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Can U.S. Trademark Registrations Be Cancelled for Genericness?

By Daniel H. Bliss

Suppose that you have obtained a U.S. trademark registration for your trademark on goods or services for your business. Can your trademark registration be cancelled with the U.S. Patent and Trademark Office based on genericness? If so, what is the appropriate time period for assessing whether a trademark is generic? Is the appropriate time period at the time of registration or subsequent to the date of registration? The answer is YES! for both if the trademark was either generic at the time of registration or subsequent to the date of registration.

Section 2(e) of the Lanham Act states that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it— … (e) [c]onsists of a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive or deceptively misdescriptive of them …”. See 15 U.S.C. §1052. “Descriptive” includes generic terms because a generic term is the “ultimate in descriptiveness,” Royal Crown Co., Inc. v. The Coca-Cola Co., 892 F.3d 1358, 1366 (Fed. Cir. 2018), and is “ineligible for federal trademark registration,” U.S. Pat. & Trademark Off. v. Booking.com B.V., 591 U.S. 549, 551 (2020) (Booking.com).

What is a generic term? A generic term is the name for the good (e.g., “furniture”) or service (e.g. “care”) itself and is therefore ineligible for registration. See 15 U.S.C. § 1052. Although a trademark can be generic at the time of registration and be denied registration, can a trademark registration be invalidated for genericness of the trademark at any time after registration?

A trademark registration that was obtained on the Principal Register “… shall be prima facie evidence of the validity of the registered mark and of the registration of the mark … but shall not preclude another person from proving any legal or equitable defense or defect …” See 15 U.S.C. § 1115(a) (Emphasis Added). For trademark registrations, one of the grounds for cancellation is that the trademark has become generic. See 15 U.S.C. §1064. For example, under U.S. trademark law, a petition for cancellation may be filed any time if the registered trademark becomes the generic name for the goods or services, or a portion thereof.

What is the test for genericness of a trademark? The test for genericness of a trademark is a two prong test in which (1) the genus of goods or services at issue is first identified and (2) an assessment of whether the public understands the mark, as a whole, to refer to that genus. Princeton Vanguard, LLC v. Frito-Lay N. Am., Inc., 786 F.3d 960, 966 (Fed. Cir. 2015) (emphasis omitted); see also id. at 969 (“the relevant public’s perception is the primary consideration in determining whether a term is generic”); Magic Wand, Inc. v. RDB, Inc., 940 F.2d 638, 640–41 (Fed. Cir. 1991) (“this court has stated that whether a term is entitled to trademark status turns on how the mark is understood by the purchasing public”). The evidence of what the relevant consumers thought of the generic term is at the time of registration. Sazerac Brands, LLC v. Bullshine Distillery LLC, No. 91227653, 2023 WL 2423356, at *20 (Mar. 6, 2023).

If there is a cancellation involving a trademark registration with either the USPTO or the court, what is the appropriate time period for assessing whether the trademark is generic? In a recent case before the United States Court of Appeals for the Federal Circuit (“CAFC”), Bullshine Distillery LLC v. Sazerac Brands, LLC, 2023-1682, 2023-1900 (Decided March 12, 2025), the CAFC held that the proper time period to evaluate whether a mark is generic is at the time of registration. In Bullshine Distillery, Bullshine Distillery LLC sought cancellation with the Trademark Trial and Appeal Board (“TTAB”) of Sazerac Brands, LLC’s (“Sazerac”) trademark registrations for FIREBALL because the term “fireball” was allegedly a “generic name for a [whiskey or liqueur/schnapps-based] common alcoholic drink” that contained a “spicy flavoring element such as cinnamon or hot sauce”. The TTAB found that “fireball” was not generic at the time of registration of Sazerac’s trademarks. Although both parties appealed the TTAB decision, one of the issues on appeal was the appropriate time period for assessing whether a mark was generic. The CAFC looked to the language of Section 2(e) of the Lanham Act, noting that the Lanham Act not only prevents registration of generic terms, but also provides for cancellation of trademarks “[a]t any time,” they become generic. The CAFC determined that the proper time to evaluate whether a term is generic in the first instance is at the time of registration, which is a

question of fact. The CAFC held that the TTAB’s finding that FIREBALL was not generic at the time of registration was supported by substantial evidence and affirmed the decision of the TTAB.

