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Thinking Out Loud Copyright Infringement Law Suit

By Fritz Klantschi
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The Southern District of New York recently denied musician Ed Sheeran’s motion for summary judgment in a copyright infringement case over his alleged infringement of the Marvin Gaye song “Let’s Get It On” by Sheeran’s “Thinking Out Loud.” The court held that issues remain for trial on the scope of copyright protection and the similarities between the songs.

In August 2016 Ed Sheeran together with Atlantic Recording Corporation, Sony/ATV Music Publishing, LLC and Warner Music Group Corporation were sued for copyright infringement for Ed Sheeran’s single “Thinking Out Loud” (TOL) by the heirs of Ed Townsend who co-wrote the lyrics to Marvin Gaye’s “Let’s Get it On”(LGO). On January 3, 2019, District Court Judge Louis Stanton from the Southern District of New York ruled on Defendants’ Summary Judgment Motion.  The Defendants had moved that the deposit copy, not the sound recording of LGO defines the scope of the copyright and that the two works are not substantially similar, that any alleged similarities are to unprotectable and commonplace elements and that Plaintiff Kathryn Townsend Griffin lacks standing.  Judge Stanton denied Defendants’ motion because there are material facts in dispute.

Scope of Protection: The Court stated that it was not necessary to decide whether the deposit copy – the materials filed with the U.S. Copyright Office with the application for copyright registration – defines the scope of protection or if the composition is embodied in the first mechanical reproduction of LGO. According to the court, it is not necessary to decide that issue at this time because the outcome of the motion would be the same under either view.  However, this issue may come into play at trial, as the Court noted that hearing the percussion and bass, which are included in the reproduction but not the deposit copy, increases the perception of similarity between the works.

Commonplace Musical Elements: The Court next addressed commonplace elements that are not unique to LGO, noting that various elements (key, meter, tempo, common song structures, common chord progressions, common melodies, and common percussive rhythms) are not entitled to copyright protection because they are no longer original and already in the public domain. Summary judgment was denied on which elements of the song are commonplace and unprotectable because the experts for the plaintiffs and defendants did not agree as to whether a particular musical element is original, leaving an issue for trial.

Substantial Similarity: For determining substantial similarity, the Court set forth the “ordinary observer test,” asking whether “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995)(internal quotation marks omitted).  The Court noted that “the issue of substantial similarity is frequently a fact issue for jury resolution.”  Judge Stanton noted that a jury could find several probative similarities between LGO and TOL and that an average lay observer could conclude that parts of TOL were appropriated from LGO.  Still further, an ordinary observer might experience the aesthetic appeal of both works as the same.  Accordingly, the question of whether TOL infringes on LGO should be determined by trial rather than by summary judgment.

Standing: On the final issue raised by Defendants’ motion, Kathryn Townsend Griffin’s standing, Defendants claim that under California law, Ca. Prob. Code § 6451(a) children who have been adopted by others have no right to inherit from their biological parents. In 2008 the Superior Court of California, County of Riverside, Riverside Probate Division ordered that Ms. Griffin was an intestate heir of Ed Townsend.  Defendants contend that Ms. Griffin obtained that order by withholding material information, that she had been adopted as a child by other parents.   Judge Stanton agreed to follow the decision of the Superior Court of California which had ordered that Ms. Griffin was entitled to 30% of the royalties of Ed Townsend.

Epilogue: On March 8, 2019 the Court ordered the trial to start on September 11, 2019.

Court Laughs Off Affirmative Defenses In “Conan” Monologue Joke Theft Action

By Patrick B. Monahan
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After a recent court decision, the comedic minds behind the late-night talk show “Conan”, who are currently facing claims in federal court of monologue joke theft, have two fewer affirmative defenses in their setlist.

On July 22, 2015, Alex Kaseberg (“Kaseberg”) filed a copyright infringement lawsuit in the United States District Court for the Southern District of California, alleging that five of his jokes were used by Conan O’Brien on “Conan” without his permission. Kaseberg alleged that copyright registrations were being sought for each of the five jokes at issue, which were as follows:


  Kaseberg’s Joke Joke That Appeared On “Conan”
The UAB Joke The University of Alabama-Birmingham is shutting down its football program. To which the Oakland Raiders said; “Wait, so you can do that?”


