IP Law Daily, COPYRIGHT NEWS: U.S. Supreme Court denies certiorari in copyright and trademark cases, (Apr 8, 2025)

By Carolin Dennis, B.Sc., LL.B., LL.M.

Review was denied in cases involving the standard for assessing striking similarity, and continuous use of a trademark to establish ownership rights.

In its order list released on April 7, 2025, the U.S. Supreme Court denied petitions for a writ of certiorari in two cases—one copyright law case and one trademark law case. It turned down a request to weigh in on the inverse-ratio rule and the standard for assessing striking similarity. The Supreme Court also declined to clarify whether “use” that creates a common law trademark right under the Lanham Act must be continuous.

Copyright—access and striking similarity. In Morford v. Cattelan, No. 24-711, the Supreme Court chose not to weigh in on a case involving the inverse-ratio rule and the standard for assessing striking similarity. The case involves a dispute between two visual artists who created abstract works involving fruit. Joe Morford, a visual artist from Canada, created a work in 2001 that he titled Banana & Orange. Mauricio Cattelan, an Italian artist, created his own fruit-and-gravity based work, entitled Comedian, which contains only a single banana attached to a wall with a piece of duct tape. Morford sued Cattelan, contending that he had recreated, and thus purloined, the banana component of his 2001 work. A federal court in Miami granted summary judgment in favor of Cattelan because Cattelan provided sufficient evidence that he came up with his own artwork independently. The Eleventh Circuit, in a brief unpublished opinion, ruled that Morford was unable to establish that the alleged infringer had reasonable access his work or that the parties’ works were striking similar.

The questions presented by Morford’s petition for certiorari were: (1) Can portions of artwork establish striking similarity? and (2) Must artwork be popular, prosperous, or promoted to be reasonably accessible online?

Trademark—continuous use. In T-Mobile US, Inc. v. Simply Wireless Inc., No. 24-637, the Supreme Court declined a request to review a Fourth Circuit decision holding that the common law does not require continuous use of a trademark to establish ownership rights, a decision that conflicts with other circuits. The case presents a clear circuit split regarding a fundamental question of trademark law: Can the putative holder of a common law trademark maintain rights to a mark that it elects not to use on a continuous basis? The majority of circuits answer that it cannot. The Fourth Circuit, by contrast, has joined a handful of district courts in holding the opposite. In its petition, T-Mobile contended that this split has injected significant uncertainty into the law, and the Supreme Court should grant certiorari to resolve the circuit split created by the Fourth Circuit’s decision and clarify the proper scope of common law trademark rights. According to T-Mobile, common law trademark rights are intended to provide a mechanism for preventing marketplace confusion—not a mechanism for enabling opportunistic lawsuits.

The question presented by T-Mobile's petition was, “Whether the ‘use’ that creates a common law trademark right under Section 45 of the Lanham Act, 35 U.S.C. § 1127 (2006), must be continuous—at least up until the point at which the trademark defendant begins the assertedly infringing activities—for the purported holder of a common law trademark to maintain its rights and preclude another from use.”

The Case is Dkt. No.27-711 and Dkt. No. 23-637.

Attorneys: Joe Morford, pro se. Adam M. Cohen (Kane Kessler, PC) for Maurizio Cattelan. Brittany B. Amadi (Hale and Dorr LLP) for T-Mobile US, Inc. Saul Daniel Cohen (Kelly IP, LLP) for Simply Wireless, Inc.

Companies: T-Mobile US, Inc.; Simply Wireless Inc.

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