In summary, a trademark can be refused registration because it is the name of the good or service and therefore generic. After the trademark has been registered, U.S. trademark registrations can be cancelled based on genericness at the time of registration or subsequent to the date of registration. The test for genericness of a trademark is a two prong test in which the genus of goods or services at issue is identified first and an assessment of whether the public understands the mark, as a whole, to refer to that genus. If there is a cancellation of a trademark registration that is filed with either the USPTO or the court, the appropriate time period for assessing genericness of the trademark is based on the evidence at the time of registration. If the trademark was not generic at the time of registration, the trademark may be found generic subsequent to the date of registration based on evidence.

IP myths vs. reality: What you don’t know could cost you

Written by: Aaron Fishman, Andrew Jenkins, Sean Mellino

Intellectual property (IP) is often misunderstood, leading to costly mistakes for businesses and individuals alike. Many assume that once they create something, they automatically own the rights everywhere, or that patents and trademarks offer blanket protection. In reality, IP is a complex legal landscape governed by factors like value, ownership, jurisdiction and timing. Understanding these nuances is crucial when protecting assets, making business decisions or choosing legal counsel. Separating fact from fiction can mean the difference between securing an innovation or losing it.

In this article, we’ll review the most common IP misconceptions…

Myth #1: I haven’t seen my product on the market so I can get a patent for it.

Reality: Patents are examined against all public knowledge and must be novel and non-obvious over that knowledge. Just because you don’t see something on the market today doesn’t mean it hasn’t been tried before.

Myth #2: I have a patent on my product so I can freely use it.

Reality: Patents give you a right to exclude others from practicing the invention. However, the practice of your invention may infringe someone else’s patent/invention. Clearance is an important part of the patent process.

Myth #3: I have an international patent/trademark.

Reality: There’s no such thing. There are treaties and mechanisms for obtaining rights in many other countries outside of the US, but that protection must still be individually obtained.

Myth #4: I have a provisional patent application filed, so I have patent rights.

Reality: A provisional patent application provides a filing date for domestic/foreign priority, and the ability to state “patent pending,” but no formal patent rights.

Myth #5: I have a trademark registration and therefore can stop anyone from using an identical trademark no matter what.

Reality: The standard is a likelihood of confusion/confusingly similar. Therefore, a registered trademark does not necessarily protect against an identical mark in an unrelated industry (but it might).

Myth #6: To save cost, I can send a copy of my creation to myself by registered mail to establish a date of invention or authorship.

Reality: There is no legal value in doing this, and relying on it is very risky. Establishing rights under the copyright and patent laws can be very complex. Rights can easily be lost by taking the wrong action or failing to take the correct one at the right time.

Myth #7: Because I paid for someone to develop software or create content for my business, I own the IP associated with it and have the right to freely use it however I want.

Reality: In most cases, when you hire someone that is not a W-2 employee to create content or develop products, they own the copyrights and patent rights to their work. Without a separate agreement and an executed assignment of the IP rights, you could be prevented from making free use of their creation. They may also have a right to use it themselves or sell it to others.

Myth #8: If an image is found online, it must be free to use.

Reality: Many images found online are still protected by copyright and are not necessarily free to use. Many copyright registration owners hire third parties to search for unauthorized use of images online, which can result in a client having to pay significantly more to settle a copyright infringement claim than had it acquired or licensed the image correctly in the first place.

The singular focus of McDonald Hopkins Intellectual Property Department is to help you stay a step ahead. We provide powerful, cutting-edge legal and business expertise across all facets of intellectual property law. Our team of experienced intellectual property attorneys delivers a comprehensive range of innovative solutions and insightful industry expertise across a diverse group of technical disciplines. Every client’s needs and goals are different – but with our hands-on, in-depth approach you get a team of attorneys who understand your business and provide customized service designed to meet your needs.

SAG-AFTRA vs. AI: Protecting Performers in the Digital Age

Authors: Samantha Rothaus, Howard Weingrad and Jordan Thompson

The power and application of AI is growing exponentially. As is often the case with the introduction of revolutionary technologies, legislation at both the federal and state level has been slow to catch up. On a daily basis, industries are grappling with how to adapt, and how to navigate this quickly evolving, largely unregulated space. Such a statement could not ring more true for the entertainment and advertising industries – where we’ve seen an uptick in AI being leveraged nefariously by third parties to replicate the voice, image and likeness of performing artists – to create new content without permission from, or the participation of, the artist.

