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Second Circuit Tells Rapper to Face the Music for Failing to Register the Work

by | May 23, 2024 |

The US Court of Appeals for the Second Circuit affirmed the dismissal of a copyright infringement claim by one rap artist against another on the grounds that the plaintiff failed to register the work in question. The Court emphasized the distinction between a musical work and a sound recording of that work, noting that they are separately copyrightable and require separate registrations. Nwosuocha v. Glover, Case No. 23-703 (2d Cir. May 10, 2024) (Jacobs, Park, Nathan, CJ.) (per curium) (nonprecedential)

In fall 2016, the rapper Emelike Nwosuocha, who goes by Kidd Wes, wrote and published a song called “Made in America.” In May 2017, Kidd Wes registered an album that included “Made in America” with the US Copyright Office and was issued a sound recording registration. In 2018, the rapper Donald Glover, known as Childish Gambino, released the song “This is America.” The song won in all four of its nominated categories at the 61st Grammy Awards in 2019: Song of the Year, Record of the Year, Best Rap/Sung Performance and Best Music Video. Kidd Wes then filed a complaint in the US District Court for the Southern District of New York against Glover and his music labels, alleging infringement of his copyright.

A valid copyright registration is a prerequisite to suit under 17 U.S.C. § 411(a). Here, Kidd Wes only registered his copyright for the sound recording of “Made in America,” not for the musical work itself. Since his infringement allegations concerned the work and not the recording of the work, the district court granted Childish Gambino’s motion to dismiss the claim for failure to register the copyright at issue. The court also dismissed the claim for the independent reason that Childish Gambino’s song did not infringe.

Kidd Wes appealed, arguing that § 411(b) permits suit “regardless of whether the certificate [of registration] contains any inaccurate information,” unless the inaccuracy was knowing or material, and that the distinction between a sound recording and a musical work is an administrative classification imposed by the Register of Copyrights and therefore has “no significance with respect to the subject matter of copyright or the exclusive rights provided by [Title 17 of the United States Code].”

The Second Circuit rejected both lines of argument. First, the Court noted that failing to register the musical work “Made in America” is not the same as accidentally including inaccurate information on the registration form. The Court explained that “the difference between forgiving technical mistakes in a copyright application and allowing applications to create registrations in material never mentioned” is an important distinction, and they should not be conflated.

Second, the Second Circuit noted that the distinction between a musical work and a sound recording of that work is not just an administrative classification, but a distinction created by statute. (17 U.S.C. §§ 102(a)(2) and (a)(7).) The distinction is important, the Court explained, because “sound recordings and musical works are different artistic works that can be copyrighted by different creators and are infringed in different ways.”

Having [...]

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Take Three for Take-Two: Jury Finds Implied License for Tattoos on Video-Game Avatar

by | May 9, 2024 |

A jury rejected allegations that a video-game maker’s use of tattoos in a game violated the copyright of the artist who inked them, finding the video-game maker had an implied license to depict a player’s tattoos in its likeness of him. Hayden v. 2K Games Inc., Case No. 1:17-cv-02635 (N.D. Ohio)

Jimmy Hayden is a tattoo artist who has created works for many National Basketball Association (NBA) stars, including Lebron James, Shaquille O’Neal, Kyrie Irving, Danny Green and Tristan Thompson. Hayden filed suit against Take-Two Interactive Games, a developer, publisher and marketer of interactive entertainment and video games, in 2017 for the depiction of his copyrighted tattoos on the likenesses of James, Green and Thompson in the popular NBA 2K game series. The NBA 2K series allows players to control realistic avatars of more than 400 NBA players.

In January 2024, the district court dismissed the infringement claims concerning four of the six tattoos but ruled that claims concerning two of the tattoos on James could proceed to trial. The jury found that Take-Two’s agreement with the NBA and its players’ union to use James’s likeness included an implied license to depict his tattoos.

