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Boston, Massachusetts 02108-3002

Phone: (617) 720-2444
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Tom Kenney Comments on the Supreme Court’s Recent Decision to Trim Remedies for Copyright Owners

Friday, August 26, 2016

by Thomas E. Kenney

For copyright owners, a copyright registration provides substantial benefits.  A copyright registration grants the owner the right to collect “statutory damages” against the infringer – ranging from $750 to $30,000 per violation.  Additionally, a registrant may recover from the infringer the attorneys fees it incurred in prosecuting litigation against the infringer.  Traditionally, copyright owners have been able to use the threat of statutory damages and attorneys fees to quickly and efficiently stop infringers and effectuate beneficial settlements.

However, the copyright landscape is changing.  Recently, in Kirtsaeng v. John Wiley & Sons, Inc., the United States Supreme Court made it more difficult for copyright owners to recover their attorneys fees from infringers.  Previously, many courts awarded attorneys fees to the prevailing party in copyright cases as a matter of course – declining to award attorneys fees in only the rarest of cases.  The Kirtsaeng Court rejected that practice, ruling that a Court should award attorneys fees to the prevailing party only where the losing party’s position was “objectively unreasonable” – meaning that the party did not have a good faith basis to deny that it infringed or to vigorously defend against the lawsuit.

The impact of this shift is unclear.  Will infringers resist monetary settlements – knowing that copyright owners are less likely to recover attorneys fees and thus less likely to pursue litigation once the infringer ceases its infringing activities?  Will copyright owners need to consider accepting a prompt cessation of infringing activities and forego insistence on a monetary recovery?  Only time and experience will tell.

A company’s brand and goodwill, represented by its intellectual property, often are its most valuable assets. Pierce & Mandell counsels clients on all aspects of intellectual property law, including registration of copyrights and trademarks, as well as intellectual property disputes and litigation.Contact Tom Kenney at 617-720-2444 or tom@piercemandell.com to discuss protection of these vital business assets.

Tom Kenney quoted in Boston Globe article regarding Commonwealth School trademark litigation

Friday, June 17, 2016

Pierce & Mandell partner Tom Kenney, who chairs our Trademark and Copyright Practice Area, was recently quoted in a Boston Globe article on pending litigation between Boston’s The Commonwealth School and Springfield’s Commonwealth Academy. Tom discussed one of the cardinal principles of trademark protection and trademark litigation: who prevails is often determined by the extent to which the parties market to the same or a similar customer base. Read Tom’s comments and the full article here.

The Trademark Owner’s Dilemma - Vigorous Enforcement of Rights or Bullying by Thomas E. Kenney

Friday, July 17, 2015

by Thomas E. Kenney

U.S. trademark law is deeply rooted in Common law, but even after Congress enacted federal law prescribing trademark rights in 1870, those rights have been repeatedly tested and redefined. But trademark protection is a door that swings both ways, writes Pierce & Mandell attorney Thomas Kenney  in a recent article which appeared in the July 2015 edition of Massachusetts Lawyers Journal.  “The trademark owner’s dilemma — vigorous enforcement of rights or bullying?”“The trademark owner’s dilemma — vigorous enforcement of rights or bullying?”

“A trademark owner not only enjoys the exclusive right to use its marks in commerce, but also has the right (and in fact the obligation) to stop others from using similar marks in a manner that causes consumer confusion,” Kenney writes. “However, a trademark owner is not permitted to misuse its trademark rights so as to intimidate another business into abandoning a mark that does not conflict with the trademark owner’s mark.  As a result of these competing principles of trademark law — a trademark owner is obligated to vigorously enforce its rights but at the same time must respect the fact that those rights are limited and not monopolistic — a trademark owner frequently is left in a quandary. What measure of enforcement is sufficient to protect its rights without crossing the line? Adding to that tension is the developing concept of ‘trademark bullying.’”

Hall and Oates Say “No Can Do” To Use of “Haulin’ Oats” For Granola

Friday, March 06, 2015

By Thomas E. Kenney

Enjoying a rather modest return to the spotlight after spending years in the “where are they now” category, aging pop/soul duo Daryl Hall and John Oates is back to doing what famous people do – suing others.  On Wednesday, Hall and Oates’ partnership, Whole Oats Enterprises, sued a Brooklyn based company, Early Bird Foods & Co., LLC, for trademark infringement based on Early Bird’s use of the name “Haulin’ Oats” in connection with the sale of granola.

While at first blush the lawsuit appears to be another example of a celebrity’s over-inflated ego getting the best of sound legal reasoning – similar to Chubby Checker’s preposterous lawsuit against HP and Palm over the “Chubby Checker” anatomical measuring app. – there is a twist (no pun intended) to the Hall and Oates lawsuit that may add some teeth to the case.

Another party, a woman in Tennessee named Tracey S. Levine, has been using the mark “Haulin’ Oats” since 2012 in connection with the sale and delivery of oatmeal.  Ms. Levine was granted a U.S. Trademark registration for the mark in June of 2013.  In February of 2015, after Early Bird declined Whole Oats’ demand that it cease use of the “Haulin’Oats” name, Whole Oats wisely entered into an agreement with Ms. Levine by which Ms. Levine assigned her “Haulin’ Oats” trademark to Whole Oats, and agreed to pay a royalty to Whole Oats for her continued sale of oatmeal under that mark.  It is not clear whether this arrangement has made Ms. Levine a “Rich Girl.”

Thus, while Whole Oats’ assertion that Early Bird’s use of “Haulin’ Oats” in connection with the sale of granola infringes the DARYL HALL JOHN OATES and HALL & OATES trademarks is spurious at best, Whole Oats does have what appears to be a viable claim that Early Bird is infringing the “Haulin’ Oats” trademark for oatmeal – now owned by Whole Oats.  Assuming the assignment is valid, Whole Oats has a legitimate shot at prevailing in this litigation on that basis.

The moral of this story? Fame fades, but trademark rights don’t have to.  The lawyers at Pierce & Mandell have many years of experience protecting and enforcing trademark rights, and have the skills necessary to help you develop a strategy for maximizing the value of your brand.

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