Tennessee IP Law Blog

Allen v. Cooper, No. 18-877, 2020 WL 1325815 (U.S. Mar. 23, 2020) Topic: Copyright Infringement - Pictures & Video "The Queen Anne's Revenge" Juha Flinkman, SubZone OY / CC BY-SA 4.0 / Wikimedia Commons Videographer and his video production company brought action against North Carolina and state officials seeking declaration that North Carolina statute that converted copyrighted images of shipwreck to public record was preempted by federal copyright law and was otherwise unconstitutional, and asserting claims for copyright infringement, for unconstitutional taking pursuant to § 1983, and state law claims for unfair and deceptive trade practices and civil conspiracy. The United States District Court for the Eastern District of North Carolina, Terrence W. Boyle, J., 244 F.Supp.3d 525, granted in part and denied in part the defendants' motions to dismiss, allowing the declaratory judgment and infringement claims to proceed. Defendants appealed. The United ...

Solid Oak Sketches, LLC v. 2K Games, Inc. , No. 16-CV-724-LTS-SDA, 2020 WL 1467394 (S.D.N.Y. Mar. 26, 2020) Topic: Fair Use, De-Minimis - Tattoos & Video Game Design Solid Oak Sketches, LLC (“Solid Oak” or “Plaintiff”), brings this action against Defendants 2K Games, Inc., and Take-Two Interactive Software, Inc. (collectively, “Take Two” or “Defendants”), asserting a claim of copyright infringement pursuant to the Copyright Act of 1976, 17 U.S.C. § 101 et seq. (the “Copyright Act”). Following this Court’s granting of Defendants’ motion to dismiss Plaintiff’s claims for statutory damages and attorneys’ fees on August 2, 2016, Plaintiff filed a Second Amended Complaint (“SAC”) on October 24, 2016. (Docket Entry No. 55.) On August 16, 2016, Defendants filed counterclaims for declaratory judgment pursuant to the Copyright Act and the Declaratory Judgment Act, 28 U.S.C. §§ 2201-2202 (“Def. Countercl.”). (Docket Entry No. 47.) The Court denied Plaintiff’s motion to dismiss the c...

VIP Prods. LLC v. Jack Daniel’s Properties, Inc. , No. 18-16012 (9th Cir. Mar. 31, 2020) Topic: Trademark Infringement, Parodies The panel affirmed in part, vacated in part, and reversed in part the district court’s judgment after a bench trial and permanent injunction in favor of Jack Daniel’s Properties, Inc., in a trademark suit brought by VIP Products, LLC, concerning VIP’s “Bad Spaniels Silly Squeaker” dog toy, which resembled a bottle of Jack Daniel’s Old No. 7 Black Label Tennessee Whiskey but had light-hearted, dog-related alterations.  The panel affirmed the district court’s summary judgment in favor of Jack Daniel’s on the issues of aesthetic functionality and distinctiveness. The panel held that the district court correctly found that Jack Daniel’s trade dress and bottle design were distinctive and aesthetically nonfunctional, and thus entitled to trademark protection.  Accordingly, the district court correctly rejected VIP’s request for cancellation of...

LEO PELLEGRINO v. EPIC GAMES, INC., No. CV 19-1806, 2020 WL 1531867,(E.D. Pa. Mar. 31, 2020) Topic: Trademark Misappropriation, Use of Likeness Plaintiff Leo Pellegrino commenced this action against Defendant Epic Games, Inc. (“Epic”) asserting that Epic misappropriated his likeness and trademark, i.e., his “ Signature Move .” The Complaint asserts that Epic’s misappropriation violated Pellegrino’s right to publicity and infringed and diluted his trademark. Epic has filed a Motion to Dismiss the Complaint in its entirety pursuant to Federal Rule of Civil Procedure 12(b)(6). We held a hearing on the Motion on March 3, 2020. For the reasons that follow, we grant Epic’s Motion in part and deny it in part. The Complaint alleges that Leo Pellegrino “is a professional baritone saxophone player and member of the ‘brass house’ group ‘Too Many Zooz.’ ” (Compl. ¶ 2.) Using his unique anatomy—specifically his externally rotatable feet—Pellegrino was able to create the Signature Move, a ...

Last week, the U.S. Copyright Office began allowing application submissions of an electronic copy (coupled with a sworn statement it is a true and identical copy) for works that traditionally required a physical copy, or "best edition" deposit, to be sent and examined.  Where required, some applicants must still send in a physical copy with their application, but allowing an accompanying electronic copy enables applicant processors to examine these types of works to grant registration when they would traditionally not have been able to without examining the physical copy itself. The office has continued to process applications for works that can be submitted fully electronically normally, but all applicants that require a physical deposit will now also have the electronic option from the start. The full story: https://news.bloomberglaw.com/ip-law/copyright-office-allows-proxy-submissions-for-physical-copies

For the first time ever, the Tennessee Supreme Court held oral arguments by video conference last week. This decision is a part of a direct effort by the court to find new ways to continue to conduct court proceedings during the COVID-19 pandemic while protecting the health of litigants, attorneys, judges, and court employees. The first case heard by video conference was Lataisha M. Jackson v. Charles Anthony Burrell et al. , a healthcare liability action. From the TN Courts. Gov Website: "This healthcare liability action arose when the plaintiff, Lataisha Jackson, alleged that an employee, Charles Burrell, at Gould’s Salon Inc. d/b/a Gould’s Day Spa & Salon (“Gould’s”) sexually assaulted her while she was getting a massage.  Ms. Jackson filed claims of vicarious liability, negligence, and negligent supervision, retention, and training against Gould’s.  Gould’s filed a motion for summary judgment claiming, in part, that the negligence claims could not survive because ...

Vanderbilt Univ. v. Scholastic, Inc., 382 F. Supp. 3d 734, 743 (M.D. Tenn. 2019). By means of a License Agreement executed in 1997 (“License”), Vanderbilt University (“Vanderbilt”) and Defendant Scholastic, Inc. (“Scholastic”) joined forces to develop, market, and distribute an educational literacy program called Read 180 based on the cutting-edge work of Vanderbilt Professor Ted S. Hasselbring.  Pursuant to the License, Scholastic used certain copyrightable software and related instructional materials, along with other materials it both obtained and created, to develop the “Read 180” program. It was wildly successful. Scholastic distributed Read 180 and paid Vanderbilt royalties under the License until 2015, when Scholastic sold that part of its business and assigned the License to Defendant Houghton Mifflin Harcourt Publishing Company (“HMH”). However, Defendants' public exuberance about their success with Read 180 in connection with this sale led Vanderbilt to became...