Jack Daniel’s Properties, Inc. filed its reply brief with the U.S. Supreme Court on Friday, March 10, in a major trademark case set to be argued on March 22. The brief contends that the country’s most popular brands are at risk of losing their brand identity if the Court affirms the U.S. Court of Appeals for the Ninth Circuit’s view that a poop-themed dog toy mimicking Jack Daniel’s Whiskey bottle is an expressive work entitled to First Amendment protection. In November 2022, the Supreme Court granted Jack Daniel’s petition for a writ of certiorari, which seeks to clarify whether the First Amendment protects VIP Products, LLC’s humorous use of Jack Daniel’s trademarks for commercial purposes against claims of infringement and dilution.
In a recently filed suit involving the popular videogame Fortnite, the Central District of California faces an important question regarding copyright law: does a copyright in a registered choreographic work extend protection to a smaller portion of the work when that portion is copied by a third party and implemented as a dance move in a video game? Owned and developed by Epic Games, Inc. (“Epic”), Fortnite is a “battle royale” style videogame where players fight to be the last person standing. Fortnite players can purchase “emotes,” which are dance moves or other gestures performed by their avatar. Plaintiff Kyle Hanagami owns a copyright registration for a choreographic work called “How Long Choreography.” Hanagami alleges that an emote called “It’s Complicated” copies “the heart” of his work, as it is the only section of the How Long Choreography that occurs ten times throughout the original.
On September 3, the U.S. Court of Appeals for the Ninth Circuit issued a pair of decisions in Nomadix, Inc. v. Guest-Tek Interactive Entertainment Ltd. on appeal from a grant of permanent injunction entered by the Central District of California. In one decision, the Ninth Circuit affirmed injunctive relief preventing Guest-Tek from filing petitions for patent validity trials at the Patent Trial and Appeal Board (PTAB) in violation of a forum selection clause in Guest-Tek’s licensing agreement with Nomadix. In the other decision, the Ninth Circuit vacated portions of an attorneys’ fees award to Nomadix that covered the legal costs incurred by Nomadix during Guest-Tek’s PTAB petitions.
Sometimes a dog toy is just a dog toy. Maybe that’s how Sigmund Freud would have put it; certainly, that’s the message from our client, the International Trademark Association (INTA), to the U.S. Supreme Court. At issue is a Ninth Circuit decision that extends First Amendment protection to ordinary commercial goods like dog toys, at the expense of trademark rights. INTA, Jack Daniel’s competitors, alcohol beverage industry associations, and other trademark advocates this week asked SCOTUS to step in and reverse.
On August 3, the United States Court of Appeals for the Ninth Circuit, in Masterson v. Walt Disney Company, affirmed a district court’s dismissal of Carla Masterson’s copyright infringement claims against The Walt Disney Co. The infringement claim was based on Masterson’s allegation that Disney’s Inside Out (the Movie) violated her copyrights in her book of poetry, What’s On the Other Side of the Rainbow? (A Book of Feelings) (the Book) and her movie script, The Secret of the Golden Mirror (the Script). Masterson’s Book was a collection of poems featuring a cloud-like character, Mr. Positivity, and anthropomorphic doors representing different feelings. The Script is about Mr. Positivity and the anthropomorphic doors helping a child cope with a difficult situation. In contrast, Disney’s Inside Out is about an eleven-year-old girl and the anthropomorphized emotions that control her brain from her brain’s “Headquarters.” The district court held that the literary works were not substantially similar and granted Walt Disney’s motion to dismiss.