Creative Protection

In Re 1800Matress.com IP, L.L.C.

1800Mattress.com IP, LLC (“1800Mattress.com”), substituted as appellant for Dial-A-Mattress Operating Corp. (“Dial-A-Mattress”), appeals from the final decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board (the “Board”) refusing registration of the mark “MATTRESS.COM.” In re Dial-A-Mattress Operating Corp., Serial No. 78976682, 2008 TTAB Lexis 437 (T.T.A.B. Nov. 13, 2008). Because the Board’s decision finding “MATTRESS.COM” generic in relation to the recited services was supported by substantial evidence, we affirm.

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Schrock v. Learning Curve

We reverse. We assume for purposes of this decision that the district court correctly classified Schrock’s photographs as derivative works. It does not follow, however, that Schrock needed authorization from Learning Curve to copyright the photos. As long as he was authorized to make the photos (he was), he owned the copyright in the photos to the extent of their incremental original expression. In requiring permission to make and permission to copyright the photos, the district court relied on language in Gracen v. Bradford Exchange, 698 F.2d 300 (7th Cir. 1983), suggesting that both are required for copyright in a derivative work. We have more recently explained, however, that copyright in a derivative work arises by operation of law—not through authority from the owner of the copyright in the underlying work— although the parties may alter this default rule by agreement. See Liu v. Price Waterhouse LLP, 302 F.3d 749, 755 (7th Cir. 2002). Schrock created the photos with permission and therefore owned the copyright to the photos provided they satisfied the other requirements for copyright and the parties did not contract around the default rule.

We also take this opportunity to clarify another aspect of Gracen that is prone to misapplication. Gracen said that “a derivative work must be substantially different from the underlying work to be copyrightable.” 698 F.2d at 305. This statement should not be understood to require a heightened standard of originality for copyright in a derivative work. We have more recently explained that “the only ‘originality’ required for [a] new work to be copyrightable . . . is enough expressive variation from public-domain or other existing works to enable the new work to be readily distinguished from its predecessors.” Bucklew v. Hawkins, Ash, Baptie & Co., LLP, 329 F.3d 923, 929 (7th Cir. 2003). Here, Schrock’s photos of Learning Curve’s “Thomas & Friends” toys possessed sufficient incremental original expression to qualify for copyright.

But the record doesn’t tell us enough about the agreements between the parties for us to determine whether they agreed to alter the default rule regarding copyright or whether Learning Curve had an implied license to continue to use Schrock’s photos. Whether Schrock could copyright his photographs and maintain an infringement action against the defendants depends on the contractual understandings between Schrock, Learning Curve, and HIT. Accordingly, we remand to the district court for further proceedings consistent with this opinion.

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Schering-Plough Healthcare Prod.

Schering cannot just intone “literal falsity” and by doing so prove a violation of the Lanham Act. But we think the district court was right nevertheless not to dismiss the suit with prejudice; findings by the FDA in the misbranding proceeding may cast the issue of consumer confusion in a different light. AFFIRMED.

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Sunstar, Inc. v. Alberto-Culver Co.

The judgments (including the dismissal of the crossappeal, as it is premature to determine what injunctive relief if any the defendants are entitled to) are vacated and the case is remanded. 7th Cir. R. 36 shall apply on remand. VACATED AND REMANDED.

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Bridgeport Music, Inc. v. Universal-MCA Music

Ten Universal-affiliated defendants, all record and music publishing companies, have appealed a second time from the district court’s decision to deny the defendants’ request that attorney fees be imposed as a condition of granting plaintiffs’ motions to voluntarily dismiss without prejudice the twenty cases at issue pursuant to Fed. R. Civ. P. 41(a)(2). We remanded the matter after the first consolidated appeal “for a more detailed order specifically addressing the [defendants’] request for reasonable terms and conditions relating to the dismissal of [plaintiffs’] complaints.” Bridgeport Music, Inc. v. Universal-MCA Music Publishing, Inc., 481 F.3d 926, 927-28 (6th Cir. 2007). Reviewing the orders entered after remand, we reject defendants’ contention that the district court abused its discretion either by failing to provide specific reasons for its decision, or by deciding not to impose attorney fees as a condition of dismissal under Rule 41(a)(2). The judgments are affirmed.

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Years Later, Mattel Embraces ‘Barbie Girl’

By Stuart Elliott

Maybe it’s because Barbie is a doll and not a person, but it seems she doesn’t know how to hold a grudge.

Twelve years after the hit pop tune “Barbie Girl” raised the hackles of the toymaker that sells Barbie, Mattel, the song is being adapted for Barbie advertising.

Mattel has uploaded to YouTube a video clip of a dance called the Barbie, which is danced to a rerecorded version of “Barbie Girl.” The video is also scheduled to be shown on “Today” on NBC on Thursday morning.

Television commercials featuring the new version of the song are scheduled to start running in mid-October. The hoopla is all intended to promote a new variety of Barbie called Barbie Fashionistas.

Full story.