Big news in sports. University of Alabama-Birmingham has decided to discontinue its football team. Yeah. When they heard the news, New York Jets fans said, “Wait can you do that? It’s something you can do?”


The Delta Joke Yesterday, a Delta flight from Cleveland to New York took off with just 2 passengers. Yet somehow, they spent the whole flight fighting over the armrest.


A Delta flight this week took off from Cleveland to New York with just two passengers. And they fought over control of the armrest the entire flight.


The Brady Joke Tom Brady said he wants to give his MVP truck to the man who won the game for the Patriots. So enjoy that truck, Pete Carroll. Tom Brady said he wants to give the truck that he was given as Super Bowl MVP . . . to the guy who won the Super Bowl for the Patriots. Which is very nice. I think that’s nice. I do. Yes. So Brady’s giving his truck to Seahawks coach Pete Carroll.


The Monument Joke The Washington Monument is ten inches shorter than previously thought. You know the winter has been cold when a monument suffers from shrinkage. Yesterday surveyors[] announced that the Washington Monument is ten inches shorter than what’s been previously recorded. Yeah. Of course, the monument is blaming the shrinkage on the cold weather. Penis joke.


The Jenner Joke Three towns, two in Texas, one in Tennessee, have streets named after Bruce Jenner and now they have to consider changing them to Caitlyn. And one will have to change from a Cul-De-Sac to a Cul-De-Sackless.


Some cities that have streets named after Bruce Jenner are trying to change the streets’ names to Caitlyn Jenner. If you live on Bruce Jenner cul-de-sac it will now be cul-de-no-sack.


While Kaseberg’s pending copyright applications were sufficient basis for his copyright infringement claims at the time he filed his lawsuit, it’s worth noting that, as a result of the Supreme Court’s recent decision in Fourth Estate Public Benefit Corp. v., which held that copyright holders must receive a registration from the Copyright Office prior to filing a lawsuit claiming copyright infringement, to file a similar suit today, Kaseberg would have had to wait. At the time Kaseberg filed his suit, law in the Ninth Circuit, of which the United States District Court for the Southern District of California was a part, was that a copyright holder need only file an application to have grounds for an infringement suit.

In May of 2017, the court partially granted the Defendants’ motion for summary judgment and dismissed counts relating to the UAB Joke and the Delta Joke, but it determined that the Brady Joke, the Monument Joke and the Jenner Joke were entitled to “thin” copyright protection and counts relating to those jokes could proceed. In May of 2018, shortly after the Defendants were permitted to amend their Answer to include the affirmative defenses of fraud on the Copyright Office and unclean hands, Kaseberg filed a motion for judgment on the pleadings or partial summary judgment, seeking to eliminate those two defenses. For the reasons discussed below, the court granted the motion and dismissed both defenses.

Fraud on the Copyright Office

This defense only concerns Kaseberg’s attempts to obtain a copyright registration for the Brady Joke, and thus only applies to that joke. In September of 2015, shortly after the Complaint was filed, Kaseberg (through counsel) filed an application to register the Brady Joke with the Copyright Office, which was denied due to lack of original authorship, that is, because the Copyright Office found that the joke did not possess a minimal degree of creativity. Kaseberg filed a request for reconsideration of the refusal to register the Brady Joke, but that request was denied in July of 2016.

In August of 2016, Kaseberg’s counsel filed another application to register several jokes published in February of 2015, including the Brady Joke, without mentioning the Copyright Office’s refusal of the earlier attempt to register the Brady Joke. In May of 2017, Kaseberg filed a second request for reconsideration of the refusal to register the Brady Joke, citing the court’s decision in which the Brady Joke survived summary judgment, enclosing a copy of the court’s order denying summary judgment as to the Brady Joke but not specifically noting in the request that the Brady Joke was only entitled to “thin” copyright protection.