It is easy to think about the issue of AI in the context of A-list celebrities like Tom Hanks, Scarlett Johansson and Morgan Freeman – who have all spoken out publicly about the impact of AI on the industry, warning consumers about fake ads and sharing personal stories about how their likeness has been misappropriated through AI tools. However, the impact goes far beyond household names. In fact, AI’s digital imitation capabilities arguably pose the biggest threat to everyday working actors, including background actors, who have yet to gain the leverage or access to resources that fame and celebrity status brings. With AI posing such an existential threat to performers, SAG-AFTRA, the union representing over 160,000 performers (including actors, singers and voice over artists), has sprung into action – taking on AI as a key issue, and pushing for legislative and contractual protections to implement guardrails and reinforce the ethical use of AI.

The highly visible SAG-AFTRA strike in the summer of 2023 against the Alliance of Motion Picture and Television Producers halted the production of numerous hotly anticipated film releases and new seasons of beloved TV shows – largely because of performer concerns about the perils of AI. While that strike ended after SAG successfully secured certain AI protections for motion picture actors, that was just the beginning. As additional SAG contracts come up for renegotiation – including the Interactive/Video Game Media Agreement and soon, the Commercials Contract – similar AI concerns will continue to be front and center as SAG’s journey to protect its members against the unfettered use of AI continues.

Embracing Artificial Intelligence (Within Reason)

As SAG’s push for AI guardrails continues, the union appears to have adopted a strategy beyond simply exercising its strike power. In facing the reality that AI is here to stay with the ever-growing list of AI-focused companies offering legitimate producers easier, more efficient ways to execute projects without having to hire performers each time and record new performances in each instance, SAG seems to realize that AI may benefit some of its members. Namely, embracing responsible and ethical use of AI could afford performers a new revenue stream and an opportunity to independently secure work with less effort. Accordingly, SAG has begun to enter into one-off agreements with certain technology companies whose core business centers around the development, creation and licensing of “digital voice replicas” – which are replicas of an identifiable performer’s voice and/or likeness, created using digital technology such as AI.

The first of these agreements was announced at the beginning of 2024, with Replica Studios (which primarily works with video game studios); the second, in August 2024, with Narrativ

(which primarily works with advertisers); and the latest, on October 28th, with Ethovox (which works with entities across a variety of industries). Replica Studios and Narrativ both serve as marketplaces that connect voice actors with content producers. Through these companies, voice actors can license the right for producers to use a replica of their voice to create new content, in exchange for an agreed upon fee. Ethovox is developing a foundational voice model – which will ultimately serve as the basis for digital replicas. Performers who choose to work with Ethovox give the company permission to use their voice to train its foundational voice model.

Now that SAG has entered into an agreement with these companies, the performers authorizing use of their voice in connection with AI technologies will be protected by union requirements, which Replica Studios, Narrativ and Ethovox must abide by. By taking new approaches to embracing AI, and contracting with AI technology providers, SAG has provided its members an avenue to safely engage with AI and secure additional work. The agreements each address the following four principles – which SAG has established as being the pillars of ethical AI use:

Transparency: A performer’s right to know the intended use of their likeness.

Consent: A performer’s right to grant or deny permission to use their likeness in connection with certain uses.

Compensation: A performer’s right to fair compensation.

Control: A performer’s right to set limits on how, when, where and for how long their likeness can be used.

These built-in protections mirror those SAG aims to achieve across all collective bargaining agreements.

Ongoing Efforts

SAG’s efforts to establish AI protections are wide and varied, and also include the backing of new legislation protecting performers – which has, thus far, been successful. On September 17th, California Governor Gavin Newsom signed into law two new pieces of legislation that (1) expand California’s post-mortem right of publicity law to prohibit the use of a digital replica of a living or deceased performer without their consent (or consent of their estate, as applicable), and (2) prohibit contracts that allow the use of a performer’s digital replica in place of the performer’s actual performance of services, without the performer’s express authorization and informed consent.

As far as the union’s strike authority goes, there is the potential for more strikes in the near future – each time a union agreement is up for renegotiation, given that AI continues to remain such a hot-button issue. Currently, the video game actors (whose work falls under the Interactive Media Agreement) are on strike. Looking ahead, when the Commercials Contract comes up for renewal in early 2025, commercial actors may also strike if new AI provisions are not satisfactorily agreed upon in the contract negotiations.

SAG’s commitment to its members is evident, as the fight to regulate AI continues.

The Bottom Line:

· SAG has recently entered into groundbreaking agreements with AI technology companies that allow performers to choose to authorize digital replication of their voices for use in video games and commercials, and in connection with the training of foundational voice models.

· The SAG agreements ensure that performers receive minimum scale fees and establish four pillars of ethical AI: transparency, consent, compensation and control.

· SAG has been successfully lobbying for new state legislation in California to protect performers and their rights of publicity from being replicated by AI technologies without their consent.

