Trademark & Copyright Law
On September 30, 1930, the MOTOROLA mark was first registered as a U.S. trademark for “radio receiving sets.” U.S. Registration No. 275837 is no longer in force, having expired in 1992, but the MOTOROLA name lives on.
By Joe Haupt from USA [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.
The Washington Post reports that the photograph in Donald Trump Jr.’s now-infamous “Skittles tweet” has been removed over copyright infringement concerns. On September 19, 2016, in what appears to be a sacchariferous twist on former Vice President Dick Cheney’s “One Percent Doctrine,” the junior Donald tweeted (heedless of both political correctness and grammatical standards), “If I had a bowl of Skittles and I told you just three would kill you. Would you take a handful? That’s our Syrian refugee problem.” To both illustrate the point and make the choice more difficult for Skittle-loving Americans, the tweet included an enticing, full-color photograph of a delicious-looking bowl of SKITTLES® brand fruit-flavored candies. The original tweet can be seen here.
Trump Jr.’s tweet was ostensibly intended to advance his father’s anti-Syrian refugee argument, and as everyone knows, a picture is worth a thousand words (or at least more than twenty-six). Unfortunately for Trump Jr. (and, by extension, anyone with an equivalently expansive sense of entitlement), he neglected to secure, or even request, a license from the photograph’s copyright holder, British photographer David Kittos. Upon discovering the misappropriation of his intellectual property by Trump Jr., Kittos, himself a refugee who left Cyprus at the age of six, promptly filed a DMCA Takedown Notice under the Digital Millennium Copyright Act, which allows copyright holders to compel service providers like Twitter to remove infringing content hosted on their services. As of this writing, the remainder of Trump Jr.’s tweet still stands, though it is but a candy-coated shell of its former self.
In addition to raising the question of why the son of an alleged billionaire would not simply purchase a stock photograph (and the services of a proofreader) for such occasions (instead of disregarding the need for a license as if it were an obligation to pay federal income tax), this incident also illustrates the perils of assuming that content found on the Internet is free for the taking. The safer assumption is that you need a written license, and perhaps a copyright attorney, in order to use any content that you see on the web. Caveat Trumptor! From The Washington Post.
By David Adam Kess (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.
On August 18, 1987, Italian automaker De Tomaso Modena S.P.A. was granted its first registration for the PANTERA mark. Aficionados of 1970s-era supercars may remember the De Tomaso PANTERA (Italian for “panther”), which was a low slung, mid-engined, two-seat affair that made its debut in 1971. Although production of the PANTERA model ceased in 1991, the mark is still in use for “structural parts for automobiles,” and the PANTERA registration remains in force.
By ShanHams (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.
On August 8, 1972, one of the most successful advertising slogans of the 1970s, IF YOU’VE GOT THE TIME, WE’VE GOT THE BEER, was registered as a U.S. trademark by the Miller Brewing Company. Forty-four years later, the registration is still in force, the slogan is still being used in advertising, and when it’s time to relax, one beer apparently still stands clear.
In 1971, a fast food legend, the QUARTER POUNDER, was born. Millions and millions of burgers later, on August 5, 1975, the QUARTER POUNDER was registered as a U.S. trademark. McDonald’s Corporation actually secured two QUARTER POUNDER registrations that day, No. 1017498 for a “hamburger sandwich,” and No. 1017623 for “restaurant services featuring a hamburger sandwich.” Both registrations are still in force, which is unsurprising since they are owned by a company that sells seventy-five burgers every second, serves one percent of the world’s population every day, and has at some point been the employer of one in every eight American workers.
By Evan-Amos (Own work) [CC0], via Wikimedia Commons.
Cue the creepy animatronics! On August 3, 1982, a date which will live in infamy, Pizza Time Theatre, Inc. was granted its first U.S. registration for the innocuous-sounding mark CHUCK E. CHEESE, for “providing restaurant services” and “providing video and coin operated game services, featuring costumed live and animated characters in entertainment services.” Today, almost two generations of traumatized youths later, the mark is still in use and the original registration is still in force. And the friendly, terrifying mechanical band plays on and is totally not going to kill you.
By Martiniturbide (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.