Practice Note: A likely issue on appeal will be whether the jury was correctly instructed in the implied license doctrine, which involves inferring intent from the parties’ conduct, as well as whether it applied the doctrine correctly.

Similar Cases

This case is the latest in a series of disputes between tattoo artists and the use of their work in video games. In 2020, Take-Two was sued in the US District Court for the Southern District of New York over its depiction of tattoos on NBA players, including James, Kenyon Martin and Eric Bledsoe. In that case, Solid Oak Sketches, Inc. v. Take-Two Games, Inc. (499 F.Supp.3d 333 (S.D.N.Y. 2020)), the district court granted Take-Two’s motion for summary judgment, finding that the tattoos depicted on the basketball players were not substantially similar to the actual tattoos, that the video game company’s use was within the license granted by the players to use their likeness and that the video game’s use of the copyrighted tattoos was transformative.

In another case, Alexander v. Take-Two Interactive Software, Inc. et al. (Case No. 18-cv-966-SMY, (S.D. Ill. 2022)), a tattoo artist won a jury trial concerning the depiction of tattoos on professional wrestler Randy Orton in Take-Two’s WWE 2K video game series. In that case, the jury awarded Alexander $3,750 in damages, finding that the reproduction of the tattoos was not fair use, but the small size of the award reflected their finding that the game’s profits were not attributable to the copied tattoos.



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Back in the USA: Seventh Circuit Lifts Sanctions, Anti-Suit Injunction Contempt

by | May 2, 2024 | ,

The US Court of Appeals for the Seventh Circuit stayed a district court’s contempt sanctions relating to an anti-suit injunction violation, finding that the adjudicated infringer had done all it could to withdraw from the other proceeding in China. Motorola Solutions, Inc. v. Hytera Communications Ltd., Case No. 24-1531 (7th Cir. Apr. 16, 2024) (Hamilton, Brennan, St. Eve., JJ.) (per curiam).

Motorola Solutions previously obtained a $500 million judgment against Hytera for trade secret misappropriation and infringement of copyrighted code used in Motorola’s two-way radio systems. Motorola subsequently brought contempt proceedings after Hytera launched a new line of two-way radio systems, asserting that the new radio systems also used the copyrighted code. As part of the contempt proceeding, the district court imposed an anti-suit injunction ordering Hytera to “refrain from further pursuing or enforcing in any way” a lawsuit that Hytera had filed in the Shenzhen Intermediate People’s Court in China seeking a declaratory judgment that the new line of radios did not infringe Motorola’s intellectual property.

After evidence emerged that Hytera continued to participate in the Chinese proceeding, the district court issued an order directing Hytera to withdraw from the Chinese proceeding. Just a few days later the district court issued an order finding that Hytera had violated the anti-suit injunction by continuing to participate in the Chinese proceeding and imposed contempt sanctions, including a worldwide suspension of Hytera’s sales of two-way radio products; a fine of $1 million per day; and worldwide notice of the sanctions and prohibitions to customers, distributors and others. A few days after the order issued, Hytera filed an appeal.

At the same time, Hytera filed a petition with the Chinese court seeking to withdraw the declaratory judgment action and seeking the return of all evidence from that court. Less than a week later, Motorola appeared before the Chinese court. Because of the anti-suit injunction, Hytera did not appear at the hearing. At the hearing, the Chinese court denied Hytera’s motion to withdraw. Later that same afternoon, the Chinese court summoned Hytera and thereafter issued a short order granting the motion to withdraw.

Despite the Chinese court’s decision to grant Hytera’s motion to withdraw, the district court did not lift the sanctions. The district court expressed concern about a scenario in which a written order “technically withdraws the action” but comes with “a whole series of other consequences that generates duplicative litigation . . . and thereby undermines the whole purpose of the anti-suit injunction and the subsequent contempt proceedings.” The district court also noted that Hytera had not yet produced a promised log of ex parte communications between it and the Chinese court, and thus the district court could not be sure that Hytera was not using the Chinese court’s ex parte procedure to push for a favorable written order behind closed doors. Under the pressure of the continued contempt sanctions, Hytera repeatedly asked the Chinese court to clarify the status and effect of the order granting its withdrawal.