Greek Monuments in Advertising

By Elena Nikolarea, Associate at A. & K. METAXOPOULOS AND PARTNERS LAW FIRM

It has become quite common for advertisers of different kinds of products or services, both in Greece and abroad, to intend to use photos and/or videos of Greek archaeological monuments (such as the Acropolis etc.) for their promotional campaigns.

In this regard, it is important to note that, under Greek Law, when depictions of Greek monuments are intended to be used for commercial purposes (such as in an advertising campaign, in the form of images or videos), appropriate prior licensing should first be obtained by the competent authorities of the Greek Ministry of Culture, and relevant fees need also to be paid.

In particular, the main legal provision on this matter is article 46 (paragraphs 4 to 4D) of Greek Law 4858/2021. Ministerial Decision No. 436630/2023 (Greek Gov. Gaz. B’ 5591/2023) has also recently come into force – replacing the previous ministerial decision on the same subject – specifying the above provision of art. 46 and setting the terms, conditions, competent authorities and procedure for licensing of production, reproduction and display to the public of depictions of archaeological/ historic monuments belonging to the Greek State. In addition, Joint Ministerial Decision No. 126463/2011 (Greek Gov. Gaz. B’3046/2011) currently sets the relevant fees to be paid, the amount of which depends on various factors.

Under the definitions of the current legislation, the “depiction” of an archaeological monument in principle means the reproduction of the actual image of the monument in whole or in part (such as in photographs and/or videos). Regarding the potential use of photos and/or videos of any Greek archaeological monument for advertising purposes, it is clear from the current legislation that prior licensing and payment of relevant fees to the Ministry of Culture is obligatory. 

In such a case, the relevant application and license (if granted) shall mention the specific purpose of use of the monument’s image, and also every depiction of the image shall be accompanied by the monument’s name along with the wording “Ministry for Culture”.

Also, in case of filming / photo-shooting, the detailed application needs to be filed to the competent Ephorate of Antiquities beforehand, as set by the relevant legal provisions. A separate license and fees are needed for filming / photo-shooting and a separate license and fees will apply for each specific commercial use of the videos and/or photos.

On the other hand, according to the current legislation, a “creative/artistic” representation / illustration that uses the image of the monument only as a reference point and “exceeds” this actual image in a creative or abstract way, such as by artistic or imaginary creation of an artist, would not, in principle, be subject to prior licensing. However, it is strongly suggested to seek advice for each specific depiction intended for commercial use. It is noted that such kind of “creative/artistic representations” would require prior licensing if their production would require access to the monument itself and would entail the use of complex, bulky, or special equipment or the use of laser scanning for creating a model of the monument or would affect the monument regarding its security, accessibility etc. 

In any case it should be noted that the issue of the use of depictions of archaeological monuments for commercial purposes is closely monitored, and such use has been, in many cases, contested by competitors and/or has been controlled ex officio by the authorities in Greece.

Finally, it is noted that the above licenses and fees are completely separate to the issue of the copyrights to any image / video / illustration which will be used, for which the creator’s license will also have to be obtained for the specific commercial use of the photographs / videos etc.

Given the above, it is strongly suggested to seek professional legal advice for any specific case involving the use of a depictions of Greek monuments for commercial purposes.

This article was originally edited by, and first published on, www.lexology.com. Please click here to view the original publication.

Katy v Katie: The importance of reputation and early brand protection

By Jessica Bell, Lawyer – Kalus Kenny Intelex, Melbourne, Australia

Pop star Katy Perry has successfully appealed a Federal Court ruling over the use of an Australian designer’s trade mark registration for the words KATIE PERRY. The recent decision by the Full Court of the Federal Court unanimously overturned Justice Brigitte Markovic’s findings in Taylor v Killer Queen, LLC (No 5) [2023]. The trio found that Katie Taylor’s trademark was not validly registered and ordered for the registration to be cancelled.

Background

The facts of this case date back to 2002 when singer Katheryn Hudson (Ms Hudson) adopted the stage name Katy Perry to avoid any confusion between her and actress Kate Hudson. From 2002 Ms Hudson continued to perform and record songs under the stage name and fast forward to 2008, she rose to international fame with various singles such as “I Kissed a Girl” and “Hot n Cold”.

Meanwhile, in 2007, Australian fashion designer, Katie Perry (now Katie Taylor), started her own clothing line and began selling clothing under her own name. Subsequently in September 2008, she made an application to IP Australia to register the words KATIE PERRY in respect of clothing (Class 25).

