One Tattoo Artist Took Take-Two to the Mat Over Unauthorized Use of Replica Tattoos on Wrestlers in WWE 2K Games

In the cloud-based age where numerous tech giants such as Google, Amazon, and Apple have launched cloud music services, many kept abreast of ongoing legal battles over online service providers’ liability for users’ music copyright infringement offenses using their platforms and what internet service providers must do to avoid contributory infringement liability.  Case in point – MP3tunes.  Michael Robertson, the founder of MP3tunes LLC, operated two websites: (“MP3tunes”) and (“Sideload”). MP3tunes enabled users to store music on a cloud-based server and Sideload enabled users to search for free music online and directly upload the songs to MP3tunes’ digital storage lockers. The songs stored on MP3tunes were then added to Sideload’s index of searchable songs, which were made available to other users. Due to infringed material, various record label publishing houses (EMI Music Group and fourteen other record companies, collectively, “EMI”) sued Robertson and his website MP3tunes for copyright infringement. See Capitol Records, Inc. v. MP3tunes, LLC, 821 F. Supp. 2d 627 (S.D.N.Y. 2011).

Continue Reading Road to Safe Harbor: Implementation of Repeat Infringer Policy Necessary for DMCA Safe Harbor Protection from Copyright Infringement Liability

Louboutin v. YSL

Christian Louboutin (“Louboutin”), the designer of the famous red bottom shoes, filed a trademark infringement lawsuit against fashion house Yves Saint Laurent (YSL) claiming YSL infringed on its red sole trademark (the “Red Sole Mark”) by selling a monochrome dress shoe that was entirely red, including a red insole, heel, upper, and outsole. YSL counterclaimed seeking to invalidate Louboutin’s Red Sole Mark arguing it was ornamental and not distinctive and purely functional.

Continue Reading The Fight for Red: Fashion Statement or Protected Trademark?

Federal trademark registration is the Holy Grail for companies, especially franchises, looking to expand their footprint and access a national audience. But even though trademark registration confers on owners certain exclusive rights and benefits, such as constructive national notice of use, protects against registration of confusingly similar marks, provides notice of ownership, and enables recovery of statutory and exemplary damages in appropriate cases, it does not extinguish the rights of an owner of a substantially similar mark who has used the mark in commerce prior to registration. This can be especially problematic for growing franchises that have built their business on a recognizable name and charge significant fees for franchisees to use that name in running a local franchise location.

Continue Reading Franchisor Beware: Registered Trademarks Does Not Mean Impunity from Priority Local Use Challenge

Beasley. v. Howard is a tale of two musicians fighting over the rights to their band name. 14 F.4th 226 (3d Cir. 2021). In 1969, David Beasley (“Beasley”) founded the Camden, New Jersey-based band “The Ebonys.” Throughout the 1970s, the Ebonys achieved some commercial success and have continued to perform through the decades. In the mid-1990s, William Howard (“Howard”) joined the band, and, in 1997, Beasley obtained a New Jersey state service mark registration for THE EBONYS. After several years of performing together as The Ebonys, Beasley and Howard parted ways, and in 2012, Howard applied for and obtained a federal trademark registration for THE EBONYS. Afterward, Beasley claimed that Howard used the registered trademark to interfere with Beasley’s band and business by preventing him from registering a website domain name containing the words “the Ebonys,” convincing concert venues not to book Beasley, attempting to collect royalties from Beasley’s music, and claiming to be the true founder of The Ebonys.

Continue Reading The Trademark Blues: TTAB Proceedings Do Not Preclude Subsequent Infringement Lawsuits

Intellectual property is a right enshrined in our very Constitution, which grants Congress the power “To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”[1] Congress has made use of that power by legislating a wide birth of laws defining what is a copyright, how to get one, and what it protects.[2] Surprising to many lay observers, architectural works are specifically protected copyrights.[3]

Continue Reading Architectural Copyrights: No Need to Pay the Troll Toll

Recently, the Ninth Circuit Court of Appeals affirmed the decision of Judge Thomas S. Zilly of the District Court of the Western District of Washington in favor of defendant John Doe, a retired police officer accused of illegally downloading and distributing adult content produced by Strike 3 Holdings LLC. [1] Agreeing with the district court’s finding that Strike 3 failed to prove its claim that the defendant pirated its adult films, the Court of Appeals upheld the lower court’s order requiring Strike 3 to pay defendant John Doe $47,777 in costs and fees.

Continue Reading Retired Police Officer Prevails Against Adult Film Studio Strike 3 Holdings in Proving His Innocence in Copyright Infringement Suit

In our overstimulated environment with a plethora of brands, names, and marks, it is difficult for products to stand out. Some businesses, however, have managed to break through the noise by creating marks with lasting impressions on consumers. But there are limits, even for the most well-known brands such as Starbucks.

Continue Reading Survey Evidence Not Enough to Show Acquired Distinctiveness of Starbuck’s Green Dot on Coffee Cup

After the release of the hit animated motion picture Inside Out, Denise Daniels and The Moodsters Company sued the Walt Disney Company for copyright infringement and alleged that the Inside Out characters impermissibly resembled Daniels’ Moodsters characters. See Daniels v. Walt Disney Co., No. 17-CV-4527 PSG (SKx), 2018 U.S. Dist. LEXIS 117569 (C.D. Cal. May 9, 2018). After the district court granted Disney’s motion to dismiss based upon its finding that The Moodsters characters were not protectable by copyright, Daniels appealed. On March 16, 2020, the Ninth Circuit affirmed the lower court’s dismissal agreeing The Moodsters did not qualify for copyright protection. See Daniels v. Walt Disney Co., 952 F.3d 1149 (9th Cir. 2020).

Continue Reading Copyrightability of Fictional Characters – the Difference Between Superman and Chessmen

Shape of Water, the winner of Best Picture, Best Director, and other Oscars, captivating audiences around the world, has come under fire for plagiarism. The 2017 film has been accused of borrowing heavily from a 1969 play called Let Me Hear You Whisper. The infringement claims were originally dismissed by the district court based on finding the two works shared merely a “basic premise” and “minor similarities.” Zindel v. Fox Searchlight Pictures, Inc., No. CV 18-1435 PA, 2018 U.S. Dist. LEXIS 123872 (C.D. Cal. July 23, 2018). On appeal, however, the Ninth Circuit reversed noting the district court judge was too quick to dismiss the case – reasonable minds could differ on whether the two works are substantially similar. Zindel v. Fox Searchlight Pictures, Inc., No. 18-56087, 2020 U.S. App. LEXIS 19444 (9th Cir. June 22, 2020).

Continue Reading The Oscar-Winning Film Shape of Water Must Defend Copyright Infringement Claims From Playwright