Photo of Preetha Chakrabarti

Preetha Chakrabarti is a counsel in Crowell & Moring's New York office and is a member of the firm's Intellectual Property and Environmental & Natural Resources groups. Preetha's intellectual property practice consists of patent litigation, with an emphasis on representing generic pharmaceutical companies in litigation under the Hatch-Waxman Act, as well as matters related to trademark infringement, including opposition proceedings with the Trademark Trial and Appeal Board (TTAB).

On July 27, 2017, Crowell & Moring will be presenting a webinar hosted by the United States Fashion Industry Association on the hottest IP Supreme Court decisions from 2017 that will affect the fashion and retail industries.  Anne Li and Preetha Chakrabarti of Crowell will be discussing Star Athletica, LLC v. Varsity Brands, Inc. and Impression Prods., Inc. v. Lexmark Intl. Inc. The Star Athletica case involving the copyrightability of cheerleader uniform designs will have a significant impact on not only the fashion industry, but other industries that rely on copyright protection, such as consumer product manufacturing and 3D printing.  And the Lexmark decision involved the doctrine of patent exhaustion, and held that a patentee cannot sue for patent infringement after the first sale of a patented item, even if that first sale is outside the United States. Thus this case too will have an impact on any retailer that deals with IP and operations abroad.

For more information and to register for this webinar, please visit Crowell.com.

 

UPDATE to our September 2015 post

On March 22, 2017, a 6-2 Supreme Court found Varsity Brands’ designs on cheerleading uniforms to be copyrightable, holding that “an artistic feature of the design of a useful article is eligible for copyright protection if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated.” See Star Athletica, LLC. v. Varsity Brands, Inc., 580 U.S. __ (2017) (No. 15-866), Op. at 1-2.  In doing so, the Court affirmed the Sixth’s Circuit decision below.

Continue Reading A-F-F-I-R-M-E-D! The Supreme Court Upholds Copyright Protection for Cheerleading Uniform Designs

Photo credit: Bernard Spragg (Flickr)
Photo credit: Bernard Spragg (Flickr)

On February 10, 2017, the Federal Bar Association will host a day-long Fashion Law Conference at Parsons School of Design (Starr Foundation Hall in the New School’s University Center) during New York Fashion Week!

Please join Crowell & Moring’s Frances Hadfield and Preetha Chakrabarti, as well as a host of other speakers and experts, for our cutting-edge fashion law panels. Speakers include in-house counsel from The Estee Lauder Companies, Inc., Google, Macy’s, and Westfield Corp.

Topics cover corporate responsibility and sustainability, wearable technology, influence marketing, false advertising and the FTC, and employment law issues affecting the fashion industry. Preetha Chakrabarti is on a panel entitled: “Corporate Responsibility: Child Labor and Sustainability: Overview of international treaties and U.S. laws affecting child labor and sustainability issues.”

We are fortunate to have written opening remarks provided by Senator Kirsten Gillibrand (D-N.Y.) and Professor Barbara Kolsun, Professor of Practice and Co-Director of Fashion, Arts, Media & Entertainment (FAME) Law Center at Benjamin N. Cardozo School of Law—and one of the foremost thought leaders in the field of fashion law—as our luncheon keynote speaker.

If you are interested in joining legal professionals and industry representatives in New York City for this exciting conference (and of course plenty of networking opportunities!), please visit the event page to register. We look forward to seeing you there!

On July 26, 2016, FDA issued an updated warning on beauty products, warning consumers to avoid certain “skin creams, beauty and antiseptic soaps, and lotions,” particularly those boasting “anti-aging” or “skin lightening” benefits, as potentially containing mercury.  While the dangers of mercury exposure are well-known, mercury’s ubiquity in certain beauty products is not.  Products that claim to “remove age spots, freckles, blemishes, and wrinkles,” including products targeting teenagers enduring acne, may contain mercury.  Checking the label can help—look out for words like “mercurous chloride,” “calomel,” “mercuric,” “mercurio,” or of course, “mercury”, but it’s not fool-proof.  As FDA points out, many of these beauty products are often made abroad and can be sold illegally in the U.S., without any labels. FDA continually monitors products like these, but is unable to catch all of them, especially due to their dubious channels of trade.  For those that FDA does catch, FDA sets up an import alert to prevent future influxes of such products.  Check here for all Consumer Updates from FDA.  Thus, retailers should do their due diligence to know what the chemical content is of the products they sell beyond the labels.

In its warning, FDA again mentioned one of its growing complaints levied against cosmetics – that the product may actually be an unapproved new drug under the law. Continue Reading Beauty with a Side of Mercury?

