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Supreme Court to Resolve Split Regarding Copyright Registration Requirement

Section 411(a) of the U.S. Copyright Act provides that an action for copyright infringement may be brought after “preregistration or registration of the copyright claim has been made in accordance with this title” or “where the deposit, application, and fee required for registration have been delivered to the Copyright Office in proper form and registration has been refused.”  The courts are split as to whether a copyright claim may be brought once the copyright application, deposit, and fee is delivered to the Copyright Office or whether the plaintiff must wait until the Copyright Office responds to the application. The Fifth and Ninth Circuits have held the former, under the “application approach,” while the Tenth and Eleventh Circuits have held the latter, under the “registration approach.”  The First, Second, Third, Fourth, Seventh, and D.C. Circuits have all acknowledged the divide, but refused to decide one way.  The Supreme Court recently granted certiorari to an Eleventh Circuit case, Fourth Estate Public Benefit Corporation v. Wall-Street.com, to address this question.

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Spongebob Squarepants’ Fictional Restaurant Granted Real Trademark Rights

One of the bedrock principles of trademark law is that trademark rights stem from actual use of the trademark in commerce.  In recent years, however, courts have been finding that imaginary use of the trademark in fictional works can suffice to create real right in a nonfictional setting.

The latest example of this phenomenon took place in Viacom International Inc. v. IJR Capital Investments, where the Fifth Circuit affirmed a lower court decision granting trademark protection to the Krusty Krab, a fictional restaurant in the television series SpongeBob SquarePants.  Viacom sued IJR Capital Investment for unfair competition and trademark infringement because IJR had been trying to open up seafood restaurants in California and Texas under the Krusty Krab name since 2014.  IJR Capital claimed that they did not base their name on the fictional restaurant, but rather the crusted glaze applied to cooked seafood.  IJR noted that there was no Krusty Krab trademark already registered with the United States Patent and Trademark Office.

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The Medium Rules: Long-Term Trends In Media and Technology – Episode 2 – Evan Kraut & Guy Poreh

Podcast Episode 2 Now Live!

Alignment: Accelerating Funded Startups and the Agency of the Future, with guests Evan Kraut & Guy Poreh.

With the proliferation of funded e-commerce startups focused on the direct-to-consumer, how is brand created and how can startups adapt to the changing tastes and trends to reach consumers and drive sales? Further, what are some models for agencies to reinvent themselves to not only survive, but to thrive as the media landscape evolves? How can agencies be better aligned with their clients and drive success both for the client and the agency stakeholders?

The Medium Rules host, Alan Baldachin, is joined in the HBA Podcast Studio in New York City by Evan Kraut, who runs Grey Adventures for Grey Group, and Guy Poreh, founder and CEO of Playground. Grey Adventures is best characterized as Grey’s “skunk works” team, focused on developing innovative products and services that fuel new revenue streams for Grey’s brand clients, its partners and the agency itself. And Playground is a “record label” for startups which takes an “immersive” approach to partnering with funded startups on sales and marketing to “accelerate fame”. In this episode of The Medium Rules Alan, Evan and Guy cover such ground as the success story behind Quip, the intersection of frontier technology and the traditional agency model, branding issues related to legal cannabis businesses, and, finally, some thoughts about what the agency of the future might look like.

Show resources
Guy:
https://www.linkedin.com/in/guyporeh
https://www.thisisourplayground.com/
https://www.porehomg.com/
https://twitter.com/guypo

Evan:
https://www.linkedin.com/in/ekraut
https://twitter.com/evanmk

 

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The Medium Rules: Long-Term Trends in Media and Technology

Conversations with founders, investors and thought leaders in the orbit of HBA’s tech and media ecosystem and beyond. How are media and technology companies conceived, how do they scale, and how do they interact with the broader social, economic and political culture we live in today and that we will inhabit in the future. This is a show about innovation and its effects on our lives, hosted by HBA’s managing partner and head of media and technology, Alan Baldachin.

Listen now on iTunes.

ADA Website Accessibility Litigation Presents High Risk to Retailers

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Adam Michaels | amichaels@hballp.com

Summary

The number of US lawsuits filed by visually impaired and other disabled people targeting business websites for violating the Americans with Disabilities Act (ADA) has reached fever pitch. Recent court rulings have emboldened plaintiffs’ attorneys and a significant uptick in litigation is expected in 2018. New York has proven particularly welcoming to these cases, with nearly 300 ADA website lawsuits targeting retail, fashion, and financial institutions filed in New York’s federal courts in the first quarter of 2018.

