Notoriously litigious, Louis Vuitton Malletier (“Louis Vuitton”) aggressively polices unauthorized use of its famous marks, logos, and protected designs, especially in the digital age when selling counterfeit goods is as easy as setting up a website.
In 2012, BGK Trademark Holdings, LLC applied for registration of the trademark BLUE IVY CARTER with the consent of Blue Ivy, daughter of Beyoncé Giselle Knowles-Carter and Shawn Corey Carter (Jay-Z), but was met with opposition from the owner of the mark BLUE IVY for event planning. In dismissing the opposition, the Trademark Trial and Appeals Board (TTAB) rejected the Opposer’s claims of likelihood of confusion, lack of bona fide intent to use the mark in commerce, and fraud. Morales v. BGK Trademark Holdings LLC, Opposition No. 91234467 (T.T.A.B. 2020). Read More about Beyoncé Fends off Challenge to Daughter’s “Blue Ivy Carter” Mark From Owner of Event Planning “Blue Ivy” Mark
Love him or hate him, Donald Trump has something a lot of people want – a household name. That is why some try to capitalize on the Trump name by incorporating it into a slogan or saying in an attempt to obtain a federal trademark registration. The Trademark Trial and Appeal Board (“Board”), however, has rejected such attempts, including a recent application for “Trump Too Small” for various forms of shirts that criticized President Donald Trump, obviously without the President’s approval. In re Steve Elster, Serial No. 87749230 (T.T.A.B. July 2, 2020). The Board, for the second time, ruled that proposed trademarks incorporating the name “Trump” were not federally registrable.
Read More about Applicant Comes Up Short in Rejected “Trump Too Small” Trademark Application
Recently, the Eastern District of Virginia upheld a music piracy jury verdict against the internet service provider Cox Communications. See Sony Music Ent. v. Cox Commc’ns, Case No. 1:18-cv-950-LO-JFA, 2020 U.S. Dist. LEXIS 105071 (E.D. Va. June 2, 2020). The jury returned a $1 billion damage award against Cox Communications who was accused of knowingly allowing subscribers to share and download infringing songs via peer-to-peer sharing platforms such as BitTorrent. Holding an internet service provider liable for the infringing acts of its users, this case sets the stage for a closely watched appeal.
Anheuser-Busch and Molson Coors produce some of the best-selling light beers in the United States — Bud Light, and Miller Lite and Coors Light, respectively — and regularly attack each other with witty ad campaigns. During Super Bowl LIII, Anheuser-Busch unveiled an advertisement campaign focused on the idea that Bud Light is made using rice as opposed to corn syrup. The Bud Light advertisements called attention to Miller Lite and Coors Light’s use of corn syrup as a source of sugar for the fermentation process. In response, Molson Coors advertised that its beer tastes better because of the corn syrup, which is not the same as high-fructose corn syrup used in other consumer products. Molson Coors also filed a lawsuit arguing that Anheuser-Busch violated Section 43 of the Lanham Act “by implying that a product made from corn syrup also contains corn syrup.”
More than 250,000 Humvees have been built since the 1980s, making them a distinct feature of the nation’s military history over the past quarter-century. As a result, the vehicle has become a recognizable staple in military-themed movies, television shows, newscasts, and video games. According to a group of curious law professors, the Humvee has been featured in over 1,000 movies and shows. But the maker of Humvees thought the inclusion of its military vehicles in the wildly successful Call of Duty video games infringed on its trademark rights. The Southern District of New York disagreed, however, and reaffirmed that video games, such as movies and television shows, can feature real-life trademarks, such as Humvees, without infringing on the owner’s trademark. See AM Gen. LLC v. Activision Blizzard, Inc., 17 Civ. 8644 (GBD), 2020 U.S. Dist. LEXIS 57121 (S.D.N.Y. Mar. 31, 2020). Citing the First Amendment, the District Court determined the game developer could not be held liable for trademark infringement for featuring Humvees in its Call of Duty video games. Dismissing the lawsuit, the court found the video game maker had the right to use a real-life well-known military vehicle in an expressive work focused on realistically depicting modern combat and warfare.
After the debut of hit show Empire, record label Empire Distribution asserted trademark infringement counterclaims against Twentieth Century Fox Television, who sought a declaratory judgment that its television show and associated music releases did not violate Empire Distribution’s trademark rights. In Twentieth Century Fox TV v. Empire Distribution, Inc., 875 F.3d 1192 (9th Cir. 2017), the Ninth Circuit affirmed the district court’s finding that the First Amendment protected Fox’s use of the name “Empire” for an expressive, creative work and ancillary works. In doing so, the appellate panel reaffirmed First Amendment protection for use of marks in creative works where the use of the mark bears some artistic relevance to the underlying work and does not explicitly mislead consumers.
Read More about Battle of the Empires: Permissive Trademark Infringement in Creative Works
Digital piracy on peer-to-peer networks can have severe financial consequences for copyright holders. As one member of Congress put it:
Under U.S. law, stealing intellectual property is just that—stealing. It hurts artists, the music industry, the movie industry, and others involved in creative work. And it is unfortunate that the software being used—called “file sharing,” as if it were simply enabling friends to share recipes, is helping create a generation of Americans who don’t see the harm. [1]
While some bullheaded District Court judges have stopped Strike 3 in its tracks by denying its request for early discovery, most appellate courts to have considered the issue find that Strike 3’s allegations of copyright ownership and illegal downloading of their works by an identifiable IP address are enough to permit Strike 3 to discover the IP address owner’s name and address.
The D.C. Circuit recently revived one of thousands of copyright lawsuits filed by an adult film studio, Strike 3 Holdings, overturning the lower District Court Judge who declined to allow Strike 3 to engage in early discovery sharply criticizing the film studio plaintiff for using the courts as an ATM. See Strike 3 Holdings, LLC v. Doe, No. 18-7188 (D.C. Cir. 2020). The three-judge appellate panel, however, ruled that the judge erred in refusing to grant Strike 3’s request to subpoena an internet service provider in order to identify the name and address of a John Doe subscriber of an IP address allegedly used to illegally download Strike 3’s films using BitTorrent.
