Weekly IP Takeaways

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

1. In a case filed by a company formed by the surviving members of the 90s grunge band Nirvana, against fashion designer Marc Jacobs alleging copyright and trademark infringement for Marc Jacobs’ use of an allegedly infringing happy face design used by Nirvana, Hon. John A. Kronstadt of the Central District of California denied Marc Jacobs’ motion to dismiss the claims. Taking the factual allegations in the complaint as true, as he must on a motion to dismiss, the Judge Kronstadt found that Nirvana adequately and plausibly alleged ownership of a valid copyright and copying by Marc Jacobs. The same was true for Nirvana’s trademark-related claims – i.e., Nirvana adequately and plausibly alleged ownership of a valid trademark and a likelihood of confusion. Therefore, the case will proceed. So far, Marc Jacobs has not been “All Apologies.”

2. In a copyright case out of the Southern District of New York, a photographer sued a publisher over the use of a partial screenshot from a New York Post article that contained the photographer’s photograph. The opinion is here. The Court, applying the statutory fair use factors, granted the defendant’s fair use defense finding that the use of part of the photographer’s work was significantly cropped, was used for critique and commentary purposes, and would not negatively affect the market for the photograph as a whole. In this case, the Court’s finding may be correct. It is a bit troubling that the Court seemed to be doing some fact-finding on a motion to dismiss, which is usually not permitted. It is becoming more common, however, for courts to take up issues on motions to dismiss that may have factual components to them in order to dispose of cases earlier on in the litigation. This may be a tool for litigators to consider going forward.

3. For you football fans out there, an individual attempted to register a trademark for BEAST MODE SOCCER in connection with sports gear and merchandise. The USPTO (both at the Examining Attorney level and in the Trademark Trial and Appeal Board) refused his efforts to register BEAST MODE SOCCER for sports gear and merch based on football player Marshawn Lynch’s BEAST MODE style of playing football, which has also been used (and registered) as branding for clothing and merch. In an opinion last week, the Federal Circuit Court of Appeals affirmed the refusal to register. This is not particularly surprising given Marshawn Lynch’s long and successful football career in which BEAST MODE came to describe his running style.