OHIM Introduces “Fast Track” for Trademark Applications

The Office for Harmonization in the Internal Market (OHIM, the European trademark office) introduced this week a new “Fast Track” system for filing and prosecuting Community Trademark (CTM) applications in the European Union.  The Fast Track system is similar to the USPTO’s “TEAS Plus” trademark filing system in the US, in that both systems require the applicant to select a description of goods/services from a preapproved list, which avoids the need to substantively examine the goods/services for indefiniteness.  The Fast Track and TEAS Plus systems also both require payment of the application fee at the time of filing.  However, while both systems offer a streamlined examination process, the Fast Track system promises examination and publication twice as fast as a regular CTM application, whereas the TEAS Plus system is only slightly faster than a regular US application.  The complete details of the Fast Track system can be found on OHIM’s website here.

https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/News/timeline-esearch.jpg.

https://oami.europa.eu/tunnel-web/secure/webdav/guest/document_library/News/timeline-esearch.jpg.

Reposted from OHIM.

When a Chef Leaves, Who Owns the Restaurant’s Signature Dish?

An article in Grub Street this week poses an interesting question: “When a Chef Leaves, Who Owns the Restaurant’s Signature Dish?”  The context of the question is the case of New York Chef Justin Smillie, who recently left one restaurant, Il Buco Alimentari, to open another, Upland, and took one of his standout culinary creations with him.  From an intellectual property standpoint, the answer is not clear-cut.  Patent law is generally inapplicable to food served in restaurants.  Copyright law can apply to cookbooks and compilations of recipes, but it does not protect the food made from recipes—the author of a cookbook could stop the reproduction of the recipes, but could not stop people from using the recipes to make food.  And, as discussed in a prior post here, trademark law can rarely, if ever, provide protection for the flavor of food, because flavor is a functional element that affects the quality of the food—a federal court in Texas recently stated in dicta that the functionality doctrine is “possibly insurmountable—in the case of food.”  Absent a contractual agreement between the restaurant and chef, the law does not provide a definitive answer to the question of whether a departing chef can bring his recipes to a new venue.  However, as the article explains, a solution that some chefs have hit upon is “to publish cookbooks under their own names—not the names of the restaurants they happen to work at, in that moment in time,” which allows them “to lay claim to their creations” via copyright.  Read the full article here.

By User:Arnaud 25 & Hélène Darroze (Own work) [Public domain], via Wikimedia Commons.

By User:Arnaud 25 & Hélène Darroze (Own work) [Public domain], via Wikimedia Commons.

Reposted from Grub Street.

The Lord of the Rights

The In Custodia Legis blog at the Library of Congress posts today about the controversial copyright history of J.R.R. Tolkien’s The Lord of the Rings saga.  The novel, originally published in the 1950s, was published in paperback for the first time in 1965 by Ace Paperbacks.  The U.S. paperback publication was not authorized by Tolkien or his publishers, but due to the somewhat confusing state of U.S. copyright law at the time, Ace Paperbacks erroneously believed that the copyright on the novel had expired, placing the work in the public domain in the United States.  Tolkien and his publishers disputed this contention, and the first authorized paperback edition was subsequently published by Ballantine Books.  In addition to shedding light on some of the backstory behind the publication of The Lord of the Rings, the article also provides a useful overview of the history and evolution of copyright law in the United States.  Read the full article here.

By Zanastardust [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By Zanastardust [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from In Custodia Legis.

Is Consumer Protection Still a Primary Focus of Trademark Policy?

