Keyboard Cat is a video of Schmidt’s cat, Fatso, wearing a shirt and playing an electronic keyboard with its paws. The meme, which is a communication of ideas or information, has gone viral, receiving over thirty million YouTube hits. Schmidt has registered the video’s copyright with the US Copyright and has two pending trademark applications for the term “Keyboard Cat”, click to see the first trademark application and the second trademark application. Keyboard Cat’s stardom has led to numerous appearances in commercials, including a feature role in a national Starburst candy television commercial.

Nyan Cat is a cartoon character with a cat’s face with a Pop Tarts body, basically a pink frosting sprinkled horizontal breakfast bar with glitter and a rainbow flowing therefrom. The GIF animation has also gone viral and it was the fifth most-watched video on YouTube in 2011, winning the 2012 Webbys’ “Meme of the Year” award. Torres also registered the copyright in the animated GIF with the US Copyright Office, but the complaint incorrectly repeats Keybaord Cat's copyright registration number. Torres has also filed a trademark application to register the “Nyan Cat” word mark with the US Patent & Trademark Office.

Plaintiffs accuse Warner Bros and 5th Cell of including, without any licenses or authorizations, the Keyboard Cat character in their original Scribblenauts videogame released in 2009, the 2010 Super Scribblenauts, 2011 Scribblenauts Remix, and including both Keyboard Cat and Nyan Cat in 2012 Scribblenauts Unlimited. Defendants are accused of shamelessly using “Nyan Cat” and “Keyboard Cat” by name to promote and market their games. Plaintiffs claim that Warner Bros and 5th Cell’s trademark infringement was willful and intentional and are requesting an award of treble damages and requesting the case be deemed exceptional under 15 U.S.C. § 1117(a), thereby entitling Plaintiffs to an award of reasonable attorneys’ fees.

CORRECTION TO COPYRIGHT DAMAGES BELOW: Nyan Cat first appeared in Scribblenauts Unlimited in 2012, a year after Nyan Cat's copyright registration date. Thus, Nyan Cat is entitled to statutory damages, enhancement thereof, and attorneys' fees and costs. The follwing paragraph only applies to Keyboard Cat.

Plaintiffs, however, mistakenly demand statutory damages and an enhancement of damages under 17 U.S.C. § 504, and mistakenly believe that they are entitled to attorneys’ fees and costs of suit under 17 U.S.C. § 505. Defendants are accused of infringing both copyrights in their initial 2009 release of the video games and neither copyright was registered until 2010. Thus, neither Plaintiff is entitled to statutory damages or attorney’s fees, a prerequisite of which – per 17 U.S.C. § 412 – is either registration before (1) commencement of any infringement or (2) within three months after the first publication of the copyrighted work. Further, the Keyboard Cat video was published over five years before the application to register the copyright was filed, thus it is not entitled to a presumption of validity afforded by 17 U.S.C. § 410(c).

A copy of the complaint is available here.

The case is Schmidt, et al. v. Warner Bros. Entertainment, Inc., CV13-02824 JFW (C.D. Cal. CV13-02824).

To succeed on its copyright infringement claims, Plaintiff must show that (1) Plaintiff owns valid copyrights in the Subject Designs; and (2) Defendants infringed on Plaintiff’s copyright. Lamps Plus, Inc. v. Seattle Lighting Fixture Co., 345 F.3d 1140 (9th Cir. 2003). The Court held that A’lor’s copyright registration certificates constituted prima facie evidence of a valid copyright, which presumption of validity defendants were unable to rebut. 17 U.S.C. § 410(c). To rebut the presumption, Defendants argued that the copyrights were invalid because they lack originality. Satava v. Lowry, 323 F.3d 805, 811 (9th Cir. 2003). The Court, however, found that Defendants submitted evidence of pre-existing nautical twisted cable motif jewelry sold by third parties and to provide copyright protection to Plaintiff’s would improperly give Plaintiff a monopoly on nautical rope band jewelry. Nevertheless, the Court found that Plaintiff was entitled to a “thin” copyright in the style of the clasp or other ornaments and panther heads. But once the court subtracted the unoriginal elements and considered only Plaintiff’s original contributions, no copyright infringement could be found because virtually identical copying didn't exist, the proper infringement test for a “thin” copyright.

