For years, copyright owners have faced uncertainty as to when they could file a copyright infringement claim. Title 17 U.S.C. § 411(a) states that “no civil action for infringement of the copyright in any United States work shall be instituted until … registration of the copyright claim has been made in accordance with this title.” Courts had been split as to whether this required an issued registration before suit (the “registration approach”), or whether just the act of filing a copyright application satisfied this requirement (the “application approach”).

Last week, the U.S. Supreme Court resolved that question, holding that “registration” occurs, and a copyright claimant may commence an infringement suit, when the Copyright Office registers a copyright. This can mean long delays before filing, as the current administrative backlog at the Copyright Office has resulted in processing times of seven months on average. It also has encouraged many current litigants to withdraw pending lawsuits that had been based on the application approach precedent – including for example the wave of copyright infringement lawsuits filed against the video games Fortnite and NBA2K over dances included in those games.

The most important takeaway from this decision is for copyright owners to register their works early. Expedited application processing is still available through the “special handling” process, but only in certain situations and at a cost of $800 per claim. The Supreme Court also made a point to highlight that the “registration approach” would not deprive owners of substantive rights, because they can still recover damages for infringement that occurred both before and after registration. Early registration can avoid both of these issues and ensure a copyright owner’s ability to promptly bring litigation when the need arises.

The U.S. Copyright Act permits, but does not require, registration of copyright-protected works with the U.S. Copyright Office.  Nevertheless, under the U.S. Copyright Act, registration by the Copyright Office (or ruling by the Copyright Office refusing to register) is, among other things, a prerequisite to bringing a copyright infringement action.  The federal courts have long disagreed about whether an application for registration satisfies the rule.  In other words, does the copyright owner have to wait for the Copyright Office to rule on the registration application before suing?

The United States Supreme Court has now agreed to hear a case that could resolve this long-disputed issue.  Fourth Estate Public Benefit Corporation v., LLC., Case No. 17-571.  The appeal is from the Eleventh Circuit Court of Appeals, which held – recognizing the disagreement among the courts – that a registration application is insufficient to sue.

Whichever way the Supreme Court rules, early registration has distinct advantages for the copyright owner.  Advantages includes easier proofs at trial on liability and damages and the possibility of collecting attorneys’ fees for registration applications filed before infringement begins or, for published works, within three months of publication.

One of the overlooked issues of Britain’s decision to leave the European Union is the implications of “Brexit” on the rights afforded to individuals and entities holding European Union trademark and design registrations (a/k/a “EU Community Registrations”).  The EU Community Registration process has become favored by many trademark owners across the globe for a number of reasons, the most obvious being the ability to obtain protection in all EU member states with a single application (and the corresponding reduction in fees and costs).  It is expected that legislation will be passed to protect those who have obtained UK trademark protection by virtue of their EU Community Registration, although the logistics of any transfer from the European Union Intellectual Property Office to the UK Intellectual Property Office is yet to be determined (for example, will the registration automatically transfer, will a streamlined application process be necessary, and how will priority be determined).  With the UK’s formal departure from the EU expected to take some time, there should be no immediate concern, although trademark owners should continue to follow the issue closely to ensure continuity of protection through this transition.

On July 15, 2015, we discussed the decision of the United States District Court for the Eastern District of Virginia in Pro-Football, Inc. v. Amanda Blackhorse, et al.  In Pro-Football, the District Court affirmed a decision by the United States Patent and Trademark Office directing the cancellation of six “REDSKINS” trademark registrations owned by the Washington Redskins NFL Team.  Although that decision remains on appeal to the Fourth Circuit Court of Appeals, a split en banc Federal Circuit Court of Appeals decision issued earlier today may foreshadow a potential victory for the Washington Redskins.

Today’s decision in In re: Simon Shiao Tam, arose in a separate lawsuit, filed by members of a band called The Slants, who sought trademark registration of the band’s name.  The registration had been refused by the United Stated Patent and Trademark Office (“USPTO”) pursuant to Section 2(a) on the Lanham Act on the ground that the mark was disparaging to Asian Americans.