On appeal before the [...]

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Easy Tiger: Docuseries Summary Judgment Remanded for Further Fair Use Consideration

by and | Apr 11, 2024 |

Addressing copyright fair use in the wake of the Supreme Court’s recent guidance in Warhol, the US Court of Appeals for the Tenth Circuit partially reversed the district court’s grant of summary judgment in favor of the defendants. The Tenth Circuit held that the first fair use factor (the purpose and character of the use) weighed in favor of the plaintiffs and remanded for further consideration of the accused infringing work’s effect on the potential market for the copyrighted work. Whyte Monkee Productions, LLC; Timothy Sepi v. Netflix, Inc.; Royal Goode Productions, LLC, Case No. 22-6068 (10th Cir. Mar. 27, 2024) (Holmes, C.J.; Hartz, Carson, JJ.)

In 2020, Netflix and Royal Goode Productions (the defendants) released the popular multipart documentary Tiger King: Murder, Mayhem and Madness. Tiger King included eight videos filmed by Timothy Sepi (the plaintiff), seven of which were filmed while Sepi was employed by the zoological park featured in the docuseries. The eighth video, a 24-minute recording of the funeral of Travis Maldonado (who was the husband of Joe Exotic, aka the Tiger King) was filmed by Sepi after his employment ended. After the release of Tiger King, the plaintiffs registered the copyrights for the eight videos and sued the defendants for copyright infringement.

The district court granted summary judgment in favor of the defendants, holding that Sepi did not own the copyright for the seven videos he filmed during his employment because they were “works made for hire” and that the defendant’s use of the eighth video was permissible fair use. The plaintiffs appealed.

On appeal, the plaintiffs argued that the district court erred in holding that seven of the videos were works made for hire because Sepi’s scope of employment “did not extend to cinematography and film editing conducted on his own time.” The plaintiffs also argued that the district court incorrectly assessed each of the fair use factors in connection with the eighth video.

The Tenth Circuit swiftly affirmed the grant of summary judgment on the first seven videos, noting that the plaintiffs’ argument regarding the scope of Sepi’s employment was a new theory on appeal and therefore had been waived. Nonetheless, the Court reversed the grant of summary judgment in favor of the defendants with respect to the eighth video, stating that the district court erred in concluding that the first and fourth fair use factors weighed in favor of the defendants.

As set forth in the Copyright Act, there are four nonexclusive factors to consider in assessing whether the use of a copyrighted work is protected fair use:

  • The purpose and character of the use
  • The nature of the copyrighted work
  • The amount and substantiality of the portion used
  • The effect of the use on the potential market for or value of the copyrighted work.

Important here, the Tenth Circuit noted that all four factors should be weighed together “in light of the aim of copyright, which is ‘to promote the progress of science and the arts, [...]

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Strong Signal: Personal Jurisdiction Over Foreign Defendant Based on Confluence of Factors

by | Mar 21, 2024 |

The US Court of Appeals for the Fifth Circuit concluded that a district court had personal jurisdiction over a foreign defendant’s website that purposefully targeted a US-based audience. DISH Network, LLC v. Bassam Elahmad, Case No. 23-20180 (5th Cir. Mar. 8, 2024) (Willett, Wilson, Ramirez, JJ.) (per curiam).

