Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a recent decision out of the Central District of California on a motion to dismiss, the Court held that the plaintiff had stated a viable claim for trademark infringement against a third-party celebrity endorser (or influencer) of a beauty product. More specifically, at the pleading stage, the Court held that celebrity endorser, Molly Sims, could be held liable for blogging about a product where the purveyor of the product paid Ms. Sims for the publicity. The issue was that Ms. Sims described the product using words that allegedly infringed the plaintiff’s mark. Ms. Sims’ motion to dismiss was denied because words used by paid endorsers can support trademark liability. The takeaway here is that if you are an influencer, or you use influencers, be careful about using language in advertisements and product endorsements that could be deemed infringing on others’ marks in the same field.

2, In a very interesting decision out of the Southern District of California, on a case we previously wrote about (Takeaway No. 1), the district court denied a defense motion for reconsideration on a copyright referral under 17 U.S.C. 411(b), and also denied the plaintiff’s motion for summary judgment of copyright infringement. Briefly, the district court originally ruled that defendant’s “mash-up” of Dr. Seuss material was a transformative fair use precluding liability for copyright infringement. The Ninth Circuit reversed and said there was no fair use. On remand, the defendant, which previously, but unsuccessfully attempted to have the district court refer an issue of copyright validity to the Copyright Office under 17 U.S.C. 411(b), renewed its request for referral claiming the Ninth Circuit’s reversal rendered that issue “live” again and that there had been an intervening change in controlling law on this issue in the Ninth Circuit based on Unicolors v. H&M. On remand, the plaintiff renewed its motion for summary judgment of copyright infringement. The district court found that there was no intervening change in law warranting reconsideration of its denial to refer a copyright validity issue to the Copyright Office. The district court also denied the plaintiff’s motion for summary judgment finding that the “extrinsic” test for copyright infringement was met, but that the “intrinsic” test had to be decided by a jury. The takeaway here is something of a civil procedure nerd’s dream – but also, that referral to the Copyright Office remains in the determination of the district judge on the issues of knowledge and materiality. Finally, it remains difficult for a plaintiff to secure summary judgment of infringement in copyright cases because of the subjective nature of the “intrinsic” test.

3. In a recent decision out of the Southern District of New York, the Court denied a motion to dismiss a copyright infringement claim where the motion was based on fair use. The plaintiff took a video of a starving polar bear and posted the video to his social media accounts. A number of news outlets and online publishers embedded the plaintiff’s video in online articles, and plaintiff eventually sued for copyright infringement. After an extended discussion distinguishing the Ninth Circuit’s “server rule” that may apply in this situation, the Court looked carefully at the fair use issue, but declined to issue a ruling where the factual record was limited. Because the defendant could not establish its fair use defense at the pleading stage, the motion to dismiss was denied. The takeaway here is that while it is possible to prevail on fair use at the pleading stage, it is difficult. Another interesting concept here is the potential for forum shopping based on some differences in law between the Second and Ninth Circuit in terms of the ”display” right under the Copyright Act.