Court filing
Exhibit C- Blue Acorn ICI Copyright File Wrapper and Trademark Registration Certificate… — Blueacorn Beringer (Dkt. 1.4)
No. 5:21-cv-00251-BO · Doc. 1-4 · Docket on CourtListener
Full text
EXHIBIT C
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 1 of 22
Generated on: This page was generated by TSDR on 2021-04-27 23:08:41 EDT
Mark: BLUE ACORN ICI
US Serial Number: 90057631 Application Filing Jul. 16, 2020
Date:
US Registration 6272484 Registration Date: Feb. 16, 2021
Number:
Filed as TEAS Yes Currently TEAS Yes
Plus: Plus:
Register: Principal
Mark Type: Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active
Descriptor:
The trademark application has been registered with the Office.
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Feb. 16, 2021
Publication Date: Dec. 01, 2020
Mark Information
Mark Literal BLUE ACORN ICI
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: Assistance, advisory services and consultancy with regard to business planning, business analysis, business management, business
organization, marketing and customer analysis; Business monitoring and consulting services, namely, tracking web sites and
applications of others to provide strategy, insight, marketing, sales, operation, product design, particularly specializing in the use of
analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions;
Consultation services, namely, creative and strategic consultation regarding development and production of marketing campaigns for
others; Consumer strategy business consulting in the fields of marketing, sales, operation, and product design particularly specializing
in the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions;
Development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, customer relations,
online community building and digital word of mouth communications; Digital advertising services; Marketing consultation in the field of
digital customer engagement; Marketing and branding services, namely, providing customized communication programs to obtain
consumer insights and develop branding strategies; Order fulfillment services; Planning, development, maintenance, tracking and
reporting of online marketing activities for third parties; Technical consulting in the field of marketing
International 035 - Primary Class U.S Class(es): 100, 101, 102
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Mar. 31, 2019 Use in Commerce: Mar. 31, 2019
For: Computer services, namely, creating, maintaining, designing, and implementing websites for others in the field of digital customer
engagement; Computer services, namely, monitoring, testing, analyzing, and reporting on the Internet traffic control and content control
of the web sites of others; Computer services, namely, creating, maintaining, designing and implementing web sites for others;
Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others;
Cross-platform conversion of digital content into other forms of digital content; Design, development and implementation of software;
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 2 of 22
Developing customized software for others; Planning, design, development and maintenance of online websites for third parties;
Technology specification, namely, analyzing technology requirements and developing recommendations for the computer software and
systems and other technology needed to meet those requirements, in the field of digital customer engagement
International 042 - Primary Class U.S Class(es): 100, 101
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Mar. 31, 2020 Use in Commerce: Mar. 31, 2020
Basis Information (Case Level)
Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Beringer Commerce Inc.
DBA, AKA, DBA blue acorn iCi
Formerly:
Owner Address: 261 Madison Ave, Floor 8
New York, NEW YORK UNITED STATES 10016
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: William Lyle Gravatt
Attorney Primary lyle.gravatt@forrestfirm.com Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent WILLIAM LYLE GRAVATT
Name/Address: FORREST FIRM, P.C.
406 BLACKWELL STREET, SUITE 420
DURHAM, NORTH CAROLINA UNITED STATES 27701
Phone: 919-578-5693 Fax: 919-578-5693
Correspondent e- lyle.gravatt@forrestfirm.com Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Feb. 16, 2021 REGISTERED-PRINCIPAL REGISTER
Dec. 01, 2020 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Dec. 01, 2020 PUBLISHED FOR OPPOSITION
Nov. 11, 2020 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Oct. 28, 2020 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 28, 2020 ASSIGNED TO EXAMINER 69192
Aug. 13, 2020 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Jul. 20, 2020 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 3 of 22
TM Staff Information - None
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Feb. 16, 2021
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 4 of 22
Registration #: *-APPLICATION-*
Service Request #: 1-10441533381
Mail Certificate
Forrest Firm, P.C.
William Lyle Gravatt
406 Blackwell St., Ste 420
Durham, NC 27701 United States
Priority: Special Handling Application Date: May 07, 2021
Correspondent
Organization Name: Forrest Firm, P.C.
