IP Followup: Aftermath of Tam, and More Copyright Registration Discord

A couple of recent events in IP law offer codas to issues discussed in this blog earlier in the year. Here is a quick recap:

Redskins Trademark Registration Case Dies After SCOTUS Tam Ruling

The case to cancel the Washington football team's trademark registrations in its moniker ended quietly in light of the Supreme Court's Tam ruling. A group of Native Americans brought the original cancellation proceeding in the TTAB back in 1992, and since then the case has wound its way through the federal court system up to the 4th Circuit. The litigation has been stayed pending a decision in the Tam case, which occurred in June.

The TTAB originally cancelled the trademarks solely on the basis of Section 2(a) of the Lanham Act, the so-called "disparagement" clause. However, the Tam court held that Section 2(a) was unconstitutional. Two days after the Tam decision, the clerk of the court for the Fourth Circuit reached out to the parties to see whether oral argument remained necessary in light of the Supreme Court's decision. Counsel for the team responded that Tam mandated a reversal of the cancellation, and then asked the the court to vacate the cancellation order and remand the case with instructions to grant summary judgment in favor of the registrant/appellant. Counsel for the Native Americans reached the same conclusion and consented to the entry of an Order as called for by Washington, thus bringing an end to the case.

Although the litigation may have ended, the Native Americans vowed to fight on by cajoling advertisers, politicians, and fans to put pressure on the team to stop using the moniker.

Use of "Registration Approach" Continues in 2nd Circuit After Photo Copyright Case

Copyright infringement claims brought by Italian photojournalist Matilde Gattoni against clothing retailer Tibi over its copying of one of her Instagram photos were dismissed by a district court in the 2nd Circuit. However, the case will move forward because the judge allowed her DMCA claims to survive. The photo showed a building in Essaouira, Morocco along with the figure of a woman in a long dress walking down an empty street. Without a license, Tibi allegedly copied the photo, cropped out the woman, removed the copyright notice, and posted the altered photo on the company’s social media page.

The copyright claims were dismissed because Gattoni's copyright registration for the photo is still pending with the U.S. Copyright Office. The court acknowledged the circuit split between those that adhere to the "application" approach, which allows plaintiffs to file suit as long as a registration application has been filed, and those using the "registration" approach, which requires an actual certificate of registration. Noting that the 2nd Circuit has not addressed this question, the court fell in line with other courts in the circuit and followed the registration approach. The court did, however, dismiss without prejudice, so Gattoni will be able to amend her complaint once she receives the registration certificate.

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