Regarding its trade dress infringement claim, A’lor had to show that (1) the trade dress is nonfunctional; (2) the trade dress has acquired secondary meaning, and (3) there is a substantial likelihood of confusion between the Accused Designs and the Subject Designs. See Art Attacks v. MGA Entertainment, Inc., 581 F.3d 1138, 1145 (9th Cir. 2009). “Trade dress” refers to the “total image of a product” and may include features such as size, shape, color, color combinations, texture or graphics. International Jensen, Inc. v. Metrosound U.S.A., Inc., 4 F.3d 819, 822 (9th Cir. 1993). Because the scope of trade dress protection may be broad, courts exercise particular caution when extending protection to product designs, as granting trade protection to an ordinary product design would create a monopoly in the goods themselves. Landscape Forms, Inc. v. Columbia Cascade Co., 113 F.3d 373, 380 (2d Cir. 1997).

A’lor described its trade dress as “interwoven nautical cable threads composed of twisted stainless steel wire forming single- or juxtaposed multi-strand treated cable threading with soft-textured adornments and embellishments spaced through the cable.” The Court found the definition to be amoebic, namely “impermissibly general and overbroad...As such, extending protection to this trade dress would permit Plaintiff to exclude competition from functionally similar products that use stainless steel in nautical cable band jewelry...Therefore, the Court finds that the trade dress, as articulated by Plaintiff, is no more than a concept or idea.”

The case is A’lor International, Ltd. v. Tappers Fine Jewelry, Inc., CV12-02215 RGK (C.D. Cal. 2012).

As any prudent writer should do, Plaintiff registered the synopsis with the U.S. Copyright Office in 2003. He then submitted it to E! Entertainment and executed its submission agreement. It’s also alleged that William Morris and E! both executed an agreement confirming receipt of the synopsis and acknowledging that the material would not be used without compensating Plaintiff.

Unfortunately for Plaintiff, this appears to be an extremely tough case to win. Copyright law does not protect ideas, only the author’s expressions of that idea. For example, one cannot protect an idea for a reality TV show where contestants sing and are voted off by either judges or viewers, otherwise American Idol would sue America’s Got Talent. Similarly, the authors of the movie Tombstone could not sue the authors of Wyatt Earp, even though both movies told the story of Wyatt Earp and Doc Holliday and the shootout at the O.K. Corral. But if Wyatt Earp copied the script of Tombstone, a copyright infringement claim would arise.

Plaintiff’s breach of contract claim against E! does not look promising either. The “Submission Agreement” referenced is E!’s form agreement wherein the submitting party agrees and acknowledges “that no contract or obligation of any kind, other than those arising pursuant to the express terms of the Agreement, is assumed by [E!] or may be implied against [E!] by reason of [E!’s] review of the Material and/or discussions or negotiations we may have.” And it specifically states that the submission neither creates nor constitutes an implied-in-fact or implied-in-law contract regardless of industry norms.

The case is Haraway v. E! Entertainment Television, CV13-00628 FMO (C.D. Cal. 2013).

Why pay for a WGA registration when it affords no significant protection in court? In fact, the WGA shreds your submission after five years and is absolutely useless if the infringement begins in the sixth year.

• To avail yourself of the advantages available under the law, you must register your screenplay, treatment, or script with the U.S. Copyright Office.


• In order to file a lawsuit to prevent copying of your work, you MUST have registered the work with the U.S. Copyright Office.


• In order to recover statutory damages and attorneys’ fees from infringers, the work must have been registered with the U.S. Copyright Office before the commencement of the infringement or within three months from the date of publication. 17 U.S.C. § 412.


• In order to establish evidence of ownership of the screenplay, treatment, or script, the work must have been registered with the U.S. Copyright Office.