Sixteen years ago, on August 1, 2000, the first U.S. registration for the PIKACHU mark from the now ubiquitous Pokémon video game franchise was granted to Nintendo of America Inc. for “clothing, namely, hats, headwear, nightwear, shirts, shorts, sleepwear, and T-shirts.” Registration No. 2374006 was renewed in 2010 and remains in force.
And yes, in case you were wondering, Nintendo currently has at least three pending U.S. trademark applications for POKÉMON GO, so don’t worry.
By Laika ac from UK (Danshui) [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.
Sixty years ago, on July 31, 1956, the Volkswagen “VW” logo was first registered as a U.S. trademark for “vehicles-namely, automobiles and trucks, air craft, boats; and parts of and accessories for automobiles-namely, radiators, direction indicators, windshield defrosters, anti-dazzle appliances, windshield wipers, shock adsorbers [sic], brakes, and baggage racks.” The registration, No. 631,649, was renewed in 1976 but is now expired, having been replaced by the slightly revised version of the “VW” logo in U.S. Registration No. 790,959, which was first registered in 1965 and is still in use today.
By Sicnag (1966 Volkswagen Type 2 T1 Deluxe Microbus) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
The Boston Globe reports that the Boston Beer Company, maker of SAMUEL ADAMS® beers and ANGRY ORCHARD® hard ciders, has filed to register the term BREXIT as a trademark for hard ciders. As the article notes, “Samuel Adams and the Sons of Liberty led their own Brexit in 1776, and now Samuel Adams the beer wants to keep that tradition alive.” The Boston Beer Company is not the only party in the U.S. attempting to capitalize on Great Britain’s historic June 23, 2016 vote to leave the European Union. According to the U.S. Patent and Trademark Office’s records, at least two other parties have filed trademark applications for the term BREXIT, one for clothing and the other for dietary and nutritional supplements. Given the global significance and potential ramifications of the UK’s “Brexit,” one suspects that more would-be trademarkers will follow suit. Read the article here. From The Boston Globe.
By k.ivoutin (beer) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
World IP Review reports that the U.S. Patent and Trademark Office (“USPTO”) has issued an initial refusal of a pending trademark application for DRUMPF on the grounds that the mark allegedly consists of Republican presidential nominee Donald Trump’s ancestral name. The application, filed by a company called Drumpf Industries, LLC, appears to have been inspired by a comedic effort by talk show host John Oliver to “Make Donald Drumpf Again,” a play on Trump’s campaign slogan “Make America Great Again.” According to the USPTO, “the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.” The refusal is based on Trademark Act Section 2(c), 15 U.S.C. §1052(c), which provides that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it… [c]onsists of or comprises a name, portrait, or signature identifying a particular living individual except by his written consent, or the name, signature, or portrait of a deceased President of the United States during the life of his widow, if any, except by the written consent of the widow.” This provision protects living individuals from having their names appropriated as trademarks by third parties without their consent, regardless of whether or not they are famous, or are public figures. Since Trump, a prolific trademark filer himself, seems unlikely to be willing to provide his consent to what appears to be an unrelated company, the applicant is unlikely to be able to overcome the USPTO’s refusal to register. Potential trademark applicants would be wise to remember that the primary purpose of trademark law is to prevent, rather than enable, the trading by one party on the name of another. Read the article here. From World IP Review.
By Gage Skidmore from Peoria, AZ, United States of America (Donald Trump) [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.
Two years ago today, on April 1, 2014, the law firm of Trademarkwise LLC was born. Originally conceived as an elaborate April Fools’ Day prank, the firm now represents a geographically and commercially diverse array of clients in their trademark, copyright, dispute resolution, litigation, entertainment, and contractual matters on a budget-friendly, flat-fee basis. And while the firm has now entered its terrible twos, with their attendant growing pains, teething, and occasional temper tantrums, we here at Trademarkwise® are determined to make those twos terrific, or some other word that shares a Latin root with terrible but can be contextualized into something more positive. And hopefully more marketable.
As we simultaneously celebrate the firm’s birthday and April Fools’ Day with trademark-wisecrackery, let us remember that while this day may bring mirth, securing protection for your trademark rights is no laughing matter. Well, unless your mark is COMFYBALLS.
By Moralist [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.