DISH Network sued Bassam Elahmad, a German resident doing business as Elahmad.com, for contributory copyright infringement, alleging that Elahmad unlawfully provided access to DISH’s copyrighted Arabic language channels. DISH alleged that Elahmad found, combined and organized illegal streams and loaded links onto Elahmad.com. DISH sent more than 60 copyright infringement notices to Elahmad, who never responded or removed the content. Although Elahmad resided in Germany, DISH argued that any court in the United States had jurisdiction over him under Fed. R of Civ. Pro. 4(k)(2) because his website reached into and targeted the US. DISH also argued that Elahmad was not subject to jurisdiction in any particular US state. The district court disagreed, concluding that it could not exercise personal jurisdiction over Elahmad because DISH’s complaint did not allege that any conduct had occurred in Texas. The district court twice denied DISH’s motions for default judgment and dismissed the complaint. DISH appealed.

The Fifth Circuit addressed the district court’s application of Rule 4(k)(2) and whether DISH had made a sufficient prima facie showing of specific personal jurisdiction to sustain its case.

Addressing Rule 4(k)(2), which provides personal jurisdiction in any US district court if a defendant is not otherwise subject to jurisdiction in a specific state, the Fifth Circuit clarified that for a finding of personal jurisdiction under this rule, the question is whether a defendant has sufficient minimum contact “with the entire United States, not a forum state.” The Fifth Circuit found that the district court’s analysis focused solely on Elahmad’s Texas contacts – not the entire US – and was therefore reversible error.

Turning to DISH’s burden to establish a prima facie case of personal jurisdiction, the Fifth Circuit noted that DISH had properly served Elahmad. DISH therefore only had to satisfy three other conditions: that its claims arose from federal law, that Elahmad was not subject to general jurisdiction in another state, and that exercising jurisdiction would be consistent with the US Constitution. The Court concluded that the first two conditions were easily met because copyright laws are federal and the burden to establish that another state has jurisdiction falls on the defendant. Elahmad had not answered the complaint or joined the appeal. Clearly, he had not met that burden.

The Fifth Circuit found that the third condition was “a closer question” that required consideration of whether Elahmad had sufficient ties to the US to satisfy constitutional due process concerns. Because DISH argued that the district court had only specific personal jurisdiction over the defendant (not general), DISH needed to show that Elahmad purposefully availed himself of “the privilege of conducting activities in the United States,” that DISH’s claim arose out of those contacts, and that it would be [...]

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Yo-Ho-No Vicarious Liability for Online Piracy Without Financial Benefit

by | Feb 29, 2024 |

The US Court of Appeals for the Fourth Circuit reversed-in-part, vacated-in-part and affirmed in part a district court decision that found an internet service provider liable for $1 billion in damages for vicarious and contributory copyright infringement. Sony Music Entm’t., et al. v. Cox Commc’ns, Inc., Case No. 21-1168 (4th Cir. Feb. 20, 2024) (Harris, Rushing, JJ., Floyd, Sr. J.) (per curiam).

Sony Music along with 52 other music companies filed suit against Cox Communications in July 2018, alleging both contributory and vicarious liability based on copyright infringement by Cox’s customers. Sony argued that Cox knew that some of its customers used its service to download or distribute songs over the internet without permission but chose not to cancel their subscriptions. The Digital Millennium Copyright Act (DMCA) created a safe harbor for internet service providers in such circumstances but a prior case against Cox held that it did not qualify for the safe harbor because “its repeat infringer policy as implemented was inadequate under the DMCA.” In the present case, the jury found Cox liable for vicarious and contributory infringement of all 10,017 copyrighted works alleged to have been infringed and found that Cox’s infringement was willful. The jury awarded Sony more than $99,000 per work infringed, totaling $1 billion in statutory damages. Cox appealed.

The appeal garnered noteworthy amici in support of both sides. Cox was supported by the Electronic Frontier Foundation, the American Library Association and the Center for Democracy and Technology, among others. Sony was supported by the National Music Publishers’ Association, the Songwriters of North America, the Nashville Songwriters Association International and the Copyright Alliance.