U-P-D-A-T-E! On May 2, 2016, the U.S. Supreme Court granted certiorari to address the question: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?”. The answer to this question may have far-reaching implications for the retail and fashion industries – stay tuned for future u-p-d-a-t-e-s!

Group of Cheerleaders in a Row

Originally published September 10, 2015

A recent decision from the Sixth Circuit highlights the ongoing significance of copyright law for the retail and garment industries. On August 19, 2015, the Sixth Circuit, in reversing the lower court’s decision, held that the “stripes, chevrons, zigzags, and colorblocks” on Varsity Brands’ cheerleading uniforms are protectable by copyright. In Varsity Brands et al v. Star Athletica, the Sixth Circuit dipped into the murky waters of copyright protection for fashion design, reiterating the need for greater legislative or judicial guidance when it comes to fashion design and copyright law. Nonetheless, the Court ultimately found, as other Circuits have, that “fabric design”, unlike “dress design”, is protectable.

At the district court level in Tennessee, Varsity Brands sued Star Athletica for infringing its registered copyrighted designs for cheerleader uniforms. On summary judgment, the district court determined that a cheerleading uniform cannot exist without the hallmark “stripes, chevrons, zigzags, and colorblocks,” and therefore found Varsity’s copyrights of such designs invalid as inseparable from the utilitarian aspect of a cheerleading uniform.

Continue Reading UPDATE: R-E-V-E-R-S-A-L Spells Reversal! The Sixth Circuit Holds Varsity Brands’ Cheerleading Uniform Designs to be Copyrightable.

On Tuesday, September 8, 2015, the House passed the E-Warranty Act of 2015, which, if enacted, would require the FTC to revise the Magnuson-Moss Warranty Act to allow manufacturers to satisfy the Act’s requirements by digitally posting consumer product warranties on their websites.

The E-Warranty Act would permit manufacturers to provide warranty information online only, if done in a “clear and conspicuous manner.”

The Senate unanimously passed this bill, and it now heads to President Obama. Passage seems likely. Product manufacturers and sellers should be taking steps now to prepare to convert their warranty worlds to the Internet age—with easily accessible web platforms, warranty text that is both clear and reader-friendly in electronic form, and related actions to move swiftly and smartly away from the paper world.

 

Group of Cheerleaders in a Row

A recent decision from the Sixth Circuit highlights the ongoing significance of copyright law for the retail and garment industries. On August 19, 2015, the Sixth Circuit, in reversing the lower court’s decision, held that the “stripes, chevrons, zigzags, and colorblocks” on Varsity Brands’ cheerleading uniforms are protectable by copyright. In Varsity Brands et al v. Star Athletica, the Sixth Circuit dipped into the murky waters of copyright protection for fashion design, reiterating the need for greater legislative or judicial guidance when it comes to fashion design and copyright law. Nonetheless, the Court ultimately found, as other Circuits have, that “fabric design”, unlike “dress design”, is protectable.

At the district court level in Tennessee, Varsity Brands sued Star Athletica for infringing its registered copyrighted designs for cheerleader uniforms. On summary judgment, the district court determined that a cheerleading uniform cannot exist without the hallmark “stripes, chevrons, zigzags, and colorblocks,” and therefore found Varsity’s copyrights of such designs invalid as inseparable from the utilitarian aspect of a cheerleading uniform.

In a 2-1 decision, Continue Reading R-E-V-E-R-S-A-L Spells Reversal! The Sixth Circuit Holds Varsity Brands’ Cheerleading Uniform Designs to be Copyrightable.

Caveat Brand Owner: We are in the beginning of a two-month “sunrise period” for trademark owners to register their marks as second level domain names in “.sucks.” While the purported purpose of the “.sucks” domain name is to provide a forum for customers to voice constructive criticism, trademark owners may disagree.  The hefty price tag associated with the sunrise period, along with the uncertainty of how much protection owning a “.sucks” domain actually provides, leaves brand owners with a lot to consider.  For further details, please click here.

Trademark applicants and registrants may experience increased scrutiny of their trademark use claims in light of the results of a recent Pilot Program, conducted by the United States Patent and Trademark Office (USPTO), showing that fifty percent (50%) of approximately 500 randomly selected registrants could not support the claims made in previously filed Declarations of Use. See USPTO Report. Each selected registrant had been asked to submit specimens showing use for two additional goods or services per class in addition to the specimen already submitted with the Declaration.

The USPTO is continuing to study the matter and it is unclear what formal actions it ultimately will take. It is clear the USPTO believes this is a problem that needs to be addressed. The USPTO has stated it may conduct other similar audits and there is nothing to prevent it from auditing applications as well. Trademark owners should exercise extra care to insure that a mark is in use for all goods and services listed in an application or registration before filing a Declaration of Use or Statement of Use.