Name: William Lyle Gravatt
Email: lyle.gravatt@forrestfirm.com
Telephone: (919)578-5693
Address: 406 Blackwell St, Ste 420
Durham, NC 27701 United States
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 5 of 22
Registration Number
*-APPLICATION-*
Title
Title of Work: Blue Acorn
Completion/Publication
Year of Completion: 2009
Date of 1st Publication: January 31, 2009
Nation of 1st Publication: United States
Author
• Author: Blue Acorn E-Commerce, Inc.
Author Created: 2-D artwork
Work made for hire: Yes
Citizen of: United States
Domiciled in: United States
Copyright Claimant
Copyright Claimant: Beringer Commerce, Inc.
4000 Westchase Blvd #280, Raleigh, NC, 27607, United States
Transfer statement: By written agreement
0
1
Rights and Permissions
Organization Name: Forrest Firm, P.C.
Address: 406 Blackwell St, Ste 420
Durham, NC 27701 United States
Certification
Name: William Lyle Gravatt
Date: May 07, 2021
Page 1 of 2
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 6 of 22
Date: May 07, 2021
Pending
Page 2 of 2
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 7 of 22
Reg. No. 6,272,484 Beringer Commerce Inc. (DELAWARE CORPORATION), DBA blue acorn iCi
261 Madison Ave, Floor 8
Registered Feb. 16, 2021 New York, NEW YORK 10016
Int. Cl.: 35, 42 CLASS 35: Assistance, advisory services and consultancy with regard to business
planning, business analysis, business management, business organization, marketing
Service Mark and customer analysis; Business monitoring and consulting services, namely, tracking
Principal Register web sites and applications of others to provide strategy, insight, marketing, sales,
operation, product design, particularly specializing in the use of analytic and statistic
models for the understanding and predicting of consumers, businesses, and market
trends and actions; Consultation services, namely, creative and strategic consultation
regarding development and production of marketing campaigns for others; Consumer
strategy business consulting in the fields of marketing, sales, operation, and product
design particularly specializing in the use of analytic models for the understanding and
predicting of consumer, business, and retail market trends and actions; Development of
marketing strategies, concepts and tactics, namely, audience development, brand
awareness, customer relations, online community building and digital word of mouth
communications; Digital advertising services; Marketing consultation in the field of
digital customer engagement; Marketing and branding services, namely, providing
customized communication programs to obtain consumer insights and develop branding
strategies; Order fulfillment services; Planning, development, maintenance, tracking and
reporting of online marketing activities for third parties; Technical consulting in the
field of marketing
FIRST USE 3-31-2019; IN COMMERCE 3-31-2019
CLASS 42: Computer services, namely, creating, maintaining, designing, and
implementing websites for others in the field of digital customer engagement; Computer
services, namely, monitoring, testing, analyzing, and reporting on the Internet traffic
control and content control of the web sites of others; Computer services, namely,
creating, maintaining, designing and implementing web sites for others; Consulting
services in the field of design, selection, implementation and use of computer hardware
and software systems for others; Cross-platform conversion of digital content into other
forms of digital content; Design, development and implementation of software;
Developing customized software for others; Planning, design, development and
maintenance of online websites for third parties; Technology specification, namely,
analyzing technology requirements and developing recommendations for the computer
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 8 of 22
software and systems and other technology needed to meet those requirements, in the
field of digital customer engagement
FIRST USE 3-31-2020; IN COMMERCE 3-31-2020
THE MARK CONSISTS OF STANDARD CHARACTERS WITHOUT CLAIM TO
ANY PARTICULAR FONT STYLE, SIZE OR COLOR
SER. NO. 90-057,631, FILED 07-16-2020
Page: 2 of 3 / RN # 6272484
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 9 of 22
Generated on: This page was generated by TSDR on 2021-06-09 13:30:33 EDT
Mark: BLUE ACORN ICI
US Serial Number: 90057631 Application Filing Jul. 16, 2020
Date:
US Registration 6272484 Registration Date: Feb. 16, 2021
Number:
Filed as TEAS Yes Currently TEAS Yes
Plus: Plus:
Register: Principal
Mark Type: Service Mark
TM5 Common Status LIVE/REGISTRATION/Issued and Active
Descriptor:
The trademark application has been registered with the Office.
