Copyright Decisions
Claim for Copying of Useful Article Design Preempted by
Copyright Act: Ultraflo Corp. v. Pelican Tank Parts, Inc.,
No. 15-20084 (5th Cir. Jan. 11, 2017)
Costa, J. The Fifth Circuit affirmed dismissal of the
plaintiff's Texas state law claim for unfair competition by
misappropriation on the basis of preemption by the Copyright Act.
The plaintiff alleged that the defendants had improperly used
technical drawings by its former employee to manufacture a valve
"strikingly similar" to the plaintiff's valves. The
Fifth Circuit held that the valve design—although not itself
entitled to copyright protection—was within the subject
matter of copyright for preemption purposes, as
"Congress's exercise of its power under the Copyright
Clause to not provide protection for the embodiment of ideas in
useful articles is entitled to preemptive force." The Fifth
Circuit further held that the Texas unfair competition statute
provided a right "equivalent to those 'within the general
scope of copyright,'" specifically noting the "right
to make derivative use of copyrighted works." The plaintiff
contended that because the Copyright Act explicitly declines to
grant the owner of a copyrighted work portraying a useful article
the exclusive right to make that article, its claim should survive
preemption under the "extra elements" test. The court
rejected this argument, reasoning that "[w]ithholding a
particular right is part of the balance Congress struck between the
need for copyright incentives and the value in public public
access to ideas."
Trademark Decisions
Services Performed by Software May Support Registration
of Service Marks: In re JobDiva, Inc., No. 2015-1960 (Fed.
Cir. Dec. 12, 2016)
Stoll, J. The Federal Circuit vacated the TTAB's
cancellation of appellant JobDiva's service marks based on
alleged failure to use the marks in connection with "personnel
placement and recruitment" services. JobDiva offers a variety
of job-staffing functions, including resume aggregation and
analysis on a software-as-a-service (or cloud computing) basis. The
court observed that "with modern technology, the line between
services and products sometimes blurs," and "[e]ven
though a service may be performed by a company's software, the
company may well be rendering a service." Because "a mark
used with a web-based offering may equally identify the provision
of software, rather than a service," "careful analysis is
required to determine whether web-based offerings . . . are
products or services." In particular, the court noted that
user perception is a "key consideration" in determining
whether a mark is being used in connection with applied-for
services. Based on these considerations, the Federal Circuit held
that the TTAB erred in requiring JobDiva to prove that it performed
personnel placement and recruitment services "in a way other
than having its software perform those services," and it
remanded to the TTAB to consider in the first instance the proper
question of "whether JobDiva, through its software, performed
personnel placement and recruitment services and whether consumers
would associate JobDiva's registered marks with [such]
services, regardless of whether the steps of the service were
performed by software."
Public Recognition of DJ's Stage Name Insufficient to
Support Trademark Claims: Kibler v. Hall, No. 15-2516 (6th
Cir. Dec. 13, 2016)
Cole, C.J. In a suit brought by a DJ performing as
"DJ Logic" against a rapper performing as
"Logic," the Sixth Circuit affirmed the district
court's grant of summary judgment for defendants on the
plaintiff's trademark infringement and dilution claims, holding
that no reasonable jury could find a likelihood of confusion under
its eight-factor test. With regard to the strength of the mark, the
court held that although the mark is "conceptually
strong," the plaintiff had failed to establish its commercial
strength. The Sixth Circuit found that the district court's
analysis was "incomplete" in failing to accord sufficient
weight to the plaintiff's promotional activities on Myspace,
Twitter and Facebook and failing to recognize that "a
plaintiff with low album sales or no representation could
nevertheless show commercial success suggesting broad recognition
of his mark using web-based indicators of popularity," such as
YouTube views. Nonetheless, the Sixth Circuit agreed with the
district court that the plaintiff had failed to provide sufficient
information from which a jury could determine that wide segments of
the public recognize the mark and associate it with the product it
announces. Of the remaining factors, the only one that marginally
favored the plaintiff was actual confusion; however, the court held
that "no reasonable jury could find likelihood of confusion
based solely on a few instances of actual confusion." The
Sixth Circuit further held that no reasonable jury could find the
plaintiff's mark famous as required for a dilution claim,
noting that the plaintiff had failed even to establish commercial
strength and that evidence describing "his experience in the
music industry" and a guest contribution on a Grammy-winning
album "clearly falls short of the high threshold for fame
under the Lanham Act."