The IPKat blog has an informative post today about “the recurring assertion that consumer protection is a bedrock of trade mark protection.”  The article challenges the longstanding and widely-accepted view that consumer protection is an important, if not one of the most important, policy considerations underlying trademark law.  The question stems, in part, from the evolving nature of the interests recognized in trademarks beyond their function as identifiers of source.  For example, Alex Kozinski, Chief Judge of the Ninth Circuit Court of Appeals and a noted legal commentator, has observed that “in our culture, trademarks are doing all kinds of work they weren't originally meant to do,” and identifies “four different kinds of interests implicated by giving trademark owners a more extensive property right in their marks: moral, utilitarian, goodwill, and free expression.”  Similar observations have been made by commentators in the European Union, one of whom opined that “[i]n the EU, the understanding is that trade marks are IP assets, their protection serving their owners’ interests.  They do NOT protect consumers, we have other laws for achieving that.”  As Judge Kozinski concluded, “[i]t’s critical that we consider all the interests at stake and weigh those interests by reference to current reality, not according to rules made up at another time to deal with another reality.  Trademarks, trade names, logos, and the other symbols of commerce have evolved.  The law must evolve with them.”  Read the full article here.

By Moogsi (Own work) [Public domain], via Wikimedia Commons.

By Moogsi (Own work) [Public domain], via Wikimedia Commons.

Reposted from The IPKat.

The Perils of Downloading Down Under

Brisbane Times reports that Australia’s University of New South Wales has begun issuing fines to students engaged in illegal downloading of copyrighted materials on the university’s computer network.  The fines range from about $480 to $1,000, and the university estimates that it has already levied fines totaling about $100,000.  The policy has stirred controversy among the students, principally because students enjoy illegal downloading, but also because the university has opted to pocket the fines rather than turn them over to the copyright holders.  As a UNSW spokesperson explained, “[t]he university is not attempting to enforce Commonwealth [copyright] law,” and “is not collecting damages on behalf of copyright holders.”  Instead, the fines are based on the fact that “[s]tudents who illegally download copyright material such as movies, video, music or games are in breach of the university's policy on IT use.”  Proceed with caution, students.  Read the full article here.

Wikimedia Commons.

Wikimedia Commons.

Reposted from Brisbane Times.

What the Fresh, Wrigley?

Above the Law reports that the Wm. Wrigley Jr. Company, makers of Wrigley’s WINTERFRESH® gum, filed an opposition last week to two pending trademark applications for the marks WHAT THE FRESH and WTF.  The opposed marks are both owned by Netherlands-based Perfetti Van Melle Benelux BV, and are both intended to be used in connection with “confectionery, namely, candies and chewing gum.”  Wrigley alleges in its Notice of Opposition that the WHAT THE FRESH mark is confusingly similar to its venerable WINTERFRESH mark, and that the acronym WTF is not only confusingly similar as shorthand for WHAT THE FRESH, but “also is a common acronym used generally to express indignation, surprise or disbelief.”  The article’s author takes a rather dim view of Wrigley’s position, stating:

 Honestly, if you want to see just how much companies buy their own hype, peruse some trademark oppositions.  It won’t take long to find some company convinced that everyone in the country is so absolutely obsessed with their “brand” that the most tenuously similar marks amount to egregious assaults on their intellectual property.

 Regardless of whether one personally buys Wrigley’s argument, it should be interesting to see just WTF happens as the opposition proceeds.  Read the full article here, and Wrigley's Notice of Opposition here.

Wikimedia Commons.

Wikimedia Commons.

Reposted from Above the Law.

SKI TOWN and SKI CITY Settle Trademark Dispute

As reported by The Denver Post and inspired, no doubt, by the season’s first snowfall, the trademark infringement lawsuit filed by plaintiffs Steamboat Ski & Resort Corporation and Steamboat Springs Winter Sports Club against defendants Salt Lake Convention and Visitors Bureau et al. over their respective SKI TOWN, U.S.A. and SKI CITY USA marks has been settled.  The Steamboat plaintiffs’ SKI TOWN, U.S.A. mark is protected by a portfolio of federal registrations and applications, and has been in use in commerce since 1959 in connection with skiing and related products and services.  The Salt Lake defendants subsequently adopted the SKI CITY USA mark in a marketing campaign that, according to the Bureau’s CEO, “is absolutely aimed at luring skiers away from Colorado.”  Characterizing the SKI CITY USA campaign as an attempt “to leverage our brand and our brand equity,” the Steamboat plaintiffs then filed suit against the Salt Lake defendants on the grounds that the latter’s SKI CITY USA mark is confusingly similar to the former’s registered SKI TOWN, U.S.A. mark.  Other than noting that the lawsuit has been settled “in a manner acceptable to all parties,” the parties have not disclosed any details about the terms of the settlement, but it appears that the Salt Lake Convention and Visitors Bureau has now removed the USA portion of its SKI CITY USA mark.  Read the full article here, and the plaintiffs’ complaint here.