In today’s [fast-paced/competitive/global/hard-charging/ever-changing/pick your euphemism] business world, brand protection and promotion are of increasingly vital importance to business owners. As this blog has previously observed, even drug dealers understand the tremendous economic power of good branding. Unfortunately (or fortunately, depending on one’s perspective), not all drug dealers understand the increasingly vital importance of not making harebrained business decisions with regard to their brands.
Case in point: the U.S. Attorney’s Office for the Eastern District of California announced this week that one “David Ryan Burchard, 38, of Merced, was arrested late Monday, charged in a criminal complaint with distribution of marijuana and cocaine on dark-web marketplaces, including the Silk Road.” According to the criminal complaint and affidavit, one of the clues leading to Burchard’s arrest was his attempt to federally register his online drug dealer alias CALI CONNECT as a trademark with the U.S. Patent and Trademark Office. Burchard’s head-slapping and apparently self-filed application No. 86317958 was submitted June 23, 2014, seeking registration for shirts, A-shirts, graphic T-shirts, and hooded sweat shirts. Mercifully, while the application listed the aforesaid swag apparel in Class 25, it did not attempt to cover any actual pharmaceutical goods in Class 5.
Aside from its comedic value, this sorry incident provides an illustration of why one should always consult a trademark attorney when dealing with issues of branding. In addition to providing valuable strategic advice and helping to navigate the murky legal waters of trademark protection, a trademark attorney could have provided to Burchard the critical insights that (1) vanity is a deadly sin; (2) U.S. trademark applications are publicly-accessible documents; (3) putting your actual legal name and address on a trademark application for your secret online drug dealer alias might not be the best recipe for avoiding criminal liability; (4) crime sometimes does pay, but your dollars are probably better spent on bribery and private security than trademark enforcement efforts; and (5) dude, seriously? T-shirts? You’re going to jail because you couldn’t resist vanitizing your secret drug dealer alias on t-shirts? Read the U.S. Attorney’s Office press release here, the criminal complaint and affidavit here, and the CALI CONNECT trademark application here.
By User:Jennifer Martin (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.
The Guardian reports that international pop star Kylie Minogue’s company, KDB Pty Ltd., has filed an opposition proceeding against reality television star Kylie Jenner’s company, Kylie Jenner, Inc., over the trademark KYLIE. Minogue’s opposition brief asserts six U.S. trademarks against Jenner’s pending KYLIE application, for the marks KYLIE, KYLIE MINOGUE, KYLIE MINOGUE DARLING, and LUCKY - THE KYLIE MINOGUE MUSICAL. The elder Kylie, described in the filing as an “internationally renowned performing artist, humanitarian, and breast cancer activist,” appears to have taken issue with the attempted appropriation of the KYLIE mark by Jenner, whom the brief characterizes as “a secondary reality television personality” and “a 2015 home-schooled graduate of Laurel Springs School in Ojai, California.” Jenner’s company has not yet filed an Answer to the Notice of Opposition, and the ultimate disposition of the case remains to be seen. It is clear, however, that in Minogue’s view, there can be many Kylies, but only one KYLIE®. Read the article here, and Minogue’s opposition brief here. From The Guardian.
By Birte Fritsch (Flickr) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
Yes, it’s still a thing. Ars Technica reports that, as the latest twist in an ongoing legal drama, a federal judge in San Francisco has rejected the argument that a monkey can own a copyright under current U.S. law. In a hearing this week, U.S. District Judge William Orrick stated that the question of whether non-human animals can own copyrights “is an issue for Congress and the president,” adding that “[i]f they think animals should have the right of copyright they’re free, I think, under the Constitution, to do that.” Calling the primate plaintiff’s argument a “stretch,” the judge indicated that he intended to dismiss the case in an upcoming order. The judge’s decision is a setback for the monkey’s human representatives, the People for the Ethical Treatment of Animals (“PETA”), who brought the suit on the monkey’s behalf and intended that any proceeds from the suit would be used to help preserve the endangered monkey’s Indonesian habitat.
