United States: Copyright And Trademark Case Review: Cheerleading Uniforms, DMCA Users, Graphical Layouts And More


Authors Guild v. Google, Inc., No. 15-849 (Apr. 18, 2016)

The Authors Guild sought review of a Second Circuit decision holding that Google's digital copying of plaintiffs' copyrighted books for its Library project and Google Books project constituted noninfringing fair use. The Supreme Court denied certiorari without comment; Justice Kagan did not participate in the consideration or decision of the petition.


Star Athletica, L.L.C. v. Varsity Brands, Inc., No. 15-866 (May 2, 2016)

The Court granted review of a Sixth Circuit decision holding that Varsity Brands owned a valid copyright interest in chevrons, stripes, and other design features of its cheerleading uniforms. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015). In its decision, the Sixth Circuit adopted a new test for assessing separability of copyrightable features from the utilitarian aspects of useful articles, adding to a circuit split regarding the proper framework for separability analysis. The question before the Court is: "What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?" The Court declined to review petitioner's second question, which asked whether courts should give additional judicial deference to a copyright registration, beyond the statutory deference required by 17 U.S.C. § 410(c).


Second Circuit Seeks Guidance on Pre-1972 Sound Recordings Issue: Flo & Eddie, Inc. v. Sirius XM Radio, Inc., No. 15-1164-cv (2d Cir. Apr. 13, 2016)

Calabresi, J. In a class action brought on behalf of owners of pre-1972 sound recordings, the Second Circuit reserved decision on the district court's denial of summary judgment for the defendant and certified a "significant and unresolved issue of New York law" to the New York Court of Appeals: whether New York common law recognizes a right of public performance for sound recordings, and the "nature and scope" of any such right should one exist. Plaintiff—a California corporation owning the rights to recordings by well-known rock band The Turtles—brought parallel class actions against defendant Sirius in New York, California, and Florida federal courts, alleging that Sirius infringed its common-law copyrights by broadcasting Turtles recordings over an Internet radio service and by making internal copies of the recordings to facilitate those broadcasts. Sirius contended that there was no public performance right for sound recordings under New York common law and that its internal copying was fair use; it also argued that state recognition of a public performance right would violate the dormant Commerce Clause. Noting that New York state courts had not explicitly established a performance right, the Second Circuit found that because the parties failed to present "a clear default rule—one way or the other—with respect to the scope of property rights under New York common law" more generally, guidance from the New York courts was required. Furthermore, the Second Circuit reasoned that addressing Sirius's dormant Commerce Clause argument would require knowledge of what limitations New York law places on public performance rights, if any exist.

Separate-Accrual Statute of Limitations Rule Inapplicable to Ownership Disputes:Consumer Health Information Corp. v. Amylin Pharmaceuticals, Inc., No. 14-3231 (7th Cir. Apr. 15, 2016)

Sykes, J. In a dispute over ownership of copyrights in patient-education materials developed by plaintiff for defendant's use in marketing a diabetes drug, the Seventh Circuit affirmed the district court's dismissal of the suit as untimely. Where plaintiff sued in 2013 seeking both rescission of a 2006 contract assigning the copyright to defendant and damages for infringement, the court held the rescission claim untimely under California's applicable four-year statute of limitations. The court further rejected plaintiff's argument that its copyright infringement claim was timely due to the separate-accrual rule of Petrella v. Metro-Goldwyn Mayer, Inc., 134 S. Ct. 1962 (2014), under which each alleged act of infringement gives rise to a discrete claim for purposes of the Copyright Act's three-year statute of limitations. Noting that Petrella did not address disputes about copyright ownership, the Seventh Circuit followed the Second, Sixth, Ninth, and Tenth Circuits in holding that "when the gravamen of a copyright suit is a question of copyright ownership, the claim accrues when the ownership dispute becomes explicit—that is, when the claimant has notice that his claim of ownership is repudiated or contested." Because plaintiff had notice of defendant's asserted ownership when it executed the assignment contract in 2006, the court held its copyright claim untimely under the three-year statute of limitations.