Status: Registered. The registration date is used to determine when post-registration maintenance documents are due.
Status Date: Feb. 16, 2021
Publication Date: Dec. 01, 2020
Mark Information
Mark Literal BLUE ACORN ICI
Elements:
Standard Character Yes. The mark consists of standard characters without claim to any particular font style, size, or color.
Claim:
Mark Drawing 4 - STANDARD CHARACTER MARK
Type:
Goods and Services
Note:
The following symbols indicate that the registrant/owner has amended the goods/services:
Brackets [..] indicate deleted goods/services;
Double parenthesis ((..)) identify any goods/services not claimed in a Section 15 affidavit of incontestability; and
Asterisks *..* identify additional (new) wording in the goods/services.
For: Assistance, advisory services and consultancy with regard to business planning, business analysis, business management, business
organization, marketing and customer analysis; Business monitoring and consulting services, namely, tracking web sites and
applications of others to provide strategy, insight, marketing, sales, operation, product design, particularly specializing in the use of
analytic and statistic models for the understanding and predicting of consumers, businesses, and market trends and actions;
Consultation services, namely, creative and strategic consultation regarding development and production of marketing campaigns for
others; Consumer strategy business consulting in the fields of marketing, sales, operation, and product design particularly specializing
in the use of analytic models for the understanding and predicting of consumer, business, and retail market trends and actions;
Development of marketing strategies, concepts and tactics, namely, audience development, brand awareness, customer relations,
online community building and digital word of mouth communications; Digital advertising services; Marketing consultation in the field of
digital customer engagement; Marketing and branding services, namely, providing customized communication programs to obtain
consumer insights and develop branding strategies; Order fulfillment services; Planning, development, maintenance, tracking and
reporting of online marketing activities for third parties; Technical consulting in the field of marketing
International 035 - Primary Class U.S Class(es): 100, 101, 102
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Mar. 31, 2019 Use in Commerce: Mar. 31, 2019
For: Computer services, namely, creating, maintaining, designing, and implementing websites for others in the field of digital customer
engagement; Computer services, namely, monitoring, testing, analyzing, and reporting on the Internet traffic control and content control
of the web sites of others; Computer services, namely, creating, maintaining, designing and implementing web sites for others;
Consulting services in the field of design, selection, implementation and use of computer hardware and software systems for others;
Cross-platform conversion of digital content into other forms of digital content; Design, development and implementation of software;
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 10 of 22
Developing customized software for others; Planning, design, development and maintenance of online websites for third parties;
Technology specification, namely, analyzing technology requirements and developing recommendations for the computer software and
systems and other technology needed to meet those requirements, in the field of digital customer engagement
International 042 - Primary Class U.S Class(es): 100, 101
Class(es):
Class Status: ACTIVE
Basis: 1(a)
First Use: Mar. 31, 2020 Use in Commerce: Mar. 31, 2020
Basis Information (Case Level)
Filed Use: Yes Currently Use: Yes
Filed ITU: No Currently ITU: No
Filed 44D: No Currently 44E: No
Filed 44E: No Currently 66A: No
Filed 66A: No Currently No Basis: No
Filed No Basis: No
Current Owner(s) Information
Owner Name: Beringer Commerce Inc.
DBA, AKA, DBA blue acorn iCi
Formerly:
Owner Address: 261 Madison Ave, Floor 8
New York, NEW YORK UNITED STATES 10016
Legal Entity Type: CORPORATION State or Country DELAWARE
Where Organized:
Attorney/Correspondence Information
Attorney of Record
Attorney Name: William Lyle Gravatt
Attorney Primary lyle.gravatt@forrestfirm.com Attorney Email Yes
Email Address: Authorized:
Correspondent
Correspondent WILLIAM LYLE GRAVATT
Name/Address: FORREST FIRM, P.C.
