United States: Copyright and Trademark Case Review: Sibling Rivalry, Grilled Meat and Attorneys' Fees

Copyright Opinions

Sixth Circuit Upholds Siblings' Termination of Brother's Copyright Assignment:  Brumley v. Albert E. Brumley & Sons, Inc., No. 15-5429 (6th Cir. May 16, 2016)
Sutton, J. In a declaratory judgment action brought by four of the six children of the late gospel composer Albert E. Brumley, the Sixth Circuit upheld the termination of Brumley's copyright assignment of the song "I'll Fly Away" to his son Robert. Noting that the Copyright Act's provisions allowing the descendants of songwriters to terminate the songwriter's assignment of a copyright to another party are "unusual provisions," the Sixth Circuit held that the four children seeking to terminate had complied with the Copyright Act in exercising their right.

Trademark Opinions

Fifth Circuit AdoptsOctane FitnessStandard for Lanham Act Attorneys' Fees:Baker v. DeShong, No. 14-11157 (5th Cir. May 3, 2016)
Stewart, J. Overruling its own prior precedent requiring a defendant to show by clear and convincing evidence that plaintiff's suit was brought in bad faith in order to satisfy the Lanham Act's "exceptional case" provision for awarding attorneys' fees (15 U.S.C. § 1117(a)), the Fifth Circuit adopted the Supreme Court's interpretation of the Patent Act's identically worded attorney-fee provision, and construed an "exceptional case" for purposes of § 1117(a) to be "one where (1) in considering both governing law and the facts of the case, the case stands out from others with respect to the substantive strength of a party's litigating position; or (2) the unsuccessful party has litigated the case in an 'unreasonable manner'" (quoting Octane Fitness, LLC v. Icon Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014)). The Fifth Circuit further adopted the Supreme Court's holding that district courts "must address this issue 'in the case-by-case exercise of their discretion, considering the totality of the circumstances.'"

Rejection of Mark Based on Genericness:In re Cordua Restaurants, Inc., No. 2015-1432 (Fed. Cir. May 13, 2016)
Dyk, J. The Federal Circuit affirmed the TTAB's refusal to register the mark CHURRASCOS for use in connection with "Bar and restaurant services; Catering," on the ground of genericness. The Federal Circuit upheld the Board's use of the two-part Ginn test: (i) "what is the genus of the goods or services at issue?"; and (ii) "is the term sought to be registered or retained on the register understood by the relevant public primarily to refer to that genus of goods or services?" H. Marvin Ginn Corp. v. Int'l Ass'n of Fire Chiefs, Inc., 782 F.2d 987, 990 (Fed. Cir. 1986). Applying the Ginn test, the Federal Circuit upheld the Board's findings that "churrascos" was a generic term in the English language used to refer to grilled meat, and hence to a "key aspect of a class of restaurants because those restaurants are commonly referred to as 'churrasco restaurants.'" Thus, the mark was properly rejected even if the public does not understand the term to refer to the broad genus of restaurant services as a whole—it is generic if the relevant public understands the term to refer to a sub-group or type of the claimed genus of goods or services. The court was careful to note that the term "churrascos" is not necessarily generic as to any and all restaurant services: "Had another applicant applied for registration of the mark CHURRASCOS in connection . . . with . . . vegetarian or sushi restaurants—the result could well have been different."

Acquiescence Defense Too Fact-Intensive to Support Rule 12(b)(6) Dismissal:Hyson USA, Inc. v. Hyson 2U, Ltd., No. 14-3261 (7th Cir. May 16, 2016)
Sykes, J. In a trademark dispute between two food-distribution companies, the Seventh Circuit reversed the district court's dismissal of plaintiff's complaint for failure to state a claim, finding that "an equitable defense like acquiescence is not ordinarily susceptible to resolution at the pleading stage," due to the fact-intensive analysis required to establish the defense.

Certification Mark May Be Infringed By Certified Individual: International Information Systems Security Certification Consortium, Inc. v. Security University, LLC, No. 14-3456-cv (2d Cir. May 18, 2016)
Pooler, J. In a suit alleging trademark infringement of a certification mark, false advertising, and false designation of origin, the Second Circuit vacated the district court's grant of summary judgment based on a nominative fair use defense. The Second Circuit held that the district court erred in (i) considering only source confusion rather than consumer confusion more broadly, as well as in (ii) failing to consider that a certification mark may be infringed even by a party that has satisfied the requirements for certification. Where defendant's advertisements referred to one of its certified instructors as "Master CISSP" and "CISSP Master," the Second Circuit noted that "[e]ven though neither [plaintiff] nor [defendant] offers a 'Master CISSP' or 'CISSP Master' certification, customers [may] be led to believe [plaintiff] has introduced a new line of certifications" (internal quotation marks omitted). In giving guidance to the district court on remand, the Second Circuit explicitly rejected nominative fair use as an affirmative defense, and held that instead, district courts are to use the nominative fair use factors outlined in the Ninth and Third Circuit case law, and apply those alongside the widely-accepted factors for assessing likelihood of confusion set forth in Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961).

Ninth Circuit Declines to Apply  Octane Fitnessin Trademark Case:  SunEarth, Inc. v. Sun Earth Solar Power Co., Ltd., Nos. 13-17622, 15-16096 (9th Cir. May 24, 2016) (non-precedential)
Memorandum Opinion. In an unpublished opinion, the Ninth Circuit upheld the district court's grant of an injunction permitting limited use of defendant's trade name—which infringed plaintiff's trademark—as an identifier on goods: "When fashioning an injunction to remedy trademark infringement, the district court has the discretion to permit non-misleading uses of a trade name." The panel further upheld the district court's determination that the case was not an exceptional one warranting an award of attorneys' fees, rejecting plaintiff's invitation to analyze the case under Octane Fitness. Instead, the panel stated that it was "bound by a post-Octane Fitness panel's decision applying our prior definition of exceptional," which required "malicious, fraudulent, deliberate, or willful" infringement (citing Fifty-Six Hope Rd. Music, Ltd. v. A.V.E.L.A., Inc., 778 F.3d 1059, 1078 (9th Cir. 2015)). However, the court also expressed "little doubt that this case is unexceptional even under Octane Fitness's totality of the circumstances test."

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.