At the time, Ms Hudson became aware of Ms Taylor’s use of the name and opposed the registration of the KATIE PERRY mark on the basis that Ms Taylor may seek to benefit from Ms Hudson’s reputation. At the same time, Ms Hudson filed a trade mark application for the words KATY PERRY with respect to live and recorded music (Classes 9 and 41) and clothing (Class 25). Ms Hudson’s application was rejected on the basis that it was too similar to Ms Taylor’s KATIE PERRY mark. Correspondence followed between the two parties where Ms Hudson attempted to negotiate an agreement whereby the two marks could co-exist in relation to clothing. At the time Ms Taylor rejected this proposal and Ms Hudson ultimately withdrew her opposition to the KATIE PERRY mark. This led to IP Australia accepting and registering the KATIE PERRY trade mark in August 2009.

Taylor v Killer Queen, LLC [2023] FCA 364

Several years later in Taylor v Killer Queen, LLC [2023] FCA 364, Ms Taylor commenced proceedings against Ms Hudson and her associated entities pursuant to s 120 of the Trade Marks Act 1995 (Cth) (the Act), alleging that the respondents had infringed the KATIE PERRY mark by using the KATY PERRY mark in the promotion and sale of clothes or goods of the same description.

Ms Hudson and Kitty Purry Inc also brought a cross-claim against Ms Taylor, seeking the removal of KATIE PERRY from the trade marks register pursuant to s 88 of the Act on the basis that at the time Ms Taylor made her application, Ms Hudson had grounds to oppose the application.

Ultimately the court held that Ms Hudson had infringed the KATIE PERRY mark by advertising Katy Perry clothing for the Australian market on social media, at Australian pop-up stores and during Australian tours. The court also held that Kitty Purry Inc had infringed the KATIE PERRY mark by offering for sale and selling clothes and merchandise bearing the Katy Perry name during the Ms Hudson’s 2011 Australian tour on the Bravado website and at pop-up stores in Sydney and Melbourne. However, the court did distinguish between ‘clothing’ and other items such as footwear, headgear, caps, hats and headbands, novelty jewellery, bags, decorative masks and decorative headwear. Justice Markovic found that the promotion and sale of these items were not infringing on Ms Taylor’s mark.

The cross-claim by Hudson and Kitty Purry Inc was also dismissed by the court. While Justice Markovic did acknowledge that that Ms Hudson had obtained a reputation in the KATY PERRY mark prior to Ms Taylor’s application to register the KATIE PERRY mark, at the time it was not in relation to clothing but in the entertainment and music industry.

Killer Queen, LLC v Taylor [2024] FCAFC 149

The decision of Justice Markovic in the Federal Court was appealed to the Full Court of the Federal Court by Ms Hudson and her associated entities in Killer Queen, LLC v Taylor [2024] FCAFC 149 on the basis that the original decision was adverse to their interests.

Ms Hudson filed a cross-appeal on various grounds, including the Federal Court’s findings on joint tortfeasorship, scope of registered goods, and Ms Hudson and her associated entities’ defences to the alleged trade mark infringement.

The Full Court of the Federal Court unanimously overturned Justice Markovic’s decision, finding that Ms Hudson had acquired significant reputation in the KATY PERRY mark with respect to music and performance and because of this, it was likely that consumers could be misled or deceived by Ms Taylor’s use of her KATIE PERRY mark. Therefore, the KATIE PERRY mark should be cancelled.

Notably, the primary judge emphasised that each party had adopted their name as a trade mark at a time that each was unaware of the existence of the other. However, Ms Taylor did not take steps to protect her brand and the KATIE PERRY name until after she had become aware of Ms Hudson’s reputation.

The deregistration of Ms Taylor’s mark will not be immediate with Ms Taylor first being given the opportunity to consider whether she will seek leave to appeal the decision to the High Court.

Key Takeaways

The outcome of this case may have been different if Ms Taylor had taken steps to protect her mark at the time she started using her brand, rather than after she became aware of Ms Hudson’s reputation and use of the KATY PERRY mark. It is important to ensure that you register any trade marks for your brand as early as possible and not just when you realise that there may be another person or entity that you may be in competition with.

This case also emphasises the strength of global recognition against local business endeavours. Despite both parties entering the dispute with the best of intentions, the court’s ruling underpins the challenges endured by small businesses who compete against global entities.

Finally, although not directly linked to the Katy v Katie case – it is important to note that a business or company name registration is not sufficient in protecting a name. If you would like exclusive rights to your business or company name, a trade mark registration should be considered as early as possible.

