Jeffrey R. Cadwell

Perhaps lost in all of the commentary and handwringing over AI and what to do with the works it creates is how we care for copies of human-authored works. The concept of controlled digital lending (or CDL) raises significant questions for publishers, authors, and readers, particularly when it comes to the scope of the exclusive rights of reproduction and distribution granted to owners by the Copyright Act. CDL refers to digitizing a print book and lending the digital copy in place of the physical book. Under Section 106 of the United States Copyright Act, a copyright owner has exclusive rights to reproduce and distribute its copyrighted works. By its nature, CDL implicates both rights – it requires scanning and creating a new digital file (i.e., reproducing the work) and then distributing that digital file. Without a statutory exception in the Copyright Act or a successful fair use defense, these acts constitute an infringement of the copyright owner’s rights. Section 108 of the Act contains one such exception, but only in narrow circumstances. It allows libraries to reproduce copyrighted works for archival purposes under a variety of strict restrictions. Of course, the Copyright Act was passed in 1976 in a print-centric world. The Copyright Office has held a “longstanding belief that section 108 needs to be updated so that libraries, archives, and museums have a robust, comprehensible, and balanced set of exceptions in order to fulfill their missions.” This disconnect between Section 108’s analog‑era limits and the digital realities of modern library practice is precisely where the debate over CDL now sits. In 2024, the Second Circuit rejected CDL as fair use in Hachette Book Group, Inc. v. Internet Archive. The court answered “no” to the question presented: “[I]s it ‘fair use’ for a nonprofit organization to scan copyright-protected print books in their entirety and distribute those digital copies online, in full, for free, subject to a one-to-one owned-to-loaned ratio between its print copies and the digital copies it makes available at any given time, all without authorization from the copyright-holding publishers or authors?” The Second Circuit held that all four fair use factors favored the publishers who brought the lawsuit. The Second Circuit’s rejection of CDL as fair use removes perhaps the only legal theory that could allow libraries to provide controlled digital access to materials they already own. With fair use foreclosed, libraries cannot rely on Section 108 to fill the gap because that exception was not designed to authorize digital lending. For publishers, CDL represents a threat to the e-book licensing market, because they see market harm to the model of licensing electronic versions of books and the control they exert over digital distribution. They believe that scanning a physical book into a digital file is an improper market substitution that allows a library to bypass the licensing mechanisms established by the publishers for electronic books. Libraries, however, take a different view. Their goal is to provide their patrons with stable access to their collections. They are concerned that a licensing model introduces uncertainty, because licenses can be revoked or expire, they come with potential restrictions on use that do not exist with print copies, and the pricing can fluctuate. CDL, therefore, is a way for libraries to serve their mission in a digital environment without having to worry about fragile licensing arrangements. The collision of CDL, the limitations of Section 108, the Second Circuit’s fair use ruling, and the new digital markets that did not exist when the Copyright Act was enacted mean that the existing framework is not working for either publishers or libraries. To resolve these issues, either Congress will need to step into the void or the various stakeholders will need to reach an agreement on their own terms.

Photo by Sarah Robertson The Dorsey Trademark, Copyright + Advertising team is back from the 2025 International Trademark Association Meeting. It was one for the books. We mixed and mingled with old and new colleagues and as well as our friends from around the world. In between all the meetings and social events, we did manage to attend a few of the important panels and of course, our committee meetings. Here are the highlights: AI-Driven Advertising: Copyright Issues in the New Frontier – This was a lively and engaging panel that focused on managing the chaos that the burgeoning use of AI by companies and independent contractors has caused relating to ownership and authorship of AI-created content. The panel several times reiterated the mantra: Be Fair, Be Bold, Be Reasonable. They encouraged companies to ask whether they actually need to own the content that is created. They also discussed contract clauses “from the wild” and pointed out what works and what can be unreasonable. The most important takeaway was to make sure that whoever is using AI to create content is documenting the process carefully, regardless of whether it is a vendor or an employee. This is because the Copyright Office will require an explanation as to the use of AI to determine whether, and how much of, a work is registrable. USPTO Update: Fireside Chat with Acting Under Secretary of Commerce for Intellectual Property and USPTO Acting Director Coke Morgan Stewart – Acting Director Stewart answered questions about the PTO’s direction under the current administration. She indicated that the USPTO has explained to the administration that as a fee generating agency – rather than a taxpayer funded agency – the USPTO should not be subject to current cost-cutting measures. Despite this, Acting Director Stewart believes the agency can continue to reduce pendency and maintain quality without filing open positions. She also indicated the USPTO is looking into the use of AI to help with review of design marks and to detect fraud. Our neighbors to the North, the Canadian Intellectual Property Office (CIPO), also provided updates about the examination process and efficiency, indicating that they hoped to clear their backlog in just a few months. Greenwashing, Greenhushing and Sustainably: INTA’s Brands and Sustainability Committee met at this year’s conference to discuss the hot topics of greenwashing and greenhushing. If you are not familiar, greenwashing is essentially the false marketing of green/environmental or sustainable claims. Most recently, we’ve seen a lot greenwashing in the context of aspirational claims, namely brands striving to be carbon neutral or reduce their emissions by a certain year. Greenhushing, on the other hand, is when brands do good for the environment, but don’t publicize it. Greenhushing can occur for various reasons including, fear of accusations of greenwashing, consumer perception that “green” products are more expensive or inferior, or even for political reasons. While we didn’t make any promises or claims, the committee was proud to support a digital business card initiative and encourage the use of reusable water bottles to help make the conference more sustainable for all. Crafting Successful Agreements with Branding Agencies: A roundtable discussion took place between practitioners from Canada, the UK, and US on how brands can best partner with their creative agencies and areas of best drafting practices for agreements between the two. Discussion of the scope of services and consideration of AI-generated work product dominated the conversation, including how best to allocate risk created by the use of AI particularly where this work product is specifically contemplated or where influencers are involved. Discussion of the extent of preliminary clearance work members of the group were carrying out on behalf of agencies, or that agencies were otherwise expected to conduct, also took place. An overall downward trend in full, in-depth trademark search orders more generally, as shared by the one of the leading search companies present, was also covered. The unique risks attached to working with smaller agencies, including the absence of enterprise software licenses, was also discussed. Law and Policy | Rules of the Road in Engaging with Celebrities, Influencers, and Fans: This session brought a global perspective to how companies interact with and negotiate with celebrities and influencers in relation to the promotion of their brands. The panelists focused on how they prioritize and make use of time and resources depending upon the nature and length of a promotion, as well as the potential impact of the promotional activities on their brands. Interestingly, in Argentina, many companies create specific scripts that must be used by influencers to help minimize regulatory and legal risks. Aside from potential pitfalls in agreements, the panelists also discussed deepfakes and artificial intelligence and the impact on their promotional activities and on their brands, as well as issues with poor influencer behavior and even taxation issues. Truly, an ever-evolving area as technology becomes even more intwined in the influencer landscape. Successfully Mediating IP Disputes: Key Insights and Practical Tips – INTA’s ADR Committee hosted a panel discussion on trademark mediation, highlighting the growing value of mediation in resolving IP disputes. Panelists emphasized its advantages over litigation, including lower costs, reduced risk, and the opportunity for creative, business-focused solutions. They discussed the qualities of effective mediators, such as neutrality, communication skills, and business acumen, and considered whether mediators should propose solutions or simply facilitate dialogue. The consensus favored a balanced approach that maintains neutrality while offering constructive suggestions. The discussion also addressed the importance of preparation, confidentiality, and having decision-makers present. Challenges of virtual mediation were noted, including distractions and reduced engagement, as well as the supportive but limited role of AI. Real-world examples illustrated the need for mediators to guide the process while allowing parties to retain control over outcomes. Annual Review of Trademark Cases: Always an attendee favorite, this session featured an overview of trademark decisions over the last 12 months lead by Theodore Davis of Kilpatrick Townsend and John Welch of The TTABlog fame. Notable decisions include those upholding the validity of the Lanham Act’s “names clause” (requiring written consent to register a mark containing a person’s name) under the First Amendment (Vidal v. Elster, 602 U.S. 286 (2024)), confirming that inaccurate patent claims may provide grounds actionable false advertising claims (Crocs, Inc. v. Effervescent, Inc., No. 22-2160 (Fed. Cir. 2024)), holding mere use of a party’s name in a judicial proceeding is not actionable under Lanham Act (Dieujuste v. Sin, No. 24-1522-cv (2d Cir. 2025)), confirming that the TTAB’s “something more” doctrine applies only to the relatedness of goods to services and not to goods to goods (In re Samsung Display Co., Ltd., No. 90502617 (T.T.A.B. 2024)), and clarifying that product color resulting from practicing an expired patent cannot also have trademark significance because the color is functional under the expired patent (CeramTec GmbH v. Coorstek Bioceramics LLC, No. 2023-1502 (Fed. Cir. 2025)). John Welch also recounted his top losing TTAB arguments, with the number one slot belonging to arguments that attempt to impart in real-world limitations to goods/services in an application/registration (since the TTAB typically only considers the goods/services as listed), and listed some of his pet peeves, such as using the word “trademark” as a verb (ironically used as such by the Supreme Court in its Elster decision).

