The District Court’s (Eastern District of Pennsylvania) opinion is worth a read, especially since it incorporates images of the pies and some humor (e.g. “This case presents the delicious issue, sure to please those with a sweet tooth, of whether summary judgment should be granted to either side in a trademark infringement dispute over apple pastry desserts.”).
As a boy growing up with a mom that was constantly baking (albeit more cookies than pies), I enjoyed this opinion and understand the conclusion.
SWEET STREET DESSERTS, INC., v. CHUDLEIGH’S LTD., 2016 WL 3924239 (3d Cir. 2016).
You Decide: Will the Supreme Court of the United States decide that stripes, chevrons, zigzags, and color blocks in cheerleader uniforms are subject to copyright protection? If so, more robust copyright protection may come to fruition for fashion designers after the Sixth Circuit’s decision in Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468, 470 (6th Cir. 2015). Most Circuit Courts agree that the “Copyright Act protects the ‘pictorial, graphic, or sculptural features’ of a design of a useful article even if those features cannot be removed physically from the useful article, as long as they are conceptually separable from the utilitarian aspects of the article.” Varsity Brands, 799 F.3d at 483. This means that a useful article, such a as a t-shirt, cannot be copyrighted, but the design on a t-shirt may be copyrighted if it is “conceptually separable” from the utilitarian aspect of the t-shirt (i.e. as clothing meant to cover upper bodies) of the shirt. However, courts have “struggled mightily to formulate a test” for this legal theory. Id. at 484.
A solution to the struggle may soon be revealed as the Supreme Court granted certiorari to address what the appropriate test is to determine when a feature of a useful article is protectable under the Copyright Act. See Star Athletica, LLC v. Varsity Brands, Inc., 136 S. Ct. 1823 (2016).
The Supreme Court’s most fashionable case centers on cheerleading uniforms. Varsity is a manufacturer of cheerleading uniforms, having “registered copyrights for multiple graphic designs” that include “stripes, chevrons, zigzags, and color blocks. . . .” Varsity Brands, 799 F.3d at470-71. Varsity sued Star for copyright infringement, alleging that Star distributed cheerleading uniforms substantially similar to Varsity’s copyrighted designs. Id. at 474. After the Western District of Tennessee denied Varsity’s copyright claim, holding that “a cheerleading uniform is not a cheerleading uniform without” designs, Varsity sought appeal to the Sixth Circuit.
In Varsity Brands, the Sixth Circuit acknowledged that courts have taken at least nine different approaches to conceptual separability. See Id. at 484. Overall, the Sixth Circuit held that Varsity’s designs are “capable of existing independently” of the cheerleading uniform because “the arrangements of stripes, chevrons, color blocks, and zigzags are ‘wholly unnecessary to the performance of’ the garment’s [utilitarian aspect] to cover the body, permit free movement, and wick moisture.” Id. at 492. The Court noted that a “plain white [cheerleading uniform] still cover[s] the body and permit[s] the wearer to cheer, jump kick, and flip” and the “top and skirt are still easily identifiable as cheerleading uniforms” without the design. Id. at 491. Thus, Varsity’s graphic designs were copyrightable. Id. at 492.
Applied to other garments, the SCOTUS affirmation of Sixth Circuit’s logic could largely expand the protection of copyright for fashion designers and prevent “knock-offs” from escaping liability. However, whether SCOTUS will affirm the Sixth Circuit’s holding is still up for speculation, especially considering the diverse approaches that courts have taken on the issue. SCOTUS has broadened intellectual property rights recently with decisions such as Halo Elecs., Inc. v. Pulse Elecs., Inc., No. 14-1513, 2016 WL 3221515, at *4 (U.S. June 13, 2016) in which the Court made it easier for patent holders to recover treble damages when pursuing patent infringement. If SCOTUS continues down the path of IP right expansion, then affirming the Sixth Circuit’s ruling in Star Athletica, LLC v. Varsity Brands, Inc. may be its next opportunity. Until then, those in both the fashion and legal industries will be watching, and the case will get more press and attention, as shown here.
Blog post contributed with the help of Traverse Legal, PLC Associate Attorney, Mallory Donick.