Trademark Agreement Held to Be Improper Assignment of
Intent-to-Use Application: Emerald Cities Collaborative, Inc.
v. Roese, No. 2016-1703 (Fed. Cir. Dec. 13, 2016)
(non-precedential)
Lourie, J. In an unpublished opinion, the Federal Circuit
affirmed the TTAB's decision, inter alia, cancelling Emerald
Cities Collaborative's (ECC) registration of the mark "The
Emerald City" because ECC's rights in the mark were based
on an assignment of an intent-to-use application filed by a third
party, which violated the Lanham Act's anti-trafficking rule,
15 U.S.C. § 1060(a)(1), which prohibits assignment of an
intent-to-use application prior to the filing of a statement of
use, unless certain statutory exceptions are met (such as if the
application is transferred as part of the applicant's
"'ongoing and existing' business to which the mark
pertains"). The Federal Circuit held that the "trademark
assignment and license" through which ECC acquired its rights
was an immediate assignment of the intent-to-use application,
rather than merely an agreement to assign the mark upon
registration, as ECC had argued. In reaching this conclusion, the
court focused on provisions ceding control of prosecution of the
application and registration of the mark to ECC, granting ECC the
right to control the prior owner's use of the mark on goods and
services and giving ECC the sole right and authority to enforce the
mark both before and after the registration date.
Dotblog Mark Is Suggestive, Not Descriptive, of Blog Search
Service: In re Driven Innovations, Inc., No. 2016-1094
(Fed. Cir. Jan. 4, 2017) (non-precedential)
O'Malley, J. In a non-precedential opinion, the
Federal Circuit reversed a TTAB decision refusing to register the
mark "dotblog", applied for by a company using
"proprietary search techniques" to find blog posts and
return summary reports in response to user search queries. The TTAB
had found the mark merely descriptive of the applicant's
service based on the definition of "blog," the fact that
"'dot' represents the pronunciation of the punctuation
mark that separates different address levels in an internet
address" and the TTAB's conclusion that "the mark in
its entirety retains the same meaning as its component parts."
The TTAB alternatively reasoned that "ICANN's activation
of the .blog generic top-level domain" would make consumers
likely to "perceive the mark as conveying the impression of
'providing specific information' from searches of the sites
on the '.blog' domain." The Federal Circuit disagreed,
concluding instead that these considerations "merely show, at
most, that the mark 'dotblog' likely would have some
relation to online blogs," and concluded that the mark was
suggestive, rather than descriptive, of the applicant's
service. The Federal Circuit further rejected the TTAB's
reasoning "because it logically results in the refusal to
register any mark that includes the word 'blog' whenever
the mark's associated product or service relates in some way to
blogs."
Use of "Welcome to the D" in Promoting Detroit
Sporting Events Held to Be Non-Trademark Use: Kassa v. Detroit
Metro Convention & Visitors Bureau, No. 16-1007 (6th Cir.
Jan. 12, 2017) (non-precedential)
Batchelder, J. In an unpublished opinion, the Sixth
Circuit affirmed the district court's dismissal of the
plaintiff's complaint alleging infringement and dilution of his
claimed trademark in the phrase "Welcome to the D" for
use on clothing, in live music performances and in connection with
entertainment programming. The court held that the defendants'
use of the phrase "on banners and signs hung around Detroit
'to promote' the 2012 World Series and . . . the 2015
Volleyball Open National Championships" was a non-trademark
use. "The words 'Welcome to the D' at the top of
banners advertising major sporting events in Detroit are simply a
greeting, welcoming visitors to the city using its common nickname.
In other words, it is a geographic identifier, not an identifier of
the source of goods or services. The phrase . . . does not identify
[plaintiff] as the source of the World Series or the volleyball
championship, and does not suggest any association between those
events and [plaintiff]."
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