De-Cluttering in the New Year! Pilot Project in Canada to Cancel Trademark Registrations for Non-Use

By Marie Lussier

In January 2025, the Registrar of Trademarks launched a pilot project in which it sends notices to certain registrants asking them to show use of their registered mark, failing which their registration is to be cancelled.

These notices are subject to the same modalities as those issued at the request of a third party, pursuant to S. 45 of the Trademarks Act. The registrant must file affidavit evidence showing the use of the registered mark in Canada, in the normal course of trade, with each of the goods/services covered by their registration, or establish exceptional circumstances to excuse their non-use.

In January, the Registrar issued 100 such notices. A further 50 will issue in each of February and March. No number has been set for the following months, and no data is available at this time on whether any registrations have been cancelled (or maintained) pursuant to these notices.

The Canadian Trademarks Office will continue to update their site during the first phase of the project and, once a “statistically significant” number of proceedings have concluded, the Office will launch phase 2 of the pilot project. In phase 2, they will assess whether the project should continue and, if so, whether the approach should be altered so as, for instance: a) target certain types of registrations, b) have the notice issue regarding all or some of the registered goods/services and c) have the Registrar investigate the alleged use prior to issuing the notice.

The stated goal of the project is to declutter the Register to make it easier for potential trademark users/applicants to adopt a brand and to register it in an efficient manner.

These goals are laudable.

That said, they should be considered against the backdrop of recent changes to Canadian trademark law that did away with the use requirement.

In fact, Canadian applicants previously had to either claim that they were using their mark at their application filing date (for applications based on “use in Canada”) or file a declaration of use before their registration could issue (for applications based on “intent to use”). Despite significant protest from the profession, the Trademarks Act was amended in 2019 to remove all use requirements from the application process.

Furthermore, Canada does not now have, and has never had, a system akin to that of the U.S. where registrants are required to file specimens of use to obtain and to maintain their registration.

Against that backdrop, this pilot project could be seen as a way to alleviate some of the strain introduced by the 2019 changes which opened the floodgates to the filing of applications. Time may tell what effect the project has, and at what cost, to help legitimate brand owners and businesses clear, adopt, register and defend trademarks in Canada.

Is There Liability for Removing or Altering Copyright Management Information from a Copyrighted Work?

By Daniel H. Bliss

Suppose you have uncovered a copyrighted work from another that contains copyright management information such as a copyright notice. However, you want to remove or alter this copyright management information. Should you remove or alter any copyright management information from the copyrighted work? The answer is NO because there is liability!

What is copyright management information (“CMI”)? CMI is defined under 17 U.S.C. § 1202(c) as information, including in digital form, …: “(1) The title and other information identifying the work, including the information set forth on a notice of copyright. (2) The name of, and other identifying information about, the author of a work. (3) The name of, and other identifying information about, the copyright owner of the work, including the information set forth in a notice of copyright … (6) Terms and conditions for use of the work. (7) Identifying numbers or symbols referring to such information or links to such information …” conveyed in connection with copies, phonorecords, performances, or displays of a copyrighted work.

Is there an independent cause of action for removing or altering CMI such as a copyright notice from the copyrighted work? Under 17 U.S.C. § 1202(b), “[n]o person shall, without the authority of the copyright owner or the law (1) intentionally remove or alter any copyright management information, (2) distribute or import for distribution copyright management information knowing that the copyright management information has been removed or altered without authority of the copyright owner or the law, or (3) distribute, import for distribution, or publicly perform works, copies of works, or phonorecords, knowing that copyright management information has been removed or altered without authority of the copyright owner or the law knowing, or … having reasonable grounds to know, that it will induce, enable, facilitate, or conceal an infringement of any right …”.

Does this cause of action apply to anyone without exception? Under Section 1202, there is no cause or action or liability for authorized investigative, protective, information security, or intelligence activities of certain law enforcement, intelligence, or government agencies. What are the civil remedies for violation of these provisions? Under 17 U.S.C. § 1203, a plaintiff may recover statutory damages for each violation “in the sum of not less than $2,500 or more than $25,000,” with the exact amount being determined by the court, as well as attorneys’ fees and injunctive relief. Thus, Section 1202 will only apply to a person or entity that knowingly or should have known that the CMI has been removed or altered on the copyrighted work and distributes the copyrighted work.