Welcome to 2016. While I’m excited for another year that will undoubtedly bring more examples of unintellectual property (UnIP), I wanted to touch on perhaps the largest trademark ruling that occurred at the end of 2015. The United States Court of Appeals for the Federal Circuit held that the United States Patent and Trademark Office (USPTO) can not reject trademarks for being offensive. The case stems from an Asian-American rock band’s attempt to register its band name, The Slants. The USPTO refused to to do so and the the Trademark Trial and Appeals Board (TTAB) had sustained the refusal.
When appealed, the Court was tasked with answering one question: Does the bar on registration of disparaging marks in 15 U.S.C. §1052(a) (set forth below) violate the First Amendment? The answer was a resounding and, in this lawyer’s personal opinion, a long overdue YES!
The USPTO’s basis for refusing marks like THE SLANTS, NO $#!+, THE COMPLETE A**HOLE’S GUIDE TO …, F**K PROJECT, AWSHIT WORKS appears to be gone. Will former applicants who were refused registration re-apply? I would advise that they do. As predicted by ArsTechnica, the question now becomes how much of an impact this ruling has on other trademarks in the future (e.g. Redskins). I am glad that I no longer will have to spend so much time trying to advise my clients about what may or may not be immoral or scandalous as they identify potential trademarks, as I clearly had a different interpretation of those terms than the USPTO and its various precedent.
I mean, come on, how can you accurately reconcile some of the USPTO’s refusals and TTAB’s allowances with decisions like the relatively recent one involving NUT SACK DOUBLE BROWN ALE. I know, I know, it all boils down the facts, but would you change your mind knowing that the slogan for that beer was “Give Our Nut Sack a Taste” with a picture that looks like a squirrel holding a bag of nuts (or testicles). The good news is that, so long as the law does not change again, these judgment decisions with regard to offensiveness and immorality should no longer determine the registrability of a mark. Start your dirty mind engines!!!
The United States Patent and Trademark Office (USPTO) held that the immensely popular hot sauce, “sriracha,” has become generic and thus is not entitled to trademark registration or protection. The trademark history, as told by law inc., is summarized well enough that I need not repeat it. However, I will note that the most intriguing part of this story is not the debate as to whether “sriracha” is indeed genercized, but rather the decision by its founder, Tren, to not pursue a USPTO trademark registration at the outset. In doing so, there is little doubt that he has forgone millions of dollars of licensing revenue and is jeopardizing the long-term success as others flood the market under the same name. Admittedly, he would have had to spend some legal dollars to register, secure agreements and potentially enforce the mark, but that is a cost of doing business, and a good one when you consider the ROI. While I can’t question the man’s success, his love of zen or the taste of the product itself, I do question his legal stance with regard to trademark protection. As a trademark lawyer and business man, it makes me cringe, much like a bite of too much of his hot sauce.
The United States Court of Appeals for the Fifth Circuit affirmed the District Court’s grant of summary judgment to Plaintiff on its claim for a declaratory judgment of non-infringement of Defendant’s trademarks, and in doing so affirmed cancellation of those trademarks. The dispute centers around the use of a design that is seen at Mardi Gras in New Orleans. In particular, a “bead dog” is commonly made using the beads that are thrown from the balconies to the revelers below. Defendant, Haydel’s Bakery, had registered two trademarks, one character mark for MARDI GRAS BEAD DOG (which was not used by the Plaintiff) and one design mark, as well as a copyright for what it described as a “stylized dog wearing a beaded necklace, with the dog being formed by a series of spheres designed to look like Mardi Gras style beads. The dog has two eyes and a nose, all formed by smaller beads.” When Haydel’s threatened Plaintiff, Nola Spice Designs, over its jewelry, Nola Spice sought declaratory judgment.
The opinion of the Court is a detailed and reasoned one, worth reading, especially since it provides Appendices showing each of the images at issue. The Court deemed both trademarks as being merely descriptive, in that they were a “rendering of the old time bead dog” and “iconic Mardi Gras symbol.” The Defendant was not able to provide sufficient evidence of secondary meaning.
