United States: Copyright And Trademark Case Review: RunDMC, Stem Cells And Pirates

Last Updated: September 23 2016
Article by Vinita Ferrera, Andrea Weiss Jeffries and Natalie Hanlon Leh

Copyright Opinions

Unauthorized Copying Not an Element of Prima Facie Infringement Case: Ali v. Final Call, Inc., No 15-2963 (7th Cir. Aug. 10, 2016)
Wood, J. In a suit alleging copyright infringement through the distribution of lithographs of plaintiff's portrait of Louis Farrakhan, the Seventh Circuit held that the district court erroneously required plaintiff to prove that defendant's (admitted) copying was unauthorized. The court attributed the error in part to the district court's reliance on Hobbs v. John, 722 F.3d 1089, 1094 (7th Cir. 2013), in which the Seventh Circuit misquoted its own precedent as requiring "unauthorized copying," rather than mere "copying," as an element of the prima facie case for infringement. Because the true prima facie elements were satisfied (ownership of valid copyright and copying), and defendant had failed to present any affirmative defense, the Seventh Circuit reversed and remanded the case for determination of damages.

Ninth Circuit Finds Triable Issue on Willfulness, Limits Statutory Damages to Named Defendants: Friedman v. Live Nation Merchandise, Inc., No. 14-55302 (9th Cir. Aug. 18, 2016)
Berzon, J. In a dispute over defendant's concededly infringing use of plaintiff's copyrighted photographs of rap group RunDMC on merchandise, the Ninth Circuit reversed the district court's summary judgment for defendant on the issues of willful infringement and knowing removal of copyright management information (CMI), explaining that issues involving a state-of-mind determination are generally inappropriate for resolution by summary judgment. With respect to the willfulness claim, the court found that the jury could reasonably conclude that Live Nation's reliance on artists who were the subject of photographs to clear photographic rights (rather than on the photographers who took the photos) amounted to recklessness or willful blindness with respect to plaintiff's intellectual property rights. With respect to the alleged CMI violation, the Ninth Circuit clarified that plaintiff could prevail upon showing that defendant distributed his works knowing that CMI had been removed, even if defendant did not remove it, and that there was a triable issue of fact with respect to this knowledge. However, the Ninth Circuit affirmed the district court in rejecting plaintiff's claim to 104 separate statutory damages awards—based on the number of retailers to which defendant had sold the infringing merchandise—holding that plaintiff was entitled to only one award for each infringed work because he had not joined the downstream retailers as defendants.

Third Circuit Affirms $1.6M Award, Including Multipliers for Rarity and Market Impact: Leonard v. Stemtech International Inc., Nos. 15-3198, 15-3247 (3d Cir. Aug. 24, 2016)
Shwartz, J. In a case involving unauthorized use of plaintiff's stem cell photographs by defendant and its distributors, the Third Circuit found sufficient evidence to uphold the jury's $1.6 million verdict of infringement, as well as its contributory infringement and vicarious infringement verdicts. With respect to contributory infringement, the court held that by creating the materials containing the infringing images, providing the materials to its distributors and requiring its distributors to use the materials, defendant took "'steps that we[re] substantially certain to result in such direct infringement.'" With respect to vicarious liability, the court found that plaintiff's contractual right to impose disciplinary sanctions on distributors and its practical ability to withhold compensation and support provided sufficient evidence for the jury to conclude that plaintiff had satisfied the right and ability to supervise or control element. As for the damages award, the court held that the jury could reasonably have relied upon expert testimony applying multipliers—accounting for the rarity of stem cell images and the impact of defendant's widespread use on the market for plaintiff's work—to a "benchmark" fair market value estimate of approximately $216,000, so as to arrive at the $1.6 million figure. The Third Circuit further held that the district court had abused its discretion by denying prejudgment interest to plaintiff based on a view that the jury verdict "sufficiently compensated" plaintiff. However, the court upheld the district court's summary judgment for defendant on plaintiff's request for infringer's profits, as plaintiff provided insufficient evidence linking the infringement to defendant's profits.

Trademark Opinions

District Court Lacks Jurisdiction to Cancel Fraudulent Registration Where Plaintiff Not Entitled to Damages or Injunction: East Iowa Plastics, Inc. v. PI, Inc., No. 15-2757 (8th Cir. Aug. 11, 2016)
Kelly, J. In an appeal involving fraudulent procurement of trademark registrations, the Eighth Circuit vacated the district court's cancellation of defendant's trademark registrations and reversed an award of attorneys' fees, finding that plaintiff lacked standing because there was no evidence of either damages or nonmonetary injury to plaintiff. The court further held that plaintiff was not a "prevailing party" by virtue of successfully defending against infringement and unfair competition counterclaims, because "[e]ach party brought virtually identical claims with respect to the same trademark, and neither was successful." However, the Eighth Circuit directed the district court on remand to determine whether attorneys' fees are available based on plaintiff's claim for declaratory judgment of trademark ownership, and noted that plaintiff may be able to seek cancellation of defendant's registrations by filing a petition with the PTO.