For those who have not been following this gripping saga as closely as you should have been (see earlier posts on this subject here, here, and here), the tale began in 2011 when a macaque monkey on the Indonesian island of Sulawesi snapped a series of selfies with a camera that had been set up by British wildlife photographer David Slater. Slater then filed for U.S. copyright protection for the images, which had quickly gone viral on the Internet. The U.S. Copyright Office refused registration on the basis that copyright protection requires human authorship of the work(s), and in 2014 amended its published guidelines to specifically state that “[a] photograph taken by a monkey” is non-registrable. The subsequent PETA lawsuit against Slater, filed in September 2015, is based on the argument that the law does not specifically state that copyrights may only be owned by humans, and therefore does not preclude animal ownership. Judge Orrick’s rejection of this argument is a blow not only to PETA and its monkey plaintiff, but also to the noble cause of animal intellectual property rights in general. The decision will likely send shockwaves though the animal community, and will no doubt stifle animal creativity and reduce the already meager economic incentives that animals have to create, sell, license, publicly perform, and otherwise exploit original works of authorship. Apparently, for animals, the law of the jungle prevails. Read the article here. From Ars Technica.
By Self-portrait by the depicted Macaca nigra female. See article. [Public domain], via Wikimedia Commons.
The New York Daily News reports that singer Justin Timberlake’s record label, Universal Music Group (“UMG”), is being sued by two members of the 1970s R&B group Sly, Slick & Wicked for allegedly using vocal samples from their song “Sho ‘Nuff” in Timberlake’s 2013 hit “Suit & Tie” without permission. “[A]ccording to court documents obtained by the Daily News,” the plaintiffs claim that UMG paid for permission to sample the music from “Sho ‘Nuff,” but was never authorized to use samples of the vocals. The article does not reveal the specific relief requested in the lawsuit, or the amount of damages or royalties sought, but notes that the Grammy-winning “Suit & Tie” was “an enormous hit, selling more than 3 million copies while garnering nearly 100 million clicks on YouTube since its release in 2013.” Neither UMG nor Timberlake appear to have yet made any public statements regarding the suit. Read the article here, and compare "Suit & Tie" and "Sho 'Nuff" here and here. From the New York Daily News.
By karina3094 [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.
What Could Have Entered the Public Domain on January 1, 2016? Duke University’s Center for the Study of the Public Domain helpfully answers this question in the 2016 version of its annual report on the subject. January 1st of each year, known by normal human beings as New Year’s Day, is also known by copyright nerds as Public Domain Day, the day that creative works with expiring copyrights enter the public domain and can be freely used without permission. In an alternate universe where U.S. copyright protection had not been extended by Congress from its original 28-year term to the current term of the author’s life plus 70 years, many creative works of enormous cultural and historical significance would be entering the public domain today.
Books and plays such as Ian Fleming’s Goldfinger, Agatha Christie’s Cat Among the Pigeons, Lorraine Hansberry’s A Raisin in the Sun, E.R. Braithwaite’s To Sir, With Love, William Burroughs’s The Naked Lunch, Richard Condon’s The Manchurian Candidate, Cornelius Ryan’s The Longest Day, Gunter Grass’s The Tin Drum, Saul Bellow’s Henderson the Rain King, Robert Heinlein’s Starship Troopers, Walter Miller’s A Canticle for Leibowitz, and Strunk and White’s The Elements of Style would be freely available to students and teachers. Films and television shows like Ben-Hur, North by Northwest, Sleeping Beauty, Some Like It Hot, Suddenly Last Summer, Anatomy of a Murder, The Diary of Anne Frank, Rio Bravo, Journey to the Center of the Earth, The Twilight Zone, Rawhide, and Rocky and Bullwinkle could be shown, copied, archived, and edited into new works. Musical works such as Rodgers & Hammerstein’s The Sound of Music, Miles Davis’s Kind of Blue, Leiber & Stoller’s Love Potion No. 9, and Ray Charles’s What’d I Say could be performed, transcribed, adapted, reimagined, and freely enjoyed without a license. In the real world of U.S. copyright law, however, neither these nor any other copyrighted works will be entering the public domain this year, or next year, or the year after that. Under current law, no copyrighted works are slated to enter the public domain until 2019, and none of the titles named above will enter the public domain in the U.S. until 2055. Regardless of one’s views on the wisdom or propriety of our seemingly ever-lengthening copyright terms, the advocates and curators of our creative commons seem to have little to celebrate this Public Domain Day.