With respect to the copyright infringement claim, the Court separated the unprotectable elements before applying the substantial similarity test. In doing so, it recognized this was a derivative work, thus focusing only on the material contributed by Defendant, which excluded the body of the dog. Although Defendant tried to convince the Court that the “original contributions include, among other things, the selection and arrangement of a necklace, nose, eyes, and a tail, all made of smaller beads,” the Court cited case law and held that anatomical features on replicas of animals are ideas not entitled to copyright protection. This left little for the Defendant, though the Court recognized that while the idea of eyes, a nose, a tail, and a collar are not protectable, the manner in which Defendant expresses these features may be protectable, as long as that expression is original and not dictated by the underlying idea. Unfortunately for Defendant, with the collar being the protectable element, the Court found that no substantial similarity existed, especially since the cited confusion was likely due to a comparison of the designs as a whole, which included unprotectable elements.
Thus, this is an example of the risk of threatening to enforce unprotectable IP, though likely a tough one to bear for the Defendant who had clearly taken the necessary steps with both the USPTO and US Copyright Office in order to gain registration and the presumptions that go along therewith. That said, it is yet another reminder for those threatened with claims of infringement that just because a mark or design is registered does not mean infringement is a given. Ultimately, I may have to visit New Orleans and analyze this matter further over a Hurricane cocktail or two (which may entirely change my opinion as to this decision, hah).
Nola Spice Designs, L.L.C. v. Haydel Enterprises, Inc., No. 13-30918, 2015 WL 1600689, at *4 (5th Cir. Apr. 8, 2015).
A short summary and link to the Order granting summary judgment to the defendants is provided by the World Intellectual Property Review.
This decision reinforces the importance of understanding what copyright does and does not protect, and how other forms of IP may be more useful (e.g. patent or trade secret for a recipe).
The United States Patent and Trademark Office (USPTO) has refused registration of the trademark COMFYBALLS, finding it too vulgar since “balls” could only relate to male genitalia. The World Intellectual Property Review goes into greater detail of the decision.
Needless to say, the subjectivity of such an analysis is front and center in this decision. It is worth noting that Europe had no such issue with the application and issued a registration. I always wonder, over time, will something that is now considered to be vulgar no longer be such in the future? Who knows, but for now, this applicant appears to be blue balled!
Copyright infringement attorneys would be well-served to review a recent case out of the United States District Court for the Middle District of Louisiana. The case involved one test preparation company suing another for copyright infringement. The allegations stemmed from the Defendant using 14 exam questions that were identical to those in Plaintiff’s registered copyright for 1,083 multiple-choice questions. Rather than determine whether the questions themselves were subject to copyright protection, the Court relied on the the de minimis doctrine. The Defendant asserted that any infringement was de minimis, and thus, “cannot lead to a finding of substantial similarity.” “This means that even where the fact of copying is conceded, no legal consequences will follow from that fact unless the copying is substantial.” “To establish that an infringement is quantitatively de minimis and therefore not actionable, the alleged infringer must demonstrate that the copying of the protected material is so trivial ‘as to fall below the quantitative threshold of substantial similarity.’” (Citations omitted).
The Court went on to analyze the doctrine’s applicability and hold that there was no actionable copyright infringement.
This practice tip serves as a reminder to analyze whether the amount of copying is sufficient enough to qualify for copyright infringement. More importantly, defendants, and their copyright infringement attorneys, should be sure to understand the scope of the claimed infringement and consider a de minimis defense.
Louisiana Contractors Licensing Serv., Inc. v. Am. Contractors Exam Servs., Inc., No. CIV.A. 12-560-JJB, 2014 WL 1364815 (M.D. La. Apr. 7, 2014).
The United States District Court for the Southern District of New York granted Defendant’s Motion for Summary Judgment, holding that Plaintiff did not possess the requisite trade secret for its trade secret misappropriation claim. Both Plaintiff and Defendant provide construction product information (“CPI”). Plaintiff and Defendant are the two national level provider of CPI services, which includes nationwide searchable databases that can filter projects based on the user’s preferences. For example, a user can search for library projects in Topeka, Kansas, worth more than three million dollars, that need plumbing in the next two months. The CPI service will collect all the projects meeting those specifications and provide plans, bidding information, and contact information for the planner, architect, or general contractor on the job. Reed and McGraw–Hill each sell CPI subscriptions at the national, state, and local levels. When Defendant secretly subscribed to Plaintiff’s service in order to perform comparisons and ensure its database was complete, Plaintiff sued for misappropriation of trade secrets, among other things.