Let’s assume that your copyrighted work is a photograph. Suppose you have placed your name directly on the photograph, in the photo metadata, or in a watermark when it is published. Further, suppose someone posts that photograph on their website without your name on it. Is there liability? In the case of Murphy v. Millennium Radio Group LLC, 650 F.3d 295 (3d Cir. 2011), the Third Circuit Court held that defendants were liable for both unauthorized use of plaintiff’s photograph and removal of CMI from the photograph. In Murphy, a photographer who took photographs and placed a gutter credit with his name on the photographs, when published. However, a radio station copied the photographs and posted them to the web without the gutter credit. Murphy filed a lawsuit for copyright infringement and violation of the Digital Millenium Copyright Act for removing the gutter credit. The court found that “a cause of action under §1202 of the DMCA potentially lies whenever the types of information listed in § 1202(c)(1)-(8) and ‘conveyed in connection with copies…of a work…including in digital form’ is falsified or removed, regardless of the form in which that information is conveyed.”

Based upon the above, you should never remove or alter copyright management information or CMI from a copyrighted work. There is liability for removing or altering CMI from a copyrighted work. Unlike statutory damages for copyright infringement, damages for liability under Section 1202 do not require that the copyright owner register the copyrighted work before the infringement occurs. Therefore, it is recommended that you add CMI to all of your copyrighted works. It will provide an independent cause of action, and you may prevail in a copyright infringement suit for either or both copyright infringement or CMI removal. In addition, a court may award statutory damages and attorneys’ fees if it concludes that someone knowingly removed CMI and distributed the copyrighted work.

Is There Liability for Removing or Altering Copyright Management Information from a Copyrighted Work?

By Daniel H. Bliss

Let’s assume that your copyrighted work is a photograph. Suppose you have placed your name directly on the photograph, in the photo metadata, or in a watermark when it is published. Further, suppose someone posts that photograph on their website without your name on it. Is there liability? In the case of Murphy v. Millennium Radio Group LLC, 650 F.3d 295 (3d Cir. 2011), the Third Circuit Court held that defendants were liable for both unauthorized use of plaintiff’s photograph and removal of CMI from the photograph. In Murphy, a photographer who took photographs and placed a gutter credit with his name on the photographs, when published. However, a radio station copied the photographs and posted them to the web without the gutter credit. Murphy filed a lawsuit for copyright infringement and violation of the Digital Millennium Copyright Act for removing the gutter credit. The court found that “a cause of action under §1202 of the DMCA potentially lies whenever the types of information listed in § 1202(c)(1)-(8) and ‘conveyed in connection with copies…of a work…including in digital form’ is falsified or removed, regardless of the form in which that information is conveyed.”

Infringement of Trademark by Metatag and Keywords

By Abhijeet Das, Partner, Pragya Jain, Associate and Ashish Kumar, Associate, LexCounsel Law Offices

Introduction

Post-pandemic, there has been a significant rise in digital marketing worldwide. Companies are utilising platforms (“Platforms”) like Google Ads and various social media networks to connect with prospective customers. To showcase their products or services on these Platforms, businesses often use keywords or metatags to attract users searching for similar offerings. However, instances have emerged where companies use the trademarks of other businesses as keywords to advertise their own products or services. Companies are pouring huge amounts of money into ensuring their websites get noticed and as a result, some are adopting tactics like manipulating meta tags, framing, and using deceptive links to attract more visitors. Metatags are HTML elements that provide metadata about a webpage, such as descriptions or keywords, which help search engines categorize and rank pages.

This article examines whether the use of a trademark as a metatag or keyword in India constitutes trademark infringement under the Trade Marks Act, 1999 (“Act”). In India, a registered trademark is infringed when a person, who is neither the registered proprietor nor an authorized user, uses the mark in the course of trade without due cause and who does so in a way that either unfairly benefits from or harms the distinctive character or reputation of the trademark in India.¹

Judicial Precedents on Infringement by “Metatags” and “Keywords”

In the case of Google LLC vs. DRS Logistics (P) Limited², the Delhi High Court dealt with the issue of using registered trademarks as keywords in Google’s advertising program. DRS alleged that Google encourages use of registered trademark as keywords for the purpose of advertisement on Google ads. DRS contented that this practice diverted online traffic from the trademark proprietor’s website to the advertiser’s website, which constitutes infringement under the Act. DRS further contended that keywords and metatags serve similar functions, as both can redirect traffic from the trademark owner’s site to that of the advertiser or infringer.

Google argued that using a keyword in its advertising program does not qualify as “use” under the Act, even if the keyword is identical or similar to a registered trademark. Google asserted that any liability for trademark infringement should rest with the advertiser using the keyword. Google is merely an intermediary having safe harbour under Section 79 of the Information Technology Act, 2000. Additionally, Google differentiated metatags from keywords, explaining that metatags form a part of its website’s source code and influence search engine rankings. Whereas keywords are solely used for ad targeting and are not embedded in the website code. Further, keywords are not visible to users and serve only to facilitate ad shortlisting.