By Ben Njeri (Own work) [CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

By Ben Njeri (Own work) [CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

Reposted from The Denver Post.

Copyright Equality

The Hollywood Reporter has a guest column by U.S. Senator Patrick Leahy (D-VT), current chairman of the Senate Judiciary Committee, who this week introduced a bill entitled the “Copyright and Marriage Equality Act.”  The proposed legislation would address what Leahy terms “vestiges of discrimination” in the Copyright Act, namely, a provision in the act that “grants rights to surviving spouses of copyright owners only if the marriage is recognized in the owner’s state of residence at the time he or she dies.”  While the Supreme Court’s 2013 decision in United States v. Windsor mandated equality for same-sex marriages with respect to federal recognition and benefits, and subsequent rulings have expanded the number of states that recognize same sex marriage, there are still fifteen states that do not recognize same-sex marriages.  As Leahy explains, “[t]his means a writer who lawfully marries his or her same-sex partner in Vermont or California is not a ‘spouse’ under the Copyright Act if they move to Florida, Georgia or one of the other states that do not recognize marriage equality.”  Leahy’s bill “amends the Copyright Act to look simply at whether a couple is married, not where a same-sex married couple happens to live when the copyright owner dies,” which he believes “will ensure that the rights attached to the works of our nations gay and lesbian authors, musicians, painters, sculptors and other creators pass to their spouses the way they now do for heterosexual creators.”  Read the full article here, and Leahy's press release on the legislation here.

Reposted from The Hollywood Reporter.

F--K CANCER Trademark Applicant Gets, uh… Screwed

CBC News reports on a recent Canadian Federal Court decision in a trademark dispute over the sailor-appropriate mark F--K CANCER.  The petitioner in the case, “celebrity activist” Yael Cohen, began using the mark F--- CANCER in 2009 in connection with apparel and a charitable foundation devoted to cancer detection and prevention.  Cohen applied to register the F--- CANCER mark in Canada, but was opposed by Susan Fiedler, who has been using the essentially identical mark F--K CANCER as a common-law trademark since 2008 as a slogan for charitable fundraising for cancer research.  The Canadian Trade-Marks Opposition Board sided with Fiedler based on her earlier date of first use, and refused registration of Cohen’s F--- CANCER mark.

Cohen then appealed TMOB’s refusal to Federal Court, but interestingly, she did not contest any of the TMOB’s findings.  Instead, she advanced the novel argument that Fiedler could not have any enforceable rights in her F--K CANCER mark because the word “f--k” is obscene, and therefore unenforceable under Canada’s prohibition against the use of scandalous, obscene, or immoral terms as trademarks (for an earlier post about an applicant getting “FUCT” over a similar prohibition in the U.S., click here).  In its decision declining judicial review and upholding the Board’s refusal, the Court noted that Cohen’s new argument was “one that was never put before the TMOB, and one which, had it been accepted, would have been fatal to her application for registration.”  Cohen’s apparent goal at that point was not to secure registration of her own F--- CANCER mark, but rather to prevent Fiedler from being able to stop or restrict Cohen’s use of the mark.  Her argument, in other words, was that both marks are f--cked with respect to enforceable rights.  Sadly for Cohen, the Court’s answer was “no, just yours.”  Read the full article here, and the Court’s opinion here.

Reposted from CBC News.