Image courtesy of Duke University’s Center for the Study of the Public Domain (http://web.law.duke.edu/images/cspd/collage2016.png).
Image courtesy of Best Animations (http://bestanimations.com/Holidays/NewYear/NewYear.html).
From the “just so there’s no misunderstanding” department, Newsweek reports that Seattle Seahawks running back Marshawn Lynch has now registered his oft-repeated phrase I’M JUST HERE SO I WON’T GET FINED as a trademark. Lynch filed to protect his “trademark” saying with the U.S. Patent and Trademark Office in February 2015, and the mark issued as U.S. Registration No. 4878656 on December 29, 2015. The registration covers “athletic shirts; baseball caps and hats; beanies; fleece pullovers; hooded pullovers; hooded sweat shirts; pullovers; short-sleeved or long-sleeved t-shirts; sweat shirts; t-shirts; track jackets” in International Class 25, and Lynch’s BEAST MODE® clothing line has been selling clothing items bearing the I’M JUST HERE SO I WON’T GET FINED mark since April 2015. In addition to providing federal trademark protection for the mark, Lynch’s registration provides some much-needed clarity to the question of why, exactly, Lynch is here, which further illustrates the myriad benefits offered by trademark registration, as well as the indispensable role that trademark attorneys play in modern society. Read the article here, and explain the reason for your own presence here. From Newsweek.
By Keith Allison (Flickr) [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.
CNN Money reports that singer Taylor Swift has been hit with a $42 million copyright infringement lawsuit over her hit song “Shake It Off.” The plaintiff, Jessie Braham, whom the article characterizes as a “struggling out-of-work musician,” is claiming that Swift unlawfully copied the lyrics from his song “Haters Gone Hate,” which he copyrighted in 2013. Braham’s song features the lyrics “Haters gone hate, playas gone play. Watch out for them fakers, they'll fake you everyday,” while Swift’s lyrics are “The players gonna play, play, play, play, play. And the haters gonna hate, hate, hate, hate, hate. And the fakers gonna fake, fake, fake, fake, fake.” In addition to the $42 million in damages from Swift, Braham is also seeking to have his name added as a songwriter to “Shake It Off.”
The suit is newly filed, and has not yet been litigated. However, according to Michael Einhorn, “an expert witness who specializes in intellectual property cases… Swift's lawyers will have many defenses available to them.” In Einhorn’s estimation, “This case is going nowhere.” Whether or not Swift will be able to shake Braham off remains to be seen. From CNN Money.
By Jana Zills (Taylor Swift RED tour 2013Uploaded by tm) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
CBS Miami reports that Republican presidential candidate Jeb Bush has weighed in on the ongoing controversy surrounding the use of the term “redskins” in the name of Washington’s NFL team. In an interview for the radio show The Arena, the former Florida governor stated that he did not think that the team should change its name, opining that “[i]t’s a sport, for crying out loud. It’s a football team. I’m missing something here, I guess.” On the other side of the argument, the activist group Change the Mascot said in a statement that “no presidential candidate should be promoting this racial slur against Native Americans,” and agreed that Bush “clearly is missing something.” Similarly, in 2014 the U.S. Trademark Trial and Appeal Board found the term “redskins” to be disparaging, cancelling all six of the team’s federal trademark registrations containing the term. As noted in previous blog posts here, here, here, here, here, here, and here, the cancellation of the team’s trademark registrations does not mean that it cannot continuing using the name, or that other parties are free to use the name without permission. However, trademark registration does provide significant benefits, particularly when it comes to enforcement, and one imagines that most trademark owners would prefer to have their marks protected by registration.
There are many people who, like Jeb Bush, think that the “redskins” controversy is much ado about nothing, and many others who find the term deeply offensive and disparaging to Native Americans. Regardless of one’s views on the subject, the long-running dispute could likely be resolved by changing the team’s name to something less controversial and, as a bonus, more registrable. Bush, for his part, has already filed to register JEB! as a trademark, and plainly likes the idea of a ® registration symbol next to his nickname. How about the JEBSKINS? Everyone wins. Read the full article here. From CBS Miami.
By Michael Vadon (Own work) [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.
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