Seventh Circuit Rejects Post-Trial Argument Regarding Lack of Continuous Use: S.C. Johnson & Son, Inc. v. Nutraceutical Corp., No. 15-33337 (7th Cir. Aug. 25, 2016)
Wood, CJ. In a dispute involving two companies using the mark BUG OFF over a 20-year period, where defendant Nutraceutical adopted the mark over 35 years ago but never registered it and plaintiff S.C. Johnson acquired the rights of a third party who registered the mark in 1998, the district court rejected the prior use defense based on a failure by defendant to demonstrate continuous use and found trademark infringement. The Seventh Circuit reversed, finding that plaintiff was estopped from raising the continuous use defense for the first time at the post-trial stage, and that even if the continuous argument was considered, defendant had established continuous use.

Ninth Circuit Holds Sufficient Nexus Between Sales in Canada and American Commerce to Warrant Extraterritorial Application of the Lanham Act: Trader Joe's Co. v. Hallatt, No. 14-35035 (9th Cir. Aug. 26, 2016)
Christen, J. In a case involving a purchaser of Trader Joe's products in Washington state who distributed the goods in Canada under the business name Pirate Joe's, the Ninth Circuit reversed the district court's dismissal of Trader Joe's Lanham Act claims for lack of subject matter jurisdiction, concluding that: (1) extraterritorial reach of the Lanham Act is a non-jurisdictional merits question, and the statute's "use in commerce" element gives it extraterritorial reach; and (2) there was a sufficient nexus between defendant's activities and Trader Joe's American commerce due to the reputational harm defendant's activities could cause to Trader Joe's trademarks, which would diminish the value of the marks. Alternatively, the court also found that the defendant operated in American commerce when he purchased goods in Washington and hired locals to assist him. Finally, the court found that there was not sufficient "interference with other nations' sovereign authority" to prevent application of the Lanham Act.

Tenth Circuit Holds That Color in Product Packaging Can Be Inherently Distinctive Only When Specific Colors Are Used With a Shape, Pattern or Design: Forney Industries, Inc. v. Daco of Missouri, Inc., No. 15-1226 (10th Cir. Aug. 29, 2016)
Hartz, J. In a case involving packaging for metalworking parts and accessories, the Tenth Circuit affirmed the district court's summary judgment dismissing trade dress claims, holding that color in product packaging can be inherently distinctive only when specific colors are used in association with shapes, patterns or designs, and that plaintiff's red, yellow, white and black color scheme was insufficient because it was used inconsistently. The court also affirmed the district court's finding that there was not sufficient evidence to show that the trade dress had acquired secondary meaning based on its determination that the CEO's affidavit regarding advertising, sales data and exclusive use over a 20-year period was lacking.

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Similar Articles
Relevancy Powered by MondaqAI
In association with
Related Topics
Similar Articles
Relevancy Powered by MondaqAI
Related Articles
Related Video
Up-coming Events Search
Font Size:
Mondaq on Twitter
Mondaq Free Registration
Gain access to Mondaq global archive of over 375,000 articles covering 200 countries with a personalised News Alert and automatic login on this device.
Mondaq News Alert (some suggested topics and region)
Select Topics
Registration (please scroll down to set your data preferences)

Mondaq Ltd requires you to register and provide information that personally identifies you, including your content preferences, for three primary purposes (full details of Mondaq’s use of your personal data can be found in our Privacy and Cookies Notice):

  • To allow you to personalize the Mondaq websites you are visiting to show content ("Content") relevant to your interests.
  • To enable features such as password reminder, news alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our content providers ("Contributors") who contribute Content for free for your use.

Mondaq hopes that our registered users will support us in maintaining our free to view business model by consenting to our use of your personal data as described below.

Mondaq has a "free to view" business model. Our services are paid for by Contributors in exchange for Mondaq providing them with access to information about who accesses their content. Once personal data is transferred to our Contributors they become a data controller of this personal data. They use it to measure the response that their articles are receiving, as a form of market research. They may also use it to provide Mondaq users with information about their products and services.

Details of each Contributor to which your personal data will be transferred is clearly stated within the Content that you access. For full details of how this Contributor will use your personal data, you should review the Contributor’s own Privacy Notice.

Please indicate your preference below:

Yes, I am happy to support Mondaq in maintaining its free to view business model by agreeing to allow Mondaq to share my personal data with Contributors whose Content I access
No, I do not want Mondaq to share my personal data with Contributors

Also please let us know whether you are happy to receive communications promoting products and services offered by Mondaq:

Yes, I am happy to received promotional communications from Mondaq
No, please do not send me promotional communications from Mondaq
Terms & Conditions

Mondaq.com (the Website) is owned and managed by Mondaq Ltd (Mondaq). Mondaq grants you a non-exclusive, revocable licence to access the Website and associated services, such as the Mondaq News Alerts (Services), subject to and in consideration of your compliance with the following terms and conditions of use (Terms). Your use of the Website and/or Services constitutes your agreement to the Terms. Mondaq may terminate your use of the Website and Services if you are in breach of these Terms or if Mondaq decides to terminate the licence granted hereunder for any reason whatsoever.