406 BLACKWELL STREET, SUITE 420
DURHAM, NORTH CAROLINA UNITED STATES 27701
Phone: 919-578-5693 Fax: 919-578-5693
Correspondent e- lyle.gravatt@forrestfirm.com Correspondent e- Yes
mail: mail Authorized:
Domestic Representative - Not Found
Prosecution History
Proceeding
Date Description
Number
Feb. 16, 2021 REGISTERED-PRINCIPAL REGISTER
Dec. 01, 2020 OFFICIAL GAZETTE PUBLICATION CONFIRMATION E-MAILED
Dec. 01, 2020 PUBLISHED FOR OPPOSITION
Nov. 11, 2020 NOTIFICATION OF NOTICE OF PUBLICATION E-MAILED
Oct. 28, 2020 APPROVED FOR PUB - PRINCIPAL REGISTER
Oct. 28, 2020 ASSIGNED TO EXAMINER 69192
Aug. 13, 2020 NEW APPLICATION OFFICE SUPPLIED DATA ENTERED IN TRAM
Jul. 20, 2020 NEW APPLICATION ENTERED IN TRAM
TM Staff and Location Information
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 11 of 22
TM Staff Information - None
File Location
Current Location: PUBLICATION AND ISSUE SECTION Date in Location: Feb. 16, 2021
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 12 of 22
United States Copyright Office
Library of Congress 101 Independence Avenue SE Washington DC 20559-6000 www.copyright.gov
May 10, 2021
Forrest Firm, P.C.
Attn: William Gravatt
406 Blackwell St, Ste 420
Durham, NC 27701
United States
Correspondence ID: 1-4STX7Q9
RE: Blue Acorn
Dear William Gravatt:
Registration of this work must be refused because it lacks the authorship necessary to support a
copyright claim.
Copyright protects original works of authorship that are fixed in some physical form. See 17
U.S.C. § 102(a). As used in the copyright context, the term "original" means that the work was
independently created by the author (as opposed to copied from other works), and that it possesses
sufficient creative authorship. See Feist Publications v. Rural Telephone Service Co., 499 U.S. 340
(1991).
To satisfy these requirements, a work of the visual arts must contain a minimum amount of
creative pictorial, graphic or sculptural authorship; a literary work must contain a minimum amount of
text. Copyright does not protect familiar symbols or designs; basic geometric shapes; words and short
phrases such as names, titles, and slogans; or mere variations of typographic ornamentation, lettering or
coloring. See 37 C.F.R. §202.1. Further, copyright does not extend to any idea, concept, system, or
process, which may be embodied in a work. 17 U.S.C. §102(b).
Neither the aesthetic appeal nor commercial value of a work, nor the amount of time and effort
expended to create a work are factors that are considered under the copyright law. See Bleistein v.
Donaldson, 188 U.S. 239 (1903); Feist Publications v. Rural Telephone Service Co., 499 U.S. 340
(1991). The question is whether there is sufficient creative authorship within the meaning of the
copyright statute and settled case law.
After careful consideration, we have determined that this particular work will not support a claim
to copyright under the standards described above. Therefore, we must refuse registration of this claim.
The copyright law requires that we retain the deposit of this work. The filing fee is nonrefundable.
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 13 of 22
William Gravatt -2- 1-4STX7Q9
Some brand names, trade names, slogans, logos and labels may be entitled to protection under
the general rules of law relating to unfair competition or to registration under the provisions of the
trademark laws. For information on trademark registration go to www.uspto.gov.
For more information on copyright, please visit our website at www.copyright.gov. This letter is
for your information only; no response is necessary.
Sincerely,
Examiner Rosado-Torres
Visual Arts Division
Office of Registration Policy & Practice
U.S. Copyright Office
Enclosures:
Reply Sheet
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 14 of 22
United States Copyright Office
Library of Congress 101 Independence Avenue SE Washington DC 20559-6000 www.copyright.gov
*1-4STX7Q9*
Use this sheet if you request reconsideration
How to request reconsideration:
Send your written explanation of why the claim should be registered or why it was
improperly refused.
Be sure to include the Correspondence ID Number (listed under the bar code above) on the
first page of your Request.
Indicate whether you are requesting a “First Reconsideration” or “Second Reconsideration.”