Employees and Independent Contractors Can Be "Users" for DMCA Safe Harbor: BWP Media USA, Inc. v. Clarity Digital Group, LLC, No. 15-1154 (10th Cir. Apr. 25, 2016)

Kelly, J. In a copyright infringement suit involving unauthorized posting of plaintiff's copyrighted images to defendant's website Examiner.com, the Eleventh Circuit affirmed the district court's summary judgment ruling that defendant was shielded from liability by the safe harbor provision of the Digital Millennium Copyright Act, 17 U.S.C. § 512(c). Where the content on defendant's website was generated by independent contractors called "Examiners," the court held that the Examiners were "users" for purposes of the safe harbor provision's requirement that infringing content be stored "at the direction of a user," § 512(c)(1). In addition to rejecting plaintiff's argument that the Examiners were employees rather than independent contractors, the court further stated that employee status does not automatically disqualify a person as a user under § 512(c)(1), holding that the term "'user' describes a person or entity who avails itself of the service provider's system or network to store material" (internal citation and quotation marks omitted). The Eleventh Circuit reasoned that the relevant question limiting safe-harbor protection "isn't who is the 'user,' but rather, who directed the storage of the infringing content?" Noting that defendant's independent contractor agreement with the Examiners expressly prohibited copyright infringement and that defendant provided the Examiners with licensed photographs, the court held that no reasonable trier of fact could find that defendant had directed the infringement.


Willfulness Required for Disgorgement of Profits: Romag Fasteners, Inc. v. Fossil, Inc., Nos. 2014-1856, 2014-1857 (Fed. Cir. Mar. 31, 2016)

Dyk, J. Applying Second Circuit law, the Federal Circuit affirmed the district court's decision to overturn a jury verdict awarding defendant's profits to the plaintiff, ruling that trademark owners in the Second Circuit must prove willful infringement in order to recover a defendant's profits. The court rejected plaintiff's argument that Second Circuit precedent requiring willful infringement for recovery of profits had been invalidated by a subsequent 1999 amendment to the Lanham Act's provision for monetary remedies. While acknowledging a circuit split on the issue raised by plaintiff, the Federal Circuit noted that the Second Circuit had restated its willfulness requirement in a 2014 decision. The court concluded that, in view of legislative history and the relevant statutory language, the 1999 amendment could not be read to allow a departure from Second Circuit precedent.

Graphical Layout of Test Reports May Not Be Functional: Millennium Laboratories, Inc. v. Ameritox, Ltd., No. 13-56577 (9th Cir. Apr. 4, 2016)

Gould, J. Reversing the district court's grant of summary judgment for defendant, the Ninth Circuit held there was a triable issue as to whether plaintiff's claimed trade dress, the graphical layout of medical test result reports, was functional and therefore ineligible for protection under the Lanham Act. Emphasizing that "even if a comparison of [test] results is functional . . . the precise format used by [a] company asserting trade dress is not necessarily functional," the court concluded that a reasonable jury could find plaintiff's report layout non-functional under the Ninth Circuit test for utilitarian functionality. Furthermore, because plaintiff had presented evidence that its layout was chosen to distinguish its reports from competitors', the layout was not as a matter of law aesthetically functional.

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

In association with
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
Email Address
Company Name
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

Terms & Conditions and Privacy Statement

Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

Use of www.mondaq.com

You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.


Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.


Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.

Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

If you do not want us to provide your name and email address you may opt out by clicking here .

If you do not wish to receive any future announcements of products and services offered by Mondaq by clicking here .

Information Collection and Use

We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

Mondaq News Alerts

In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.


A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

Log Files

We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.


This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

Surveys & Contests

From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.


If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.


This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

Correcting/Updating Personal Information

If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

Notification of Changes

If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

How to contact Mondaq

You can contact us with comments or queries at enquiries@mondaq.com.

If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.