The Digital Millennium Copyright Act (DMCA) is a section in the US Copyright Act that provides a safe harbor for internet service providers so long as they comply with a notice and takedown system. The way the DMCA works is a company, such as an internet website host, a search engine, or a website operator, registers an agent with the United States Copyright Office. Then, any individual or entity who finds content it owns that is protected by copyright (whether or not registered) on a website hosted by the internet service provider can submit a takedown request to the service provider’s DMCA agent that contains the information required by the statute. The requestor should consider issues like fair use before filing the takedown notice. Assuming the complaint is compliant with the statute and legitimate, the service provider may then remove the content and send a notice to the alleged infringer about the removal to avoid a contributory infringement claim. The alleged infringer is then allowed to submit a counter-notification explaining why the takedown is not justified. The service provider then forwards the counter-notification to the original complaining party, which then has 10-14 days to file a lawsuit over the content. If no lawsuit is filed, the content will be reinstated by the service provider. If a lawsuit is filed, then the content remains disabled until the lawsuit is resolved. In April of 2023, Nexon Korea Corporation, owner of video game Persona 3 (P3), sued Ironmace Co. Limited, Ju-Hyun Choi, and Terence Seungha Park for copyright infringement and trade secret theft. Choi and Park were former employees of Nexon and founded Ironmace, another Korean corporation, in 2021. Together at Ironmace, Choi and Park created Dark and Darker, which, like P3, is a Dungeons and Dragons inspired role playing fantasy video game. After the game went live, Nexon filed a takedown notice under the DMCA with Valve Corporation, the platform that hosted the game in the United States. Valve removed Dark and Darker from their platform. Ironmace went on to file a counter notice saying its game did not violate any of Nexon’s US copyrights, and then Nexon filed its lawsuit in Washington State, where Valve is based. According to the DMCA, when Ironmace filed the counter notice, it consented to personal jurisdiction in Washington. However, Ironmace filed a motion to dismiss on the basis of forum non conveniens, arguing that the litigation should occur in South Korea, where both Nexon and Ironmace are based, despite the fact that the lawsuit involves US copyright law and the Dark and Darker was targeted to a US audience. Korea has different pre-trial discovery procedures, which Nexon called “inadequate” in its response. The lower court granted Ironmace’s motion to dismiss. In July 2024, the Ninth Circuit affirmed the lower court’s decision, stating that the DMCA does not categorically preclude forum non conveniens and that when Ironmace consented to personal jurisdiction, it did not consent to venue, which is a separate issue. The court emphasized that Choi and Park both signed employment agreements electing the Seoul District Court as the venue for any work-related intellectual property disputes. Notably, this is the first time a court has ruled that a DMCA related claim would be better suited to be litigated outside of the United States. Foreign entities with US copyrights often rely on the DMCA to enforce their rights in the United States and rely on United States law to govern. While courts are known to use the doctrine of forum non conveniens sparingly, they have noted that foreign plaintiffs do receive less deference to their choice of forum than domestic ones (see, e.g., Piper Aircraft, Co. v. Reyno, 454 U.S. 235 (1981)). However, courts in the past have looked at similar issues and decided the other way. For example, in DFSB Kollective Co. v. CJ E&M America, Inc., a California district court ruled the forum should not be changed to Korea when DFSB, a Korean corporation with a license to distribute K-pop music, sued a US entity under the DMCA for distributing the music in the Unites States. The case involved both Korean and US law, witnesses had to appear from Korea, documents and evidence needed to be translated from Korean into English, and a prior settlement agreement from a Korean court was disputed. Nonetheless, the California court rejected the American defendant’s motion to dismiss under forum non conveniens, stating that it is an “exceptional tool.” It will be interesting to see how the new ruling from the Ninth Circuit affects foreign entities who wish to file DMCA takedown requests to attempt to enforce their rights in the Unites States. Dorsey will continue to monitor the impacts, and we will report on any interesting new developments.

This blog has covered artificial intelligence and copyright protection in the United States on a number of occasions, including It's Alive? and AI Artwork. To date, the Copyright Office has consistently rejected registration of works created using AI technology. The basis is that the Copyright Office and copyright case law have interpreted the term “authorship” from the Copyright Act to exclude non-humans. The current version of the Compendium of U.S. Copyright Office Practices indicates that “to qualify as a work of ‘authorship’ a work must be created by a human being.” The Copyright Office recently signaled a willingness to move away from a rigid approach to AI-created works when it approved registration of a graphic novel named Zarya of the Dawn consisting of human-authored text and AI-generated imagery. The scope of registration, however, was limited only to the human-authored text in the graphic novel. Because AI-generated works will continue to be created and the Copyright Office has seen an influx of applications to register such works, the Copyright Office determined that public guidance is necessary specifically for registration of works created utilizing AI-technology or containing AI-generated content. Accordingly, on March 16, 2023, the Copyright Office released a statement entitled “Copyright Registration Guidance: Works Containing Material Generated by Artificial Intelligence.” In this policy statement, the Copyright Office provides two types of examples of use of AI technology and indicates that “what matters is the extent to which the human had creative control over the work’s expression and ‘actually formed’ the traditional elements of authorship”: When AI technology determines the expressive elements of the output, the work will not be protectable because it is not the product of human authorship. When a human being selects or arranges AI-generated material in a sufficiently creative way, then the work will be protectable as to the human-authored aspects of the work. The Copyright Office affirms that an applicant must disclose the inclusion of AI-generated content in any works submitted for registration. In the “Author Created” field of an application, the applicant must provide an explanation of the human author’s contributions to the work. AI-generated content that is more than de minimis must be explicitly excluded from the application. The AI machine or the company who provided the AI technology does not need to be listed as an author in the application. Applicants are also encouraged to use the “Note to CO” field on the application to provide any additional information that will be useful to an examiner in reviewing the application. If applicants already have applications pending that do not meet the foregoing requirements, they should contact the Copyright Office’s Public Information Office to request that a note be added to the record about the use of AI for the examiner to consider when reviewing the application. If registrations have already been issued that require correction, then the registrant needs to submit a supplementary registration request to correct or amplify the information in the registration record. Finally, the Copyright Office notes that applicants who fail to comply with these policies and obtain registrations risk losing the benefits of the registration and that the Copyright Office may take steps to cancel any non-compliant registrations it discovers. Ultimately, this guidance from the Copyright Office does not change the underlying rules of the game. Works must still have elements of human authorship to be eligible for registration. But use of AI technology to create works of authorship will not be considered a disqualifying factor.

After two years of groundwork, the Copyright Office’s new forum for hearing small copyright claims is finally here. The Copyright Claims Board (CCB) began accepting claims on June 16 and seeks to provide a streamlined alternative to resolving copyright disputes in federal court. It is unclear how successful the CCB will be. The CCB’s inability to decide cases without the voluntary participation of all parties raises questions about how many disputes it will actually resolve. Add in a lack of injunctive relief, a narrow appeal pathway, and even an annual limit on the number of cases an attorney can bring, and the CCB could raise more hurdles for litigants than it eliminates. The CCB was created through the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act) and consists of a three-member tribunal based in the Copyright Office. Claimants must pay $40 to file, plus an additional $60 if the respondent does not opt out and the claim becomes “active.” If successful, the claimant can recover statutory damages up to $30,000 ($15,000 per work) for registered works and up to $15,000 ($7,500 per work) for works not yet registered. Injunctive relief is not available. Since federal courts only award statutory damages for registered works, the CCB opens a unique door to statutory recovery for claimants who have started—but not yet completed—the copyright registration process. The CCB shares some procedural similarities with federal courts. For example, corporations, partnerships, and unincorporated associations can register a dedicated service agent through the CCB’s website. After providing contact information, listing additional trade names, and paying a $6 fee, the entity’s agent will appear in the CCB’s online directory of agents. Any subsequent claims brought against the entity must then be served on the agent via certified mail (or by email, if the entity has consented to receive electronic service). The CCB agent directory shares no overlap with the DMCA agent directory, so an agent registered in one directory will not automatically appear in the other. Yet, the CCB also deviates from federal courts in some procedures. Filings are submitted electronically though the CCB’s website, and all hearings are conducted remotely. Additionally, the CCB does not follow the Federal Rules of Civil Procedure or Evidence and instead uses a streamlined—but somewhat analogous—set of rules contained in Title 37 of the Code of Federal Regulations. These rules limit discovery to standard interrogatories and requests for document production in an attempt to simplify the fact-building process for pro se litigants. What may ultimately come to define the CCB, though, is that participation is optional: any party to a CCB claim can opt out by notifying the CCB within 60 days after being served notice of a claim. This automatically terminates the proceeding, and the plaintiff must bring the case again in federal court to pursue the matter further. A special provision also allows libraries and archives preemptively to opt out of any CCB claims against them. All other respondents, however, must opt out on a case-by-case basis by completing an opt-out notification form. The inability to force parties to litigate their claims in front of the CCB could stifle its effectiveness, but voluntary participation from all parties is necessary to avoid the constitutional concerns that arise when the legislative branch seeks to perform a judicial role. The CCB rules state that, by not opting out, parties lose the opportunity to have an Article III court decide the case and waive their rights to a jury trial. Because the only way to waive these rights is to make participation optional, the CCB is forced to give parties the choice to opt-out. If parties do agree to litigate in front of the CCB, they can only appeal its decision to a federal court on narrow grounds. The first line of appeal is to request that the panel reconsider its decision for a clear error of law, a clear error of material fact, or a technical mistake. Next, a party can ask the Register of Copyrights to review the panel’s decision for abuse of discretion. Getting external review is harder—the only path to review by a federal district court is by alleging fraud, corruption, misrepresentation, or misconduct. This high hurdle may make it difficult to correct erroneous findings that could have been avoided with more thorough discovery and briefings. To address concerns of copyright trolls flooding the system, the CCB contains some defensive measures to combat unmeritorious claims. First, a CCB attorney must pre-approve all claims before they can be served, throwing out any that clearly do not state a claim upon which relief can be granted. Additionally, bad faith conduct is punishable with fines up to $5,000 (including attorneys’ fees), and repeated instances of such conduct can trigger a bar on bringing future claims before the CCB. Bad faith conduct is not the only limitation on bringing claims, however. The CCB rules place limits on the number of cases anyone can bring over a 12-month period. Individuals and corporations can bring up to 30 claims, while this limit is raised to 40 for solo practitioners and 80 for law firms (opt-outs still count towards the limit). Will these limits ultimately serve the CCB’s objectives of discouraging trolls and increasing access to justice? The caps could be simultaneously too high to keep out all frivolous claims, but too low to incentivize lawyers and firms to specialize in CCB-claims. Time will tell how large the CCB’s docket may ultimately grow (there were 36 open cases as of June 30, 2022), but there are plenty of questions to ask as the program gets underway. Will defendants choose to proceed in the CCB when they have the ability simply to opt-out? Will plaintiffs find it worthwhile to wait 60 days for defendants to decide to participate, knowing there is no prospect of injunctive relief? Will attorneys bother focusing on the CCB when they face fewer restrictions in federal court? More fundamentally, will the CCB actually simplify anything? The streamlined rules of procedure and evidence adopted by the CCB are designed to facilitate litigation by pro se parties. But the Copyright Office admits it “must allow for some degree of complexity in those situations where complexity is inherent in the factual context.” And the CCB has the authority to dismiss cases it thinks are unsuited to its administrative capacity or expertise. Will the CCB overcomplicate proceedings or punt on cases it does not want to hear? These unanswered questions suggest it will be some time before the true advantages and shortcomings of the CCB become apparent.