Judging from the absence of a copyright registration number in the complaint, DuckHole probably only recently filed the copyright application in order to bring suit. DuckHole alleges that NBC’s Animal Practice TV series is “substantially identical and, at best, a derivative work of PETS, which is based on an original copyrighted PETS treatment owned and registered to Plaintiff.” For example, Plaintiff claims that Animal practice’s “concept of centering on a veterinarian that is good with animals but not so good with people, and the setting in a veterinarian clinic are substantially identical, and at least derivative of the concept and setting” in the treatment. The complaint continues:

The supporting characters in the copyrighted PETS treatment include: (i) David- the veterinarian's colleague and "best 'human' friend" who "is woefully inadequate at the dating scene," (ii) Peg- the "hard-as-nail" employee of the clinic, (iii) Brenda- a "clueless" assistant at the clinic, and (iv) Bud- the resident pet at the clinic. The supporting characters in the Series Animal Practice include: (i) Doug- the veterinarian's colleague and "closest 'human' friend" who is "hapless in matters of the heart," (ii) Juanita- the "take-charge" clinic employee, (iii) Angela- an "eccentric" assistant at the clinic, and (iv) Dr. Rizzo- the resident pet at the clinic. The Series supporting characters are substantially identical, and at least derivative of the supporting characters in PETS.

Assuming NBC had access, without reviewing the treatment and the series in their entirety, it is difficult to predict whether these references are unprotectable general themes of a veterinarian’s office or whether they share articulable similarities between plot, themes, dialogue, mood, setting, pace, characters, and sequence of events.

The case is DuckHole, Inc. v. NBCUniversal Media LLC, et al., CV12-10077 JAK (C.D. Cal. 2012).

After numerous unsolicited posts on her Twitter account stating that users wanted to see more of her pictures and video, Passante discovered that Moore had posted images of someone portraying her in a pornographic video to his tumblr account. Passante alleges that she never made any such video and Moore has fabricated the video for the purpose of trading on her fame and celebrity to draw traffic to his site. Moore is also accused of posting defamatory comments related to the video by falsely representing that Passante made the video for him. The complaint states that “Moore posted the video knowing that the images were not of Passante and did so maliciously, and with reckless disregard to Passante’s reputation, privacy, and well-being. He did so with the false and fraudulent intent to mislead the public into believing he was somehow affiliated with Passante.”

The Judge immediately issued a temporary restraining order preventing Moore's posting, publishing, or linking to the Video, and ordering its immediate removal from Moore's sites. The Judge also ordered Moore to appear on November 9th to argue why a preliminary injunction should not be entered preventing the dissemination of the video or why "all of Moore's computers, servers and other electronic storage devices that contain copies of the Video should not be impounded by the United States Marshall's offices." The Judge relied on Passante's likelihood of success on her trademark infringement and Lanham Act claims in issuing the TRO because Moore's "use of Passante's name and likeness in commerce in connection with a video and associated images thereof or therefrom (collectively "Video"), and his false and misleading claims that the Video originated with Passante were intended to deceive the public into believing that Passante was in some way affiliated with Moore, thereby driving web traffic to his illicit website." Because there is no adequate remedy at law, injunctive relief is the “remedy of choice” in trademark cases. Century 21 Real Estate Corp. v. Sandlin, 846 F.2d 1175, 1180 (9th Cir. Cal. 1988).

Liability for some of Passante’s claims could be uncertain because website operators that allow user generated content (e.g. pictures, videos, or comments) can avoid copyright infringement liability under the Digital Millennium Copyright Act (“DMCA”), if the safe harbor provisions are followed, and are also protected against tort liability (e.g. defamation, slander, libel) by the Communications Decency Act. To enjoy the safe harbors of the DMCA, a website operator must designate a copyright agent on a form submitted to the Copyright Office along with the corresponding fee, provide terms of use that outline take down notice procedures to report allegedly infringing content, have no actual knowledge of the infringement, and expeditiously remove accused content. Moore, however, could be liable for defamation if he falsely claimed that Passante made the video for him or sent it to him.

The case is Brandi Passante v. Hunter Moore, SACV12-01866 JVS (C.D. Cal. 2012).

The Court of Appeals for the Second Circuit concluded that the district court incorrectly held that a single color can never serve as a trademark in the fashion industry. The Court, however, proceeded to then modify CL’s trademark registration for any shoe with a red sole to only apply with red, lacquered outsole with a contrasting upper of the shoe. In other words, the trademark excludes any red shoe with a red sole.

YSL claimed this was not the first time it had designed monochrome footwear with red soles, which it created in the 1970’s prior to CL’s 1992 adoption of the red sole trademark. Thus, YSL filed counterclaims seeking cancellation of CL’s trademark registration because it was ornamental and functional and sought monetary damages for CL’s interference with YSL’s business relations and for unfair competition because many retailers returned YSL’s shoes after receiving CL’s cease and desist letters.

