New Trademark and Copyright Decisions:
TTAB Rejects Express Abandonment of Application “Without Prejudice” After Adverse Final Decision
Ninth Circuit Decision Takes Surprising Turn in Considering Copyright Damages Against Defendants with Joint and Several Liability
In re Information Builders, Inc., Serial No. 87,753,964 (Feb. 25, 2021) (TTAB) [precedential], available here.
When can an application be abandoned in the course of a Trademark Trial and Appeal Board proceeding? After a final decision by the TTAB affirming the refusal to register applicant’s mark on the basis of likelihood of confusion and for failure to comply with a disclaimer requirement, applicant filed an express abandonment of the application “without prejudice.” The Board issued an order stating that the purported abandonment was both untimely and beyond the Board’s limited power to re-open an appeal after a final decision.
Desire v. Manna Textiles, et al., No. 17-56641 (9th Cir., Feb. 2, 2021), [approved for publication] available here.
Plaintiff Desire, a Los Angeles-based fabric supplier, filed suit in the Central District of California alleging copyright infringement by competitor Manna Textiles, by three manufacturers supplied by Manna, and by three retailers supplied by the manufacturers. A Ninth Circuit panel affirmed the District Court’s ruling that plaintiff owned a valid copyright in the floral print textile design at issue, and that the design was entitled to broad protection. However, the majority reversed the lower court’s grant of summary judgment as to the number of statutory damages awards available and vacated the jury’s judgment awarding multiple awards of statutory damages, and remanded the case for further proceedings on the damages issue. Judge Kim Wardlaw issued a strong dissent on several grounds, including that the majority’s opinion regarding damages “runs directly contrary to Ninth Circuit controlling precedent,” and stating that the majority had created a “mess.” See p. 8 of the majority opinion for a helpful chart showing the basis for determination of joint and several liability among the seven original defendants.