Cancelled REDSKINS Trademarks Still Enforceable

The Lex Indicium Blog has a post today discussing the Trademark Trial and Appeal Board’s June ruling cancelling the six REDSKINS trademark registrations, and the differences between the media’s (and consequently the public’s) reaction to the ruling and the actual impact of the ruling on Pro-Football, Inc.’s rights in the REDSKINS marks (see prior posts on the ruling here, here, here, and here).  The TTAB ruling was widely reported as both a loss of the owner’s exclusive trademark rights and an invitation to third parties to begin selling REDSKINS-branded products.  However, under the Lanham Act, Pro-Football still retains trademark rights that have accrued through decades of use of the REDSKINS marks.  As the article points out:

If the decision of the Office stands, the Redskins team, and Pro-Football will still be able to sell their wares and stop others from doing so.   Thousands of unregistered trademark owners know this because they exercise those enforcement rights every day.   True, it might be harder to enforce those rights – but no one should believe that Pro-Football won’t continue to collect license fees or be able to obtain legal redress if others use their marks without authorization.

While there are very substantial benefits to federally registering one’s trademark, the loss of the registration does not result in a loss of all rights to the mark.  If such misperceptions persist, and lead to a rise in unauthorized use of the REDSKINS marks by third parties, Pro-Football may have more opportunities to publicly demonstrate the fact that unregistered marks may still be enforced.  Read the full article here.

Reposted from Lex Indicium.

The Counterfeit Red Shoe Diaries

World Trademark Review chronicles the success that luxury fashion brand Christian Louboutin has had in crowdsourcing its fight against counterfeit goods.  Since 2010, the company has operated an online reporting program called Stopfake, where their own customers can submit reports of their encounters with fake Christian Louboutin products, while simultaneously being directed toward the genuine articles offered on the company’s official website.  Christian Louboutin states that it receives “an average of 200 emails each week” from members of the public reporting suspected trademark infringements, and the company acts on the information to shut down websites selling the counterfeit goods.  Although the Stopfake approach is innovative, knockoff goods remain a significant problem, particularly for luxury brand owners such as Christian Louboutin.  Read the full article here.

By Arroser (Own work) [CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

By Arroser (Own work) [CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

The Next Great Copyright Act

The Conversation has an opinion piece about the future of U.S. copyright law and the author’s view that “[t]he next great copyright act should be flexible and forward-looking.”  The article discusses the age-old tensions between the content-producing industries on one side, and the technology-producing industries, content consumers, and public domain advocates on the other side.  The content industries unsurprisingly favor stronger copyright protection and enforcement, while the tech industries, users, and information advocates favor fewer technological restrictions and freer access to information.  Adding to the mix is the fact that “predicting the future use or impact of new technology without the benefit of hindsight is virtually impossible,” which makes the tasks of legislating on such new technologies and avoiding unintended consequences much more difficult.  Read the full article here.

By SasiSasi at en.wikipedia [Public domain], from Wikimedia Commons.

By SasiSasi at en.wikipedia [Public domain], from Wikimedia Commons.

Reposted from The Conversation.

Today in Copyright History: 11/8

On November 8, 1984, the Semiconductor Chip Protection Act of 1984 established a new type of intellectual property protection for mask works fixed in semiconductor chips and charged the Copyright Office with responsibility for registering mask works.

By Zephyris at en.wikipedia [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/)], from Wikimedia Commons.

By Zephyris at en.wikipedia [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/)], from Wikimedia Commons.

Let’s Get Ready to Trademark!

The Trademarkology Blog has an interesting post about famous sports announcer catchphrases that have been registered as trademarks.  Among the featured names is ring announcer Michael Buffer, whose “Let’s get ready to rumble” catchphrase is protected by trademark registrations for a wide variety of products and services, such as coffee mugs, swimsuits, robes, belts, shorts, pants, underwear, shoes, boots, ties, outerwear, pajamas, exercise gear, and formalwear.  According to an ABC report, by 2009 the “Let’s get ready to rumble” catchphrase had already generated over $400 million in revenue.  Apparently, there’s gold in them there catchphrases.  Read the full article here, and watch Buffer in action below.

Reposted from the Trademarkology Blog.

