The Seventh Circuit Court of Appeals recently held that Gatorade’s use of the phrase, “Gatorade The Sports Fuel Company,” constitutes fair use under the Lanham Act, and therefore did not violate SportFuel, Inc.’s (“SFI”) rights.  Plaintiff SFI is the owner of two registered trademarks for “SPORTFUEL,” and brought an infringement suit in 2016 against Gatorade for its use of the aforementioned slogan.  While Gatorade had also obtained a registration for its trademark, it disclaimed “THE SPORTS FUEL COMPANY,” and defended the lawsuit based on fair use.  The district court entered summary judgment for Gatorade, finding that it did not use “SPORTS FUEL” as a trademark, that Gatorade’s use was descriptive of its sports drinks, and that Gatorade used the mark in good faith.  On appeal, the Seventh Circuit affirmed the lower court’s ruling.  Among other things, the appellate court noted that Gatorade had introduced substantial evidence indicating that “sports fuel” was a marketplace term in describing nutritional sports products, and that Gatorade did in fact hold itself as a manufacturer of sport fuels (which undermined SFI’s alleged “bad faith” argument).

Multiple patent applications have purportedly been filed in several countries by a law school professor on behalf of an artificial intelligence named DABUS. While the applications are not yet open for public inspection, a website devoted to the project details the subject matter of the inventions as an improved food container and a signal beacon, both of which were "created" by the artificial intelligence. The project appears to be an attempt to challenge the definition of "inventor" under the patent laws of various countries, which are generally restricted to individuals. Ostensibly, the purpose of the filings is to create a "case or controversy" by identifying a machine as the "inventor" in order to draw an objection to the applications. Once an application is refused on that basis, the case may be ripe to seek judicial review of the statutory definition of "inventor." Although, whether a machine has standing to appeal such an administrative determination is unclear, unless other interested parties are permitted to carry the suit. 

Identifying a machine as an inventor raises a host of other issues pertaining to the ownership of an invention, inlcuding the right to sue for infringement or collect royalties. Such issues would likely require a legislative amendment, rather than a favorable judicial interpretation of the existing defintion of "inventor," in order to avoid these kinds of ambiguities. 

This week a Los Angeles jury in the U.S. District Court in the Central District of California found that Katy Perry’s 2013 hit “Dark Horse” infringed the copyright of a 2008 Christian rap song “Joyful Noise.” At issue were not the words of “Dark Horse,” but rather the sounds of the beat and the instrumental line of “Joyful Noise.” Christian Rapper Marcus Gray, known as “Flame’s” along with the co-authors of the song “Joyful Noise” (Plaintiffs) brought the case against Katy Perry and her team, including Dr. Luke, Cirkut, Max Martin, Capitol Records, and others involved with the writing, production, and distribution of the song (Defendants).

To bring a lawsuit for copyright infringement, a plaintiff must have first obtained a U.S. Copyright registration. Copyright infringement requires that a plaintiff owned a valid copyright and a defendant copied constituent elements of the work that are original. In cases of no direct proof of copying, a plaintiff may establish copying by demonstrating that the defendant had access to plaintiff's work and that the plaintiff's and defendant's works are substantially similar. 

Even though the song was completed in 2007 and published in 2008, the joint authors of the Christian rap song “Joyful Noise” obtained a registration of a U.S. Copyright in 2014 for both the lyrics and the music of the song. Subsequent to obtaining the copyright registration, the Plaintiffs brought the lawsuit in federal court in 2014. To establish that the Defendants had access to their song “Joyful Noise,” the Plaintiffs offered evidence that their song was widely available on streaming services, and therefore could have been heard by the Defendants.

In response, Defendants put on testimonial evidence that they did not access the song “Joyful Noise” before producing the song. At trial, Katy Perry testified that though she began her career as a Christian artist, she does not listen to Christian music now, and had not listened to “Joyful Noise” before the lawsuit. During closing arguments, Perry’s Attorney argued that the Plaintiffs were “trying to own basic building blocks of music, the alphabet of music that should be available to everyone.”

At the end of closing arguments, the jury listened to both songs played back-to-back in their entirety to determine whether the works were substantially similar. On Monday, the nine-person jury found that there were substantial similarities between the original expression in the musical compositions of “Dark Horse” and “Joyful Noise,” and that “Dark Horse” copied “Joyful Noise.”

Now the case will proceed to the next stage to determine the monetary damages to be awarded to the Plaintiffs. At trial, evidence was submitted to show that the song “Dark Horse” spent four weeks on the Billboard Hot 100 in 2014, has millions of plays on YouTube and Spotify, and was included on Perry’s Grammy nominated album, “Prism.”

This case follows another high-profile copyright infringement case involving a top hit. In 2015, Robin Thicke and Pharrell Williams’s 2013 hit "Blurred Lines” was found to infringe the copyright of Marvin Gaye’s 1977 song, "Got to Give It Up.” In 2018, the Ninth Circuit affirmed the imposition of a permanent 50% royalty rate and the award of over five million dollars to Marvin Gaye’s estate.

