Amicus Brief in Star Athletica v Varsity Brands re Copyright Separability Test

From 43(b)log: Arguing that conceptual separability is simply a coda to physical separability, dealing with situations in which physical separation couldn’t be accomplished without destroying the useful article–regardless, there must be something other than the design of the article itself that can be identified as a protectable work. The existence of design patent also sheds important light on the limited role Congress intended copyright to play for useful articles.


Text of IRS Declaration ISO Order to Enforce Summons Covering Facebook Docs re IP Transfer

The IRS is seeking a court order to obtain documents from Facebook in connection with Facebook’s 2010 taxes. Facebook transferred certain rights in IP to a related company in Ireland. The standard for such transfers is discussed in paragraph 20 of the declaration below.

Bloomberg coverage here.


Bomhard IP on Brexit

short version: nothing to do immediately regarding existing EUTMs; might want to consider back-up UK filing for new EU TMs.


S Ct: Text of Kirtsaeng v John Wiley on Awarding Attorney’s Fees

Footnote two is a contender for funniest Supreme Court footnote this term.

Justia’s Summary:

Kirtsaeng bought low-cost foreign edition textbooks in Thailand and resold them to students in the U.S. In 2013 the Supreme Court held that Kirtsaeng could invoke the Copyright Act’s “first-sale doctrine,” 17 U.S.C. 109(a), as a defense to the publisher’s copyright infringement claim. Kirtsaeng then sought more than $2 million in attorney’s fees from the publisher under the Act’s fee-shifting provision. The Second Circuit affirmed denial of Kirtsaeng’s application, reasoning that Wiley had taken reasonable positions during litigation. A unanimous Supreme Court vacated. When deciding whether to award attorney’s fees under 17 U.S.C. 505, a court should give substantial weight to the objective reasonableness of the losing party’s position, while still taking into account all other relevant circumstances. Precedent has identified several non-exclusive​ factors for courts to consider, e.g., frivolousness, motivation, objective unreasonableness, and the need in particular circumstances to advance considerations of compensation and deterrence. Putting substantial weight on the reasonableness of a losing party’s position is consistent with the objectives of the Copyright Act, but courts must take into account a range of considerations beyond the reasonableness of litigating positions. Because the district court “may not have understood the full scope of its discretion,” the Court remanded for consideration of other relevant factors.


SDNY finds closure on functionality on closure and parties can now move on


43Blog commentary here.


2d Circuit: Jaw Droppingly New Dawn Donuts Analysis of Injunction – Guthrie v ContextMedia


context health

Plaintiff Guthrie operates medical facilities, Defendant ContextMedia provides a digital network for advertiser (read: pharma)-sponsored medical information displayed on screens in doctors’ offices. Plaintiff operates in the Twin Tiers region, which is Southern New York and Northern Pennsylvania. Defendant operates in all 50 states. At the District Court level, Defendant was enjoined from doing business in the Twin Tiers region, but could continue to use its mark both outside the region and in its online activities (website and social media). Plaintiff appealed.

Second Circuit: The logos are ‘jaw droppingly similar.’ Droppingly is a word – I looked it up. No evidence that similarity between the logos was more than coincidental. Plaintiff demonstrated a probability of confusion.

However: the lower court performed the Dawn Donuts analysis incorrectly. The Dawn Donuts doctrine provides that a plainitff cannot obtain injunctive relief beyond the area where it has proven a likelihood of confusion (which can create strange fact patterns involving slow-to-expand regional plaintiffs and ‘remote junior users’).

Here, while Plaintiff operated facilities only within the area of the injunction, it demonstrated the present possibility of harm outside the region. For example, Plaintiff promoted its marks both to potentials donors and to potential hires nationwide. Plaintiff takes pains to signify its ‘impartiality’ which could be damaged if donors perceived an erroneous association with a pharma-sponsored content network. Furthermore – unlike the original Dawn Donuts plaintiff, this defendant did not establish that it was highly unlikely that Plaintiff would expand beyond its present region any time soon.

Case remanded to the district court to tailor a proper injunction taking these facts into account.

Bonus Discussion: Similarity analysis when marks in question are compound marks consisting of [similar logo] plus [differing word marks].


How Do You Think This One Turned Out?


context health

Plaintiff Guthrie operates medical facilities, Defendant Context Media provides a digital network for advertiser-sponsored medical information displayed on screens in doctors’ offices.


SDNY: NESPRESSO compatible capsules infringing



Fashion Law by Jessica Cardon of Camuto Group

A very good comprehensive intro to copyright and trademark protection of fashion, written by Jessica Elliot of the Camuto Group, for INTA’s Industry Perspectives papers


Berian Doesn’t Want To Be In Nike’s Shoes But He May Have To Be

Nike had an endorsement contract with Boris Berian, a middle-distance track star who is expected to make the US Olympic team. Nike had a right of first refusal with regard to new agreements. Berian presented an offer from rival footwear manufacturer, New Balance. There is a dispute as to whether Nike matched New Balance’s offer, and therefore whether the Nike contract is still in effect.

There is also a dispute as to whether Berian is presently endorsing New Balance. He alleges that he is not under contract with New Balance now, but Berian has been wearing New Balance footwear at recent events. He allegedly has been promoting NEW BALANCE via his social media accounts (for example, using a #nbrunning hashtag).

The U.S. Olympic Team Trials are in July, and the Rio Olympics in August, so Nike is seeking urgent relief.

I’m curious as to the exact relief requested. I can think of three different possible elements of a proposed injunction:

1. That Berian can’t endorse New Balance
2. That Berian can’t wear New Balance
3. That Berian must wear Nike

The attached motion refers to a draft TRO but I couldn’t find one in the docket. The motion states: ‘at a minimum, therefore, defendant is barred from entering an endorsement contract with New Balance.’ In the complaint, Nike requested that Berian be enjoined from ‘competing in or otherwise endorsing any Nike competitor’s product (including but not limited to, footwear and apparel). So Nike is equating an athlete competing in footwear with endorsing that footwear.

Just for the sake of argument – considering the arising from Berian merely competing in New Balance (apart from social media references and the like), how is that harm different from (as in more irreparable than) that caused to Nike by every other athlete who doesn’t wear Nike?