Use of www.mondaq.com

To Use Mondaq.com you must be: eighteen (18) years old or over; legally capable of entering into binding contracts; and not in any way prohibited by the applicable law to enter into these Terms in the jurisdiction which you are currently located.

You may use the Website as an unregistered user, however, you are required to register as a user if you wish to read the full text of the Content or to receive the Services.

You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these Terms or with the prior written consent of Mondaq. You may not use electronic or other means to extract details or information from the Content. Nor shall you extract information about users or Contributors in order to offer them any services or products.

In your use of the Website and/or Services you shall: comply with all applicable laws, regulations, directives and legislations which apply to your Use of the Website and/or Services in whatever country you are physically located including without limitation any and all consumer law, export control laws and regulations; provide to us true, correct and accurate information and promptly inform us in the event that any information that you have provided to us changes or becomes inaccurate; notify Mondaq immediately of any circumstances where you have reason to believe that any Intellectual Property Rights or any other rights of any third party may have been infringed; co-operate with reasonable security or other checks or requests for information made by Mondaq from time to time; and at all times be fully liable for the breach of any of these Terms by a third party using your login details to access the Website and/or Services

however, you shall not: do anything likely to impair, interfere with or damage or cause harm or distress to any persons, or the network; do anything that will infringe any Intellectual Property Rights or other rights of Mondaq or any third party; or use the Website, Services and/or Content otherwise than in accordance with these Terms; use any trade marks or service marks of Mondaq or the Contributors, or do anything which may be seen to take unfair advantage of the reputation and goodwill of Mondaq or the Contributors, or the Website, Services and/or Content.

Mondaq reserves the right, in its sole discretion, to take any action that it deems necessary and appropriate in the event it considers that there is a breach or threatened breach of the Terms.

Mondaq’s Rights and Obligations

Unless otherwise expressly set out to the contrary, nothing in these Terms shall serve to transfer from Mondaq to you, any Intellectual Property Rights owned by and/or licensed to Mondaq and all rights, title and interest in and to such Intellectual Property Rights will remain exclusively with Mondaq and/or its licensors.

Mondaq shall use its reasonable endeavours to make the Website and Services available to you at all times, but we cannot guarantee an uninterrupted and fault free service.

Mondaq reserves the right to make changes to the services and/or the Website or part thereof, from time to time, and we may add, remove, modify and/or vary any elements of features and functionalities of the Website or the services.

Mondaq also reserves the right from time to time to monitor your Use of the Website and/or services.


The Content is general information only. It is not intended to constitute legal advice or seek to be the complete and comprehensive statement of the law, nor is it intended to address your specific requirements or provide advice on which reliance should be placed. Mondaq and/or its Contributors and other suppliers make no representations about the suitability of the information contained in the Content for any purpose. All Content provided "as is" without warranty of any kind. Mondaq and/or its Contributors and other suppliers hereby exclude and disclaim all representations, warranties or guarantees with regard to the Content, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. To the maximum extent permitted by law, Mondaq expressly excludes all representations, warranties, obligations, and liabilities arising out of or in connection with all Content. In no event shall Mondaq and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use of the Content or performance of Mondaq’s Services.


Mondaq may alter or amend these Terms by amending them on the Website. By continuing to Use the Services and/or the Website after such amendment, you will be deemed to have accepted any amendment to these Terms.

These Terms shall be governed by and construed in accordance with the laws of England and Wales and you irrevocably submit to the exclusive jurisdiction of the courts of England and Wales to settle any dispute which may arise out of or in connection with these Terms. If you live outside the United Kingdom, English law shall apply only to the extent that English law shall not deprive you of any legal protection accorded in accordance with the law of the place where you are habitually resident ("Local Law"). In the event English law deprives you of any legal protection which is accorded to you under Local Law, then these terms shall be governed by Local Law and any dispute or claim arising out of or in connection with these Terms shall be subject to the non-exclusive jurisdiction of the courts where you are habitually resident.

You may print and keep a copy of these Terms, which form the entire agreement between you and Mondaq and supersede any other communications or advertising in respect of the Service and/or the Website.

No delay in exercising or non-exercise by you and/or Mondaq of any of its rights under or in connection with these Terms shall operate as a waiver or release of each of your or Mondaq’s right. Rather, any such waiver or release must be specifically granted in writing signed by the party granting it.

If any part of these Terms is held unenforceable, that part shall be enforced to the maximum extent permissible so as to give effect to the intent of the parties, and the Terms shall continue in full force and effect.

Mondaq shall not incur any liability to you on account of any loss or damage resulting from any delay or failure to perform all or any part of these Terms if such delay or failure is caused, in whole or in part, by events, occurrences, or causes beyond the control of Mondaq. Such events, occurrences or causes will include, without limitation, acts of God, strikes, lockouts, server and network failure, riots, acts of war, earthquakes, fire and explosions.

By clicking Register you state you have read and agree to our Terms and Conditions