photo by EQRoy / Shutterstock.com Earlier this summer, U.S. District Judge Amy Berman Jackson refused to buy plaintiff, Valancourt Books, LLC’s, claims that the Copyright Office of the United States unconstitutionally demanded books for free, when Judge Jackson granted summary judgment for the defendants Shira Perlmutter and Merrick Garland (acting in their respective official capacities as Register of Copyrights and Attorney General). The dispute arose when Valancourt brought suit, arguing the Copyright Act’s deposit requirement was unconstitutional under the First and Fifth Amendments as a burden on speech and an unconstitutional taking, respectively. In understanding the Court’s opinion, it is important to keep in mind the intricacies of the Copyright Act. The moment a work (e.g., a book) is created, it is protected by copyright. However, if the work is published, and unless it meets certain exceptions, to enforce those copyright rights under federal law, the work must be registered with the Copyright Office. Applicants have to submit two complete copies of the best edition of their published work to register it with the Copyright Office. 17 U.S.C. § 407(a). If applicants fail to comply, the Copyright Office can issue a demand letter and ultimately impose fines, ranging from $250 per registration, to $2,500 for willful or repeated failure to comply. Valancourt is an independent literary press, operating out of the owner’s home, that publishes rare, neglected, and out-of-print fiction on an “on-demand” basis. Valancourt did not apply to register its books with the Copyright Office, but it did include copyright notices in all its books, essentially availing itself of federal copyright law protections. The initial dispute arose when the Copyright Office issued a demand letter, requesting Valancourt provide deposit copies of all 341 books in its catalog. In a series of exchanges, Valancourt offered to sell the books “at cost” to the Copyright Office. The Copyright Office countered by requesting digital copies of the majority but not the entirety of Valancourt’s catalog. Judge Jackson’s opinion deftly outlines an unsurprising result, in terms of constitutional law. In short, the Copyright Act’s deposit requirement is constitutional. The Takings Clause of the Fifth Amendment prohibits the federal government from taking private property for a public purpose without just compensation. However, the Supreme Court has long held that statutory benefits can be conditioned upon the exchange of private property without violating the Fifth Amendment. In other words, the Copyright Act conveys the benefit of copyright protection and enforcement via federal law, in exchange for (1) filing fees and (2) deposit copies made available for public use in the Library of Congress. This exchange does not run afoul of the Fifth Amendment. Judge Jackson’s analysis on the First Amendment challenge is equally straightforward. The First Amendment protects free speech, not copyright enforcement. Valancourt can freely publish books without triggering the Copyright Office’s deposit copy requirement, so long as Valancourt does not claim federal copyright protection in each book. Judge Jackson took issue with Valancourt’s attempt to “have its cake and eat it too.” Essentially, Valancourt warned the public that its books were subject to copyright protection but argued it should not be bound by the requirements for that same protection. Reading between the lines, the real surprise of Judge Jackson’s opinion is that Valancourt did not apply for federal copyright protection, yet the small press suddenly faced the prospect of providing 682 books (two copies per book in the catalog) without remuneration. Though the Copyright Office ultimately relented, offering the possibility of digital book copies, the case still presents a cautionary tale. Owners of the copyright in published works should carefully consider any copyright notice placed on works and comply with the mandatory deposit requirements. In at least one district court, claiming federal copyright protection can trigger the Copyright Act’s deposit requirement and ultimately result in fines, without anyone ever seeking federal copyright protection. Perhaps the silver lining of this story is that if you find yourself on the wrong side of the deposit requirement, the Copyright Office may offer cost-sensitive alternatives (e.g., digital deposit copies), though this happy ending is far from certain.

As we wrote in Part 1 of this series, the Trademark Modernization Act of 2020 (“TMA”) was signed into law on December 27, 2020, and contained several significant amendments to the Lanham Act. This post will cover three of the legislative changes, all pertaining to the elimination of “deadwood” marks that clutter the register and create needless impediments to registration of new marks: (1) ex parte expungement; (2) ex parte reexamination; and (3) non-use cancellation. These new vehicles for challenging unused marks will not take effect until December 27, 2021, and implementing regulations and procedures, as well as the fees for these procedures, have not yet been established. Ex Parte Expungement – For Marks That Have Never Been Used What for – As a well-known New Yorker cartoon asked – “How about never – is never good for you?” If the answer is a mark has never been used, then ex parte expungement is the procedure for you to consider. Section 16A is added to the Lanham Act to allow any person—including the Director of the USPTO on the Director’s own initiative—to file a petition to expunge a trademark registration on the ground that the mark has never been used in commerce on or in connection with some or all of the goods or services covered by the registration. Who can petition – The TMA provides that “any person” can file an expungement petition. So unless the implementing regulations specify a standing requirement or one is adapted from analogous opposition and cancellation proceedings through case law, it appears that anyone (plus the Director) can take advantage of this procedure. How to petition – A petition for expungement must identify the specific goods or services alleged never to have been used in commerce in association with the mark. Further, the petitioner must include a verified statement that sets forth the details of its reasonable investigation into whether the goods or services have been offered and additional facts that support the allegations. The TMA indicates that the Director is to promulgate regulations regarding what constitutes a reasonable investigation and the type of evidence that could support a prima facie case that a mark has never been used in commerce. How to respond – The TMA indicates that a registrant’s evidence of use in defense of an ex parte expungement proceeding is the type of evidence that is consistent with when a mark is deemed to be in use in commerce under Section 45 of the Lanham Act. The Director is also charged with establishing the procedures for ex parte expungement proceedings, including setting response times. What about U.S. Marks Registered Based on a Foreign Registration? – For a mark registered solely on foreign registration basis (Section 44(e)) or as an extension of protection via the Madrid Protocol (Section 66), a registrant can offer evidence of special circumstances that provide a basis for excusable nonuse. No duplicate proceedings – The TMA prohibits co-pending ex parte expungement proceedings against the same goods or services in a registration. Further, once ex parte expungement proceedings have been brought against a registration and the registration is upheld for the goods or services at issue, there is an estoppel provision in the Act providing that no later petitions with respect to those same goods or services can be filed, regardless of the identity of the petitioner. When you can petition – Until December 27, 2023, ex parte expungement petitions can be filed against any registration at any time after the third anniversary of the registration. Beginning December 28, 2023, petitions can only be filed between the third and tenth anniversary of a registration. Appeal Procedure – The TMA allows for appeal of decisions in ex parte expungement proceedings to the Trademark Trial and Appeal Board or to the Federal Circuit. Ex Parte Reexamination – For Marks Not in Use When Use Was Alleged What for – The TMA adds a new Section 16B to the Lanham Act to allow any party to petition for reexamination of a registration on the ground that the mark was not in use in commerce in connection with some or all of the goods covered by the registration on or before the “relevant date.” As used in the statute, “relevant date” means: (1) for use-based applications that did not have any change in basis after filing, the date the application was initially filed; or (2) for intent-to-use applications, the date on which an amendment to allege use was filed. What about U.S. Marks Registered Based on a Foreign Registration? – The ex parte reexamination procedure under Section 16B cannot be initiated against foreign-based registrations issued under Sections 44(e) or 66 of the Lanham Act. Who can petition – As with expungement petitions under Section 16A, there is no standing requirement – a reexamination petition can be filed by any person. How to petition and respond – Ex parte reexamination proceedings will share the following similarities with ex parte expungement proceedings: the Director can request ex parte reexamination on the Director’s own initiative; the petitioner must identify the challenged goods or services and include a verified statement that details the reasonable investigation into use the petitioner has conducted; the Director will establish the procedures for ex parte reexamination proceedings; the Director will identify the type of evidence that could support a prima facie case that a mark has never been used in commerce; a registrant’s evidence of use is the type of evidence that is consistent with when a mark is deemed to be in use in commerce under Section 45 of the Lanham Act; co-pending proceedings involving the same goods or services are not allowed; if a registration is upheld for certain goods or services, no further ex parte reexamination proceedings may be initiated against the registration for those goods or services; and decisions can be appealed to the Trademark Trial and Appeal Board or the Federal Circuit. When you can petition – Petitions for ex parte reexamination may be commenced at any time before the fifth anniversary of a registration, except for registrations on the Supplemental Register, which are vulnerable to petition for reexamination at any time. New Non-Use Cancellation Proceeding What for – Section 14 of the Lanham Act is amended to allow a petition for cancellation on the ground that the registered mark has never been used in commerce on or in connection with some or all of the goods covered by the registration. Who can petition – A party who believes it may be damaged by a trademark registration; thus, there is a standing requirement, as with other types of cancellation proceedings. When you can petition – This new non-use cancellation petition can only be filed after the third anniversary of the registration. How does this ground of cancellation for non-use differ from abandonment claims? This new ground for cancellation based on non-use appears to differ from a claim for abandonment because it applies to marks that have never been used, as opposed to marks that were in use for some time but then discontinued. It also does not involve any requirement for a petitioner to establish a lack of intent to resume use by the registrant, a factor that comes into play when a mark has been used for a period of time and then discontinued. *          *          * Look for Part 3 of our series on the TMA soon, which will discuss new Letter of Protest procedures and the discretion given to examining attorneys to set discretionary response deadlines.