The Copyright Office granted registration to the works in the August 2016 application, including the Brady Joke. Following that, in July of 2017, the Copyright Office granted the second request for reconsideration of the September 2015 application for the Brady Joke, but noted that the Brady Joke would have to be removed from the registration resulting from the August 2016 application.

The Defendants argued that Kaseberg committed fraud by omission in his communications with the Copyright Office, both of the fact that the Copyright Office previously refused to register the Brady Joke, and of the court’s opinion that the Brady Joke was only entitled to “thin” protection.

The court found that, while Kaseberg could have been more forthcoming with the Copyright Office, his omissions did not rise to the level of fraud on the Copyright Office, and dismissed the defense. The court apparently found some humor in the Defendant’s claims, stating that there was no obligation for Kaseberg to have disclosed to the Copyright Office everything related to the Brady Joke, such as “the geographical coordinates for where he composed the work, what he ate for breakfast that morning, or what color underwear he was wearing.”

Unclean Hands

The unclean hands defense, a catch-all defense in which a defendant argues that the plaintiff’s inequitable conduct relating to the lawsuit injured the defendant, was based upon Kaseberg’s alleged failure to provide the Defendants with requested documents and information relating to the validity of the copyrights he asserted. The Court found that, unless Kaseberg was attempting to conceal evidence of fraud on the Copyright Office, the appropriate way for the Defendants to seek relief would be through discovery motions, such as a motion to compel and/or motion for sanctions. Because the Court found that Kaseberg’s actions did not rise to the level of fraud on the Copyright Office, the Defendants’ only recourse for Kaseberg’s discovery failings was through discovery motion practice, so the unclean hands defense was dismissed.

The case is set for a jury trial in May, so it remains to be seen whether Conan can win over one of his toughest audiences yet.

Trademark Considerations: Hashtags

By Jason H. Kasner

Popularized by Twitter, hashtags are so ubiquitous that they are now a part of our cultural lexicon. The term “hashtag” in its modern iteration was even added to the Oxford English Dictionary in June of 2014 (“hashtag n. (on social media web sites and applications) a word or phrase preceded by a hash and used to identify messages relating to a specific topic; (also) the hash symbol itself, when used in this way.”[1]).  Hashtags provide a quick and easy reference point and act as a searchable element for social media users to locate content regarding a certain subject.  Essentially, the hashtag is a keyword(s) that draws traffic to certain posts based on their content, not necessarily their source.

The question enterprising social media moguls want answered is – how can we protect a hashtag? More appropriately – how can we own, and exclude others from using our hashtag?  Individual words and phrases are not protectible under copyright law or patent law.  That leaves trademark law, which can offer protection for terms and short phrases. Even so, hashtags seem to be that proverbial square peg that doesn’t quite fit under the penumbra of trademark protection.  In a trademark sense, hashtags are very similar to website addresses ( and Twitter handles (@xyz) where, historically, little to no trademark significance has been attributed to the symbols associated with these uses (i.e. “www” “.com” and “@”).

Hashtags typically indicate the subject matter of social media content and thus, are descriptive in nature. Trademarks, on the other hand, are designations of source, and the general rule is the more distinctive (and less descriptive) the mark is, the stronger the trademark rights in that mark will be.  So, although hashtags might be clever and original, hashtags as we typically encounter them in social media do not function as trademarks.

Adding a hash symbol (#) does not transform the term into a trademark and does not impart any ownership rights in the term, per se. In fact, the U.S. Patent and Trademark Office does not consider the # symbol to be a distinguishing feature of a mark, and the # sign is treated the same as any other punctuation mark or common symbol.[2]

In a recent decision, See, In re symbolic, llc, 127 USPQ2d 1627 (TTAB 2018), the Trademark Trial and Appeal Board (“T.T.A.B.”) confirmed this view.  Well known singer/songwriter and pop culture personality (notably from the musical group Black Eyed Peas) attempted to register the mark #WILLPOWER for various clothing items.  On examination, the USPTO refused to register the mark, citing likelihood of confusion with a prior registration for the following design trademark also for clothing:

On appeal, the TTAB affirmed the refusal to register holding that the # hash symbol was not a distinguishing feature of’s mark.  The TTAB stated in no uncertain terms, “[w]e find, in this case, the hash symbol does not have source-indicating distinctiveness and at most simply appears as the social media tool to create a metadata tag.” Id.

