Tennessee IP Law Blog

United States Patent & Trademark Office v. Booking.com B. V., 20 Cal. Daily Op. Serv. 6243 (U.S. June 30, 2020) https://www.portfolio.hu/en/business/20200520/hungary-slaps-record-fine-of-eur-7-million-on-bookingcom-432994 Topic: Trademark Registration, Generic Names, Compound Terms Read the Majority Opinion in Part I  Here. In an 8-1 decision, the Supreme Court held that a "generic.com" name is ineligible for trademark protection unless the "generic.com" name itself has meaning to consumers.  Justice Breyer argues that consumers can be easily confused and argues to adopt the Goodyear  standard argued by the USPTO. Goodyear  found that adding a company designation (ex. "Company," "Corp.," "Inc.") to a generic term does not yield a protectable compound term. Goodyear  found that adding a company designation merely indicates corporate form and does not distinguish one corporations' goods/services from another. Justice Breyer argues...

United States Patent & Trademark Office v. Booking.com B. V., 20 Cal. Daily Op. Serv. 6243 (U.S. June 30, 2020) Topic: Trademark Registration, Generic Names, Compound Terms Takeaways: A generic name is ineligible for federal trademark registration. If a compound name that is a generic composite is not perceived as generic to consumers, it is not generic in terms of a Trademark filing. Supreme Court finds against the PTO's request for a "nearly per-se" rule that when a generic term is combined with an internet-domain suffix (like ".com"), the resulting combination is generic. Held: A term styled “generic.com” is a generic name for a class of goods or services only if the term has that meaning to consumers. Check back next week for Part II on the Concurring and Dissenting Opinions. Opinion Justice GINSBURG delivered the opinion of the Court. This case concerns eligibility for federal trademark registration. Respondent Booking.com, an enter...

Georgia v. Public.Resource.Org, Inc. , 20 Cal. Daily Op. Serv. 3636 (U.S. Apr. 27, 2020) Topic: Copyrightability of Statutory Code The Copyright Act grants monopoly protection for “original works of authorship.” 17 U.S.C. § 102(a). Under the government edicts doctrine, officials empowered to speak with the force of law cannot be the authors of the works they create in the course of their official duties. The State of Georgia has one official code—the Official Code of Georgia Annotated (OCGA). That Code includes the text of every Georgia statute currently in force, as well as a set of non-binding annotations that appear beneath each statutory provision. The annotations typically include summaries of judicial opinions construing each provision, summaries of pertinent opinions of the state attorney general, and a list of related law review articles and other reference materials. The OCGA is assembled by the Code Revision Commission, a state entity composed mostly of legislators...

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 ...