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
Broadcast Music, Inc. v. Crocodile Rock
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"
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).)
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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