For our weekly SoCal IP Institute meeting on Monday, April 6th, 2020 we will discuss the following cases:

VIP Products LLC v. Jack Daniel’s Properties, Inc. (9th Circuit 2020) (available here)

VIP products filed a lawsuit to cancel Jack Daniel’s registration for its famous bottle. The 9th Circuit affirmed the district court’s summary judgment in favor of Jack Daniel’s on the issues of aesthetic functionality and distinctiveness. At trial, the court found Jack Daniel’s trade dress and bottle design were distinctive and aesthetically nonfunctional, thus entitling them to trademark protection. The district court also rejected VIP’s nominative fair use defense because, although the Bad Spaniels toy resembled Jack Daniel’s trade dress and bottle design, there were significant differences between them, specifically the image of a spaniel and the phrases on the Bad Spaniels label.

Tresona Multimedia, LLC v. Burbank High Vocal Music (9th Circuit 2020)(available here)

Plaintiff licensing company claimed that a high school choir failed to obtain licenses for their use of copyrighted sheet music in arranging a show choir performance. The 9th circuit concluded that plaintiff lacked standing under 17 U.S.C. § 501(b) to sue as to three of the four musical works at issue because it received its interests in those songs from an individual co-owners of the copyright, without the consent of the other co-owners, and therefore held only non-exclusive licenses in those works.

Additionally the PTO issued a  NOTICE of waiver of patent-related timing deadlines

Specific questions regarding the program can be directed to: Covid19PatentsRelief@uspto.gov or OPLA (571) 272-7704.

All are invited to attend. Due to the Covid-19 situation the meeting will be conducted electronically via zoom. Join us by using this link. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.