Copyright and trademark litigation developments

September 30, 2014

I am not by trade a litigator, beyond TTAB matters and arbitration proceedings, but there has been some really interesting litigation recently!  Here are three quick hits, combined into one longer post for your reading convenience. 


Copyright litigation


The Pharrell Williams and Robin Thicke depositions, in a copyright lawsuit about the song “Blurred Lines,” brought by the Marvin Gaye estate, are great reads.  The impact on the copyright similarity analysis is fine and all, but the (perceived?) market impact of dividing up authorship credits is the real star of the show.  It’s very interesting that building a “narrative” around what appears to have been, at most, a nominal collaboration from Thicke was worth enough in terms of sales that Pharrell decided to hand away a substantial (18-22%) chunk of royalties by giving Thicke an authorship credit!


Copyright statutes of limitation


The fallout continues from the Supreme Court’s broad interpretation of the Copyright Act’s three-year statute of limitations in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S.Ct. 1962 (2014).  Petrella held that laches did not bar a claim for infringement nine years after the cause of action accrued, so long as the plaintiff is only allowed to seek redress for the previous three years’ damages – in essence, the three year statute of limitations was “rolling,” and rolled right over any equitable laches defense.  Laches has been the only check on the “separate accrual” doctrine, and, under Petralla’s rule, which a copyright claimant can knowingly sit on an infringement claim instead of bringing it promptly – or choose not to bring a claim, only to have their descendants do so.


The surviving members of Led Zepplin are the defendants in a copyright lawsuit alleging that the characteristic solo in “Stairway to Heaven” was copied from Spirit’s song “Taurus.”  A great case summary and musical clips from the BBC (focusing on British copyright law rather than US law) is here.  The Zepplin defendants filed a motion to dismiss on September 18, 2014 – but focused on jurisdictional issues.  After Petrella, it just isn’t worth trying to go for an early substantive dismissal.


It is silly that a defendant who knew about a claim for literally decades, and who pressed the authorship claim in the court of public opinion instead of a court of law, can definitively bring a copyright claim in court.


There is still a significant incentive for copyright claimants to sort out their business early on, of course – if Spirit prevails, it could have significant immediate and future benefits.  With sales of Led Zepplin IV certified as over 30 million worldwide, Spirit would have been much better off overall (if they prevail) had they brought a claim immediately.


Irreparable harm in the trademark preliminary injunction analysis


The Third Circuit has hopped on the Ninth Circuit bandwagon – always a fun place to be, although other courts suggest in dicta that they will follow – in holding that, after the Supreme Court decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), there’s no presumption of irreparable injury even where there is a likelihood of success on the merits in Lanham Act claims.  The Third Circuit case, Ferring Pharmaceuticals, Inc. v. Watson Pharmaceuticals, Inc., No. 13-2290 (Third Cir. Aug. 26, 2014), available here, dealt with advertising injury claims.  The Ninth Circuit’s decision, Herb Reed Enterprises LLC v. Florida Entertainment Management, Inc., 736 F.3d 1239 (9th Cir. 2014), was in a traditional trademark infringement litigation case.


It can be difficult to quantify the damage to a brand to the satisfaction of a court after it’s happened.  It is even more difficult in an early stage of litigation, where surveys usually have not been conducted – showing that injury is likely to be irreparable and not merely significant or even “purely speculative” will be a difficult bar to hurdle in most cases.  Ferring implies that a demonstrated intent to continue making false remarks could be sufficient basis (the defendant had removed all uses of the statements at the time of the injunction hearing and their main spokesman, but not the company overall, had promised not to make the claims again).  Id. at 23.  It’s an interesting standard, and not totally consistent with the trademark analysis – the Ninth Circuit has held, for instance, that essentially “loss of consumer goodwill” is required to show a likelihood of irreparable injury for pure trademark claims.  Herb Reed, 736 F.3d at 1250.


Trademark litigants are going to have an increasingly tougher time getting preliminary injunctions without having strong, early evidence of actual, demonstrable harm.  This may push plaintiffs to forego preliminary injunction requests in favor of trying to get to a final decision more quickly, especially if the defendant is a counterfeiter or otherwise unlikely to settle.  I would not be surprised to eventually see Congress explicitly add a presumption of irreparable harm to Lanham Act preliminary injunction analysis claims.  Since it may only cost as little as $1,000 to get an amendment to a law on the books, and since preliminary injunctions often effectively end what would otherwise be a much longer (and far more expensive) litigation, it would not be surprising to see this be on the lobbying “wish list” of trademark owners who are frequently pursuing federal court litigation.


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