Submit your request ONLINE: We strongly recommend sending all requests for
reconsideration via email following these steps:
EMAIL YOUR REQUEST (BUT NOT THE REQUIRED FEE) to:
copreviewboard@loc.gov.
o The subject line should say “First Reconsideration” or “Second Reconsideration”
o Once your email request is received, you will be contacted with instructions on how
to submit the required fee.
IMPORTANT NOTE: Your request and the required fee must be received no later than
three months after a refusal is issued.
Alternatively, you may submit your request VIA MAIL, but the Copyright Office’s
response will be delayed due to the COVID-19 pandemic:
o IMPORTANT NOTE: Your request must be postmarked (via the U.S. Postal
Service) or dispatched (via commercial carrier, courier, or messenger) no later than
three months after a refusal is issued.
o Enclose the required fee.
o Address your request to:
RECONSIDERATION
Copyright RAC Division
P.O. Box 71380
Washington, DC 20024-1380
First Request for Reconsideration: The Registration Program Office considers the first request. If
it upholds the refusal, you may submit a second request.
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 15 of 22
William Gravatt -4- 1-4STX7Q9
Second Request for Reconsideration: The Copyright Office Board of Review considers the second
request. The Board consists of the Register of Copyrights and the General Counsel (or their
respective designees), and a third member appointed by the Register. The Board’s decision
constitutes final agency action.
Notification of decision: While working remotely due to COVID-19, the Copyright Office will
send all notifications of its decisions by email.
FEES:
First Request $350 per application
Second Request $700 per application
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 16 of 22
June 10, 2021
William Lyle Gravatt
Forrest Firm, P.C.
406 Blackwell St, Ste 420
Durham, NC 27701
United States
Register of Copyrights
Library of Congress,
Copyright Office,
101 Independence Avenue, SE
Washington, DC 20559
Correspondence ID: 1-4STX7Q9
Case No. 1-10441533381
Copyright Claimant: Beringer Commerce, Inc.
RE: Blue Acorn
NOTICE OF COMPLAINT
Dear Sir or Madam:
The copyright application for the work Blue Acorn, Case No. 1-1044153381
(hereinafter the “Blue Acorn work”), was filed on May 7, 2021. The registration of the
Blue Acorn work was refused by the Copyright Office on May 10, 2021. A Request for
First Reconsideration was filed on June 10, 2021. The copyright claimant and plaintiff,
BERINGER COMMERCE, INC., is filing suit contemporaneously with this Notice against
defendants FIN CAP, INC. d/b/a “BLUEACORN.CO,” BLUE ACORN PPP, LLC,
MICHAEL S. COTA, JAMES FLORES, STEPHANIE HOCKRIDGE REIS, and NATHAN
REIS. A copy of the verified complaint is attached.
With this notice and a copy of the complaint, copyright claimant and plaintiff has
served the Register of Copyright pursuant to 17 U.S.C. §411(a).
FORREST FIRM, P.C.
William Lyle Gravatt
Case No. 1-10441533381
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 17 of 22
June 10, 2021
William Lyle Gravatt
Forrest Firm, P.C.
406 Blackwell St, Ste 420
Durham, NC 27701
United States
RECONSIDERATION
Copyright RAC Division
P.O. Box 71380
Washington, DC 20024-1380
Correspondence ID: 1-4STX7Q9
Case No. 1-10441533381
Copyright Claimant: Beringer Commerce, Inc.
RE: Blue Acorn
TO: Examiner Rosado-Torres
Visual Arts Division
Office of Registration Policy & Practice
FIRST RECONSIDERATION
The copyright application for the work Blue Acorn was rejected by the U.S.
Copyright Office because the Copyright Office asserted that the work lacked the
authorship necessary to support a copyright claim. In particular, the Copyright Office
asserts that the Blue Acorn graphic image for which the present copyright application is
filed (hereinafter the “Blue Acorn work”) is not an “original” work because it does not
possess sufficient creative authorship. The applicant/author respectfully disagrees and
requests reconsideration of the Blue Acorn work by the examiner. Further, the Claimant
requests allowance of the copyright application and the prompt registration of the work
for the following reasons set forth below.
