Last month, the United States Patent and Trademark Office’s (USPTO) began an initiative to expedite the review of, and waive the fees related to, trademark applications for marks used to identify qualifying Covid-19 products and services.  According to the USPTO’s website, this initiative launched “in view of the critical need to develop and help speed to market medical products and services to combat the COVID-19 virus.”

Only applications for marks covering these medical products and services are eligible for this expedited procedure:

  • Pharmaceutical products or medical devices such as diagnostic tests, ventilators, and personal protective equipment, including surgical masks, face shields, gowns, and gloves, that prevent, diagnose, treat, or cure COVID-19 and are subject to approval by the United States Food and Drug Administration.
  • Medical services or medical research services for the prevention, diagnosis, treatment of, or cure for COVID-19.

However, the application may also include additional related goods or services.

It is unclear how long this program will be in effect, but the USPTO has indicated that it will monitor the resource/workload needs associated with it, its effectiveness, and any public feedback. If the USPTO decides to modify or end the program, it will first notify the public.

For a more detailed explanation of this program and its benefits, see the USPTO’s website and an alert written by two of our colleagues.

This week, the United States Supreme Court issued an important decision in U.S. Patent and Trademark Office v. Booking.com affirming that “Booking.com” is a protectable trademark.  This case stemmed from the United States Patent and Trademark Office’s (“PTO”) rejection of Booking.com’s attempt to register its domain name as a service mark for hotel registration services because it deemed the mark generic.  The PTO argued that adding a designation to a generic term does not confer trademark protection and that registering a “generic.com” domain name like “Booking.com” would cause an anticompetitive effect that the trademark statute is designed to protect against.  Both the district court and the Fourth Circuit Court of Appeals held that, although “booking” itself is a generic term that cannot be afforded trademark protection, “Booking.com” was a descriptive term that had acquired secondary meaning (i.e. it had become associated in the minds of consumers with a single source) and was thus protectable as a trademark.

The United States Supreme Court agreed.  In an 8-1 decision written by Justice Ginsburg, the Supreme Court focused on how consumers view the term, which was evidenced in the district court by Booking.com’s survey evidence that nearly 75% of consumers found Booking.com to be a brand name, rather than a generic term.  Following a relatively brief analysis, Justice Ginsberg stated simply, “[B]ecause ‘Booking.com’ is not a generic name to consumers, it is not generic.”

This is a significant holding, not only for one business that has been waiting for years to register its trademark but for many other businesses that use a “generic.com” domain name or that may be affected by this decision.

Our colleague, Melissa Scott, recently wrote an alert on an opinion from the Ninth Circuit Court of Appeals about access to attorneys’ fees in copyright infringement cases.  The underlying copyright dispute in Doc’s Dream, LLC, v. Dolores Press, Inc., et al. related to the video recordings of a deceased minister’s sermons, but the significant holding relates to the fee-shifting provision in the Copyright Act.

34126235 - copyrightThe district court held that attorneys’ fees were not available to the accused infringer for the declaratory judgment claim on which it was granted summary judgment because the claim did not require construction of the Copyright Act.  The Ninth Circuit reversed, holding that the Copyright Act expressly allows for a discretionary award of attorney’s fees in “any civil action under this title” and that the request for declaratory relief raised multiple aspects of, and invoked, the Copyright Act.  Melissa notes two takeaways from the Ninth Circuit’s holdings:

  • The fee-shifting provision of Section 505 applies to “any civil action under” the Copyright Act.
  • Any action that “turns on the existence of a valid copyright and whether that copyright has been infringed” sufficiently invokes the Copyright Act as to allow for the discretionary award of attorneys’ fees.

For a full summary of the case and holdings, read Melissa’s alert here.

An update from Kaitie Eke, one of the firm’s summer associates:

A copyright infringement lawsuit filed by four major publishing companies against the Internet Archive has prompted early termination of the site’s National Emergency Library, a project that made books available electronically during the COVID-19 pandemic. Although the project’s conclusion may render some of the publishers’ complaints moot, the suit also takes aim at the ongoing operation of the Open Library and larger Controlled Digital Lending (“CDL”) practices.

The Internet Archive is a self-described “non-profit library of millions of free books, movies, software, music, websites, and more.” As part of its CDL practices and large-scale digitization efforts, the organization takes photos of book pages, which are assembled into the digital book files it makes available to patrons free of charge. Unlike traditional ebooks, which are editions of books specially prepared for digital consumption, the files offered by the Internet Archive are scanned copies of physical books.

The Internet Archive believes its practices do not violate copyright law, relying on a theory of fair use. According to the site, it utilizes controls designed to mimic traditional library book lending, such as limiting the lending of digital versions of a given book to one reader at a time and limiting the lending period to two weeks unless checked out again.