The Washington, D.C. professional football team recently announced plans to cease using the name “Redskins” in favor of a new name. The “Redskins” name has been the source of both cultural and trademark conflict through the years. This sort of name change raises a number of legal issues that are germane to all types of companies who are considering rebranding. We have highlighted a few of these in brief below: 1) Trademark clearance searching: Comprehensive searches should be conducted in key jurisdictions to ensure there will be no conflicts with existing rights that are associated with the new name. It is generally not sufficient only to search the federal trademark register in the United States, as common law (unregistered) rights could exist that will impact the ability to use the new name. Clearance searches are not limited to the new name, by the way. If there will be logo elements, those should be searched separately. 2) Meaning or connotation of the new name: In the case of a change from a name like “Redskins,” special attention should be paid to whether the new name presents a conflict at a cultural level. For example, is it a word that is considered derogatory of any particular race or nationality? Does the word translate to an unsavory term in a commonly-spoken foreign language? 3) Domain names and social media accounts: Once a name or potential alternate names are selected, the corresponding domain names and social media accounts should be obtained before any applications for the name are filed or the name is publicly announced. 4) Trademark applications: Intent-to-use applications should be filed as early as possible to lock down prospective rights in the new name. If there are alternate names being considered and budget allows, applications should be filed for the alternate names as well. Note that trademark applications in the United States are public record, so there will be no way to keep the name or alternate names secret once the applications are filed. 5) Additional trademarks: In the case of the Washington football team, will there be a new mascot? If so, steps (1) through (4) above should be followed for the name or potential names of the mascot. 6) Copyright ownership: If there will be any logo elements to the new branding that are not created by employees, make sure the designer(s) sign a written assignment assigning their rights to the company. The foregoing are just a few of the legal issues that must be considered before embarking on a rebranding effort. Here at The TMCA, we will follow the renaming developments in D.C. and will let you know if anything interesting happens along the way.

In a 5-4 decision with the majority opinion delivered by Chief Justice Roberts, the Supreme Court held that copyright protection does not extend to annotations in Georgia’s official annotated code. The Code Revision Committee of the State of Georgia (the “Commission”) had sued a company called Public.Resource.Org for posting a digital version of the annotated Georgia code for free on its website. The Commission prevailed in District Court, but the decision was reversed by the Eleventh Circuit, thus setting the stage for the Supreme Court’s decision. The Commission, which is funded with public tax money, compiles the Georgia code along with annotations that include summaries of relevant judicial decisions, summaries of state attorney general opinions, and other reference materials, such as law review articles. The annotations were drafted by Matthew Bender & Co, which is a division of LexisNexis, pursuant to a work for hire agreement that vests any copyright in the State of Georgia. The Court’s holding is rooted in the government edicts doctrine, which states that “officials empowered to speak with the force of law cannot be the authors of—and therefore cannot copyright—the works they create in the course of their official duties.” The basis for this doctrine is that no one party should be able to own the law and arises out of a trio of 19th century Supreme Court decisions that together establish that judges who are carrying out their duty of making and interpreting law cannot be considered the authors of their opinions, including head notes and syllabi, for purposes of copyright ownership. The Court applied a two part test to determine whether the Commission can claim copyright protection in the annotations to the Georgia code: (1) whether the author qualifies as a legislator; and (2) whether the annotations were created in the discharge of legislative duties. The first question was answered in the affirmative, because the Commission serves as an extension of the Georgia legislature. The second question was likewise answered in the affirmative, because the Commission authors the annotations as part of its legislative responsibilities. Justice Thomas dissented, noting that the “ruling will come as a shock to the 25 other jurisdictions” who produce annotated codes in a similar manner as Georgia. In his view, allowing copyright protection for annotations does not violate the government edicts doctrine, because: (1) the annotations are not in and of themselves law; (2) the creators of annotations (e.g., Lexis) are incentivized by copyright law to produce quality work product that can earn them a profit; and (3) the annotations are not required for fair notice of the law. Justice Thomas also asserted that the majority’s rule is difficult to administer, because the first prong (whether the author qualifies as a legislator) is difficult to define. For example, if a body similar to the Commission is made up of legislators and non-legislators, how many legislators must there be for it to become a legislative adjunct? Justice Ginsburg also dissented. While she appeared to accept the majority’s test for application of the government edicts doctrine, she offered three reasons why the annotations do not constitute part of Georgia’s lawmaking process (the second prong of the majority’s test): (1) the annotations are not contemporaneously created and comment on statutes already enacted; (2) the annotations summarize writings in which other parties opine on a given statute; and (3) the annotations are to inform the public and are not addressed to those seated in the legislature. Notwithstanding the dissenting opinions, the key takeaway from the majority opinion is that authorship matters. If legislators produce work product (either on their own or by virtue of a work for hire agreement that deems the legislators or another state entity to be the author) when acting within their legislative capacity, then the government edicts doctrine applies, and there is no copyright protection for that work product. But if a private party produces the work product, then the government edicts doctrine does not apply, and copyright protection is available. Perhaps those 25 other jurisdictions Justice Thomas cites will now look for a way to contract with companies such as Lexis so that Lexis remains the author but still offers the same benefits, such as making a lower-cost version of the annotations available. The majority’s holding does not disturb the fact that works prepared by non-lawmaking officials employed by public universities, libraries, and tourism offices, for example, can still benefit from copyright protection.

In a case where the subject matter (copyrights relating to footage of a salvaged pirate ship) is arguably more intriguing than the question presented, the Supreme Court held that a section of the Copyright Act allowing copyright lawsuits against States is unconstitutional. Under the statute in question—the Copyright Remedy Clarification Act of 1990 (“CRCA”)—a State “shall not be immune [under the Constitution] or any other doctrine of sovereign immunity from suit in Federal court” for copyright infringement. The statute further indicates that States can be held liable for infringement in the same manner, and to the same extent, as private parties. Based on this statute, a videographer named Frederick Allen sued the State of North Carolina for copyright infringement. The specific facts and background on the case can be found in our earlier post here. The Court acknowledges that its precedent allows a federal lawsuit against a State under two conditions: (1) Congress must have enacted unequivocal statutory language abrogating State immunity; and (2) Congress must have had authority to abrogate the State immunity. There is no question that the CRCA satisfies the first question due to its clear language. The second question is the source of the controversy. Allen argued that there are two constitutional provisions that provided Congress appropriate authority to abrogate State immunity for copyright infringement. First, Article I of the Constitution empowers Congress to provide copyright protection (“To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”). Therefore, abrogation of immunity is perhaps the only way to secure a copyright owner’s exclusive rights against State intrusion. In other words, if a State is allowed to use a copyright without permission of the owner, then the owner no longer holds exclusive rights in the copyright. Allen’s second rationale is based on an argument that a copyright is a property right, and is thus subject to due process under the Fourteenth Amendment (“nor shall any state deprive any person of life, liberty, or property, without due process of law”). Writing the majority opinion for the Court, Justice Kagan indicates that the first question has already been answered by the Court’s earlier decision in Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank. In that case, the Court held that the Patent Remedy Act, which stripped the States of immunity for patent suits, was unconstitutional. And, therefore, given the similarity of copyrights and patents as well as the respective statutory provisions at issue, ruling in Allen’s favor would require overruling Florida Prepaid. As for the Fourteenth Amendment question, the Court indicates that for an abrogation statute to be appropriate, it must “be tailored to ‘remedy or prevent’ conduct infringing the Fourteenth Amendment’s substantive prohibitions.” The Court further holds that copyright infringement must “be intentional, or at least reckless” to come within reach of the due process clause. In Florida Prepaid, the Court found that Congress did not identify a pattern of such infringement. Likewise, looking to the legislative history of the CRCA, the Court found that Congress’s findings on copyright infringement were similarly lacking. The majority, however, leaves the door open for Congress by indicating that its holding does not prevent Congress from passing a “tailored statute [that] can effectively stop States from behaving as copyright pirates. Even while respecting constitutional limits, [Congress] can bring digital Blackbeards to justice.” (Justice Thomas concurs with the opinion of the majority, but not with respect to the suggestion to Congress, because “[w]e should not purport to advise Congress on how it might exercise its legislative authority, nor give our blessing to hypothetical statutes or legislative records not at issue here.”). So what does this all mean? As we wrote in our earlier post, without the protections of the CRCA, there is nothing to stop State governments or agencies from infringing the rights of copyright holders, because they can rely on sovereign immunity. That said, a copyright holder may still have a remedy against any private party who participates in a State’s infringement (e.g., an independent contractor or a website host). And, if States begin acting like copyright pirates in a manner deemed intentional or reckless, the Court’s decision here leaves open the door for Congress to enact another, more tailored, statute to address such action.

