Weekly IP Takeaways

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

1. Sadly, there is not going to be a Masters golf tournament to usher in the Spring this year. The Masters brand, however, remains strong. Recently, the United States Patent and Trademark Office issued a registration to Augusta National, Inc. for the iconic green jacket, in connection with the promotion of goods and services, and organizing and conducting golf tournaments. Well-known, iconic clothing items, when used in connection with the sales or promotion of goods or services, may be registrable as trademarks.

2. Keeping the focus on trademarks, the bipartisan Trademark Modernization Act of 2020 was introduced a few weeks ago. Obviously, in light of the current circumstances in the U.S. (and elsewhere), action on this bill is not expected in the near term. Notable in the bill, however, is a restoration of the presumption of irreparable harm for purposes of securing injunctive relief if a trademark violation is proven. In addition, there are several new, streamlined procedures (other than a cancellation action) proposed to challenge marks that have never been used or that may have been fraudulently used. A significant portion of the impetus for this bill is follow up on, and fortify a recent USPTO rule intended to the apparent surge in suspect trademark filings, largely out of China, in recent years, that may be inhibiting the ability of small business to establish their own brands. Once this COVID-19 situation is contained, hopefully we will see action on this bill.

3. In the recent copyright case regarding the iconic rock song Stairway to Heaven by Led Zeppelin, the Ninth Circuit, sitting en banc, not only ruled in favor of Led Zeppelin (i.e., that it did not infringe the copyright for the sheet music for the song Taurus by Randy Wolfe and his band Spirit), but the Ninth Circuit jettisoned the “inverse ratio” rule that had been inconsistently applied as part of the copyright infringement analysis. In the past, where there was not direct evidence of copying, a copyright infringement plaintiff could show copying by demonstrating that the defendant had access to the copyrighted work, and that the copyrighted work and the accused work were substantially similar. As a gloss on that analysis, the Ninth Circuit (and the Sixth Circuit) applied the ”inverse ratio” rule that said where there is a higher degree of access, less similarity is needed to demonstrate infringement (and vice-versa – more similarity, less access needed). In today’s day and age, with many things now available digitally, a high degree of access may not quite be a “given,” but it is likely. Thus, the analysis may have tended to be skewed in requiring less similarity. Similarity, however, is the sine qua non of copyright infringement. Thus, the Ninth Circuit has overruled the “inverse ratio” rule.