In sum, a successful hashtag is generally one that garners attention and generates popularity through re-use by the social media masses. They are not typically used for long periods of time and are a tool of today’s “hot news” culture, used to generate buzz around a certain subject.  When used properly, trademark rights can last a long, long time and the strongest marks carry a strong association in the mind of consumers as the source of a particular product or service.  So, while the two concepts seem similar, when you look at the underlying purpose and use of each, you will find they are quite different.

A good intellectual property attorney can help you protect your rights and guide you towards the best available option for you.


[2]“. . .[T]he addition of the term HASHTAG or the hash symbol (#) to an otherwise unregistrable mark typically will not render it registrable. Cf. TMEP §807.14(c) (“Punctuation, such as quotation marks, hyphens, periods, commas, and exclamation marks, generally does not significantly alter the commercial impression of the mark.”); TMEP §1209.03(m) (addition of generic top-level domain name to otherwise unregistrable matter typically cannot render it registrable). Accordingly, if a mark consists of the hash symbol or the term HASHTAG combined with wording that is merely descriptive or generic for the goods or services, the entire mark must be refused as merely descriptive or generic.” Trademark Manual of Examining Procedure. October, 2017. § 1202.18 “Hashtag Marks.”

U.S. Policy on Venezuelan National Cryptocurrency Complicates Venezuelan Patent and Trademark Fee Payments

By Patrick B. Monahan
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In February of 2018 the Venezuelan government launched the “petro,” a state-backed cryptocurrency that was purportedly created to supplement Venezuela’s fiat currency, the bolívar. The government has claimed that the petro is backed by Venezuela’s reserves of oil, gasoline, gold and diamonds. At this writing there remain a number of questions about the petro’s value, its backing, and even about its availability.

On February 1, 2019, the Venezuelan Ministry of National Commerce issued a notice requiring that patent and trademark fees be paid in petro. On that same day, Servicio Autónomo de la Propiedad Intelectual (SAPI), Venezuela’s patent and trademark governing body, lifted its suspension of payment of fees, which dated back to February of 2018, and established a 60-day term in which rights holders must pay any outstanding fees required for the maintenance of their registrations. This fee schedule is retroactive, meaning that any fees that would have come due during the suspension of payments are now due during the 60-day term, which, according to the schedule, can be extended at SAPI’s sole discretion.

Further complicating this matter for United States individuals and companies with intellectual property interests in Venezuela is Executive Order 13827, issued on and effective as of March 19, 2018, which, absent an exemption from U.S. authorities, expressly prohibits transactions by U.S. persons (individuals or companies) relating to any digital currency, digital coin, or digital token issued by, for, or on behalf of the Venezuelan government on or after January 8, 2018. This Executive Order appears to address a concern of the United States government that the Venezuelan government’s creation of the petro is an attempt to skirt ongoing U.S. sanctions affecting Venezuela’s access to international financing.

We strongly recommend that intellectual property rights owners in the United States with interests in Venezuela exercise caution in this time of uncertainty. We will continue to monitor the situation and will provide an update in the event of the issuance of an exemption from U.S. authorities, an extension of the 60-day payment term by SAPI, or a change in the payment policy from the Venezuelan Ministry of National Commerce.

Supreme Court Holds that Lost Foreign Profits are Permissible Damages

By Fritz Klantschi
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The U.S. Supreme Court recently upheld a lost profits award of $93.4 million in a patent infringement suit, finding that profits lost by a patent owner outside the United States are recoverable in a patent infringement suit in the U.S.


The case, WesternGeco LLC v. ION Geophysical, 138 S Ct 2129, 201 L Ed 2d 584 [2018], involves competitors in the field of ocean floor surveying systems.

