On January 30, 1939, the U.S. Supreme Court held in Washingtonian Publishing Co. v. Pearson that once copyright is secured by publication with proper copyright notice, the right to bring suit is not impaired by a delay in registering.
Rolling Stone reports that pop star Taylor Swift has trademarked the phrase THIS SICK BEAT and other phrases from her song lyrics. More specifically, the article states that “[i]f you want to ‘Party Like It's 1989’ to ‘This Sick Beat,’ you better ask Taylor Swift’s permission first. The pop star has trademarked those phrases – along with ‘Cause We Never Go Out of Style,’ ‘Could Show You Incredible Things’ and ‘Nice to Meet You, Where You Been?’ – with the U.S. government.” The story that Swift has appropriated these phrases for her exclusive use has been making the rounds in the media, causing confusion and consternation among both journalists and the general public. This story, however, is not true.
Swift has not in fact “trademarked” the phrases, but rather has filed applications to register the phrases with the U.S. Patent and Trademark Office. Fifty-eight new applications, to be precise, including sixteen for THIS SICK BEAT alone, for a panoply of goods and services such as entertainment services, games, contests, toys, clothing, dinnerware, home furnishings, musical instruments, jewelry, and toiletries, to name a few. Moreover, the applications all appear to have been filed based on intent to use, rather than current use of the marks in commerce. Thus, it is not at all clear that all of the applications will progress to registration, or even that the marks will end up being used with all of the listed goods and services. A pending intent to use trademark application gets you a place in line, but does not confer exclusive rights until use of the mark has been proven. Moreover, Swift will not have the right to prevent people from using those phrases, except as a brand for her claimed goods and services. America’s teenagers are no doubt breathing a sigh of relief. Read the full article here, but with several large grains of salt.
Reposted from Rolling Stone.
ESPN reports that shoe maker Nike has been sued for copyright infringement over the company’s famous “Jumpman” logo of Michael Jordan’s airborne silhouette. The plaintiff, photographer Jacobus Rentmeester, brought the suit in federal court in the District of Oregon, and alleges that the Jumpman logo was unlawfully copied from a photograph of Jordan that he took in 1984 at the University of North Carolina. Rentmeester later licensed the photograph to Nike, but the photographer claims that Nike exceeded the scope of the license by using the image to create the now ubiquitous Jumpman logo. Since Nike’s adoption of the Jumpman logo as a trademark nearly thirty years ago, basketball shoes bearing the logo have been market leaders, and, according to the complaint, have generated “billions of dollars in profits without compensating Mr. Rentmeester.” Rentmeester seeks monetary damages as well as the aforesaid “billions of dollars in profits” made by Nike that are found to be attributable to the alleged infringement. Read the ESPN article here, and Rentmeester’s complaint here.
Reposted from ESPN.
World Intellectual Property Review reports that famed composer Hans Zimmer, along with a number of associated co-defendants, was sued last week, in federal court in the Central District of California, for copyright infringement over his Golden Globe-nominated score of the film 12 Years a Slave. The plaintiff, fellow composer Richard Friedman, alleges that aspects of Zimmer’s score were unlawfully copied from a Friedman composition entitled To Our Fallen, which was featured on an episode of Desperate Housewives in 2008. Friedman further alleges that the music for that episode “was recorded at Remote Control Productions, a recording facility owned in whole or in part by Defendant Hans Zimmer, as was all or most of the musical score for [12 Years a Slave].” Interestingly, Friedman’s complaint includes claims for copyright infringement and violation of moral rights under the copyright laws of Germany and France, in addition to the claims under U.S. law. Friedman is seeking monetary damages under U.S., German, and French copyright law, and further requests “that all videograms and phonorecords embodying the copyrighted portions of the Works be delivered up and destroyed,” under the court’s direction. Zimmer and the other co-defendants have not yet filed a response to Friedman’s complaint, but it seems extremely unlikely that the suit will result in the forced destruction of every copy of the film and score distributed worldwide. Read the full article here, and Friedman’s complaint here.
Inside Scoop SF reports that a San Francisco restaurant named Chubby Noodle has filed a federal trademark infringement lawsuit in the Northern District of California against a forthcoming rival restaurant named Fat Noodle. Although Chubby Noodle does not have a trademark registration for the CHUBBY NOODLE mark, the suit alleges that the “Asian-inspired” restaurant has common law trademark rights accrued through use of the mark in commerce. Chubby Noodle asserts that the proposed FAT NOODLE mark is confusingly similar to its CHUBBY NOODLE mark, and seeks an injunction and monetary damages from the owners of Fat Noodle. Read the full article here, and the Chubby Noodle compliant here.
Reposted from Inside Scoop SF.
