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."
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