The Legal Framework – Originality
A work may be registered if it qualifies as an “original work of authorship fixed in
any tangible medium of expression.” 17 U.S.C. § 102(a). By way of background, the
term “original” consists of two components: independent creation and sufficient
creativity. See Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S. 340, 345 (1991).
First, the work must have been independently created by the author, i.e., not copied
from another work. Id. Second, the work must possess sufficient creativity. Id.; 37
C.F.R. § 202.10(a) (stating “to be acceptable as a pictorial, graphic, or sculptural work,
Page 1 of 5
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 18 of 22
the work must embody some creative authorship in its delineation or form”). The
regulations of the Copyright Office implement the longstanding requirement of originality
set forth in the Copyright Act and described in the Feist decision. See, e.g., 37 C.F.R. §
202.1(a) (prohibiting registration of “[w]ords and short phrases such as names, titles,
slogans; familiar symbols or designs; [and] mere variations of typographic
ornamentation, lettering, or coloring”); id. § 202.10(a) (stating “to be acceptable as a
pictorial, graphic, or sculptural work, the work must embody some creative authorship in
its delineation or form”).
Here, the requirement of independent authorship is met. As detailed herein, the
Claimant, through its predecessors in interest, independently created the Blue Acorn
work, which has been in public use since its creation. In addition, the Acorn Logo
depicted above was not copied from any other work, but was designed and drawn by
Plaintiff, through its Predecessors.
Finally, as to the element of creative authorship, the Blue Acorn work meets the
low threshold established by the United States Supreme Court in Feist. In fact, “[o]nly a
modicum of creativity is necessary.” Feist Publ’ns, Inc. v. Rural Tel. Serv. Co., 499 U.S.
at 345.
Thus, while there can be no copyright where “the creative spark is utterly lacking
or so trivial as to be virtually nonexistent,” “the requisite level of creativity is extremely
low; even a slight amount will suffice.” Id. at 345, 349. As such, “the vast majority of
works make the grade quite easily, as they possess some creative spark, ‘no matter
how crude, humble or obvious’ it might be.” Id. (quoting 1 M. Nimmer & D. Nimmer,
Copyright § 1.08 [C] [1] (1990)); see also Universal Furniture Int’l, Inc. v. Collezione Eur.
USA, Inc., No. 1:04CV00977, 2007 WL 2712926, at *4 (M.D.N.C. Sept. 14, 2007), aff’d
sub nom., 618 F.3d 417 (4th Cir. 2010), as amended (Aug. 24, 2010) (“[C]opyright
protection is available even if the quantum of originality is minimal.”) (internal quotation
and citation omitted).
As described in greater detail below, the Blue Acorn work easily meets the Feist
standard for creative authorship in color, size, angle, and shape, among other unique
qualities of design. These elements were designed as a matter of artistry and are not
mere imitations of images available in the public domain. Furthermore, the Blue Acorn
work is not a slavish copy of an acorn found in nature, but rather is an expression of an
idea with a sufficient level of creativity to be copyrightable. Id. at 345; Sunset Lamp
Corp. v. Alsy Corp., 698 F. Supp. 1146, 1151 (S.D.N.Y. 1988) (stylized design of
intertwined banana leaves on a lamp base were not mere imitations of nature but were
copyrightable); Folio Impressions, Inc. v. Byer California, 937 F.2d 759, 765 (2d Cir.
1991) (arrangement of roses contained a sufficient “dash of originality” for copyright
protection); Hamil Am. Inc. v. GFI, 193 F.3d 92, 101 (2d Cir. 1999) (flower design was
more than “simply the depiction of a flower as it would appear in nature,” but was “an
artistic rendering that has its own unique qualities” and was entitled to copyright
protection); Home Legend, LLC v. Mannington Mills, Inc., 784 F.3d 1404, 1410 (11th
Page 2 of 5
Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 19 of 22
Cir. 2015) (maple wood flooring designs were not “highly creative,” but were “creative
enough to hurdle the low bar of copyrightable originality”).
In light of these illustrative cases and following the United States Supreme
Court’s holding in Feist, Claimant’s unique, stylized Blue Acorn work sufficiently satisfies
the “originality” element for establishing a protectable copyright.