The court noted that the use of trademarks as keywords qualifies as “use” under Sections 2(2) and 29(6) of the Act. It further clarified that liability for infringement would rest with Google and not the advertiser. However, the court emphasized that using a trademark as a keyword does not automatically constitute infringement. Applying the doctrine of Initial Interest Confusion, the court ruled that if a user is initially misled by sponsored links containing the trademark, it amounts to infringement under Section 29(2) of the Act. Additionally, the court observed that metatags and keywords serve a similar purpose of displaying advertisements and attracting traffic and since the use of metatags is considered infringement, the same principle would apply to keywords.

In the case of MakeMyTrip India Private Limited v. Booking.com³, the Single Judge Bench of the Delhi High Court addressed the plaintiff’s request for an injunction to protect its registered trademarks, as the defendant allegedly used MakeMyTrip’s marks as keywords in Google Ads. The Court examined Section 29 of the Act and noted that using a trademark to unfairly capitalize on its reputation amounts to infringement under the Act. The defendant’s use of the keyword “MakeMyTrip” was found to potentially exploit MakeMyTrip’s goodwill. The Court recognized the harm caused to the trademark owner and granted an injunction in favor of MakeMyTrip. Subsequently, Google LLC filed an appeal before the Division Bench of the Delhi High Court, seeking to overturn the Single Judge’s order restraining Booking.com from using “MakeMyTrip” as a keyword. The Division Bench overruled the Single Judge Bench’s decision and observed that the use of “MakeMyTrip” trademark as a keyword by Booking.com doesn’t constitute infringement under Section 29(8) of the Act. The Division Bench opined that “use of trade marks as keywords by competitors absent any confusion or deceit, did not per se amount to infringing use”. Further the Division Bench also observed that the Section 29(4) of the Act would not be applicable as similar services are offered by both the companies. Thereafter, MakeMyTrip challenged the Division Bench’s ruling, and the case is now sub judice before the Delhi High Court.

Similarly, in Mattel Inc. & Ors. v. Jayant Agarwalla & Ors⁴., the court addressed the issue of search engine indexing and the use of meta-tags, ruling that utilizing trademarks as meta-tags constitutes infringement. In Kapil Wadhwa & Ors. v. Samsung Electronics Co. Ltd⁵., the Delhi High Court granted an injunction against the defendants for using the plaintiff’s registered marks as meta-tags. This ruling was later upheld by the Division Bench.

Additionally, in People Interactive (I) Pvt. Ltd. v. Gaurav Jerry⁶, the Bombay High Court examined the defendant’s unauthorized use of the plaintiff’s registered mark “shaadi.com” as a meta-tag and determined that it amounted to trademark infringement. The Court observed that this use diverted traffic and caused harm to the plaintiff’s registered mark. Moreover, the Court awarded damages to the plaintiff for the losses incurred due to the unauthorized use of the trademark.

Conclusion

In view of the aforesaid judicial precedents, the courts have consistently held that the use of “Keywords” or “Metatags” can lead to trademark infringement under Section 29 of the Act. Courts have clarified that “use” in this context encompasses digital advertising, acknowledging that employing trademarks as keywords can constitute infringement if it causes consumer confusion or unfairly exploits the trademark’s reputation. Cases such as Google LLC vs. DRS Logistics and MakeMyTrip India Pvt. Ltd. v. Booking.com highlight the importance of protecting trademark owner’s rights in the digital era. The application of the doctrine of Initial Interest Confusion helps protect consumers from misleading advertising, although it introduces subjectivity, especially when assessing what constitutes “confusion” in the context of digital marketing.

While in the aforementioned cases, the courts have addressed the issue of trademark infringement in the digital space, the ever-evolving nature of digital advertising necessitates ongoing legal adaptation. As businesses increasingly rely on keywords and metatags for marketing, it is crucial to strike a balance between protecting intellectual property rights and fostering fair competition. Further legal clarity and possible legislative adjustments may be needed to establish clearer boundaries for the use of trademarks in online advertising. In the end, businesses must navigate these complexities carefully to mitigate legal risks and ensure the fair use of trademarks in the digital marketplace.

[1] Section 29(4)(c) of the Trademark Act, 1999

[2] 2023 FAO(OS)(COMM) 2/2022

[3] CS (COMM) 268/2022

[4] 2008 (153) DLT 548

[5] 194 (2012) DLT 23

[6] 2014 SCC OnLine Bom 4607

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