Photo of Sarah Bro

Sarah Bro is the office managing partner for the Firm’s Orange County office. She focuses her practice on trademark prosecution, enforcement and brand portfolio management, as well as licensing, due diligence, copyright, right of publicity and domain name matters. Read Sarah Bro's full bio. 

Vacating the district court’s order denying a defendant’s recovery of attorneys’ fees under the Copyright Act, the US Court of Appeals for the Ninth Circuit held that, even when asserted as a claim for declaratory relief, any action that turns on the existence and potential infringement of a valid copyright invokes the Copyright Act and therefore gives the district court discretion to award reasonable attorneys’ fees pursuant to § 505 of the Copyright Act. Doc’s Dream, LLC v. Dolores Press, Inc. and Melissa Scott, Case No. 18-56073 (9th Cir. May 6, 2020) (Callahan, J.).

Continue Reading Prayer for Declaratory Relief Invokes Copyright Act and Available Attorneys’ Fees

In a non-precedential ruling by summary order, the US Court of Appeals for the Second Circuit affirmed the dismissal of a copyright infringement lawsuit filed against famed comedian Jerry Seinfeld, finding that the defendant’s claims, which accrued in 2012, were time-barred. Christian Charles v. Jerry Seinfeld, et al., Case No. 19-3335 (2d Cir. May 7, 2020) (Summary Order).

Continue Reading What’s the Deal with Comedians?: Too Late for Copyright Claim against Seinfeld

The US Court of Appeals for the Second Circuit affirmed the dismissal of a complaint seeking a declaration of trademark abandonment, finding that the plaintiff (the co-owner of an online business that sells to customers in India and Thailand) was unable to demonstrate a case or controversy absent evidence that he was prepared to immediately bring his goods to market in the United States. Abdul Rehman Karim Saleh v. Sulka Trading Ltd., et al., Case No. 19-2461 (2d Cir. Apr. 30, 2020) (per curiam).

Continue Reading Don’t SULKA: Trademark Plaintiff Must Demonstrate Intent, Ability to Use Mark

In the midst of an unprecedented and unsettling global pandemic, one constant remains: certain entrepreneurial-minded folks will not miss the opportunity to file trademark applications for new “brands” that align with the latest news cycle. COVID-19 is no different. The United States Patent and Trademark Office (USPTO) has experienced a swell of new US trademark applications for COVID-related trademarks, with many of the marks using descriptive terms or phrases that have become commonplace in a shelter-in-place, #wfh and social distancing world.

Continue Reading CBD Products in the Time of COVID-19: Best Practices for Making Your (Trade)mark

Resolving a split among the circuits regarding whether proof of willfulness is necessary for an award of a trademark infringer’s profits, the Supreme Court of the United States issued a unanimous decision holding that the plain language of the Lanham Act has never required a showing of willful infringement in order to obtain a profits award in a suit for trademark infringement under §1125(a). Romag Fasteners, Inc. v. Fossil, Inc., et al. Case No. 18-1233 (Supr. Ct. Apr. 23, 2020) (Gorsuch, Justice) (Alito, Justice, concurring) (Sotomayor, Justice, concurring).

Continue Reading Supreme Court: Profit Disgorgement Available Remedy for Trademark Infringement, Willful or Not

Affirming a summary judgment in favor of defendant, the US Court of Appeals for the Eleventh Circuit determined that a copyright infringement lawsuit pertaining to the graphic design on a guitar made famous by a late heavy metal guitarist, was time-barred because the plaintiff’s copyright infringement claim was actually a claim of copyright ownership over the design. Buddy Webster v. Dean Guitars, et al., Case No. 19-10013 (11th Cir. Apr. 16, 2020) (Wilson, J.).

Continue Reading 11th Circuit Tells Guitar Maker to Take a [Pantera] Walk on Delayed Copyright Claims

Reviewing a decision from the United States Patent and Trademark Office (“USPTO”) Trademark Trial and Appeal Board, the Federal Circuit vacated and remanded the Board’s refusal to register a trademark consisting of a gradient of multiple colors applied to product packaging, and relied on Supreme Court precedent in concluding that color marks can be inherently distinctive when used on product packaging “depending upon the character of the color design.” In re Forney Industries, Inc., Case No. 2019-1073 (Fed. Cir. Apr. 8, 2020) (O’Malley, J.)[precedential].

Continue Reading Federal Circuit Confirms Color Marks of Certain “Character” Can Be Inherently Distinctive for Product Packaging

Affirming a district court’s summary judgment in favor of various defendants, including the vocal music director and parent volunteers at Burbank High School (whose competitive show choirs reportedly inspired the television series “Glee”), the US Court of Appeals for the Ninth Circuit examined issues of standing via copyright ownership and the copyright infringement defense of fair use. The Court, however, reversed the lower court’s denial of defendants’ attorneys’ fees and remanded for the calculation of an appropriate award in view of plaintiff’s “objectively unreasonable” arguments in the lawsuit. Tresóna Multimedia, LLC, v. Burbank High School Vocal Music Association, et. al., Case No. 17-56006 (9th Cir., Mar. 24, 2020) (Wardlaw, J.).

Continue Reading Ninth Circuit Gleefully Rejects Copyright Claims against California High School

The Supreme Court of the United States issued a unanimous decision invalidating the Copyright Remedy Clarification Act (CRCA), a 1990 statute intended to provide copyright owners with the power to sue a US state government for infringement, and held that states cannot be sued for copyright infringement. Allen v. Cooper, Case No. 18-877 (Supr. Ct. Mar. 23, 2020) (Kagan, Justice) (Thomas, Justice, concurring) (Breyer and Ginsburg, Justices, concurring).

Continue Reading SCOTUS Sinks the CRCA, Confirms States are Immune from Copyright Suits

Ruling en banc, the US Court of Appeals for the Ninth Circuit reinstated a 2016 jury verdict, finding that the rock band Led Zeppelin and the opening notes of its hit song “Stairway to Heaven” did not infringe the 1967 song “Taurus” by the band Spirit. Michael Skidmore v. Led Zeppelin et al., Case No. 16-56057 (9th Cir., March 9, 2020) (en banc) (McKeown, J.) (Bea and Ikuta, JJ., dissenting).

The en banc decision addressed a “litany of copyright issues”—the most critical being the interplay between the 1909 and 1976 Copyright Acts and the Court’s reversal of its own precedent in rejecting a doctrine occasionally referred to as the “inverse ratio rule”—when it concluded that, regardless of a copyrighted work’s fame, all plaintiffs must satisfy the same standard of proof in showing that an allegedly infringing work is substantially similar to the copyrighted work.


Continue Reading Ninth Circuit Shows Led Zeppelin a Whole Lotta Love in ‘Stairway’ Copyright Win