The National Law Review reports that the U.S. Supreme Court issued a ruling this week in Hana Financial, Inc. v. Hana Bank, No. 13–1211, holding that the question of whether two trademarks may be tacked for the purposes of determining priority is a question of fact for the jury, rather than the judge. The ruling affirmed an earlier decision by the Ninth Circuit reaching the same conclusion. The opening paragraph of the Court’s opinion provides a nice overview of both the tacking doctrine and the holding of the case:
Rights in a trademark are determined by the date of the mark’s first use in commerce. The party who first uses a mark in commerce is said to have priority over other users. Recognizing that trademark users ought to be permitted to make certain modifications to their marks over time without losing priority, lower courts have provided that, in limited circumstances, a party may clothe a new mark with the priority position of an older mark. This doctrine is called “tacking,” and lower courts have found tacking to be available when the original and revised marks are “legal equivalents” in that they create the same, continuing commercial impression. The question presented here is whether a judge or a jury should determine whether tacking is available in a given case. Because the tacking inquiry operates from the perspective of an ordinary purchaser or consumer, we hold that a jury should make this determination.
Reposted from The National Law Review.
On January 22, 1917, the U.S. Supreme Court ruled in Herbert v. Shanley that a New York City restaurant had to pay royalties for music it plays to entertain diners. The decision gave the American Society of Composers, Authors and Publishers (ASCAP) the legal backing it needed to pursue licensing of music users.
From the “mon dieu” department, World Intellectual Property Review reports that “[a] man who has attempted to trademark ‘Je suis Charlie’ in the US has told WIPR he is confident the application will be accepted and that he has sent a cease-and-desist email to the offices of Charlie Hebdo.” As discussed in earlier posts here and here, a number of parties in multiple jurisdictions have filed trademark applications in what are likely futile attempts to claim an exclusive right to the slogan JE SUIS CHARLIE, which was popularized in the aftermath of the January 7 attack on the Charlie Hebdo headquarters in Paris that left twelve people dead. While dozens of parties have filed trademark applications, it appears that only the Je Suis Charlie Trust, the first U.S. applicant, has had the temerity to attempt to stop Charlie Hebdo itself from using the JE SUIS CHARLIE slogan. Even if there appeared to be a reasonable chance that the Je Suis Charlie Trust could successfully register the JE SUIS CHARLIE mark (which, as discussed here and here, seems extremely unlikely), it takes an exceptionally grandiose sense of entitlement to threaten legal action against the surviving victims of the Charlie Hebdo attack for using a slogan derived from the magazine’s own name and intended to show support for both the deceased victims and the publication’s raison d'être. Of course, lawyers would have a lot less billable work if everyone had good judgment. Read the full article here.
Terry Hart of Copyhype has an interesting post offering another take on the subject of Martin Luther King Jr. and the copyright protection of his words, speeches, and writings (see yesterday’s post on this topic here). While much media attention has been paid to the posthumous copyright enforcement efforts of King’s estate, the article asserts that King himself “attached importance to his literary property by actively administering and enforcing his copyrights during his life,” and “was not shy in asserting his rights when they had been infringed.” Hart argues that “the ability of someone to benefit from their [sic] labor, as King did through copyright, is consistent with [King’s] views on economic justice and individual dignity,” and further argues that “[p]ublication of King’s work is what helped disseminate his ideas and benefit the public, but the ability to control and benefit from that publication is what allowed him to continue his work until he was brutally killed in April 1968.” The post concludes with the following point:
On this day, we honor and celebrate the tremendous legacy that Dr. Martin Luther King, Jr. left. King’s legacy hopefully inspires us all. But his work is not like “a national park” in the sense that it was bought and maintained by the public; indeed, it came about through great personal sacrifice, and King paid the ultimate price for his work when he was assassinated. It seems a bit presumptuous to say the public has a greater claim to this work than King’s own family, and it seems odd to say that the more lasting and important one’s work is, the less legal protection it should receive. More importantly, it seems better to focus on the content of the message King left us rather than the cost of his DVD.
Reposted from Copyhype.
Few would dispute that, in his short life, Martin Luther King Jr. uttered some of the most famous and consequential words in this country’s history. The renown and resonance of his words and oratory have woven them into the fabric of American society, and many in this country justifiably view them as an integral part of our collective national narrative. However, as Politico Magazine reports, the reality is that King’s words, speeches, and writings are decidedly not part of the public domain. Instead, they are protected by copyright, and their use is tightly controlled by King’s estate, now owned by his famously litigious descendants. With exceptions for fair use, any use of King’s recorded words, speeches, and writings must be licensed by the King estate.
The recent film Selma illustrates some of the issues posed by the King estate’s strict copyright enforcement policy, and the extent to which the “estate’s tough stance on copyright affected the historical accuracy of the film.” As the article explains, “Selma director Ava DuVernay may well have taken more license than artistically necessary in the confrontational scenes between Martin Luther King Jr. and President Johnson. But inaccuracies in other significant parts of the film were forced upon DuVernay by copyright law. The film’s numerous scenes of King delivering powerful speeches regarding civil rights all had to be paraphrased, because the MLK estate has already licensed the film rights in those speeches” to another studio for a different project. Thus, despite the cultural significance of his actual words, King’s “rhetorical brilliance” could not be presented in a historically accurate manner without infringing on the King estate’s copyrights. Read the full article here.
Reposted from Politico Magazine.
