Lanham Act Disparagement Provision Held Unconstitutional

Cutting to the chase, because this is a noteworthy decision, but many people are busy getting ready for the holidays and might appreciate receiving the result up front.

We hold that the disparagement provision of Lanham Act § 2(a) is unconstitutional because it violates the First Amendment. We vacate the Board’s holding that Mr. Tam’s mark is unregistrable, and remand this case to the Board for further proceedings.

(Opinion page 62).

The USPTO is prohibited from registering scandalous, immoral, or disparaging marks by the Lanham Act, §2(a), also known as 15 U.S.C. §1052(a).  Simon Shiao Tam leads the Asian-American dance-rock band The Slants.  Twice Tam filed a trademark registration application for the mark THE SLANTS and was twice refused by the USPTO on the basis that the USPTO examiner found the mark to be disparaging to people of Asian descent.  Tam appealed to the Trademark Trial and Appeal Board.  The Board affirmed the examiner’s refusal to register the mark.  Tam appealed to the Federal Circuit.  A Federal Circuit panel affirmed the Board’s decision.  On its own initiative, the Federal Circuit ordered a hearing en banc.  The Federal Circuit en banc ruled that §2(a) of the Lanham Act, relied on by the UPSTO and Federal Circuit panel in rejecting Tam’s trademark registration application, is unconstitutional.

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Website Designer Likely Violated Anticybersquatting Act

Jysk Bed’N Linen is a retailer selling home, office and patio furniture from its stores located in Georgia, New Jersey and North Carolina.  Since 1990, Jysk has operated under the By Design trade name and common law trademark.  Jysk contracted with Monosij Dutta-Roy and several others to create an online shopping website in 1999.  Dutta-Roy registered the domain name, listing himself as the domain name owner.  Dutta-Roy’s involvement with the website ended in 2003. 

When Dutta-Roy’s registration of expired on April 9, 2012, Jysk’s website went down.  Jysk then discovered that it did not own the registration and asked Dutta-Roy to re-register the website in Jysk’s name.  Dutta-Roy refused.  A few weeks later, Dutta-Roy re-registered (presumably bringing that website back up) and also registered the domain names,, and  Dutta-Roy offered to transfer the domain names to Jysk in exchange for compensation for over 4,000 hours work under a non-existent agreement.  Jysk brought suit against Dutta-Roy for cybersquatting, among other claims.  The district court granted Jysk’s motion for a preliminary injunction and the Eleventh Circuit Court of Appeals affirmed.

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Successful Bit Torrent Defendant’s Attorney’s Fees Request Denied

What happens when the copyright owner of a motion picture sues multiple “John Doe” defendants for copyright infringement through use of the BitTorrent protocol, but the copyright owner later dismisses the case?  Is a defendant who challenges the copyright owner entitled to attorney’s fees?

Killer Joe Nevada, LLC owns the copyright to the motion picture “Killer Joe.”  Killer Joe Nevada sued John Doe defendants for copyright infringement, identifying the defendants only by their Internet Protocol (IP) addresses.  Killer Joe Nevada identified Leigh Leaverton by name after subpoenaing Leaverton’s Internet service provider.  Killer Joe Nevada filed a motion to make Leaverton a defendant in the lawsuit.  Leaverton denied infringing Killer Joe Nevada’s copyright and counterclaimed for a declaratory judgment that she did not infringe.  Killer Joe Nevada then moved to voluntarily dismiss its complaint and to dismiss Leaverton’s counterclaim as moot.  Leaverton opposed Killer Joe Nevada’s voluntary dismissal unless she received an award for attorney’s fees.  The district court granted Killer Joe Nevada’s motion to voluntarily dismiss its complaint, dismissed Leaverton’s counterclaim as moot and denied Leaverton’s attorney’s fees request.  On appeal, the Eight Circuit affirmed the district court’s judgment.

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Registration Approach Wins a Round in the Suit Filing Timing Debate

Can a copyright holder file a civil action for copyright infringement if it has filed a copyright registration application (Application Approach) or must the copyright holder wait until the Copyright Office has made a decision on the registration application (Registration Approach.)?

Music creator Asche & Spencer (Asche) discovered that the hosts of the web series “Reluctantly Healthy” used a number of Asche’s works without obtaining a license from Asche.  Asche filed a copyright registration application for the allegedly infringed works.  Asche sued Reluctantly Healthy’s hosts, Principato-Young Entertainment, Inc., Kids At Play, LLC, and Electus, LLC, for copyright infringement before receiving a response to its registration application from the Copyright Office.  The defendants brought a motion to dismiss. 

The district court noted that its circuit, the Eight Circuit, has not determined whether the Application Approach or the Registration Approach should apply.  The Fifth, Seventh, and Ninth Circuits have adopted the Application Approach, while the Tenth and Eleventh Circuits have adopted the Registration Approach.  The district court decided that the Registration Approach is more consistent with the relevant statutory language and dismissed Asche’s complaint.

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