So, the Court relied upon lack of maintained secrecy. However, were other reasons present? Was this information even a trade secret? Perhaps a compilation trade secret? Would New York and Georgia law, the latter follows UTSA, have come out the same on these issues?
Reed Const. Data Inc. v. McGraw-Hill Companies, Inc., 09-CV-8578 JPO, 2014 WL 4746130 (S.D.N.Y. Sept. 24, 2014).


On behalf of the Wicomico County Council, you have inquired whether the Council has the power to refund a transfer tax assessed and collected under emergency legislation that was subsequently rejected by the voters in a referendum. Included with your request was a copy of the opinion of the County Attorney that the County may not legally refund the taxes that were collected. A copy of that opinion is attached.
We have carefully reviewed the opinion of the County Attorney. We agree that the Council lacks authority to enact a tax refund. In our view, a reasonable argument may be made that the General Assembly could provide authority for a refund if it were to amend the County’s taxing authority to permit refunds or tax credits related to those payments.
Wicomico County has adopted charter home rule under Article XI-A of the Maryland Constitution. As a charter county, Wicomico County has broad legislative authority under the Express Powers Act. See Annotated Code of Maryland, Article 25A, §§ 4, 5. However, while the Express Powers Act authorizes the County to impose property taxes, it does not grant general taxing authority.
In 1992, the General Assembly enacted a public local law enabling the Wicomico County Council to impose development impact fees and a transfer tax. Chapter 399, Laws of Maryland 1992, now codified as Wicomico County Code (“WCC”), §§ 203-22, 203-23. The maximum rate of the authorized transfer tax is 1%. WCC § 203-23.
Under the authority of WCC § 203-23, the County Council passed a 1% local transfer tax on May 31, 2000. See Wicomico County Council Bill No. 2000-5 (enrolled bill). Revenue from the tax was dedicated to school construction or to reduction of debt incurred in connection with school capital projects. Id., Section I (enacting WCC § 203-27). The tax was enacted as an emergency measure and took effect on the date of its enactment. Id., Section II.
The bill enacting the transfer tax was petitioned to referendum pursuant to § 309-1 of the Wicomico County Charter. At the election held on November 7, 2000, the transfer tax ordinance was rejected by the voters. Because the ordinance had been enacted as an emergency measure, the transfer tax remained in effect until 30 days after the election. See Wicomico County Charter § 309-1(d). Had the ordinance not been enacted as an emergency measure, however, a valid referendum petition would have delayed effectiveness of the tax until approval of the measure by the voters. Wicomico County Charter §§ 308-1(g), 309-1(d).
No question has apparently been raised as to whether the ordinance establishing the transfer tax was validly enacted or whether the taxes were properly collected. Accordingly, your question is whether the County may voluntarily return the funds collected under a validly enacted tax that is later overturned by referendum.
The County could, of course, ask the General Assembly to amend the taxing authority granted by WCC § 203-23 to give the County express authority to return amounts collected out of the County’s general funds. The Court of Appeals has noted that, because the General Assembly has authority to authorize a tax, it has the power “by retroactive legislation to . . . insure equality of treatment” by enacting a retroactive exemption. Baltimore County v. Churchill, Ltd., 271 Md. 1, 313 A.2d 869 (1974). Whether that course of action is permissible depends upon whether granting a refund in these circumstances serves a public purpose.
It is beyond dispute that public money may not generally be devoted to a private purpose. “By the Declaration of Rights, Art. 15, as well as the fundamental maxims of a free government, taxes can only be imposed to raise money for public purposes.” Snowden v. Anne Arundel County, 295 Md. 429, 434, 456 A.2d 380 (1983), quoting Balto. E.S.R.R. Co. v. Spring, 80 Md. 510, 31 A. 208 (1895); see also City of Frostburg v. Jenkins, 215 Md. 9, 14, 136 A.2d 852 (1957) (“It is a general rule that the public funds of municipalities cannot properly be devoted to private use, even when expressly authorized by the Legislature”).
