Weintraub Tobin and Moss Adams are co-sponsoring the LAVA Digital Media Group’s panel discussion: “What’s Ahead for Digital Media in 2013” on Tuesday, February 26.
Making predictions in digital media can be challenging. At this time last year who even knew what Pinterest was, let alone that it would explode in popularity. Our panel
In order to establish a claim for copyright infringement, a party must establish two essential elements: (1) ownership of a valid copyright; and (2) copying of original elements of the work. Additionally, registration of a copyright is a prerequisite for filing a claim for copyright infringement. To register a copyright, the owner of a copyright must submit to the Copyright Office an application for registration, and the registration fee. Once the application is processed, the Copyright Office will issue a Certificate of Registration.
What is evidence of registration for purposes of bringing an infringement claim? There is a split in case law regarding whether one must simply apply for registration, or whether one must actually receive the certificate of registration from the Copyright Office. In some cases, proof of application to register a copyright, plus proof of payment of the required fee will suffice. In others, a certificate of registration may be required. (If a copyright claim is registered within five years of the first publication of the work, the certificate of registration is also preliminary evidence of ownership of the copyright, the first element to an infringement claim.) Despite this split in authority, there is some clarity regarding proof of registration. A recent federal case reiterates and discusses the rule that a certificate of recordation alone will not suffice to demonstrate registration. Continue Reading Copyright Infringement Considerations: Proof of Registration
The United States Supreme Court issued a ruling in January 2013 clarifying the application of the Voluntary Cessation Doctrine in trademark actions. The case is entitled Already LLC, dba Yums v. Nike, Inc., 184 L.Ed.2d 553 and 2013 LEXIS 602. The Supreme Court’s decision provides important practical guidance for all practitioners.
The Voluntary Cessation Doctrine is founded upon United States Constitution Article III’s requirement of a “case” or “controversy.” The case becomes moot when there are no longer live issues to resolve.
Nike originally sued Already, a competing footwear company, for alleged infringement of Nike’s trademark related to Nike’s Air Force 1® shoe. This infringement claim did not involve the famous Nike “swoosh.” Already filed a counterclaim, contending that the Air Force 1® trademark is invalid. Months after Nike originally sued, it issued a “Covenant Not to Sue” letter to Already and then filed a motion to dismiss its complaint with prejudice and to dismiss Already’s counterclaim without prejudice on the ground that the Covenant Not to Sue had extinguished any existing case or controversy.Continue Reading The Voluntary Cessation Doctrine: An Escape from Troublesome Litigation?
By Scott Hervey
Licensing attorneys should take note of the recent decision by the Central District of California in Jason Bitzer v. Body Glove Int’l et al. In this case, Body Glove licensed its trademark to Sport Dimension who manufactures bodyboards. Sports Dimension allegedly had the permission to use the likeness of professional bodyboarder Jason Bitzer on merchandise, including bodyboards. Body Glove separately had a sponsorship agreement with Bitzer which gave Body Glove the right to use Bitzer’s likeness in certain circumstances. Sport Dimension manufactured bodyboards containing Bitzer’s image and Body Glove’s trademark. Body Glove now faces potential liability for the alleged misappropriation of Bitzer’s likeness due to its use on the bodyboards.
Sports Dimension argues that it entered into an agreement with Bitzer to have Bitzer promote Sport Dimension products as a sales representative, and this agreement gave it the right to use Bitzer’s image on various Sport Dimension products such as bodyboards. Sport Dimension claimed that this agreement included the Body Glove branded bodyboards. Bitzer claimed that the agreement did not grant Sport Dimension that right and that Sport Dimension and Body Glove violated California Civil Code Section 3344. Continue Reading Licensor Can Potentially Be Liable for Licensee’s Misappropriation of Third Party Athlete’s Likeness
Personal jurisdiction is an issue that a court must typically decide in determining whether it can hear a case brought against a nonresident defendant, for instance, when a resident of Nevada is sued in a California court. Unless a defendant has “continuous and systematic” contacts with a forum state, personal jurisdiction is generally limited to specific jurisdiction, that is, when the defendant has done some act or made some contact with the forum state that gives rise to the claims against it. Last month, the Ninth Circuit considered the issue of personal jurisdiction in the context of a willful copyright infringement claim.
Washington Shoe Company has done business in the state of Washington for more than 100 years. A-Z Sporting Goods, Inc. is an Arkansas company that operates a single retail store in Alma, Arkansas. It does not sell products over the internet and apparently conducts no business in Washington, or even outside of Arkansas for that matter.
Between 2007 and 2009, a Washington Shoe salesman regularly visited A-Z in Arkansas and A-Z would purchase a number of items from Washington Shoe. Washington Shoe later discovered that A-Z was selling two boots that appeared to infringe on Washington Shoe’s copyrights. Washington Shoe’s attorney sent a cease and desist letter to A-Z and in response A-Z sold the offending boots to a thrift store. Washington Shoe then sued A-Z for copyright infringement in a federal district court in Washington. A-Z moved to dismiss the complaint on the grounds that the court lacked personal jurisdiction over it since it did not have any contacts with the state of Washington.
Continue Reading Copyright Infringement and Personal Jurisdiction
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