In the music world, performance rights organizations (“PROs”) serve an intermediary function between songwriters and music publishers and third parties who perform the protected works publicly. Among the largest PROs in the United States are the American Society of Composers, Authors and Publishers (“ASCAP”), Broadcast Music, Inc. (“BMI”), and SESAC (originally, the Society of European Stage Authors and Composers). According to § 106(4) of the Copyright Act, the owner of a copyright in musical works has the exclusive right to “perform the copyrighted work publicly.” Third parties who wish to perform copyrighted material registered with these PROs may obtain a non-exclusive license. Performance, in this case, does not only mean live performances (i.e., musicians playing songs on stage), but it also means playing recorded music, such as background music in a restaurant or dance music in a bar. After acquiring public performance rights from songwriters and publishers, the PROs grant music users the right to publicly perform the copyrighted music. The PROs collect license fees on behalf of the songwriters and music publishers and distribute them as royalties to those member copyright holders whose works have been performed. Licensees frequently include television networks and radio stations, podcasts and other new media, clubs, dance studios, bars, restaurants, and hotels. In its catalog, for example, BMI administers rights for over 14 million compositions. One only needs to take a quick look at the news to conclude that the PROs take their licensing rights seriously. See, for example: BMI sues Mississippi nightclub over music licensing. Owner calls fees legal 'extortion.' Old Town bar is being sued for playing ‘Fat Bottomed Girls,’ other popular songs ASCAP goes after Meadowlark Bar for $27,000 in music copyright lawsuit ASCAP Levels Lawsuit Against Sixth Street Music Venue the Nook Two cases from 2019 offer further illustration of the perils of not securing public performance licenses. First, in March, the Eastern District of Kentucky ruled on the public performance issue, after BMI and the owners of four compositions took action against the owner and manager of the Blue Moon, a bar located in Richmond, Kentucky. BMI became aware that Blue Moon was unlicensed and performing live music publicly. Blue Moon previously had a license with BMI, which had expired, and BMI offered to enter into a new license on multiple occasions. Despite notice from BMI, Blue Moon continued performing unlicensed music. The court ruled in favor of BMI on summary judgment, stating that Blue Moon publicly performed four copyrighted works without authorization. BMI proved that the defendants had publicly performed the works based on an affidavit from their investigator. (Note that the PROs employ private investigators who visit unlicensed establishments to observe whether a license is needed and then report back to the PROs). The defendants argued that they were exempt from the licensing requirements based on a statutory exemption found in the Copyright Act, in this case that the compositions were performed without “any purpose of direct or indirect commercial advantage.” The defendants argued that there is no cover charge when bands play, the band receives no compensation, and thus there is no cash generated from the performance. The court disagreed with this reasoning, and found that because Blue Moon was a profit-making enterprise, the exception did not apply. The court also enjoined Blue Moon from performing music held by BMI, and awarded BMI attorney’s fees, costs, and $14,000 in statutory damages. A few weeks before publication of this post, ASCAP artists scored a victory against an establishment in Nashville called “Frisky Frogs.” Beginning in 2016, ASCAP representatives repeatedly warned Frisky Frogs of the consequences of performing unlicensed ASCAP songs, and even attempted to arrange a license agreement with Frisky Frogs. Despite making over 80 attempts to contact Frisky Frogs, ASCAP’s requests were ignored. This included the owner of Frisky Frogs’ failure to appear at a pre-arranged meeting with ASCAP representatives. Despite ASCAP’s numerous warnings, Frisky Frogs continued to present unlicensed music through performances by a live band, piped-in music, and a disc jockey. The Middle District of Tennessee ruled that Frisky Frogs was directly liable for copyright infringement, stating that Frisky Frogs publicly performed four copyrighted works without authorization. The artists proved that the defendants had publicly performed the works based on the findings of ASCAP’s independent investigator. The principals of Frisky Frogs were also held vicariously liable for the copyright infringement, as they had the right and ability to supervise and control the public performance of the works at Frisky Frogs, and derived a direct financial benefit from the performance of these works. Moreover, given the number of times the defendants dodged ASCAP, and their continuous performance the works despite continuous warning, the court determined that the defendants’ infringement of ASCAP’s rights was a “glaring example of willful infringement.” The court also stated that this willful infringement was exacerbated by the defendants’ failure to cooperate after the initiation of proceedings. The court enjoined Frisky Frogs from performing music held by ASCAP, and awarded the artists’ attorney’s fees, costs, and $40,000 in statutory damages. These cases illustrate that the PROs – and the courts – take music public performance rights seriously. In both cases, the rulings were based on the defendants’ performance of only four songs. These instances serve as reminders that establishments that feature live or recorded music must properly secure public performance licenses prior to performance of the licensed music.

And the new top level domain names just keep on coming. As our readers may know, ICANN, the organization that operates the internet domain name system, authorized the launch of the New gTLD Program – the largest expansion of the generic top-level domain name (“gTLD”) system on the Internet in history. Prior to the launch of this program only 22 gTLDs had been approved and added to the Internet (e.g. .com, .net, .org). Now, you can obtain specialized domain names, such as .bank, .weather, or even .rugby. Now .music has been approved for launch for the purpose of serving the global music community. An entity named DotMusic Limited beat out Google, Amazon, and other interested groups for the right to operate the .music registry. DotMusic states that it will verify registrants to ensure that only the rightful owner of a name can obtain a corresponding domain name. DotMusic further promises safeguards to protect against both trademark and copyright infringement, including investigation practices, penalties, and takedown procedures. To register a .music domain name, registrants must (1) belong to a music community membership organization (“MCMO”) and (2) meet clear membership criteria demonstrating “requisite awareness and recognition of their community.” MCMOs, according to DotMusic, constitute “a majority of all global music entities involved in the legal production, distribution and promotion of music,” and we assume therefore include performing rights organizations, such as ASCAP and BMI, as well as music publishers and record companies. As far as we can tell, the membership criteria has yet to be defined, but we assume most musicians belonging to an accredited MCMO will qualify. If you are interested in a .music domain name and not already a member of an MCMO, now is the time to consider joining one. .music domain names can only be registered if they are: the entire or portion of the applicant’s name; an acronym representing the applicant; a name that recognizes or generally describes the applicant; or a name related to the applicant’s mission or activities. Once launched in 2020, .music domain names will be available to verified members in the following order: (1) sunrise, (2) MCMO members, and (3) general availability. .music will use a Globally Protected Marks List (link here). Registration in the sunrise period will be open to brands and trademarks in the Trademark Clearinghouse (“TMCH”). A TMCH registration entitles trademark owners to pre-register domain names corresponding to their registered marks, typically for a premium price. We will keep our readers updated as more details emerge on the membership requirements and registration process. In the meantime, interested musicians might consider seeking registration of their trademarks in the TMCH to ensure early access to their .music domain name of choice.

On June 3, 2019, the Supreme Court agreed to decide whether Congress validly abrogated State sovereign immunity for copyright infringement claims by passing the Copyright Remedy Clarification Act of 1990 (“CRCA”), 17 U.S.C. § 511. The facts of the case before the Court began in 1717 in the Caribbean Sea. There, infamous pirate Edward Teach (a.k.a. Blackbeard) captured the French merchant vessel that would become his flagship, Queen Anne’s Revenge. A year later, Blackbeard ran aground near Beaufort, North Carolina, and abandoned the ship. Nearly 300 years later, in 1996, the private salvage firm, Intersal, Inc. rediscovered Queen Anne’s Revenge, which was now the property of North Carolina. Intersal began a fifteen-year salvage effort, under an agreement with North Carolina. Intersal retained videographer Fredrick Allen to document the salvage efforts. Allen took video footage and still photos, which he then registered with the U.S. Copyright Office. Allen, Intersal, and North Carolina first quarreled over the copyrighted material in 2013, when North Carolina posted several of Allen’s photos on a state website. The parties ultimately entered into a settlement agreement that clarified each party’s right to use the material. Allen brought the instant suit in December 2015, alleging copyright infringement, state law unfair competition, and state law civil conspiracy claims. Finally, Allen challenged the validity of N.C. Gen. Stat. § 121-25(b), which states: “All photographs, video recordings, or other documentary materials of a derelict vessel or shipwreck or its contents, relics, artifacts, or historic materials in the custody of any agency of North Carolina government or its subdivisions shall be a public record.” Allen argued that North Carolina passed the statute in 2015 in bad faith with the intention to invalidate his claim of copyright rights. In response, North Carolina raised various immunity defenses. Allen countered by arguing that Congress abrogated sovereign immunity for copyright claims in the CRCA. The only issue before the Supreme Court involves the issue of the CRCA’s validity. As a general rule, sovereign immunity means that states cannot be sued in federal court. The CRCA purports to provide a broad exception to state sovereign immunity. Essentially, the CRCA opens states to all of the same claims and remedies that copyright owners can bring against private parties. Allen lost on this issue in the Fourth Circuit. Writing for the Circuit Court, Judge Niemeyer based his decision on Fla. Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank. Florida Prepaid was a patent case, in which the Supreme Court struck down a similar law that abrogated sovereign immunity for patent infringement. Without a statutory exception, copyright owners must fit their infringement claims within narrow exceptions that severely limit the available remedies. One such exception, established by the Supreme Court in Ex Parte Young, allows private citizens to sue to enjoin state officials to obtain prospective relief from ongoing violations of federal law. Based on this exception, Allen argued that North Carolina’s posting of his copyrighted material online was an ongoing violation. However, North Carolina had since taken down the material, which sank any colorable argument Allen could float about North Carolina’s ongoing infringement. The real world problem posed by the facts in Allen’s case, is that without a broad exception to sovereign immunity like the CRCA, copyright owners have very little protection against state governments or agencies infringing their works. Imagine your photos appear without your consent on the Minnesota Department of Natural Resources website. You can contact the Department and ask it to remove your copyrighted material, but the Department has relatively little monetary incentive to comply with your request. Against a private citizen, you could recover actual or statutory damages under the Copyright Act, even if the private citizen subsequently stopped infringing. The Ex Parte Young exemption only allows equitable relief. Even if you bring suit, the Department could remove the photo, ending both the ongoing infringement and case itself. The Department, at most, could be forced to remove the photo, but only after you’ve brought suit and won. And by then, the damage has been done. Without the CRCA, copyright owners have little leverage against state infringers. While the CRCA may seem obscure to most lawyers (copyright lawyers included), the Supreme Court’s decision could tip the balance towards States, leaving copyright owners disproportionately vulnerable to State infringers.