(1928) (what constitutes a “public purpose” is “not a matter of exact definition; it is almost entirely a matter of general acceptance”).
“Public purpose” has been described generally as a purpose that “has for its objective the promotion of the public health, safety, morals, general welfare, security, prosperity, and contentment of all the inhabitants or residents” of a jurisdiction. Bowling v. Brown, 57 Md. App. 248, 259, 469 A.2d 896 (1984). In reviewing legislative action, “it is only necessary that the legislative determination to spend a particular amount of public funds be reasonable and based on an honest judgment of those officials charged with the care of the public purse that the expenditure is for the best interests of the [jurisdiction.]”Town of Williamsport v. Washington County Sanitary District, 247 Md. 326, 231 A.2d 40 (1967).
A return of the revenues collected pursuant to the transfer tax between the date of its enactment and its demise appears consistent with the voters’ rejection of the authorizing ordinance. It is understandable that the Council may feel that it has a “moral obligation” to return the tax revenue collected during the very limited period when the transfer tax was in effect.
The County Attorney has accurately described in his opinion two cases from other states in which appellate courts rejected initiative ordinances that were designed in part to refund taxes levied under prior valid ordinances. In those cases, the courts found that the proposed tax refunds of validly collected taxes would lack a public purpose. See City of Yakima v. Huza, 407 P.2d 815 (Wash. 1965) (proposed initiative ordinance that could result in refund of past tax payments would constitute an unconstitutional gift, unless taxing ordinances were themselves invalid or there was some duty on the part of the city to refund the taxes); Utz v. City of Newport, 252 S.W.2d 434 (Ky.Ct.App. 1952) (holding invalid taxpayers’ initiative that would have required the return of taxes paid under previously enacted ordinances).
(1939) (upholding return of special assessments validly collected over several years based on moral obligation when others provided service were not assessed).
Given that the Council apparently believes it has a “moral obligation” to refund the amount paid by taxpayers during the short period in which the transfer tax was in effect, the prudent course to achieve the Council’s current objective would be to obtain the additional authority from the General Assembly. The preamble of any such bill could recite that it is designed to reflect voters’ rejection of the tax in the referendum. The Council’s subsequent use of such authority to support an appropriation of funds for a tax refund would presumably be based on the same premise. Thus, two legislative bodies — the General Assembly and the Council — would have determined that reimbursement of those tax payments served a public purpose. A reviewing court would likely defer to those legislative determinations, particularly in these unique circumstances.
However, this conclusion is not free from doubt. Although the Maryland courts generally defer to legislative determinations of public purpose, “the courts have a duty to determine whether the particular use [of public funds] is within the scope of the constitutional power.” City of Frostburg, 215 Md. at 16. The Maryland appellate courts have not had occasion to address the issue whether a “moral obligation” such as illustrated by these circumstances constitutes a public purpose.
In our opinion, the County Council currently lacks authority to enact a refund of taxes paid while the County transfer tax was briefly in effect. However, a reasonable argument can be made that, if the General Assembly were to provide the necessary authority, an appropriation by the Council to reimburse those tax payments would serve a public purpose by discharging a “moral obligation” of the County. To pursue such a course, the County must seek enabling authority from the General Assembly that specifically empowers it to refund the taxes.
[*] Assistant Attorney General Richard E. Israel contributed significantly to the preparation of this opinion.
 Charter and code home rule counties have authority under the Express Powers Act to impose property taxes. Annotated Code of Maryland, Article 25A, § 5(O); Article 25B, § 13.
 There were a number of exemptions to the tax. In authorizing the County to impose the tax, the Legislature exempted transfers that are exempt from the State transfer tax under Annotated Code of Maryland, Tax-Property Article (“TP”), § 13-207. Consistent with TP § 13-407(b), land transfers subject to the agricultural land transfer tax under TP § 13-301 et. seq. were also exempted. WCC § 203-23(c)(3).
