MVS Filewrapper® Blog: USPTO Cancels Washington, D.C. NFL Franchise's Trademark Registrations

The United States Patent and Trademark Office issued a decision yesterday cancelling six federal trademark registrations owned by the Washington, D.C. National Football League franchise.  The cancellation proceeding was brought by five Native American petitioners on the basis that the marks disparage persons or bring them into contempt or disrepute in violation of 15 U.S.C. § 1052(a).  The Trademark Trial and Appeal Board (TTAB) panel of three Administrative Trademark Judges sided with the petitioners, cancelling all six of the challenged registrations. 


The registrations in question were all obtained between 1967 and 1990 on behalf of the Washington NFL franchise, and are all word marks.  The registrations were previously challenged in 1992 in a similar proceeding that also challenged the team logos without the word marks.  In the prior proceeding the TTAB held that the marks were disparaging to Native Americans when registered and ordered the registrations canceled.  The Washington NFL franchise appealed the decision in the prior proceeding to the U.S. District Court for the District of Columbia, who reversed the decision as barred by the doctrine of laches. 


The TTAB panel found that the five petitioners had standing to bring the cancellation proceeding, and were not barred from doing so by the doctrine of laches. The TTAB panel further found that the alleged honorable intent and manner of use of the term did not contribute to the determination of whether the marks were disparaging, but rather the sole issue was whether a substantial composite of the referenced group found the term to be disparaging in the context of the Washington NFL franchise during the time period when the registrations were obtained (1967-1990). 


The TTAB consulted evidence that reflected the sentiments of Native Americans, including a resolution passed by the National Congress of American Indians, various reports and testimony, newspaper articles, official records, and letters, and concluded that the substantial evidence may have disparaged a substantial composite of Native Americans at the times of the registrations.


Administrative Trademark Judge Bergsman dissented in the opinion on the basis that the petitioners had not shown by a preponderance of the evidence that a substantial composite of Native Americans found the marks to be disparaging in connection with the Washington NFL franchise during the relevant time frame.


The full decision and additional information are available here.  

Ninth Circuit: Filing copyright application sufficient to bring suit under Section 411(a)

In a decision last week, the Ninth Circuit held the filing of an application for registration with the copyright office is sufficient to meet the requirement that a copyright be "registered" before suit is brought under 17 U.S.C. § 411(a).  In the first circuit court decision on the subject since the Supreme Court's Reed Elsevier decision (holding the registration requirement of § 411(a) is not jurisdictional), the Ninth Circuit took the position that the statute was ambiguous, and that the "application" approach better comported with the purpose of the registration requirement.

The decision deepens the circuit split on the subject, with the Fifth, Seventh, and Ninth Circuits following the "application" approach, and the Tenth and Eleventh following the "registration" approach.  This continues to be an issue that would benefit from either Congressional action or a definitive ruling from the Supreme Court, something the Court declined to do in Reed Elsevier.

More detail of Cosmetic Ideas, Inc. v. IAC/InteractiveCorp after the jump.


Supreme Court: Registration requirement of 411(a) not jurisdictional for copyright claims

Today the Supreme Court decided Reed Elsevier, Inc. v. Muchnick, a case regarding whether the registration requirement of 17 U.S.C. § 411(a) is jurisdictional or a claim processing rule. The Court held the requirement to be nonjurisdictional.

The case involves a class action for copyright infringement by freelance journalists based on republication of works in electronic databases that originally appeared in, for example, newspapers.  Some members of the class had copyright registrations, some did not.  Nevertheless, the district court certified the class and approved the proposed settlement agreement.  The Second Circuit sua sponte raised the issue of jurisdiction, and eventually held the district court lacked jurisdiction to enter an order regarding the unregistered copyrights by virtue of § 411(a).

The Supreme Court disagreed, and held the registration requirement of § 411(a) did not prevent a court from entering an order affecting unregistered copyrights.  Specifically, the Court held there was nothing in the statute that indicated Congress intended the requirement to be jurisdictional.  Notably, the Court observed § 411(a) did not "clearly state[]" that its requirement was jurisdictional, and also explicitly permits claims involving unregistered works in certain circumstances.  This was inconsistent with a jurisdictional requirement, and therefore the district court had jurisdiction to approve the settlement agreement even though it adjudicated claims for unregistered copyrights.

The Court left the question as to whether district courts should sua sponte dismiss copyright cases where the Plaintiff is asserting an unregistered copyright for another day.

More detail of Reed Elsevier, Inc. v. Muchnick after the jump.