As we previously reported on our blog, the doors to the public domain will open in the United States for the first time since 1998.  On January 1, 2019, any works published in the United States in 1923 or prior are freed from the shackles of copyright protection and can be copied, remixed, distributed, etc. without authorization from the copyright owner. According to some brief internet research, 1923 saw the following cultural highlights, to name just a few: Louis Armstrong made his first studio recording Two iconic sports stadiums opened: the original Yankee Stadium in New York and the original Wembley Stadium in the United Kingdom The Hollywood Sign in California was inaugurated The Walt Disney Company was formed The film “The Ten Commandments” was released (** Cecil B. DeMille’s silent film version, not the version starring Charlton Heston that was released in 1956) Robert Frost’s “New Hampshire” poetry collection was published, which includes “Stopping By Woods on a Snowy Evening” William Carlos Williams published the poetry collection “Spring and All,” which includes “The Red Wheelbarrow” So, why has the public domain been effectively sealed in the United States for over 20 years? When the 1976 Copyright Act became effective on January 1, 1978, the term of copyright was set at life of the author plus 50 years.  The term for works created before January 1, 1978, was 75 years (though the blogger notes that calculating the term of protection for pre-1978 works can be complicated and not all works benefited from such a lengthy term based on a number of circumstances, the discussion of which is beyond the scope of this post).  Hence, as the late 1990s drew near, key players in the United States entertainment industry (including Disney, Time Warner, Universal, and Viacom) started recognizing that works created in the 1920s would soon lose copyright protection.  A notable oft-cited example in copyright lore is Walt Disney’s “Steamboat Willie” cartoon that was copyrighted in 1928 and would have entered the public domain on January 1, 2004. These industry giants convinced Congress to extend the term of copyright protection for an additional 20 years.  This extension is known as the “Sonny Bono Copyright Term Extension Act,” named after Sonny Bono, because he was one of the original sponsors of similar legislation and passed away nine months before the bill was signed into law by President Clinton on October 27, 1998.  The effect of the term extension is generally as follows: For works created on or after January 1, 1978, the term is life of the author plus 70 years. For works made for hire and anonymous or pseudonymous works, the term is 95 years from publication or 120 years from creation, whichever comes first. For works created prior to January 1, 1978, and still under protection, the term is 95 years from the original copyright date. This means the first depiction of Mickey Mouse in a sound cartoon enters the public domain on January 1, 2024.  Will we see lobbying efforts to keep Mickey locked safely away in the “Disney Vault” for an additional term of protection?  Only time will tell, but if it happens, you can rest assured that we will be writing about it here at The TMCA.

In a decision issued on December 12, 2018, the Second Circuit refused to recognize application of the first sale doctrine to a service that had been established as a marketplace for resale of digital music files.  Under the first sale doctrine (set forth in Section 109(a) of the Copyright Act), owners of legally-obtained copies of copyrighted works can resell those copies without violating the rights of the copyright holder.  This is the reason we have stores and websites that focus on the sale of secondhand books, CDs, and other physical media. The Second Circuit’s case involved ReDigi, which was an internet platform established in 2009 to allow the resale of digital music files that had been lawfully purchased on iTunes.  The ReDigi platform featured a mechanism for effecting transfer of a seller’s digital music file so that once the file was transferred to ReDigi’s server, it would be deleted from the uploader’s device.  According to ReDigi, its software ensured that there was never a complete version of the digital music file in two places at the same time.  The process would then be replicated to transfer the file from ReDigi’s server to a buyer’s device.  ReDigi’s software also continuously monitored an uploader’s computer and connected devices to detect duplicate files.  If duplicate files were found, ReDigi could suspend a user’s account. Capitol Records, Capitol Christian Music Group, and Virgin Records sued ReDigi for copyright infringement in 2012.  The district court for the Southern District of New York found in favor of the plaintiffs and awarded $3.5 million in damages.  In affirming the judgment, the Second Circuit concluded that ReDigi’s service violated the copyright owners’ exclusive rights of reproduction under the Copyright Act. In an opinion authored by Judge Pierre Leval, the Second Circuit acknowledged that ReDigi was acting in good faith in developing its platform, and was “not making efforts in the shadows to infringe on copyrights.”  The key problem for the court is that the first sale doctrine as codified in the Copyright Act relates to distribution of copyrighted works and not to reproduction of those works.  Accordingly, because the Second Circuit determined that the ReDigi platform creates a reproduction of the music file, the first sale doctrine was inapplicable.  Despite ReDigi’s argument that its technology ensured the complete music file never existed in two places simultaneously, the court concluded that “each transfer of a digital music file to ReDigi’s server and each new purchaser’s download of a digital music file to his device creates new [copies].”  The court also seemed particularly concerned that there would be no way to ensure the seller of a music file did not retain a copy.  For example, if a user had copied the file to an external hard drive prior to uploading the file to ReDigi’s server and the user never again attached the external hard drive to the user’s computer, ReDigi would not find the duplicate copy. The Second Circuit did not, however, shut the door completely on application of the first sale doctrine in the digital context, acknowledging that “other technology may exist or be developed that could lawfully effect a first sale.”  The court posits that a person could place digital song files on a thumb drive and sell the thumb drive and it also cites William Patry’s copyright treatise for the observation that the first sale doctrine would permit sale of an iPod that contains lawfully made digital music files.  (In the author’s opinion, neither of these options addresses the court’s key holding that the first sale doctrine is inapplicable when reproduction of the digital music files is involved.  In fact, both of the examples given by the court most likely involve a reproduction of the file before the sale occurs.  In the thumb drive example, unless the owner originally downloaded the song files directly to the thumb drive, the act of placing the songs on the thumb drive before selling the songs requires reproduction of the song files.  Likewise, the typical manner in which users transfer songs to their iPods (or now, more likely, their iPhones) is to download the songs from iTunes onto their computer or an external hard drive and then to upload them onto the iPod.  Hence, the digital sound files residing on the iPod to be sold may very well be reproductions of the originally-purchased file.  If either the flash drive or the iPod were to be sold containing these reproductions, then the first sale doctrine cannot be applied.  However, if the original song owner were to sell his or her hard drive where the songs all were originally downloaded, this sale would presumably be within the first sale doctrine under the court’s reasoning.) Turning back to the Second Circuit’s analysis, the court also held that ReDigi’s actions did not amount to fair use under test set forth in Section 107 of the Copyright Act, because the copying of the files was not transformative and essentially replaced the copyright owner’s marketplace for selling digital music files. Finally, in closing the opinion, Judge Leval issues the time-honored sentiment that can be found in federal court opinions throughout history and across all areas of law:  If you have persuasive arguments to support a change in the law, then lobby Congress to codify those changes in statute, because the court cannot “substitute our judgment for that of Congress.”

On October 10, 2018, President Trump signed the Marrakesh Treaty Implementation Act (“MTIA”), which will allow the United States to join the Marrakesh Treaty to Facilitate Access to Published Works for Persons Who Are Blind, Visually Impaired or Otherwise Print Disabled.  The net result of the United States joining the Treaty should be the availability of a wide range of new materials in accessible formats to individuals who are blind or who have disabilities. As described by the World Intellectual Property Office, “[t]he Treaty has a single objective: to increase access to books, magazines and other printed materials for people with print disabilities . . . by making it easier for accessible copies to be created and shared across international borders.”  The Marrakesh Treaty was formally adopted globally on June 27, 2013.  It entered into force for an initial group of twenty member countries, including Canada and Mexico, on September 30, 2016.  By the time the United States becomes a full member, over forty countries will have joined. To accede to the Marrakesh Treaty, the United States was required to amend portions of the Copyright Act, which is a task that began on October 2, 2013, when the United States signed onto the Marrakesh Treaty.  Section 121 of the Copyright Act already contains certain limitations on exclusive rights of copyright owners to allow certain authorized entities (namely, nonprofits and governmental agencies who have a primary mission to provide services to the blind and disabled) to reproduce and distribute works to blind and disabled persons, but the MTIA redefines and expands certain key terms as follows: Current Section 121 Amended Section 121 Applies only to published, non-dramatic works Applies to published literary works as well as musical works fixed in text or notation, but specifically excludes “standardized, secure, or norm-referenced tests and related testing material, or to computer programs, except the portions thereof that are in conventional human language” Eligible persons are defined only as “Blind or other persons with disabilities” Eligible persons are considered one of the following: (1) blind; (2) “has a visual impairment or perceptual or reading disability that cannot be improved”; or (3) “is otherwise unable, through physical disability, to hold or manipulate a book or to focus or move the eyes to the extent that would be normally acceptable for reading” Limits distribution to “specialized formats,” which generally means braille, audio, or digital text, or large print “Specialized format” becomes “Accessible format,” which means an alternate manner or form to permit an eligible person to “have access as feasibly and comfortably as a person without such disability” The MTIA also adds a new Section 121A to the Copyright Act, the purpose of which is to allow for the import and export of works in accessible formats between the United States and other Marrakesh Treaty members by authorized entities.