In addition to the exemptions provided in the enabling legislation, the Council provided an exemption for the first $50,000 payable toward qualifying owner-occupied real property, consistent with State law. Bill No. 2000-5, Section I, WCC § 203-24(b)(3). The Council also grandfathered property transfers pursuant to sales contracts that were fully executed on or before June 15, 2000. WCC § 203-29.
 If, in a particular case, the tax was erroneously or illegally assessed or collected, the taxpayer could seek a refund administratively. See Annotated Code of Maryland, Article 24, § 9-710 et seq.; TP § 14-908.
 In another context, the Court of Appeals has recognized a distinction between a county’s power to tax and its inherent power to appropriate public money. City of Annapolis v. Anne Arundel County, 347 Md. 1, 698 A.2d 523 (1997). However, whether the County could invoke that inherent authority to make a refund not otherwise authorized is open to question.
§ 67.02 (2d ed. 2000).


C.R.S. § 18-4-205 is the Colorado code section that defines the crime of possession of burglary tools. Possession of burglary tools is a criminal offense that occurs when a person intends to use a tool commonly used to break into a business, home, or other place in order to commit a theft.
with the intent to use the thing possessed or with knowledge that some person intends to use the thing possessed in the commission of the offense.
Having these tools in a person's possession is not enough for a conviction of this crime. Typically the offense is charged when a person is where he or she does not belong, which would indicate an intent to commit a theft.
a fine of a minimum of $1,000 up to a maximum of $100,000.
A person also faces the stigma of being labeled a "felon" and all of the collateral consequences that come with it.
no intent to commit a theft existed.
1. What is the offense of possession of burglary tools?
1.1 What must the prosecutor prove to be convicted of possession of burglary tools?
2. What are common "criminal" tools used to charge the offense?
3. Is possessing the "criminal" tool by itself enough to be convicted?
4. What are the penalties for possessing burglary tools?
5. What defenses can I raise against a charge of possessing burglary tools?
6.1 Criminal Trespass, 18-4-502 C.R.S., 18-4-503 C.R.S., 18-4-504 C.R.S.
C.R.S. § 18-4-205 is the Colorado code section that defines the crime of possession of burglary tools.
If the prosecutor fails to prove any of the essential elements of the charge, the defendant is not guilty.
No. Just because a person is in possession of a tool commonly used to commit a theft offense does not mean that a person is guilty of the crime.
working in a position that requires a criminal background check.
Lack of criminal intent is the primary defense used to fight this charge. Simple possession is not enough. The Colorado prosecutor must prove that a person intended to use the tools to commit an offense.
Possession of burglary tools is an offense that is often related to other offenses, like criminal trespass, theft, burglary, and breaking and entering.
6.1 Criminal Trespass 18-4-502 C.R.S., 18-4-503 C.R.S., 18-4-504 C.R.S.
Criminal trespass is an Colorado offense that occurs when a person unlawfully enters or remains on someone else's property. Penalties for criminal trespass in Colorado range from probation to incarceration in a prison for up to three (3) years and a fine up to $100,000.
the person's reason for entering and/or remaining on the property.
If convicted on any of these charges, the person's penalties will be consistent with the type of theft he or she was convicted of.
Burglary is a felony and can result in punishment that includes prison from one to 48 years and a fine between $1,000 and $1,000,000.
aggravated robbery, which is a Colorado class 3 felony and can result in prison of up to 32 years, depending on the circumstances and use of a deadly weapon.
For questions about possession of burglary tool charges or to confidentially discuss your case with one of our skilled Colorado criminal defense attorneys, do not hesitate to contact us.
C.R.S. § 18-4-205. Possession of Burglary Tools.
People v. Ridgeway, 307 P.3d 126 (2013) (stating the jury instructions required for possession of burglary tools).
People v. Chastain, 733 P.2d 1206 (1987) (proof of requisite mens rea required for offense).
C.R.S. § 18-1.3-401. Felonies classified--presumptive penalties.
C.R.S. § 18-4-502. First degree criminal trespass.
C.R.S. § 18-4-503. Second degree criminal trespass.
C.R.S. § 18-4-504. Third degree criminal trespass.
C.R.S. § 18-4-204. Third degree burglary.
C.R.S. § 18-4-203. Second degree burglary.
C.R.S. § 18-4-202. First degree burglary.