On appeal, Louboutin argues that the District Court erred in (1) holding, based on the doctrine of “aesthetic functionality,” that the Red Sole Mark was not entitled to legal protection; (2) applying the doctrine of aesthetic functionality to hold that a single color on a fashion item could not act as a trademark; (3) failing to give weight to the statutory presumption of validity deriving from the Red Sole Mark’s registration; (4) applying an improper analysis of trademark infringement and dilution; (5) ignoring allegedly undisputed proof of likelihood of confusion and irreparable harm; and (6) announcing a per se rule of functionality in a manner that violated Federal Rule of Civil Procedure 52.

First, the Court, relying on the Supreme Court’s decision in Qualitex Co. v. Jacobson Products Co., 514 U.S. 159, 162 (1995), found that the red sole color is protectable as a trademark because it “acts as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.” Indeed, Qualitex concluded that “color alone, at least sometimes, can meet the basic legal requirements for use as a trademark. It can act as a symbol that distinguishes a firm’s goods and identifies their source, without serving any other significant function.”

Next, the Court addressed the functionality defense, which has two forms “utilitarian” and “aesthetic”. Utilitarian functionality can be shown if the feature is “essential to the use or purpose of the article” or if it “affects the cost or quality of the article.” Aesthetic functionality is established by demonstrating that providing the markholder the right to use the feature exclusively would put competitors at a significant non-reputation-related disadvantage. The Court held nothing in the fashion world allowed the lower court’s creation of a per se rule that a single color cannot serve as a trademark in that field.

Then, the Court turned to the red sole trademark and found that secondary meaning had been established, which is required to show that a single color has become distinctive, and the red sole was a protectable trademark. “We hold that the lacquered red outsole, as applied to a shoe with an ‘upper’ of a different color, has ‘come to identify and distinguish’ the Louboutin brand, Qualitex, 514 U.S. at 163, and is therefore a distinctive symbol that qualifies for trademark protection.” The Court, however, also found that CL had not established secondary meaning in the red sole as applied to a red shoe and, under 15 U.S.C. § 1119, ordered the USPTO to limit the registration to exclude monochromatic red shoes.

The Court affirmed the denial of the preliminary injunction because YSL’s use of a red sole on a red shoe is not a trademark use and not confusingly similar to CL’s mark. The Court, however, punted on whether the red sole mark as modified was functional and remanded the case for further proceedings on YSL’s counterclaims.

Plaintiffs allege that the family is engaged in numerous international businesses, including “two of the most famous wine enterprises in the world, and own the estates which produce the well-known ‘Chateau Mouton Rothschild’ and ‘Chateau Lafite Rothschild’ wines. These wines have become known as the finest of Bordeaux wines, and command a price appropriate to their quality.” Plaintiffs own several USPTO registered trademarks incorporating the surname, including Chateau Lafite-Rothschild, Chateau Mouton Rothschild, and Baron Philippe de Rothschild.

“As a result of the activities of the plaintiffs and their predecessor entities, and the well-known history of the Rothschild Family, the Rothschild name has become well known in the United States and throughout the world in connection with luxury goods.” Plaintiffs also allege that “because of the association of the Rothschild Family and their enterprises with opulent decoration, there are numerous literary references to ‘the Rothschild style’ or ‘the style Rothschild.’ The term has become part of interior decorators’ language.” Further, plaintiffs contend that the family’s coat-of-arms is famously associated with the Rothschild name and has developed secondary meaning in connection with products denoting luxury and comfort.

Defendant Judson is accused of establishing business entities that include the Rothschild name and operating the rothschildinteriors.com and therothschildcollection.com websites, which entities advertise luxury-style furniture and interior design services. Also, Judson is accused of using a confusingly similar coat-of-arms. Plaintiffs allege that defendants’ use of the infringing trademarks will mislead consumers into believing that Judson is a member of the world-famous Rothschild family and the goods and services he offers are approved or associated with the Rothschild family.

The case is Baron Philippe de Rothschild, S.A. v. Judson Rothschild, et al., CV12-3884 MMM (C.D. Cal. 2012).