Cox raised many questions of law concerning the scope of secondary liability and what constitutes a compilation or derivative work in the digital age. The Fourth Circuit upheld the jury verdict finding Cox liable for contributory copyright infringement, rejecting Cox’s arguments that its service was also used for lawful activity and that its contribution must amount to aiding and abetting the infringement. The Court explained that “supplying a product with knowledge that the recipient will use it to infringe copyrights is exactly the sort of conduct sufficient for contributory infringement.” The Court concluded that the jury saw sufficient evidence that Cox knew specific users were repeatedly infringing but chose not to terminate their service.

The Fourth Circuit, however, reversed the jury’s verdict of vicarious liability, finding that Cox did not profit from its subscribers’ acts of infringement and so did not meet the legal prerequisite for that form of secondary liability. Reviewing landmark cases on vicarious liability, the Court explained that “the crux of the financial benefit inquiry is whether a causal relationship exists between the infringing activity and a financial benefit to the defendant . . . the financial benefit to the defendant must flow directly from the third party’s acts of infringement to establish vicarious liability.” Since Sony failed to show that Cox profited from its subscribers’ infringing activity, it failed to establish vicarious liability.

The [...]

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No Fair Use for Photo Used Without Required Attribution

by | Feb 15, 2024 |

The US Court of Appeals for the Fourth Circuit concluded that the copyright on a photograph of an entertainment icon was the subject of a valid copyright registration and that use of the photograph in an article missing the author’s required attribution language was not otherwise “fair use.” Philpot v. Independent Journal Review, Case No. 21-2021 (4th Cir. Feb. 6, 2024) (King, Wynn, Rushing, JJ.)

Larry Philpot, a professional concert photographer, photographed Ted Nugent at a concert in July 2013. In August 2013, Philpot registered the photograph with the US Copyright Office and published the photograph on Wiki Commons under a Creative Commons License specifying that anyone could use the photograph for free as long as they provided the following attribution: “Photo Credit: Larry Philpot of www.soundstagephotography.com.”

In 2016, Independent Journal Review (IJR) published an article titled, “Signs Your Daddy Was a Conservative.” One of the “signs” listed in the article was whether “your daddy” was a fan of “The Nuge.” The article used Philpot’s photo in conjunction with this list item. Rather than including the required attribution with Philpot’s photo, IJR included a link to Nugent’s Wikipedia page, which in turn linked to the Wiki Commons site where the photograph was hosted with the proper attribution. IJR generated only $2 to $3 in advertising revenue from the article.

Philpot sued IJR for copyright infringement in May 2020. IJR moved for summary judgment based on its fair use defense and alternatively for a finding that Philpot’s registration was invalid. Philpot moved for summary judgment of valid registration and that IJR’s use did not meet the requirements of fair use. The district court found that there was a genuine issue of material fact regarding the validity of Philpot’s registration but granted IJR’s motion for summary judgment of fair use. Philpot appealed both findings.

Following the statutory four-prong fair use framework and the Supreme Court 2023 fair use analysis in Andy Warhol Foundation for the Visual Arts v. Goldsmith, the Fourth Circuit considered whether IJR’s use of the photo was transformative and of a commercial nature or for nonprofit educational purposes. A secondary use is transformative when it has a “further purpose or different character” than the original work. The larger the difference is, the more likely a court is to find that the use constitutes “fair use.” The district court found the work transformative because IJR placed the photo in a new context (i.e., a list of “Signs Your Daddy Was a Conservative.”) The Fourth Circuit, however, found that IJR’s use was not transformative because the two uses “shared substantially the same purpose,” which was to depict Ted Nugent. Beyond cropping negative space in the photo, IJR did not alter or add new expression to the photo and did not “add new purpose or meaning.”

In considering whether the work was for a commercial purpose, the Fourth Circuit questioned whether IJR stood to profit from its use of the photo, not whether IJR was successful at that venture. While the article [...]