Earlier this month, the United States Patent and Trademark Office (“PTO”) disclosed that a new rule would soon take effect, requiring that all foreign-domiciled parties, registrants, and trademark applicants to Trademark Trial and Appeal Board (“TTAB”) proceedings must be represented by a licensed attorney that is admitted to practice law in the United States.  The new rule takes effect on August 3, 2019, and applies not only to new filings, but current filings as well.  Thus, and in enforcing the rule, the TTAB will suspend any proceedings – and require appointment of a licensed U.S. practitioner – in any action where a foreign-domiciled party is represented by a non-U.S. attorney.  Andrei Iancu, the director of the USPTO, stated that the new rule is intended to combat “fraudulent submissions,” and to “maintain the accuracy and integrity of the register.”

The Court of Appeals for the Ninth Circuit issued an opinion recently which advised the lower court of both its error in ignoring case law, and the appellate court's dissatisfaction with the final season of Game of Thrones. In chastising the the lower court for disregarding a later clarification to an earlier case, the appellate opinion stated "we will not render [the clarification] meaningless the way that Game of Thrones rendered the entire Night King storyline meaningless in its final season."

The Court of Appeals for the Ninth Circuit is well known for inserting pithy, pop-culture references into its opinions, having touched on Indiana Jones andThe Twilight Zone in recent years. Perhaps most famously, Judge Alex Kozinski's ruling in the Barbie Girl parody case opened by stating "[i]f this were a sci-fi melodrama, it might be called Speech-Zilla meets Trademark Kong" and closed by advising the parties "to chill."

Gibson originally introduced its "Flying V" Guitar shape in 1958, but waitied until 2010 to file an application in the European Union Intellectual Property Office to protect the iconic shape as trade dress. A German guitar manufacturer challenged Gibson's exclusive right to the guitar shape. After nine years and two appeals, a panel of three judges sitting on the the European Union General Court has determined that, while the shape may have been very original when it was originally released, the current presence on the market of a number of similar shapes makes it unlikely that consumers will regard one particular shape as belonging to a specific manufacturer. The General Court made this finding despite Gibson's submission of survey evidence in eight European Union countries. 

Today, the Supreme Court ruled that Section 2(a) of the Lanham Trademark Act is unconstitutional because it violates the First Amendment’s protection of freedom of speech. The Section 2(a) provision bans the issuance of trademark registration to marks that the U.S. Patent and Trademark Office (“PTO”) deems are “immoral” or “scandalous,” based on ordinary and common meanings of the proposed mark. The high court ruled that this immoral or scandalous bar discriminated on the basis of a viewpoint and therefore conflicts with the First Amendment.

The Lanham Act provides for the administration of federal trademark registration. While registration of a mark is not mandatory, and a mark can still be used in commerce and enforce it against infringers, federal trademark registration gives trademark owners valuable benefits. For example, a valid federal trademark registration gives prima facie evidence of the mark’s validity, and serves as constructive notice to others of the registrant’s claim of ownership of that mark.

Here, in the case of Iancu v. Brunetti, Erik Brunetti sought these benefits by applying for federal registration for the trademark “FUCT” for use in connection with his clothing lines, but the PTO refused this application for violation of Section 2(a). The Examining Attorney assessed his proposed mark as a “total vulgar” mark and therefore unregistrable, and the Trademark Trial and Appeal Board agreed, stating that the mark was “highly offensive,” “vulgar,” and that it had “decidedly negative sexual connotations.”

Upon review, the Supreme Court struck down this provision for being unconstitutional. The Court emphasized a core foundation of freedom of speech law: that the government may not discriminate against speech based on the ideas or opinions it conveys. The Court concluded that this provision of the Lanham Act “allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety.”

Writing for the majority, Justice Elena Kagan illustrated this content-based discrimination with four made-up marks: “Love Rules” “Hate Rules” “Always Be Good” and “Always Be Cruel.” The Court contended that the statute would favor marks such as “Love Rules” and “Always Be Good” but disfavor a mark such as “Hate Rules” and “Always Be Cruel.”  This favoring or disfavoring based on content results in viewpoint-discriminatory application. Under this provision, the statute “on its face, distinguishes between two opposed sets of ideas: those aligned with conventional moral standards and those hostile to them; those inducing societal nods of approval and those provoking offense and condemnation.” Therefore, the Supreme Court struck down this ban on federal registration of these “scandalous” or “immoral” marks.

In May 2019, Tom Brady’s company filed two intent-to-use trademark applications, seeking to register the nickname TOM TERRIFIC in connection with apparel, posters, and playing cards.  In those filings were declarations that Brady had a legitimate, good faith intent to use the TOM TERRFIFIC mark in commerce.  However, after receiving some criticism by loyal New York Mets fans – who claim that the nickname “Tom Terrific” has long belonged to famed pitcher Tom Seaver – Brady attempted to ease the pushback from critics, stating to reporters that he “didn’t like the nickname,” and was actually trying to “keep people from using it” in filing the underlying trademark applications.  Further, when asked whether the name would be used for merchandise, Brady answered, “I hope not.”  It will be interesting to see what unfolds relative to the underlying trademark applications in light of these events.

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