Recovery of Fees and Costs in Copyright Litigation: Supreme Court Sets Limits

Costs recoverable by a prevailing party in a copyright infringement case are limited to the specific categories of costs allowed under the general federal status authorizing the award of costs by federal district courts. So says the U.S. Supreme Court in its unanimous decision in Rimini Street, Inc. v. Oracle USA, Inc. (March 4, 2019).

Oracle successfully sued Rimini Street for infringing Oracle’s copyrights. A jury awarded damages, and the district court awarded fees and costs, including a disputed $12.8 million for litigation expenses, such as expert witnesses, e-discovery, and jury consulting. The Ninth Circuit recognized that this award covered expenses not included within the general statute, but split with other circuit courts of appeal and held that the award was proper because Section 505 of the Copyright Act granted the district court the discretion to award “full costs” to a prevailing party in copyright cases. (more…)

The Lost Einsteins: Women Underrepresented Among U.S. Inventors

A new report issued by the USPTO points to an untapped segment of U.S. innovators – women. Released on February 11, “Progress and potential: a profile of women inventors on U.S. patents” outlines the trends and characteristics of women inventors named on U.S. patents over the last 40 years. The report shows a modest increase in the number of women inventors, but documents that women still make up a small minority of inventors and highlights the untapped potential of women to spur innovation. (more…)

Pinkerton Duels with Wild West Video Game Maker in Trademark Infringement Lawsuit

In an unlikely matchup, a new trademark infringement lawsuit pits a 165-year-old brand against the maker of one of the hottest video games on the market. The case shines a spotlight on two key issues: the duration of trademark rights and the notion that infringement claims require “trademark use.”

In less than three months, Red Dead Redemption 2 became the highest selling video game of 2018. Set in the 1800’s U.S. Wild West, Red Dead 2 is as much a film (with a main storyline that unfolds over more than 60 hours) as it is an interactive action-adventure game with over a hundred “missions” for the player to navigate the story. It was released to universal acclaim and several “perfect” scores from leading critics, due in large part to the game developers’ creation of an immersive and complex environment with a relentless commitment to historical accuracy and detail. Red Dead 2‘s developers, Take-Two Interactive Software and Rockstar Games, spent over seven years with the efforts of more than 2,000 people to create a game with more than 500,000 lines of dialog and 300,000 animations.  

Red Dead 2 is widely celebrated for its realism and historical accuracy. The Guardian noted that the developers aim to provide players with a wild west fantasy so authentic that “you can forget it is not real.” Other historically and geographically accurate details (including flora and fauna, music, technology, and wildlife) contribute to the game’s believable and authentic experience. Even the birds are location-appropriate and sing with accurate pitch. Such commitment to realism has garnered attention from unlikely sources: the Audubon Society praised the game’s inclusion of 200 distinct, interactive species of animals and 40 different plant species.

In one of the 100+ “missions” throughout Red Dead 2‘s story, fact meets fiction when the game’s protagonists rob a train. The owner of the train hires Pinkerton security agents to find the culprits. In a cinematic cut-scene, two men introduce themselves to the main character as agents of the “Pinkerton Detective Agency, seconded to the United States government,” and tell him he’s a “wanted man” with a bounty on his head. The detectives are dressed in bowler hats, red vests, ties, and grey coats – apparel typical of the real Pinkerton detectives. They also wear silver shield-shaped badges on their chest, and at times, the “Pinkerton” name can be seen. It is the same badge that the Pinkerton National Detective Agency used from 1850 to 1925. The Pinkerton detectives make appearances in ten of the 100+ game missions.  (more…)

Game, Set, Match – Federer v. Nike and the RF Logo

Roger Federer is one of the most famous athletes of all time. He currently has won more majors than any male tennis player in the “Open Era,” and he is admired all over the world, not only for his excellence on the court but also for his humble attitude and family man persona off the court. Also, his initials are RF. Ordinarily this would be a banal detail if it weren’t for the fact that sportswear giant Nike currently owns the rights to a stylized version of Federer’s initials: the RF logo. In March 2018, Roger Federer and Nike’s 21-year relationship ended, and in June 2018, Federer entered into a $300 million deal with Uniqlo, a Japanese clothing company. Although Nike no longer has a clothing contract with Federer, Nike still owns the trademark registration in the iconic stylized RF logo in various registries across the world in classes of use covering clothing and footwear. (more…)

#Hashtag #Valuable Asset

As the explosion in popularity of various social media outlets continues, new norms are increasingly clear: once-descriptive social media hashtags and Twitter handles are now valuable assets that we associate with specific parties. Businesses, in particular, should have social media account usernames and hashtags cleared before using them in marketing and advertising their goods or services. (more…)

The Value of ZERO – Expanding the Doctrine of Generic Trademarks

A “generic” term for a general class of products or services cannot be used as a trademark or service mark for the goods or services in those class(es), because the function of a trademark (or service mark) is to identify and distinguish the goods or services of one seller from those sold by all others. Terms such as “apple” cannot serve as trademarks for goods comprising the edible fruits of the apple tree, but other terms that were once valid trademarks, capable of identifying a single purveyor of certain goods or services, have also fallen victim to “genericide” and lost their trademark significance. Some are now so commonly used that the consuming public may not even recognize that these terms were once considered exclusive trademarks of individual companies, such as escalator, linoleum, thermos, and trampoline. (more…)

Close your eyes and transport yourself to the cereal aisle of your grocery store: can you picture the design of a box of original Cheerios™, color and all? General Mills recently tried, and failed, to obtain a federal trademark registration for the yellow color of their Cheerios™ boxes that they hope you’re picturing right now, and their struggle illustrates the high burden faced by applicants for federal registration of color marks in the United States. (more…)

In the latter portion of 2017, announcements from both business and government have drawn renewed attention to the gradually increasing focus being paid by the Chinese government to protection of foreign intellectual property rights. In early August, U.S. sportswear giant Under Armour generated press from a favorable ruling out of a Chinese court in a trademark infringement lawsuit with Uncle Martian, a Chinese company. A few days later, it was reported that the Trump Administration was eyeing another aspect of China’s policies towards intellectual property protection – those requiring joint ventures and other mechanisms to increase the flow of intellectual property from U.S. and other foreign companies into business entities and computer servers on the Chinese mainland. For a non-Chinese company looking to enter the Chinese market, expand an existing presence there, launch R&D facilities in China or otherwise, how should these developments affect those strategy decisions? (more…)