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Artificial Inspiration? Style Execution by AI Obviates Human Authorship

by | Dec 21, 2023 |

The US Copyright Office Review Board rejected a request to register artwork made using an artificial intelligence (AI) painting application, finding that the applicant “exerted insufficient creative control” over the application’s creation of the work. Second Request for Reconsideration for Refusal to Register SURYAST (Copyright Review Board, Dec. 11, 2023) (Wilson, Gen. Counsel; Strong, Associate Reg. of Copyrights; Gray, Asst. Gen. Counsel).

Ankit Sahni filed an application to register a claim for a two-dimensional artwork titled “SURYAST.” The work was generated by inputting a photograph Sahni had taken into an AI painting app called “RAGHAV.” Sahni describes RAGHAV as an “AI-powered tool” that uses machine learning to “generate an image with the same content as a base image, but with the style of a chosen picture.” In this case, Sahni took a photograph of a sunset and applied the style of Vincent van Gogh’s The Starry Night to generate the image at issue:

In the application, Sahni listed himself as the author of “photograph, 2-D artwork” and RAGHAV as the author of “2-D artwork.” Because the application identified an AI app as an author, the Copyright Office registration specialist assigned to the application requested additional information about Sahni’s use of RAGHAV in the creation of the work. After considering the additional information, the Copyright Office refused to register the work because it “lack[ed] the human authorship necessary to support a copyright claim.”

Sahni requested that the Copyright Office reconsider its initial refusal to register the work, arguing that “the human authorship requirement does not and cannot mean a work must be created entirely by a human author.” Sahni noted that in this case, the AI required several human inputs such as selecting and creating the base image, selecting the style image and selecting a variable value that determined the strength of the style transfer. He argued that the decisions he made in generating SURYAST were sufficient to make him the author of the work, which meant that the work was the product of human authorship and therefore eligible for copyright protection. Sahni minimized the role of RAGHAV, calling it an “assistive tool” that merely “mechanically” applies “colors, shapes and styles, as directed.”

The Board disagreed, finding that Sahni’s input to RAGHAV was insufficient to make SURYAST a product of human authorship. The Board reasoned that while Sahni did provide the original image and selected the style and a “variable value determining the amount of style transfer,” Sahni was not actually responsible for “determining how to interpolate the base and style images in accordance with the style transfer value.” Furthermore, Sahni did not control where the stylistic elements would be placed, what elements of the input image would appear in the output or what colors would be applied. The Board [...]

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TikTok Makes It Out of West Texas to Sunny Northern California

by | Nov 16, 2023 |

The US Court of Appeals for the Fifth Circuit granted a writ of mandamus ordering the transfer of a case, finding that the district court’s denial of the motion to transfer “was so patently erroneous” that the extreme measure was appropriate. In re TikTok, Inc., Case No. 23-50575 (5th Cir. Oct. 31, 2023) (Smith, Southwick, Wilson, JJ.)

In the underlying case, Beijing Meishe Network Technology Co. sued TikTok in the US District Court for the Western District of Texas, alleging infringement, trade secret misappropriation and false advertising. All claims stemmed from the theory that a former Meishe employee disclosed copyrighted source code for video and audio editing software to TikTok, which TikTok then implemented into its app. Meishe and TikTok are Chinese companies, and both the alleged disclosure and TikTok’s alleged code implementation occurred in China, assisted by TikTok engineers in California. TikTok has no engineers in Texas but does maintain a business office there, although not within the Western District.

TikTok moved under 28 U.S.C. § 1404 to transfer the case to the Northern District of California. The district court took 11 months to rule on the motion, and in the meantime the case continued through discovery. After the district court denied the motion, TikTok petitioned the Fifth Circuit for a writ of mandamus.

The sole issue on mandamus was the propriety of the district court’s refusal to transfer venue. To succeed on a writ of mandamus, a petitioner must satisfy the reviewing court regarding the following questions:

  1. Are there other ways to obtain the desired relief?
  2. Is the reviewing court’s right to issue the writ “clear and indisputable”?
  3. Is the writ appropriate, given the circumstances?