Despite this explosion of activity, many businesses are still unaware of the legal risk and continue to operate websites that fall short of accepted accessibility standards, courting ADA claims. Although monetary damages are unavailable under the ADA, these cases are not easily dismissed and the defense costs can be significant. To help minimize the lawsuit risk, businesses should consider proactive measures to ensure their websites meet the current accessibility standard.

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Important Trademark Litigation Victory For HBA Client Affirmed on Appeal

Essentially concluding over five years of litigation, the Second Circuit Court of Appeals on November 2, 2017 upheld the trial court’s determination that the sale of Clipps bag closures by Schutte Bagclosures Inc. (“Schutte”) did not infringe any trademark rights Kwik Lok Corporation (“Kwik Lok”). The court further upheld the lower court’s determination that Kwik Lok’s claimed trademark rights in the shape of bag closures were invalid because the shape was “functional” and that Kwik Lok’s trademark registration for that shape should be cancelled.
The same parties previously faced each other in court in the Netherlands, where the judge also ruled that Kwik Lok did not have valid trademark rights in their bag closures.

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NYU Stern and the CFDA

NYU’s Stern School of Business offers it’s MBA students the opportunity to work with emerging fashion companies through its’ CFDA Masters Workshop. Stern students are paired with designers to work on a variety of financial, marketing and other business-related projects.

Check out a short video on the program here featuring partner Douglas Hand, who is also the professor of the Fashion Law & Business course offered at both NYU School of Law & NYU Stern School of Business.

 

Lululemon Sues Under Armour For Design Patent Infringement Based on Sport Bra Strap Design

On July 7th, athletic apparel company Lululemon Athletica filed suit against competitor Under Armour, alleging that three models of Under Armour sport bras infringed on design patents held by Lululemon as well as Lululemon’s trade dress.  Specifically, Lululemon asserted that the interwoven strap design on Under Armour’s products closely resembled designs protected by patents Lululemon filed in 2014 and 2016, as well as a design first sold by Lululemon in 2011 as part of its Energy Bra model.

Design patents typically do not offer wide protection for fashion products. While relatively cheap to obtain compared to utility patents, design patents typically still cost several thousand dollars to register.  Furthermore, design patents can only be obtained if an item has been on sale for less than a year and fashion designers often do not want to commit to a registration until and unless a design demonstrates that it will be a core product line going forward.  Trade dress, on the other hand, does not require any formal filing with the United States Patent and Trademark Office (USPTO). However, those seeking trade dress protection must also prove that the design has no functional component, as well as prove that the item conveys a distinctive secondary meaning to consumers that would be jeopardized by the sale of imitations.

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Designers Are Using Social Media to Fight Knockoffs

The fashion industry is inundated with allegations of copyright violations and copied designs, often occurring when a small designer or brand claims that a large retailer or brand copies its designs. Traditionally, disputes over copied designs have been resolved through the legal system. Increasingly, however, social media and in particular Instagram has become a popular medium for small designers to fight back against larger companies that they believe copied their designs. With the support of passionate followers, these designers take to Instagram to spot and shame duplicates quickly, frequently resulting in the alleged offenders ceasing sales of the design in question.

Instagram has emerged as a channel to fight back against duplicate for several reasons. As HBA lawyer and NYU fashion law professor Douglas Hand stated in the recent article Designers Take Copyright Infringement Into Their Own Hands in the Business of Fashion, “copyright protection for designs, even post Star Athletica [v. Varsity Brands], is relatively thin when compared to Europe and other jurisdictions.” Therefore, the U.S. legal system may be an insufficient means for designers to successfully protect their designs. Additionally, smaller brands and up-and-coming designers often have neither the financial resources nor the time to litigate. Litigation is also undesirable because these small brands and designers frequently just want the offending designs removed from market and do not want a prolonged court battle.

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Supreme Court Strikes Down Prohibition on “Offensive” Trademark Registration

On June 19, the Supreme Court ruled in Matal v. Tam that the Patent and Trademark Office (PTO) could no longer deny trademark registrations for “marks that disparage the members of a racial or ethnic group.” Before this decision, the PTO used the Lanham Act’s Disparagement Clause as its legal basis for prohibiting protection for offensive names. The Court held, however, that the Disparagement Clause violated the First Amendment, reasoning that “Speech may not be banned on the ground that it expresses ideas that offend.”

The Court’s decision has important ramifications for the NFL’s Washington Redskins and other sports teams with names and mascots that many consider to be offensive. The “Redskins” was considered racially offensive on several occasions by the PTO and was held to be ineligible for federal trademark registration. The Supreme Court’s decision allows for the Redskins name to receive the benefits of federal registration.

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