By: Mickey Tomlinson

This blog post addresses how important consumer surveys will be for “generic.com” owners because of the United States Supreme Court’s recent Booking.com BV v. USPTO decision. The Supreme Court held there is not a per se rule that automatically bars a “generic.com” from being trademarked, rather the consumer perception of the mark determines its eligibility for trademark registration. Booking.com presented evidence consumer surveys illustrating the fact that consumers associate “Booking.com” as a specific company that offers online hotel booking and accommodation services rather than as a class of goods or services. While the Supreme Court found Booking.com’s evidence persuasive, the dissent did not; Justice Breyer argued “generic.com” cannot receive trademark registration because (1) it violates traditional trademark law and (2) consumer surveys are not reliable. Ultimately, the Booking.com BV v. USPTO decision indicates consumer surveys are invaluable and will likely be offered early as evidence in the trademark registration process for similar “generic.com” marks.

By: Jake Shapiro

Artists have recently discussed the consequences of not owning their masters, which results in a lack of control of the music they created. This is the result of certain provisions in a recording agreement, and it is unlikely that these provisions go away despite efforts by artists to negotiate more favorable deals. This type of provision played a large role in a lawsuit where 50 Cent sued Rick Ross for Rick Ross’s sampling of a portion of 50 Cent’s “In Da Club” hit. Because 50 Cent’s recording agreement with Shady/Aftermath records left him without any copyright ownership in his masters, 50 Cent had to sue based on a state right-of-publicity theory since the record label had the exclusive right to enforce or not enforce the copyright ownership. The U.S. Court of Appeals for the Second Circuit affirmed the district court’s grant of summary judgment for Rick Ross under the doctrine of implied and express preemption as federal copyright law preempted 50 Cent’s state right-of-publicity claim in this case. I use this result to show provisions in a recording agreement can impact litigation. I then explain how artists should negotiate more favorable provisions to give them the right to sue when their record label decided to tolerate infringement and not take legal action.

By: Audrey Harris

Illegal streaming currently causes an estimated $29.2 billion annual loss to the United States’ economy. This economic loss to the economy prompted the passage of the Protecting Lawful Streaming Act (PLSA) on December 27, 2020. Prior to the passage of this law, the public performance of copyrighted material resulted in only misdemeanor liability, while the reproduction of copyrighted material resulted in felony liability, leading to what was known as the “streaming loophole.” The Protecting Lawful Streaming Act aims to close this streaming loophole by mandating that the public performance of copyrighted material will result in felony liability. This blog posting explores the economic implications that gave rise to the new law and the prior failed attempts to close the streaming loophole, while assessing potential repercussions of PLSA on the growing industry of DJs providing virtual concerts.

By: Jace D. Williams

The United States Supreme Court has never directly confronted whether patents are protected by the Fifth Amendment Takings Clause. Currently, the Environmental Protection Agency (EPA) and the National Highway Traffic Safety Administration (NHTSA) are working together on a proposal with the automotive industry. This proposal is to reach the EPA’s emission standards for increased fuel efficiency and reduced greenhouse gases. Could the EPA use compulsory licensing under the Clean Air Act to accelerate the diffusion of patented technology to the rest of the automotive industry to satisfy the EPA’s emissions goals?
This blog argues that patents are, and have historically been, private property protected by the Takings Clause. Twentieth-century law created a distinction between land and patents that hinges on their tangible and intangible nature. This is incorrect. Distinguishing between property’s tangible or intangible nature is immaterial, but distinguishing between the rights and benefits conferred by Congress creates a stronger standard.

By: Charles Wells

Video games are a massive and rapidly developing industry with novel legal challenges are developing alongside those advancements. A key challenge in this developing area is the practice of “modding,” a process by which people other than the original video game developers access the software or hardware comprising a game and modify its contents. The unique technological character of modding stretches the conventional application of important intellectual property doctrines such as fair use and the treatment of derivative works. The current state of the law heavily favors developers and wealthy third parties, stifling the creative efforts of individual modders.

By: Hannah Hall

In a recent Ninth Circuit case, the court cited the need to protect the plaintiff’s right to free speech. The defendant promptly petitioned for certiorari, calling the court’s protective move “egregiously misguided.” What kind of newsworthy controversy would spark such weighty concerns and yet also garner such strong criticism? Dog toys, of course. In this post, the JIPL Blog takes a sniff at VIP Products, LLC v. Jack Daniel’s Properties, Inc., why trademark law allows parodic products to proliferate, and whether the Ninth Circuit’s decision really changes the law on parody.

By: Sloane Kyrazis

In TCL Comm’n Tech. Holdings v. Telefonaktiebolaget LM Ericsson, 943 F.3d 1360 (Fed. Cir. 2019) (“Ericsson”), the Federal Circuit held that Ericsson’s Seventh Amendment rights guaranteed a jury trial in its suit against TCL involving the royalty dispute between the two parties related to the fair, reasonable, and non-discriminatory (“FRAND”) licensing of Ericsson’s patent portfolio. The case was closely watched because many thought it was finally the time when the Federal Circuit, and possibly the Supreme Court, would provide some guidance over what constitutes a FRAND licensing scheme for standard essential patents. Instead of providing much needed guidance, the Federal Circuit reversed the district court decision below, holding that the district judge’s announcement of a FRAND royalty in a bench trial violated Ericsson’s Seventh Amendment right to a jury trial. The Supreme Court denied certiorari on appeal. This blog post discusses why such a denial was well-founded.

By: Jake Knanishu

Advances in advertising delivery and targeting technology pose a new, unique, and rapidly developing threat to individual privacy. Now, you can safely assume any advertisement you see on television or on a webpage has in some way been targeted at you—and so can anyone else who happens to see the ad. The finer points of this interaction among an advertiser, you, and a secondary audience prevent this invasion of privacy from being actionable under traditional common-law theories. The novelty, scope, and probabilistic nature of the harm suggest that regulation should be handled by an administrative agency, but which one? And how? Although not quite an “unfair or deceptive act or practice” in the familiar sense, this seems to be a modern twist on exactly the kind of thing the FTC was commissioned to police. Regardless of whose responsibility it becomes, something must be done before this practice gets too far out of hand.

By: Kristen Van Dyke

Halloween stores sell costumes that clearly mimic the appearance of well-known fictional characters. Profiting from consumers’ association of these costumes with the fictional characters they resemble potentially infringes trademark rights. So why haven’t these Halloween stores been sued yet? This blog explores how the uncertainty of fictional character trademark law and additional non-legal considerations may be tipping the scales away from litigation.

By: Taylor Pernini

The Supreme Court recently received a petition for a writ of cert from the Moodsters Company, which sued Disney for copyright infringement over the emotional characters from the movie “Inside Out”. The Supreme Court has never ruled on character copyright, making the jurisprudence a mess of conflicting circuit tests. The Moodsters lost at the Ninth Circuit under the stringent Towle test and now allege that none of the current circuit tests fit the key purposes of copyright. They might be right—the Supreme Court’s focus should be on uniqueness and originality—but it is still unlikely that they win under that standard. This blog will address the differing circuit tests, why each one suffers weaknesses in copyright law, and what the appropriate standard should be going forward.