The Fifth Circuit focused on the second question, its right to issue the writ. In the Fifth Circuit, the 2008 en banc In re Volkswagen case mandates an eight-factor test that a district court must consider in deciding a § 1404 transfer motion. No one factor is dispositive, and the Fifth Circuit has cautioned against tallying the yes/no results or denying transfer just because most factors are neutral. Unsurprisingly, in the 15 years since Volkswagen, district courts applying these factors have reached inconsistent results. Even the Fifth Circuit has reached “conflicting outcomes” when reviewing these cases. The Fifth Circuit therefore took the opportunity to address each factor.

The Fifth Circuit found that two factors weighed in favor of transfer:

  • The relative ease of access to sources of proof
  • The cost of attendance of willing witnesses

Regarding ease of access to proof, the Fifth Circuit clarified that factfinders analyze “relative ease of access, not absolute ease of access” to documents and other physical evidence. The district court had determined that this factor was neutral, given that most documentation was electronic. The Fifth Circuit disagreed, explaining that while the source code was electronically stored, it was protected by a high level of security clearance. Only certain TikTok employees based in California and China were able to access the code. Using the relative metric, [...]

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Just How Similar Must Competing Marks Be to Survive Dismissal?

by | Oct 5, 2023 |

After a de novo review, the US Court of Appeals for the Sixth Circuit affirmed in part and reversed in part a district court’s motion to dismiss, finding the competing marks sufficiently similar to avoid dismissal, and the attorneys’ fee award. Bliss Collection, LLC v. Latham Companies, LLC, Case Nos. 21-5723; -5361 (6th Cir. Sept 21, 2023) (Mathis, Bush, JJ.) (Larsen, J., dissenting).

This case between Bliss and Latham was the latest installment in a series of cases between the children’s clothing companies after a Bliss founder left to start Latham as a competitor company. Here, Bliss sued Latham for infringement of three trademarks for Bliss’s stylized lowercase “b” logo, appearing as if stitched out in thread. Bliss sued for federal copyright infringement, federal trademark infringement, federal trade dress infringement, federal false designation of origin and misappropriation of source, federal unfair competition, trademark under Kentucky law and unfair competition under Kentucky law.

The competing marks are depicted below:

Latham moved to dismiss, and the district court dismissed the federal copyright and trade dress claims. The district court did not initially dismiss the remaining claims, but later did so after a motion for reconsideration. The district court determined that Latham was not entitled to attorneys’ fees because the case was not exceptional, and Bliss had brought the suit in good faith. Bliss appealed the federal trademark infringement, federal trade dress infringement and trademark infringement under Kentucky common law only.

The Sixth Circuit focused its analysis on whether the amended complaint properly alleged that Latham’s logo was a use of Bliss’s trademark. The Court noted that dismissal was not warranted for anything but the most extreme cases, concluded that this was not such a case and reversed.

The Sixth Circuit found that Latham used the accused mark “in a trademark way” (i.e., to identify goods). Then, weighing the Frisch factors to determine likelihood of confusion between the marks, the Court found that the similarity between the marks and their “impression” favored Bliss despite the fact “that the logos share no words or homophones.” Overall, the Court found that five of the eight factors favored Bliss and that two were neutral. Only the likelihood of purchaser care factor was found to favor Latham. The Court thus found that Bliss had plausibly alleged a likelihood of confusion and that its complaint stated a federal trademark infringement claim. Applying the same logic to the state trademark claims, the Court also reversed the dismissal of those claims.

The Sixth Circuit affirmed the dismissal of the trade dress claim, however, because Bliss failed in its affirmative duty to plead facts in support of nonfunctional trade dress.

Turning to the attorneys’ fee award, the Sixth Circuit found that the mere fact that Bliss sued Latham was not sufficient to warrant an “exceptional” case finding in terms of an award for fees. The Court was also unpersuaded that the trade dress claim was worthy of a fee award as [...]

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