ION manufactured the components to its infringing system in the U.S. and shipped them to companies abroad for assembly. Once ION’s components were assembled, the ION system was indistinguishable from the WesternGeco system.  At trial, the jury found ION liable for patent infringement and awarded WesternGeco damages in royalties ($12.5 million) and lost profits ($93.4 million). ION appealed to have the verdict set aside, arguing that WesternGeco could not recover damages for lost profits because the relevant statute, 35 U.S.C. § 271(f)(1) of the patent law, does not apply to damages outside the U.S.  Section 271(f) addresses patent infringement for exporting uncombined components of a patented invention and interacts with another provision of the patent statute, § 284, which provides damages “adequate to compensate for the infringement, but in no event less than a reasonable royalty for the use made of the invention by the infringer.”

There is a presumption against the extraterritorial effect of U.S. laws. When dealing with questions of extraterritoriality, the Supreme Court in RJR Nabisco, Inc. v. European Community, 136 S.Ct. 2090, 195 L.Ed.2d 476 (2016) established a two-step test.  The first step asks “whether the presumption against extraterritoriality has been rebutted.” Id. at 2101.  If the presumption against extraterritoriality has not been rebutted, the second step asks “whether the case involves a domestic application of the statute.” Id.  To make this determination it is necessary to identify the statute’s focus,”and whether the conduct relevant to that focus occurred in the U.S.  If it did, that would allow a permissible domestic application of the statute. WesternGeco at 2136.

The Decision

In a 7 to 2 decision, Justice Thomas, writing for the majority, held that WesternGeco’s damages award for lost profits was a permissible domestic application of § 284. Id. at 2139.

The Court addressed step two of the extraterritorial test first and held that § 284 provides a general remedy for patent infringement. The focus of § 284 is determined by the type of infringement that occurred. The Court considered § 271(f)(2), the basis of WesternGeco’s infringement claim and the lost-profits damages that the jury awarded.  The focus of § 271(f)(2) is on domestic conduct and states a “company shall be liable as an infringer if it supplies certain components of a patented invention in or from the United States with the intent that they will be combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States.” Id. at 2137 – 2138 (internal quotes omitted).

The Court ultimately determined that § 284, in a case involving infringement under § 271(f)(2), addresses the act of exporting components of a patented invention from the United States. In the present case, ION exported components that infringed WesternGeco’s patents from the United States.  Taking § 271(f)(2)  and § 284 together, a patent owner can recover for lost foreign profits because under § 284, “damages are adequate to compensate for infringement when they place the patent owner in as good a position as he would have been in if the patent had not been infringed.” Id. at 2139 (citing General Motors Corp. v. Devex Corp., 461 U.S. 648, 655, 103 S.Ct. 2058, 76 L.Ed.2d 211 (1983), internal quotes omitted).  Hence, damages awarded to WesternGeco can include lost foreign profits under a domestic application of § 284. Id.

The Dissent

Justice Gorsuch joined by Justice Breyer dissented. The dissent disagreed with the majority that the Patent Act permitted WesternGeco’s claim for lost profits because a U.S. patent provides a lawful monopoly on the manufacture, use and sale of an invention in the U.S. whereas WesternGeco’s lost profits were derived from uses outside of the U.S.  According to the dissent, the effect of WesternGeco’s lost profit is that WesternGeco can charge monopoly rates abroad based on a U.S. patent that has no legal force abroad.  To allow this would permit patent owners to use American courts to extend their monopolies to foreign markets.  Justice Gorsuch’s concern is that other countries would use their patent laws and courts to assert control over the U.S. economy. Id.


The takeaway from this decision is that the focus of the Patent Act’s damages section, § 284, in a case involving infringement under § 271(f)(2) is on the act of supplying/exporting components of a patented invention from the U.S. If those components are combined outside of the United States in a manner that would infringe the patent if such combination occurred within the United States then a patent owner can recover lost foreign profits as a permissible domestic application of § 284. On January 11. 2019, the Federal Circuit remanded the case back to the district court to decide whether to hold a new trial to determine if WesternGeco can recover from ION $93.4 million in lost profits.