Introducing WilmerHale's Copyright and Trademark Case Review series, an informative resource of consolidated recent precedential opinions with brief summaries designed to showcase the latest developments in intellectual property law.

Precedential Copyright Opinions

Keeling v. Hars, No. 12-694-cv (2nd Cir., Oct. 30, 2015)
Cabranes, J. Affirming the jury verdict of copyright infringement where the copied work—Point Break Live! (PBL)—was an unauthorized parody stage adaptation of the Hollywood action movie Point Break. The Second Circuit upheld the district court's ruling that "a parody that makes 'fair use' of another copyrighted work may contain sufficient originality to merit copyright protection itself," and upheld the jury's findings that PBL was: (i) "fair use in the way of parody," (ii) entitled to copyright protection, and (iii) infringed by a production company that staged performances of PBL without permission. 

Broadcast Music, Inc. v. Crocodile Rock Corp. No. 14-3891 (3rd Cir., Oct. 30, 2015)
Smith, J. Affirming the district court's award of $35,000 in statutory damages—$7,000 per infringement—plus more than $67,000 in costs and attorney's fees. In so doing, the Court rejected the defendant's arguments that the district court erred by awarding statutory damages for the default judgment: (i) far in excess of the total ticket sales for the concerns where the infringements occurred; and (ii) beyond the statutory minimum amounts. Stating "That the infringement was unprofitable will not prevent a court from imposing a damages award anywhere within the statutory limits," the Third Circuit held that the district court acted within its "broad discretion" in awarding statutory damages and upheld the award.

Precedential Trademark Opinions

The Hanover Insurance Co. v. Urban Outfitters, Inc., No. 14-3705 (3rd Cir., Oct. 23, 2015)
Roth, J. Affirming the district court's grant of judgment on the pleadings that Hanover had no duty to defend or indemnify Urban Outfitters against allegations of trademark infringement and related common law and statutory violations because the "apparently continuous string of trademark infringement and related violations" (i.e., allegedly using improperly the "Navaho" and "Navajo" names and marks) began prior to the policy inception date, and thus fell within the Hanover policies' "prior publication" exclusions.

Namer v. Broadcasting Board of Governors, No. 14-31353 (5th Cir., Oct. 26, 2015)
Costa, J. Affirming summary judgment in favor of the Board on its claim of trademark infringement for Namer's use of "Voice of America," and an injunction preventing Namer from further infringing the Board's "Voice of America" mark. Two issues underlying the district court's ruling were raised on appeal: (1) whether the survey relied on by the Board to establish confusion should have been excluded because the wrong population was surveyed; and (2) whether the Board's claim was barred by laches. Noting that it had "repeatedly explained that a survey estimating the likelihood of confusion resulting from an infringing mark should sample 'those purchasers most likely to partake of the alleged infringer's goods or services,'" the Fifth Circuit found that the individuals who would likely visit Namer's website, the accused infringing instrumentality, was "the right sample of potential customers." With regard to laches, the Court upheld the district court's finding that Namer's continued routine use of his website was insufficient to establish undue prejudice, which "requires a showing that the infringer was 'making significant investment decisions or building the bulk of its business based on the reasonable assumption that it had permission to use the plaintiff's marks, and that such investment or capital would be lost if the defendant could no longer use the mark.'" (Quoting Pennzoil-Quaker State Co. v. Miller Oil & Gas Operations, 779 F.3d 290, 296 (5th Cir. 2015).)

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