“Objectively Baseless” Copyright Suit Results in $88,000 Fee Award

Eugene Volokh writes in The Washington Post about this week’s ruling in Choyce v. SF Bay Area Independent Media Center et al. (N.D. Cal. Nov. 3, 2014).  The plaintiff, Dionne Choyce, sued the defendant SF Bay Area Independent Media Center and its web host, Layer42.net, for copyright infringement based on the posting by unknown third parties of allegedly false and defamatory articles about the plaintiff on the defendants’ website.  The third party postings also included a photograph of the plaintiff from the plaintiff’s website, which formed the basis of the plaintiff’s copyright claim.

Choyce’s story reads like a comedy of errors.  The initial complaint was filed before the plaintiff even applied for federal copyright registration for the image in question, which is a prerequisite to filing a federal copyright lawsuit.  After the court dismissed the suit without prejudice, Choyce then filed a copyright application wrongfully listing himself as the author of the photograph, even though it was taken by someone else, and submitted a first amended complaint to the court.  Because the copyright belonged to the photographer rather than the plaintiff, and the plaintiff’s “additional meritless arguments” had provided no basis for establishing the plaintiff’s ownership of the copyright, the court declined to grant the plaintiff a third chance to submit a properly pled complaint.  Concluding that “Plaintiff’s copyright claim was, to put it bluntly, objectively baseless,” and noting that Choyce “has yet to plead a valid federal cause of action in any of his proposed complaints, or explain how he might at any point in the foreseeable future,” the court then dismissed the copyright claim with prejudice, and awarded the defendants $87,835 in attorney’s fees.  As the court put it, “[h]ad Plaintiff’s counsel consulted even basic authority regarding copyright law, he would have and should have known that he had no basis to bring a copyright action.”  A more fundamental takeaway from this case is the critical importance of properly establishing ownership and use rights for copyrighted materials.  Read the full article here, and the court’s opinion and order here.

By Alex E. Proimos (http://www.flickr.com/photos/proimos/4199675334/) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By Alex E. Proimos (http://www.flickr.com/photos/proimos/4199675334/) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from The Washington Post.

Nighttime is Stifle Hour for the Eiffel Tower

EUobserver reports on an interesting quirk in the European Union’s copyright rules that allows member states to assert copyright protection over architectural works in public places.  While some member states, such as the United Kingdom, the Netherlands, and Germany, allow people to publish photographs of public buildings for any purpose, other member states, such as France, Belgium, and Italy, require people to get permission from a building’s copyright owner prior to publishing photographs of the building.  Moreover, seeking such permission is not always a straightforward matter.  For example, it is permissible to publish photographs of France’s Eiffel Tower during the day, because the architect has been dead long enough for the original copyright to expire.  However, because the tower’s lights were installed at a later date, the arrangement of the lights is still covered by copyright, and permission must be secured to publish photographs taken at night.  Think twice, American tourists, before posting those European vacation pictures on Facebook.  Read the full article here.

By Cezary p (Own work) [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC-BY-SA-3.0-2.5-2.0-1.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

By Cezary p (Own work) [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC-BY-SA-3.0-2.5-2.0-1.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

Reposted from EUobserver.

Political Ad Ruled Non-Infringing

The Trademark & Copyright Law Blog has a post today about the court’s decision last week denying a temporary restraining order in Choose Energy, Inc. v. American Petroleum Institute (API).  The plaintiff Choose Energy sued API in the Northern District of California for trademark infringement over API’s election season adoption of the phrase CHOOSE ENERGY for a political advertising campaign.  In ruling against Choose Energy’s request, the court reasoned that the political services offered by API under the CHOOSE ENERGY mark are “wholly and completely distinct from the commercial services offered by Choose Energy,” leaving the court with a single question: “can API’s political activities trigger liability under the statute where API is not in competition with Choose Energy?”  Concluding that there was “no evidence in the record that Choose Energy and API compete in any way that could bring the claim within the purview of the Lanham Act,” the court ruled that the plaintiff failed to show a likelihood of success on the merits, and denied the temporary restraining order.  Before the case was filed, API indicated to Choose Energy that the ad campaign was only slated to last until today’s election.  This may render the case moot after today, particularly since it may be difficult for the plaintiff Choose Energy to prove infringement in light of the court’s view that API and Choose Energy are not in competition.  Read the full article here, and the court’s opinion here.