Analysis of the Work
Below is an image of the Blue Acorn work. As can be seen, the image comprises
an artistic depiction of an acorn, identified as 10. The acorn 10 includes a nut 12 that
resides in a cupule 14. The nut 12 includes a pericarp, or fruit wall, 16 and a stylized tip
18 of the nut 12. The cupule 14 includes a curved holding edge 20 that is depicted
around a lower portion of the nut 12 that is visible. The cupule 14 also includes a
curved outer skin 22 from which a stern 24 extends.
20
22 24 14
28
26
10
30
12
18
16
The blue acorn 10 is not a slavish copy of an acorn found in nature, but rather an
expression of an idea with a sufficient level of creativity for it to be protectable by
copyright. The acorn 10 is unnaturally and completely blue. The pericarp 16 of the nut
12 and the outer skin 22 of the cupule 14 are both colored the same color of blue that is
the same as, or similar to, pantone color 285C, having an RGB value of 0 114 206. The
stylized tip 18 extends from the nut 12, with one side of the stylized tip 18 being more
transversely oriented to the tip of the nut 12 than the opposing side, which is slightly
more sloped. The stern 24 extends outward from the outer skin 22 of the cupule 14 and
bends in a slight arc to the left. To show separation between the curved holding edge 20
of the cupule 14 and the lower body portion of the nut 12, the author included a curved
gap 26 that is wider at a right-side entrance channel 28 between the curved holding
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Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 20 of 22
edge 20 of the cupule 14 and the lower body portion of the nut 12. The curved gap 26
converges in a curved manner to a point 30 near the left side of the acorn 10. The
shape of the curved gap 26 provides an illusion of 3-dimensional depth to both the nut
12 and the cupule 14 making the nut 12 appear to have a more cylindrical outer shape
at the juncture between the nut 12 and the cupule 14 while making the cupule 14
appear to be annular in nature with a wider inner circumference for holding the bottom
portion of the nut 12. Further, the shape of the curved gap 26 gives the appearance
that the cupule 14 sits slightly cockeyed on the nut 12 instead of seating in a more
symmetrical fashion that is commonly seen in the attachment between a cupule and a
nut of an acorn normally found in nature.
The acorn in the Blue Acorn work is not a familiar symbol or design and has
unique features that exhibit creative authorship in its form. As can be seen and as
explained above, the author used more than a minimal level of creativity in selecting the
different features that are included in the Blue Acorn work. For example, the author
clearly exercised artistic judgment in having the stern 24 of the cupule arc or slightly
bend to the left. The author clearly exercised artistic judgment in having the sides of the
stylized tip 18 slope at slightly different angles and in not making the stylized tip 18
extend farther out from the tip of the nut 12 as such remains in style in many authentic
acorns do. The author clearly exercised artistic judgment by using a curved gap 26 to
further separate and identify the cupule 14 from the nut 12 while giving the cupule 14 a
slightly cockeye appearance. The author exercised artistic judgment in selecting the
color blue used to provide the expression of an acorn found in the Blue Acorn work that
is not found in nature or commonly found in familiar symbols or designs. All these
artistic features, separately or combined, provide more than a modicum of creativity
needed to qualify the Blue Acorn work as an original work. Thereby, the Blue Acorn
work possesses a creative spark that is not lacking and that is more than trivial in
nature. For at least these reasons, the Blue Acorn work should be afforded copyright
protection and a copyright registration on the work should be issued by the Copyright
Office.
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Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 21 of 22
CONCLUSION
For the reasons stated herein, the Blue Acorn work is an “original” work because
it possesses more than sufficient creative authorship. Claimant respectfully requests
reconsideration of the Blue Acorn work by the examiner and requests allowance of the
copyright application and early registration of the work therein.
FORREST FIRM, P.C.
William Lyle Gravatt
Correspondence ID: 1-4STX7Q9
Case No. 1-10441533381
On behalf of Copyright Claimant Beringer
Commerce, Inc.
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Case 5:21-cv-00251-BO Document 1-4 Filed 06/10/21 Page 22 of 22
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