Daily Archives: January 28, 2015

The Supreme Court Decides Trademark Tacking Case

Last week the Supreme Court decided its first substantial trademark case in over ten years. Hana Financial, Inc. v. Hana Bank is a trademark infringement action involving the “tacking” of trademarks. Tacking is “a rule that allows the owner of the mark to make slight changes in the mark, without losing the priority that the trademark owner has based on the date when it first started using the original mark.”[1] The emphasis is on what the court calls a “continuing commercial impression.” Generally, tacking involves three trademarks, the original “senior” trademark, a second “junior” trademark unrelated to the first mark, and a third, modified version of the senior trademark.[2]  When tacking is applied, the modified senior user’s mark is allowed to claim the priority date of its original mark, even though the mark has been changed in some way.  But tacking can only be applied when there is a “legal equivalent”, meaning the two marks create the same, continuing commercial impression to consumers.

In this case, the mark “Hana” was first used by Hana Financial in 1995. Hana Bank did not use the Hana Bank mark until 2002, but argued that it could “tack” the Hana Bank mark to its 1994 mark “Hana Overseas Korean Club” and “Hana Bank” in Korean. A jury decided that Hana Bank could tack the mark to its original use of the mark in 1994. Hana Financial appealed, arguing that tacking is a question of law for a judge to decide, but the Ninth Circuit held that “whether two marks may be tacked for purposes of determining priority is a question for the jury.”[3]

The question presented to the Supreme Court is whether tacking is a question of law to be decided by a judge, or whether it is a question of fact to be determined by a jury. The Supreme Court unanimously decided that a jury can apply the tacking doctrine, reaffirming the lower court’s decision that the jury is best equipped to decide issues of an ordinary consumer’s impression.

This decision reiterates the importance of the jury. Justice Sotomayor explained “we have long recognized across a variety of doctrinal contexts that, when the relevant question is how an ordinary person or community would make an assessment, the jury is generally the decisionmaker that ought to provide the fact-intensive answer.”[4]

[1] Ronald Mann, Opinion analysis: Justices, yet again, remind courts of appeals of importance of juries in IP cases, SCOTUSblog (Jan. 21, 2015, 4:30 PM), http://www.scotusblog.com/2015/01/opinion-analysis-justices-yet-again-remind-courts-of-appeals-of-importance-of-juries-in-ip-cases/

[2] Ronald Mann, Argument analysis: Justices coast through argument on trademark “tacking”, SCOTUSblog (Dec. 4, 2014, 10:53 AM), http://www.scotusblog.com/2014/12/argument-analysis-justices-coast-through-argument-on-trademark-tacking/

[3] Hana Financial, Inc. v. Hana Bank, et al., 574 U.S. ____ (2015).

[4] Id.

Paloma Z. Coelho
Santucci Priore, P.L.
Associate Attorney

Sound recording of Marvin Gaye’s “Got to Give it Up” excluded in copyright infringement lawsuit between Marvin Gaye and Robin Thicke

The Marvin Gaye estate and Robin Thicke are currently involved in a copyright infringement lawsuit which includes a dispute regarding the similarities of Marvin Gaye’s “Got to Give it Up” song and Thicke’s “Blurred Lines” song. Lawyers for Robin Thicke requested that the Court exclude Gaye’s original recording of “Got to Give it Up” and prevent the song from being played to the jury during trial. This request was recently granted by the District Court Judge. One of the arguments made by the attorneys for Robin Thicke to the Court was that the Marvin Gaye estate only owned a copyright in the composition of the song and not in the actual sound recording.

It is important to understand the difference between applying for a copyright registration in a musical composition versus applying for a copyright registration in a sound recording. Generally, a musical composition consists of music and any accompanying words and is in the form of a phonorecord (i.e., a CD or LP) or sheet music. A sound recording captures the actual fixed performance of the song. The 1976 Copyright Act allows for separate applications for musical compositions and sound recordings. Thus, a copyright registration for a sound recording is not the same as a copyright registration for the underlying musical composition since each is considered a separate work. However, under certain circumstances a musical composition and sound recording can be registered in one application.

Daniel Devine
Santucci Priore, P.L.