declaratory relief Archives

Que sera, sera: No declaratory relief after songwriter’s heir terminated copyright assignments

Addressing the intersection of a trust beneficiary’s rights to royalties and an heir’s copyright termination rights under 17 U.S.C. § 203, the US Court of Appeals for the Sixth Circuit affirmed the district court’s order dismissing the beneficiary’s request for declaratory relief for failure to state a claim. Tammy Livingston v. Jay Livingston Music, Inc. and Travilyn Livingston, Case No. 24-5263 (6th Cir. Jul. 7, 2025) (Readler, Siler, Clay, JJ.)

Jay Livingston was a prominent 20th century songwriter. In 1985, he established a family trust that granted the beneficiaries royalties from nearly 250 songs and transferred his reversionary copyright interests in the songs to the trust. The copyright interest was reversionary because in 1984, Livingston executed a contract that began assigning copyright interests in the songs to a company whose legal successor would become Jay Livingston Music. That contract laid the groundwork for successive agreements that would each transfer a specific song to the company. By 2000, Livingston had assigned his interests in each song to Jay Livingston Music.

In 2000, Livingston signed a second overarching contract, extending the company’s rights to the full duration of each song’s copyright protection. The songs’ copyrights expire around 2050. In 2003, after Livingston passed away, a California probate court ordered that the trust no longer held any rights in his copyright interests beyond the royalties.

In 2015, Travilyn Livingston (Livingston’s only child) terminated the assignment to Jay Livingston Music of 32 songs under § 203(a)(2)(B) of the Copyright Law, reverting all rights to Travilyn. Tammy Livingston, Travilyn’s daughter, sued Travilyn in 2022, requesting declaratory relief stating either that the termination notices Travilyn used were invalid or that Tammy remained entitled to royalties from the 32 songs under state law. The district court dismissed the case for failure to state a claim. Tammy appealed.

The Sixth Circuit affirmed the district court. The Sixth Circuit considered whether Livingston executed the 2000 contract as an individual or a trustee and to what extent that affected the validity of the assignment extensions. The Court determined that the probate court’s 2003 order had preclusive effect and that Livingston had signed the 2000 contract in his individual capacity. Therefore, the company – not the trust – held the valid assignments in 2015 when Tammy terminated them.

Tammy argued that Travilyn could only terminate the assignments if they had been transferred to a third party in 1984. Tammy claimed that Travilyn did not own the company when the 1984 contract was executed and that Livingston thus granted the rights to himself as the owner of the company. The Sixth Circuit was unpersuaded by this argument because the 1984 agreement stated that Travilyn owned the company on the date of execution. Tammy next argued that the district court committed reversable error when it stated that Travilyn owned the company “sometime before” the 1984 contract’s execution rather than on the day, as the contract itself stated. The Court found that this misstatement did not rise to reversible error.

Finally, to support her [...]

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No Standing to Invalidate Trademark without Threat of Infringement Suit

The US Court of Appeals for the Ninth Circuit concluded that when a party obtains a declaratory relief finding that it does not infringe a trademark, it no longer has Article III standing to pursue invalidation of the mark. San Diego County Credit Union v. Citizens Equity First Credit Union, Case Nos. 21-55642; -55662; -56095; -56389 (9th Cir. Feb. 10, 2023) (Bea, Ikuta, Christen, JJ.)

Citizens Equity First Credit Union (CEFCU) registered a trademark for the term “CEFCU. NOT A BANK. BETTER,” and further claimed to own a nearly identical common-law trademark for “NOT A BANK. BETTER.” In 2014, San Diego County Credit Union (SDCCU) obtained a registration for “IT’S NOT BIG BANK BANKING. IT’S BETTER.” CEFCU petitioned the Trademark Trial & Appeal Board to cancel SDCCU’s registration, claiming that it covered a mark that was confusingly similar to CEFCU’s registered and alleged common-law marks.

SDCCU sought declaratory relief in the district court seeking a noninfringement finding of CEFCU’s registered and common-law marks, an invalidity finding of CEFCU’s registered and common-law marks, and a finding that CEFCU falsely or fraudulently registered its mark. CEFCU unsuccessfully filed motions to dismiss for lack of personal and subject matter jurisdiction. SDCCU persuaded the district court that during the course of the cancellation proceedings, it became apprehensive that CEFCU would sue SDCCU for trademark infringement. The district court granted SDCCU’s motion for summary judgment on noninfringement and CEFCU’s motion for summary judgment on SDCCU’s fraudulent registration claim. The parties agreed to dismiss the claim that CEFCU’s registered mark was invalid. The only issue remaining was SDCCU’s count seeking declaratory relief to invalidate CEFCU’s common-law mark. After a bench trial, the district court determined that CEFCU’s common-law mark was invalid, entered final judgment and awarded SDCCU attorneys’ fees. CEFCU appealed.

In an appeal that raised a “bevy of issues,” the Ninth Circuit concluded that the district court lacked Article III jurisdiction to invalidate CEFCU’s common-law mark following the grant of summary judgment in favor of SDCCU on its noninfringement claims. Citing the Supreme Court’s 2007 decision in MedImmune v. Genentech and Ninth Circuit precedent, the Ninth Circuit applied the “reasonable apprehension” test to determine whether a controversy exists in a declaratory judgment action regarding trademark infringement. Under this test, a party has standing to seek declaratory relief of noninfringement if the party demonstrates “a real and reasonable apprehension that [the party] will be subject to liability” if the party’s course of conduct continues. Concrete threats of a trademark infringement suit are not required to create live controversy to provide standing to seek declaratory relief action.

The Ninth Circuit concluded that justiciable controversy existed at the pleading stage, pointing to CEFCU’s cancellation petition, CEFCU’s testimony that it was just a “matter of time” before actual confusion occurred in California, and CEFCU’s affirmative refusal to stipulate that SDCCU was not infringing CEFCU’s marks. However, once the district court rendered its declaratory judgment of noninfringement, the record lacked any evidence that an ongoing threat of liability was causing [...]

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