On March 24, 2020, however, spurred by pandemic-related library closures and citing an effort “to serve the nation’s displaced learners,” the site announced that it had launched the National Emergency Library to suspend waitlists for books in its library through the later or June 30 or the end of the U.S. national emergency. The publishers’ lawsuit, filed in the United States District Court for the Southern District of New York on June 1, 2020, led the Internet Archive to end the National Emergency Library two weeks early, on June 16, 2020, and to return to its traditional CDL practices.

The National Emergency Library is now closed. Nevertheless, the legality of the Internet Archive’s scanning and distribution of books under copyright law remains an open and debated question.

An update from Kevin Sandoval, one of the firm’s summer associates:

What started as a copyright infringement claim against the California high school that inspired the television series “Glee” has developed into a conflict that could have ramifications for copyright holders and potential copyright infringers everywhere. In 2016, Tresóna Multimedia, LLC filed a suit against Burbank high school’s vocal music director Brett Carroll, the Burbank high school vocal music boosters club, and individual boosters club parents claiming copyright infringement for the use and performance of four songs, including “Magic,” a song originally performed by Olivia Newton-John in a 1980 musical movie. Tresóna claimed at least partial interest in all four songs.

The Central District of California (“District Court”) held that Tresóna did not have standing to bring copyright infringement claims for three of the songs because it received its interests in those songs from individual co-owners of copyright and thus it held only non-exclusive rights in those songs. As to the fourth song, the District Court acknowledged that Tresóna had rights in “Magic,” but held that Carroll was protected from suit because of his qualified immunity as a public employee and that the other defendants could not be held liable for direct or secondary copyright infringement.

34126235 - copyrightOn appeal, in a decision dated March 24, 2020, the Court of Appeals for the Ninth Circuit affirmed the District Court’s holding that Tresóna did not have standing to bring a copyright infringement suit for the three songs, but determined that the merits of Carroll’s fair use defense in regard to “Magic” needed to be evaluated because the question of fair use was applicable to a broader music and teaching community. The Ninth Circuit used the four fair use factors outlined in 17 U.S.C. § 107, and ultimately held the defense of fair use applied to “Magic,” most notably because the use was limited and transformative and was for nonprofit educational purposes.

Further, although the District Court had declined to award Carroll’s attorney’s fees to Tresóna, the Ninth Circuit reversed because it determined that Tresóna pursued groundless claims against a school teacher, boosters club, and parent volunteers. According to the Ninth Circuit, Tresóna was an “overzealous monopolist” that sought to “stamp out the very creativity that the [Copyright] Act seeks to ignite.” Despite the Court’s harsh holding, Tresóna is pushing forward because it sees a larger issue at play than fair use.

On May 21, 2020, Tresóna filed a motion to stay so that it can petition for writ of certiorari to the United States Supreme Court, which it says is due later this summer. In its motion, which the Ninth Circuit just granted on June 26, 2020, Tresóna states that the issue to be presented to the Supreme Court concerns the Ninth’s Circuit’s reading of the word “exclusive” in the Copyright Act, and it argues that a third-party who has received exclusive rights or an assignment of its rights from a copyright co-owner should be able to stand in the shoes of the copyright owner on an infringement claim. If Tresóna ends up in front of the Supreme Court on this issue, it will be an interesting case to watch as it could impact whether copyright infringers could be more susceptible to suit from any number of copyright co-owners or assignees.

An update from Jennifer Madaras, one of the firm’s summer associates:

A California federal judge has ruled that two animal rescue groups can proceed with unfair competition claims against numerous defendants accused of misusing the word “rescues” when advertising dogs they purchased from breeders and puppy mills.

The plaintiffs asserted claims under both state and federal law. The plaintiffs’ federal claim arises under the Lanham Act, which prohibits trademark infringement and false advertising, among other things.  The plaintiffs, PetConnect Rescue Inc. and Lucky Pup Dog Rescue.Com, allege the defendants’ use of an infringing mark has harmed the plaintiffs’ reputation, caused customer confusion, and required plaintiffs to divert resources to correct the confusion.

The plaintiffs’ state claim arises under California’s Unfair Competition Law, which prohibits “any unlawful, unfair or fraudulent business act or practice” and any “unfair, deceptive, untrue, or misleading advertising. . . .” The plaintiffs’ claim is based upon California’s Health and Safety Code, which prevents pet stores from selling a live dog, cat, or rabbit unless the animal comes from a public animal control agency or shelter/rescue group, and which defines a “rescue group” as a non-profit that does not obtain the animals from breeders or brokers for compensation. The plaintiffs allege that the defendants committed unlawful business practices by selling dogs bred for profit in California that they obtained from out-of-state breeders and brokers, and that the defendants fraudulently advertised those dogs as “rescues.”

The defendants moved to dismiss the claims, arguing the plaintiffs failed to establish standing and provide facts to support their claim. Judge Huff of the Southern District of California declined to dismiss the claims because he found the plaintiffs had sufficiently pled that the defendants sold dogs bred for profit and misrepresented those dogs as “rescues.” He further found standing because the plaintiff “clearly uses their mark to accompany the services it provides.”

