Photo of Eleanor B. Atkins

Eleanor (Ellie) B. Atkins focuses her practice on trademark, copyright, sweepstakes and promotions, and false advertising matters. Ellie is experienced in client counsel, strategy and legal research, including portfolio management and the selection, clearance, prosecution, registration and enforcement of trademarks. Additionally, she has assisted with district court litigation as well as actions before the Trademark Trial and Appeal Board, including drafting complaints, discovery requests and briefs in support of various motions. Read Ellie Atkins' full bio.

The US Court of Appeals for the Eighth Circuit addressed the copyright protection afforded to an information database and whether comments made to a reporter while litigation was ongoing violated the disparagement clause in a separation agreement. Ultimately, the Court affirmed a judgment against the defendant for copyright infringement and against its founder for breach of contract. In doing so, the Court upheld the findings that plaintiff’s database copyright was valid, even though it was only entitled to a narrow scope of protection, and that the defendant’s founder’s comments to a reporter violated his contract with the plaintiff. Infogroup, Inc. v. DatabaseUSA.com LLC, Case No. 18-3723 (8th Cir. Apr. 27, 2020) (Benton, J.).

Continue Reading For Your Information, Eighth Circuit Upholds Copyright Protection for Database Compilation

Addressing whether a copyright infringement claim should be dismissed with prejudice where the plaintiff failed to register his copyright prior to filing the lawsuit, the US Court of Appeals for the First Circuit held that dismissal is too harsh, remanding the case for consideration of whether the claim should be dismissed without prejudice or if the plaintiff should be entitled to supplemental allegations. Cortes-Ramos v. Martin-Morales, Case No. 19-1358 (1st Cir. Apr. 13, 2020) (Dyk, J.[1]).

Continue Reading Ricky Martin’s “Vida” Lives On, but Plaintiff Will Get Another Shot at It

Addressing whether a dog toy meant to humorously evoke a bottle of whiskey was entitled to First Amendment protection, the US Court of Appeals for the Ninth Circuit held that the toy was a protectable expressive work. The Ninth Circuit vacated and remanded the district court’s finding of trademark infringement, reversed the judgment on dilution, and upheld the validity of the whiskey proprietor’s trademark and trade dress rights. VIP Products LLC v. Jack Daniel’s Properties, Inc., Case No. 18-16012 (9th Cir. Mar. 31, 2020) (Hurwitz, J.).

Continue Reading Hair of the Dog? Squeaker Toy Is Expressive Work

On March 27, 2020, the President signed into law the Coronavirus Aid, Relief, and Economic Security (CARES) Act, which authorized the US Copyright Office (USCO) and the United States Patent and Trademark Office (USPTO) to temporarily waive or modify certain statutory deadlines. Prior to the CARES Act, the USPTO and USCO had sought to provide relief to intellectual property owners by waiving certain fees (including, for example, fees associated with petitions to revive abandoned applications), but had been limited by their inability to modify statutory deadlines.

The extensions will undoubtedly provide needed relief for certain rights holders during this tumultuous time. Nonetheless, if possible, adhering to original deadlines is the safest route, and parties should first carefully review the USPTO and USCO notices with a lawyer to determine whether the extensions are applicable and legally prudent.


Continue Reading US Copyright Office, USPTO Act to Assist Those Affected by COVID-19

Addressing for the first time the issue of implied copyright sublicenses, the US Court of Appeals for the First Circuit held that where a copyright license provides an unrestricted right to grant sublicenses, a copyright licensee may do so impliedly and without express language. Photographic Illustrators Corp. v. Orgill, Case No. 19-1452 (1st Cir. Mar. 13, 2020) (Kayatta, J.).

Continue Reading Lightbulb Moment: It’s Possible to Grant an Implied Copyright Sublicense

Executive Summary

Trademark jurisprudence in 2019 may be best summarized in two words: questions and answers. Decisions handed down at the district court level have teed up key questions that are poised to be answered by the United States Supreme Court in the 2020 term—such as the protectability of certain “.com” trademarks, as well as