Under U.S. Copyright Law, copyright protection affixes to “original works of authorship fixed in any tangible medium of expression.”  While copyright registration is not required to claim copyright rights, Section 411(a) of the Copyright Act requires registration prior to commencement of a federal copyright lawsuit.  The registration requirement has not been interpreted consistently across the federal circuit courts. We have previously reported about the Eleventh Circuit’s decision in Fourth Estate Public Corporation v. Wall-Street.com, LLC.  There, the court adopted the so-called “registration approach,” which means that a plaintiff must be in possession of a registration certificate issued by the United States Copyright Office before bringing suit.  Accordingly, the Eleventh Circuit dismissed the plaintiff’s claims because it had not registered the works at issue before it filed its lawsuit. In addition to the Eleventh Circuit, the Tenth Circuit is on record as adhering to the “registration approach.” Other circuit courts, such as the Fifth Circuit and Ninth Circuit, have followed the “application approach,” which means that a plaintiff must only have filed its application for copyright registration with the Copyright Office. The remaining circuit courts have either not yet adopted a position or have not been consistent in interpreting the meaning of “registration” under Section 411 of the Copyright Act. The Copyright Office, in its amicus brief to the Supreme Court, has backed the registration approach, stating that the “text, structure, and history of the Copyright Act confirm that the Register [of Copyrights] must have acted on an application for copyright registration—either by approving or refusing registration—before the copyright owner may institute a copyright-infringement suit.”  The Copyright Office further states that “registration” must be read as meaning official recording of an accepted copyright claim and that following the application approach renders portions of Section 411(a) superfluous. On June 28, 2018, the United States Supreme Court agreed to take up the issue by granting review of the Fourth Estate case. For what it’s worth, the Supreme Court may have already signaled its position on the issue in the “Raging Bull” decision a few years ago, stating: “Although registration is “permissive,” both the certificate and the original work must be on file with the Copyright Office before a copyright owner can sue for infringement.”  (emphasis added) Here at The TMCA, we will keep you apprised of all meaningful developments in this important copyright case.

Shortly before Christmas 2017, Gibson Brands sued Funko, a maker of pop culture dolls, for trademark infringement relating to several of Funko’s figurines of famous musicians. Among the dolls named in the complaint are Slash (Guns N’ Roses) and Kirk Hammett (Metallica). Gibson’s complaint centers on rights it claims to the shapes of the various guitars that the musicians are holding in the figurines. Gibson cites protection for the following designs (depicted below from federal registration records with links to the USPTO for further reference): Les Paul Body Shape Design(Reg. No. 1782606) Flying V Body Shape Design(Reg. No. 2051790) Flying V Headstock Design(Reg. No. 3976202) Explorer Body Shape Design(Reg. No. 2053805) Kramer Peghead Design(Reg. No. 1567052)   Among Gibson’s causes of action is a claim for infringement of trade dress, which federal courts have defined as the “image and overall appearance of a product [that] embodies that arrangement of identifying characteristics or decorations . . . that makes the source of the product distinguishable from another and promotes its sales.”  Gibson has been fairly active in suing companies it believes have infringed its trade dress rights, including Paul Reed Smith Guitars (trade dress claim dismissed in favor of straight trademark infringement claim), Viacom (involving a SpongeBob SquarePants Flying V Ukulele), and John Hornby Skewes (claiming counterfeiting of body and headstock shapes; case ultimately dismissed). There are generally two types of trade dress: product packaging and product design. Gibson’s claim falls into the category of product design trade dress, which the Supreme Court has held can never be inherently distinctive (that is, it cannot immediately function as an indication of source to the average consumer). Therefore, to succeed against Funko, Gibson will need to demonstrate acquired distinctiveness of its product designs. It will also need to prove its protected designs are similar to those depicted on the Funko Dolls, that its product design trade dress is not functional (in other words, whether the design has some utilitarian feature), and that there is a likelihood of confusion between the parties’ products. The Funko case is a timely reminder to companies who manufacture and sell products. All aspects of a product should be evaluated for potential intellectual property conflicts before bringing the product to market. In the Funko example, there are several potential sources of rights: Right of publicity – depiction of the individual musician. Trademark – The band and musician’s name; brands displayed on clothing worn by the musician, on the guitar, or other items that are part of the figurine; and the design of any objects that are part of the figurine (such as the guitar, sunglasses, or even the shape of Slash’s hat, for example). Copyright – The band’s logo, any stickers or emblems featured on the figurine or items that are part of the figurine, and possibly any tattoos. Once these potential rights are identified, a careful analysis should be undertaken as to which rights should be licensed and which could possibly be defended as fair use under relevant law. On the flipside, companies who produce products with unique, non-functional product designs should consider registering their trade dress with the USPTO. Such applications will potentially be more cost- and time- intensive than, say, a word trademark application, because of the requirement to prove acquired distinctiveness in the product design. Applicants can skip the acquired distinctiveness claim and obtain registration on the Supplemental Register (provided the USPTO does not issue a functionality refusal and the design is in current commercial use), but a registration on the Principal Register is more desirable because it carries a presumption of validity in federal court proceedings. Although an examiner may be willing to accept a claim of acquired distinctiveness based on longstanding use of trade dress, the more likely scenario is the need to prove acquired distinctiveness through evidence, including: length of use; sales revenue and marketing expenditures; submissions of advertising featuring the trade dress; affidavits from customers attesting to the design’s distinctiveness; and examples of third-party media discussing or featuring the design.

If your company hosts any type of user generated content on a website, then you should appoint and record a Digital Millennium Copyright Act (“DMCA”) agent with the Copyright Office to take advantage of safe harbor provisions set forth in the Copyright Act. As we wrote in a post on November 2016, the Copyright Office has instituted a new online registration system for DMCA agents.  Paper filings are no longer accepted, and any DMCA agents that have been recorded with the Copyright Office on paper will cease to be effective as of December 31, 2017.  Therefore, any company that does not re-register its DMCA agent via the electronic registration system will lose its safe harbor protections. If you cannot remember whether your company has a DMCA agent recorded with the Copyright Office or whether you have filed under the new online system, you can check here.  If you don’t find your company name, then there is no time like the present to make the electronic filing.

Since March 1, 1989, the United States has been a member of an international copyright treaty named the Berne Convention (formally called the “International Union for the Protection of Literary and Artistic Works”).  This treaty was established on September 8, 1886 in, of course, Berne, Switzerland.  The World Intellectual Property Organization, located in Geneva, Switzerland, is charged with administration of the treaty and, at present, there are 174 contracting nations. The Berne Convention guarantees that works shall be protected in countries other than the author’s country of origin to the same degree the foreign country protects works of its own national authors.  Moreover, “[t]he enjoyment and the exercise of these rights shall not be subject to any formality; such enjoyment and such exercise shall be independent of the existence of protection in the country of origin of the work.”  Berne Convention art. 5(2) (Paris text).  The United States took a long time to join the Berne Convention because of the formalities required by U.S. Copyright Law, including use of proper copyright notice and registration as a prerequisite to bringing legal action. The no-formalities protocol of the Berne Convention does not mean, however, that contracting parties cannot impose additional requirements under their national laws, either for domestic copyright owners or to take advantage of certain additional remedies under national law.  So when it joined the Berne Convention, the United States decided to maintain certain formalities for domestic works, while dispensing with formalities for foreign-based works.  For example, Section 411(a) of the Copyright Act was amended to read:  “no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made” (emphasis added).  Accordingly, owners of foreign works may bring an action for copyright infringement in U.S. courts without having obtained a registration from the U.S. Copyright Office, whereas U.S. citizens must still obtain a registration to bring a lawsuit. Most notably, however, and the purpose of this post is to highlight the fact that a foreign copyright owner who brings suit in the United States without a corresponding United States copyright registration can likely only obtain an injunction, actual damages, and/or an infringer’s profits as a remedy.  Statutory damages, which Congress included in the Copyright Act as an incentive for timely registration of works, and which a copyright plaintiff can elect instead of having to prove actual damages and profits, are not available to foreign copyright owners who have not registered their works with the U.S. Copyright Office. Statutory damages are a powerful tool for a copyright plaintiff.  To qualify for statutory damages, a work generally must either be registered within three months after first publication of the work or before the date the infringement occurs.  At present, the range of statutory damages a court can award range from $750 to $30,000, though a court can increase the award to $150,000 in cases of willful infringement. Courts have affirmed that although the Copyright Act does not require registration of foreign works to bring an infringement lawsuit, the Act does not exempt registration with respect to statutory damages.  See, e.g., Football Association Premier League Ltd. v. YouTube Inc., 633 F. Supp. 2d 159, 162-63 (S.D.N.Y. 2009).  Further, both the House and Senate Reports on the implementation of the Berne Convention specifically note that the imposition of a registration requirement to qualify for statutory damages is not inconsistent with the no-formalities requirements of the Berne Convention. The takeaway is that owners of foreign copyrights that qualify for protection in the United States under the Berne Convention should obtain U.S. copyright registrations for their most important works, as doing so preserves the ability to claim statutory damages in a lawsuit.  Otherwise, foreign copyright owners could find themselves faced with the time-consuming and expensive effort of proving actual damages and profits in infringement actions.