In reversing that decision, the Federal Circuit struck down Section 2(a) of the Lanham Act, concluding that Section 2(a), first signed into law in 1946, violates the First Amendment of the U.S. Constitution.  Writing for the majority, Chief Judge Kimberly Moore acknowledged that “invalidating this provision may lead to the wider registration of marks that offend vulnerable communities,” but nevertheless concluded “[w]hatever our personal feelings about the mark at issue here, or other disparaging marks, the First Amendment forbids government regulators to deny registration because they find the speech likely to offend others.”

The decision will almost certainly have broad implications, most notably because the District Court opinion in the Washington Redskins case was predicated on the USPTO’s authority under Section 2(a) of the Lanham Act to refuse registration to marks that may be disparaging or offensive.  To the extent the Fourth Circuit is persuaded by the Federal Circuit’s decision, or if the Supreme Court affirms the Federal Circuit’s reasoning, it could spell victory for the Washington Football Team.

Today’s 111-page decision in In re: Simon Shiao Tam was not without dissent.  In one of two dissenting opinions, U.S. Circuit Judge Alan D. Lourie wrote “one wonders why a statute that dates back nearly 70 years — one that has been continuously applied — is suddenly unconstitutional as violating the First Amendment.  Is there no such thing as settled law, normally referred to as stare decisis?”  If there is one thing that is certain, it’s that the Washington Redskins will be anxiously awaiting further answers to that question.

The United States Court of Appeals for the Federal Circuit’s decision in the “SLANTS” case is In Re Simon Shiao Tam, Case No. 2014-1203.

The United States District Court’s decision in the “REDSKINS” case is Pro-Football, Inc. v. Amanda Blackhorse, et al., 1:14-cv-01043-GBL-IDD

If I want to start using a trademark similar to someone else’s, does it matter whether other people are using similar marks? Last week, in Jack Wolfskin Ausrustung Fur Draussen Gmbh & Company KGAA v. New Millennium Sports, S.L.U., the United States Court of Appeals for the Federal Circuit said “yes.”

In Jack Wolfskin, Jack Wolfskin applied to the United States Patent and Trademark Office to register a paw print as a trademark for clothing, footwear, and accessories. New Millennium Sports, S.L.U. opposed the application on the ground that it was likely to be confused with its previously registered mark for clothing, a logo that included a similar paw print and the word “KELME.”

“Likelihood of confusion” is the touchstone of trademark infringement, and a likelihood of confusion between a newly applied-for trademark registration and an already-registered mark requires rejection of the application. The Trademark Trial and Appeal Board (the section of the United States Patent and Trademark Office that handles such disputes) rejected Jack Wolfskin’s application, finding a likelihood of confusion between Jack Wolfskin’s paw print logo and New Millennium’s previously-registered logo.

The Court of Appeals disagreed and held that Jack Wolfskin’s paw print logo should register. The Court of Appeals found no likelihood of confusion for two reasons. First, the Court of Appeals held that the inclusion of the word “KELME” in New Millennium’s registered mark undercut any likelihood of confusion.

Moreover, the Court of Appeals held that Jack Wolfskin’s extensive evidence of other registrations and uses of paw print logos showed that New Millennium’s mark was weak. “Weak” trademarks receive relatively narrow protection under the trademark law. Here, because the evidence showed numerous other paw print registrations and uses, the Court of Appeals found that consumers would expect that many different companies include paw prints in their trademarks and would not assume that all products paw print logos come from one source. The Court of Appeals therefore held that no likelihood of confusion existed and that Jack Wolfskin was entitled to register its paw print mark.

The decision has important implications for the selection and enforcement of trademarks – and the defense of infringement claims. It emphasizes that registrations and uses of similar marks by third parties can dramatically undercut claims of likely confusion.

Here is link to the Federal Circuit’s decision: