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Honey Badger to Krusty Krab: Significant Copyright and Trademark Decisions from 2018

Below are a few choice examples of significant copyright and trademark decisions from 2018.

In Fourth Estate Public Benefit Corp. v. Wall-Street.com, the U.S. Supreme Court granted certiorari to hear the case. The issue is what is required under the Copyright Act to have “registered” the work before filing a copyright infringement suit. Some federal courts, including the Ninth Circuit (covering California), say that the ambiguous language in the statute means that it is sufficient to have filed the application (the “application approach”), while other federal courts say that the certificate of registration must have issued (the “certificate approach”).  OW&E participated in an amicus brief on behalf of the International Trademark Association in support of the application approach by arguing, among other things, that the significant delays in obtaining the certificate is prejudicial to infringed copyright holders. The case has been argued, and a decision will be forthcoming probably by the spring of this year.

However, in the case of TVEyes v. Fox News the Supreme Court declined to grant certiorari, and the federal appeals court decision is final. TVEyes is a media-monitoring company that searches by keyword, phrase, or topic, and produces clips of media coverage of stories by Fox News and others. The service is geared for use by political campaigns, public relations firms, government agencies, and journalists. The appellate court found that the service impermissibly profited from the work of others without sufficient countervailing features of its service that would qualify for fair use.

In Gordon v. Drape Creative the Ninth Circuit federal appeals court addressed whether the creator of the “Honey Badger Don’t Give A S***” viral videos could sue the maker of greeting cards using the same trademark line. The courts have generally found that “expressive works,” typically such media as books and movies but also consisting of greeting cards, are protected by the First Amendment. As such, unless the use of another’s trademark in the titles or elsewhere in such works is “artistically irrelevant” or is “explicitly misleading” as to its source, the use of the trademark in the expressive work is protected. The court found the use artistically relevant but decided that there was a question of fact for a jury to decide as to whether the use was explicitly misleading. Unlike the usual expressive-work trademark case that gets dismissed at the earliest opportunity, this case showed how courts really do give a – let’s just say do have concern for the rights of trademark holders in these circumstances.

In another case involving popular media, trademark law was applied to a common service: restaurants. In Viacom International v IJR Capital, the defendant was planning to open restaurants under the mark KRUSTY KRAB which is the name of an eatery in the cartoon television show SpongeBob Square Pants.  Even though there’s no “real” restaurant to be confused with the defendant’s planned restaurants, the Fifth Circuit Court of Appeals said that the television show used its fictional restaurant for advertising and indicating source. In addition to other examples, the court noted how Viacom had licensed another to open a chain of BUBBA GUMP SHRIMP CO. eateries that had appeared in its film Forrest Gump.

Every year, with 2018 being no exception, the assortment of noted cases is like a box of chocolates. You never know what you’re going to get.

— contributed by Larry Townsend and Linda Joy Kattwinkel

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