We recently provided some commentary on Gene Simmons and his application to register the “devil horns” rock and roll hand symbol.  Well, you can now KISS that application goodbye, as Mr. Simmons has expressly abandoned his federal trademark application.  No details on the reason for the abandonment were included in the filing with the USPTO, nor does it appear Mr. Simmons has made any public comment on the application. Now rockers everywhere can breathe a sigh of relief that they will be able to sport their devil horns without Mr. Simmons telling them to kiss off.

On June 9, 2017, Gene Simmons of Kiss rock band fame applied with the United States Patent and Trademark Office (“PTO”) to register the following mark for “Entertainment, namely, live performances by a musical artist; personal appearances by a musical artist” in Class 41:         Simmons describes the mark thusly: “The mark consists of a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular.” Simmons claims to have first used the mark anywhere and in interstate commerce at least as early as November 14, 1974, which, according to Wikipedia, was the year of Kiss’ first major tour.  As his evidence of use, he submitted a photo of himself displaying the sign while standing next to Dave Grohl of Nirvana and Foo Fighters fame. This hand gesture, often referred to as some variation of “devil horns,” has become synonymous with rock and roll, although people certainly disagree about whether the thumb should be extended (authors’ opinion: it shouldn’t be).  Unsurprisingly, a quick internet search will reveal dozens of musicians using this hand gesture, with or without the thumb extended, including Metallica, Dave Navarro, and even John Lennon on the cover of the Beatles 1966 single for “Yellow Submarine,” which predates Simmons’ claimed first use.  Even politicians have been seen using the symbol, including Bill Clinton, Barrack Obama, and Sarah Palin. The PTO is unlikely to allow this application to Rock and Roll All Nite.  When Simmons filed the application, he had to make a declaration that “To the best of [his] knowledge and belief, no other persons, except, if applicable, concurrent users, have the right to use the mark in commerce.”  The examining attorney will likely take note of the widespread use of the symbol to refuse the application on grounds that Simmons does not control or own exclusive rights to it.  The examining attorney may also refuse to accept the specimen, which does not appear to show the mark in use with entertainment services.  Although Dave Grohl does look pretty entertained… Even if the PTO were to allow registration of the mark, it seems Simmons would have an incredibly difficult time enforcing any rights he might claim in the mark.  He would need to show that consumers are likely to be confused about the source of services when others use the hand gesture.  Essentially, his argument would be that concertgoers would be confused as to whether a musician performing at a concert they are attending is, in fact, Simmons because the musician used the hand gesture.  Outside of a very good Kiss cover band, this seems unlikely.  Perhaps Simmons will employ some of his signature makeup to help him keep a straight face…  

In a decision announced today, the Supreme Court held that Varsity Brands is entitled to assert copyright protection in two-dimensional designs featured on its cheerleading uniforms.  These designs consist of various lines, chevrons, and colorful shapes.  Varsity Brands had sued Star Athletica for copyright infringement, alleging that Star’s uniform designs were substantially similar to Varsity Brands’ designs. The Copyright Act makes “pictorial, graphic, or sculptural features” of the “design of a useful article” (i.e., an article having an intrinsic utilitarian function) eligible for copyright protection only if those features can be separated from and can exist independently of the useful article.  The key issue in the case is whether Varsity Brands’ design elements are separable from the cheerleading uniforms on which they are featured. The District Court had ruled against Varsity Brands on the ground that a cheerleading uniform is inseparable from its colored designs, and therefore the designs on the uniforms were not entitled to copyright protection.  The Sixth Circuit reversed on appeal, concluding that the designs of Varsity Brands’ uniforms were separable from the functionality of the uniforms themselves.  The Sixth Circuit also found it significant that Varsity Brands’ designers created their designs without reference to the functionality of the uniform, but instead simply strived to create combinations of colors and shapes that were striking.  The decision to place a design on a uniform was only made after a design concept was completed.  The Sixth Circuit identified nine different approaches courts and scholars had been taking to determine whether a design feature is separable from a useful article. The Supreme Court today crystallized the appropriate test for protection by holding that “the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.”  The Supreme Court rejected the oft-cited distinction between conceptual separability and physical separability, and instead said the language of the Copyright Act supports conceptual separability, even if the design at issue can only be “imagined apart from the useful article.” The approach taken by the Supreme Court is consistent with both its past decision in Mazer v. Stein (which was decided under the 1909 Copyright Act and involved a statuette depicting a dancer intended for use as a lamp base) and with the language of the current Copyright Act, specifically Sections 101 and 113(a).  The Court made clear that the Copyright Act extends protection to pictorial, graphic, and sculptural works “regardless of whether they were created as freestanding art or as features of useful articles.” The key takeaway is confirmation that designs featured on useful articles are protectable under copyright law if they can be perceived independently as a 2-D or 3-D work of art and if they would otherwise qualify for copyright protection.  Accordingly, copyright owners can prohibit reproduction of such designs not only on similar useful articles but in any other medium of expression.  The protection afforded under copyright does not extend, however, to preventing anyone from manufacturing the useful article without any of the design features present.

The Lanham Act prohibits registration on the Principal Register of a mark that is “primarily merely a surname” unless an applicant can show that the mark has acquired secondary meaning such that consumers perceive the surname as an identifier of source.  15 U.S.C. § 1052(e)(4).  Alternatively, a surname mark can be registered on the Supplemental Register, which is the junior federal register for marks that are considered not distinctive enough to be registered on the Principal Register.  Because there are numerous benefits associated with registration on the Principal Register, applicants often elect to argue against surname refusals. Federal courts and the Trademark Trial and Appeal Board have held that a term is primarily merely a surname if its primary significance to consumers is that of a surname when viewed in relation to the goods or services for which registration is sought.  This determination is made on a case-by-case basis, and there is no rule as to the amount or type of evidence necessary to demonstrate whether a mark would be considered primarily merely a surname.  Typically, the Board and trademark examiners have used the following five-part inquiry to determine whether the primary significance of a term is as a surname: Whether the surname is rare. Whether the term is a surname of anyone connected with the applicant. Whether the term has any recognized meaning other than as a surname. Whether the term has the structure and pronunciation of a surname. Whether the stylization of the mark is distinctive enough to create a separate commercial impression. These factors are known as the Benthin factors, derived from the Board’s decision in In re Benthin Management GmbH, 37 USPQ2d 1332 (TTAB 1995). The Board clearly felt more attention to these issues was necessary, as it issued three precedential opinions in surname registration cases in the latter part of 2016.  The unifying lesson of these cases is that the focus of the analysis will be whether the purchasing public will perceive a surname mark as having primary significance as a surname. In September, the Board upheld refusal of an application for the mark ALDECOA on the ground that ALDECOA is primarily merely a surname.  In re Eximius Coffee, LLC, 120 USPQ2d 1276 (TTAB 2016).  Although the Board found that the Aldecoa family had involvement in Applicant’s business and the name did not have any recognized significance other than as a surname, the Board also acknowledged that the ALDECOA surname is rare.  With respect to this latter point, the Board cautioned that the Lanham Act does not exempt registration of surname marks that are “shared only by a few, or provide that the purpose of the prohibition is to protect others’ rights to use their surnames except for those with uncommon surnames.  The only issue to be determined under the statute is whether a term ‘is primarily merely a surname.” Also in September, the Board issued its opinion in In re Integrated Embedded, 120 USPQ2d 1504 (TTAB 2016), in which it upheld refusal of registration of the mark BARR GROUP as primarily merely a surname.  In this case, the Board found that Michael Barr was applicant’s founder and that consumers would encounter Mr. Barr’s name in numerous key places on the applicant’s website, such that the consumers would likely view BARR as a surname.  Moreover, the Board held that the inclusion of the descriptive term GROUP in the mark does not alter the surname significance because it merely creates a perception of people that are led by an individual with the surname BARR. Finally, in November, the Board handed down its decision in In re Adlon Brand GmbH & Co. KG, 120 USPQ2d 1717 (TTAB 2016), refusing registration of the mark ADLON as primarily merely a surname.  The Board doubled-down on its emphasis on the importance of whether the public would perceive a mark as primarily merely a surname.  The Board bemoaned that “rather than using [the Benthin] factors as guidelines, practitioners and examining attorneys have often interpreted them with a rigidity that is not warranted.”  The Board cautioned that a surname’s rareness is not indicative of the amount or type of evidence that is necessary to establish whether the mark has primary significance to the purchasing public as merely a surname.  Additionally, although Applicant had argued that the public would perceive ADLON as having trademark significance, the Board stated that trademark law recognizes that functioning trademarks may have various non-distinctive meanings, including as surnames, “which may be appreciated by customers even though they primarily understand the mark to be source-indicating.”  After consideration of all of the factors and evidence, the Board found that applicant failed to demonstrate that the term ADLON had any significance that would be perceived by the public other than as a surname. The takeaway from this trilogy of cases is that Applicants facing surname refusals should not mechanically focus on the Benthin factors as proving or disproving surname significance.  Instead, even if any of the factors are decidedly against applicant (e.g., if the mark is the surname of a founder or important employee), applicants should focus their arguments on why the purchasing public will not perceive the mark as primarily merely a surname.