Judge Huff also held that the summary judgment phase is better suited to determine whether one plaintiff’s mark, “PetConnect Rescue,” is a protectable trademark.  He did find the mark descriptive – i.e. it describes the qualities or characteristic of the plaintiffs’ goods or services – but noted that descriptive marks are protectable if they acquire secondary meaning and that  whether the mark has gained an association in consumers’ minds is better suited for summary judgment.

Although specific to its facts and involving an advertising term (“rescues”) unlikely to be used in many other contexts, still this case serves as a cautionary reminder that all promotional materials should comply with state and federal law and that sometimes companies are sued by even unlikely plaintiffs.

Something we may never have thought would take off – branded face masks – are now on the rise.  With CDC recommendations and state/local orders recommending or even requiring employees (and sometimes even all citizens outside of their homes) to wear masks, businesses have an unexpected yet significant marketing opportunity to present their brand in a new setting.  This is particularly true for certain types of businesses, such as consumer-facing retail stores, restaurants/bars, and sports team.  Companies specializing in branded t-shirts, uniforms, and the like have certainly expanded their offerings to account for this new sales prospect to the businesses they service.

As a result, many businesses are taking advantage, seeing the increase in face mask use as another chance to present their logo, brand, or other message to the public or even just to their own employees.  Fashion designers are also jumping into the ring in a way that promotes their brands.  But other businesses may be concerned that turning a precautionary device into a walking billboard could make light of the pandemic or face mask requirement.

Whichever camp your business is in, this new and unexpected marketing strategy is on the rise.

Following up on an earlier blog post about the State of Georgia’s ability to copyright the annotations to the Official Code of Georgia Annotated (“OCGA”), the U.S. Supreme Court finally weighed in last month.  Chief Justice Roberts wrote the majority opinion, which applied the government edicts doctrine in rejecting Georgia’s infringement challenge against a non-profit advocacy group that had posted various OCGA volumes and supplements online.

Stated simply, the Supreme Court ruled that government officials cannot copyright the works they create in their official capacity. In this case, that meant that annotations authored by an arm of the Georgia legislature cannot have copyright protection. As the Eleventh Circuit stated in its underlying opinion, “the People are the ultimate authors of the annotations,” which are “inherently public domain material and therefore uncopyrightable.”

The U.S. Copyright Office recently called for changes to the Digital Millennium Copyright Act (“DMCA”). Congress enacted 17 U.S.C. § 512 of the DCMA to balance the threat of liability for copyright infringement on online service providers with “the threat of rampant, low-barrier online infringement.” This was accomplished with the use of “safe harbors” for service providers if, e.g., they quickly take down infringing content upon receiving notification of such infringement by a copyright holder.  While this has allowed service providers to grow without facing debilitating lawsuits it has also created the “‘whack-a-mole’ problem of infringing content reappearing after being taken down.”

Therefore, the Copyright Office conducted a study based on several guiding principles, including that copyright protection online must be meaningful and effective and internet policy in today’s age cannot be one-sized fits all. Based on its own analysis, the Copyright Office concluded that the originally intended balance sought by Congress “has been tilted askew.”

The Copyright Office made several findings and suggestions to try and re-balance the DMCA. For example, to qualify for safe harbor, a service provider must have “adopted and reasonable implemented… a policy that provides for the termination in appropriate circumstances of subscribers and account holders… who are repeat infringers.” Under the current interpretation, compliance with the law may be found if a service provider merely adopts an unwritten policy that is never shared with its users. However, and in an apparent adoption of the Fourth Circuit’s holding that repeat infringer under section 512 means repeat alleged (not repeat adjudicated) infringer, the Copyright Office suggests that service providers must have a “clear, documented, and publicly available repeat infringer policy” to adequately deter repeat infringers.

In addition, the Copyright Office asked Congress to clarify the “knowledge” requirements – including the amount of knowledge of infringement a website must have before it takes down infringing content as well as the knowledge (or lack thereof) required to qualify for the safe harbor provisions. The Copyright Office further suggested that Congress should articulate a reasonableness standard that takes into account differences among the service providers that exist.

The Copyright Office also found that several provisions have been expanded to cover activities not contemplated over 20 years ago when enacted by Congress and that some terms could and should be further clarified to achieve the required balance.

It remains to be seen if Congress is inclined to adopt these (and other suggested) proposals but it certainly serves as a good first step in meaningfully protecting copyright owner’s rights online.

Fellow Fox attorney Melissa E. Scott recently published an alert discussing newly proposed trademark legislation. The proposed legislation, titled the Trademark Modernization Act of 2020, could lead to a number of changes to the Lanham Act, and would seek to combat fraudulent trademark filings and better protect the public from confusing a product’s source.

For a comprehensive breakdown of the Act’s potential changes and effects, read the full alert here.