U.S. Copyright Office begins online registration system today

Today the U.S. Copyright Office will officially begin accepting registrations for some works online.  The works that may be registered online are "basic claims" for literary, visual arts, and performing arts works (including motion pictures, sound recordings and single serials).  A "basic claim," which is eligible for online registration must be one of:

  1. a single work;
  2. multiple unpublished works by the same author(s) and owned by the same claimant; or
  3. multiple published works all first published together in the same publication on the same date and owned by the same claimant.

The benefits of filing online are:

  • reduced filing fee of $35 (compared to $45 for a basic claim);
  • faster processing time;
  • earlier effective date of registration (the effective date is the date the complete application is received by the Copyright Office, so online filing eliminates the delay of mailing);
  • online status tracking;
  • secure payment by credit or debit card, electronic check or Copyright Office deposit account; and
  • the ability to upload certain categories of deposits directly into eCO as electronic files.

The system has been in beta testing the last several months.  Read the press release regarding the launch here.

Update (4:45):  The system is now available at this link.

Ninth Circuit: No statutory damages for continuing infringement that began before registration

In a decision last week, the Ninth Circuit reversed a district court's award of statutory damages for copyright infringement and affirmed the district court's default judgment award of attorney's fees for trademark infringement.  The plaintiff's copyright registration had an effective date of approximately one month after the first act of infringement, and nearly two years after first publication.

The Ninth Circuit held that the first act of copyright infringement in a series of ongoing infringements of the same kind marks the commencement of one continuing infringement under 17 U.S.C. § 412, joining the Second, Fourth, Fifth, and Sixth Circuits in this conclusion.  Because there was no legal significance between the defendant's re- and post-registration infringement, statutory damages were unavailable.

More detail of Derek Andrew, Inc. v. Poof Apparel Corp. after the jump.


Second Circuit: Copyright registration is a jurisdictional requirement

Last week, the Second Circuit issued a decision addressing whether the registration requirement for bringing a copyright action was jurisdictional or merely a "claim processing" rule. The decision turned on whether the Supreme Court's decision in Eberhart v. United States reduced the class of "jurisdictional" statutes such that 17 U.S.C. § 411(a) should be considered a "claim processing" rule. The majority, following the First, Fourth, Fifth, Sixth, Tenth, and Eleventh Circuits, held that the requirement was jurisdictional, and that all members of the class had to have registered their works for the district court to have jurisdiction. The dissent—focusing instead on statutory language, legislative history, jurisdictional exceptions, and exceptions for foreign works—argued that the requirement was merely a claim processing rule.

Update (12/4):  This holding arguably conflicts with the Ninth Circuit's decision in Perfect 10, Inc. v. Google, Inc. (opinion here, amended opinion released yesterday here).  In footnote 1 of that opinion, the Ninth Circuit held that as long as the plaintiff has at least one registered copyright, a district court had jurisdiction to enjoin infringement of the plaintiff's registered and unregistered copyrights, because "section 411 does not limit the remedies a court can grant."  While the case was also factually distinguished by the Second Circuit in this case, the nature of the § 411 registration requirement is one that would benefit from clarity, either from Congress or the Supreme Court.

More on In re Literary Works in Electronic Databases Copyright Litig. after the jump.


First Circuit: Reconstruction of work does not meet deposit requirement for copyright registration

Tuesday, the First Circuit issued a decision regarding the Copyright Act's requirement of submission of a "copy" of an original work along with the registration of the work in order for a plaintiff to bring suit in federal court. 

The court held, as an issue of first impression in the circuit, that the copy submitted had to be just that, a copy, and that the plaintiff's reconstruction of the work from memory rendered the registration invalid.  As a result, the court lacked subject matter jurisdiction to hear the infringement claim, as the copyright was not properly registered.

More detail of Torres-Negron v. J & N Records, LLC after the jump.


Fourth Circuit affirms refusal of copyright registration: insufficient creativity

The Fourth Circuit yesterday affirmed the denial of copyright registration to an individual who had adapted United States Census maps for use on his website.  The only changes to the maps were the addition of colors, changing the typeface of the state abbreviations, and a change in layout for some of the state indications.  The court affirmed the Copyright Office's determination that the adapted maps were not copyrightable.  They were derivative works of the U.S. Census maps, and therefore only the added or changed portions were subject to copyright protection.  However, the modifications were entirely "uncopyrightable elements such as a change of layout, format, size, spacing, or coloring," and so the refusal to register was affirmed.

More details of Darden v. Peters after the jump.


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