On January 19, 1880, the U.S. Supreme Court held in Selden v. Baker that even though copyright law protects the expression of an idea, it does not protect the idea itself. The ruling influenced many subsequent court decisions and copyright doctrines.
On January 17, 1984, the U.S. Supreme Court ruled in Sony Corp. of America v. Universal City Studios, Inc. (the “Betamax case”) that a videocassette recorder manufacturer cannot be held liable for copyright infringement solely on the basis of distributing a product capable of substantial noninfringing uses.
World Intellectual Property Review reports that France’s IP office, The National Institute of Industrial Property, has already rejected fifty trademark applications for the phrase JE SUIS CHARLIE, which has seen widespread public use since the terrorist attack at the Charlie Hebdo offices in Paris. All of the applications were rejected on the basis that, according to France’s IP office, “they do not meet the criterion of distinctive character. This slogan cannot be picked up by an economic actor because of its wide use by the community.” In other words, France’s IP office is arguing that one cannot claim an exclusive right to a phrase that is in such widespread public use that it is incapable of (1) functioning as a unique source identifier for any particular goods/services, and (2) distinguishing one’s goods/services from those of another. The rejections did not delve into a second potential basis for rejection, which is that in France, “applications can be refused if they are considered to conflict with public order or high moral standards.”
As discussed in an earlier post here, attempts by private parties to co-opt and register popular public slogans are almost always both an exercise in futility and a magnet for public condemnation, yet they continue to happen. Frequently. And lest one think that attempts to claim JE SUIS CHARLIE are limited to Europe, it should be noted that at least one U.S. trademark application has already been filed, and by an entity calling itself The Je Suis Charlie Trust, no less. Read the full article here.
In a piece entitled “Prince Charles launches product line with a most unfortunate name,” the UK’s Daily Mail reports that, “[w]ith what could hardly be worse timing as the West braces itself for more terrorist attacks after the carnage in Paris,” the heir to the British throne recently introduced a line of products at the Highgrove Shop under the brand name ISIS. The ISIS products are a premium line of ceramic lamp stands, vases, and serving bowls that are “inspired by the River Thames, which is known as the Isis in Oxford,” but coincidentally happen to share that name with the fundamentalist Islamic State of Iraq and al-Sham. Read the full article here.
Reposted from the Daily Mail.
Per World Trademark Review, at least one attempt has already been made to claim trademark rights in the phrase JE SUIS CHARLIE, “the slogan adopted by supporters of free speech and freedom of expression in the wake of last week’s Charlie Hebdo magazine massacre in Paris.” Following in the footsteps of previous efforts to trademark phrases such as BOSTON STRONG, OCCUPY WALL STREET, JUSTICE 4 TRAYVON, HANDS UP DON’T SHOOT, and I CAN’T BREATHE, an applicant named Yanick Uytterhaegen filed a trademark application in the Benelux region (Belgium, the Netherlands, and Luxembourg) for the mark JE SUIS CHARLIE on January 8, 2015, just one day after the attack on the Charlie Hebdo headquarters in Paris that killed twelve people.
Attempts to claim exclusive rights in common phrases and slogans in the wake of an event, cause, or movement are sufficiently commonplace to be considered inevitable. However, attempts to secure formal registration of such marks are seldom successful, because (1) common slogans are rarely associated in the public’s mind with a single source for goods and/or services, and (2) slogans arising from tragic events are generally considered unregistrable as offensive or disparaging in many jurisdictions. Plus, as the ALS Association learned last summer when it tried to appropriate the phrase ICE BUCKET CHALLENGE (see an earlier post on this subject here), such efforts tend to result in a public relations nightmare for the would-be claimant. Read the full article here, and the JE SUIS CHARLIE application here.
Reposted from World Trademark Review.
From the why-do-people-keep-trying-to-do-this department, the U.S. Trademark Trial and Appeal Board (TTAB) issued a ruling yesterday affirming an Examining Attorney’s refusal to register the mark ASSJACKED for “hats; headwear; jackets; pants; shirts; shorts; sweaters; sweatshirts; swimwear; t-shirts; and undergarments.” The refusal was based on § 2(a) of the Trademark Act, 15 U.S.C. § 2(a), “on the ground that the applied-for mark consists of immoral or scandalous matter” (see an earlier post on this subject here). The TTAB has held that a mark can be considered scandalous and refused registration by establishing that the mark is “vulgar.” In this case, the Examining Attorney relied in part on a definition from Urban Dictionary, and was also assisted by the applicant’s own statements on its website, essentially admitting that ASSJACKED is “a very literal term which needs little explanation.” In other words, the term means what everyone thinks it means, and thus may properly be considered vulgar. In affirming the refusal to register, the TTAB stated that “the term ASSJACKED is vulgar and therefore scandalous from the standpoint of a substantial composite of the general public and, as such, registration is prohibited under Section 2(a) of the Trademark Act.” The term ASSJACKED may now take its place alongside fellow traveler COMFYBALLS, which was refused registration last year on the same basis. Read the TTAB opinion here. Just don’t read it aloud.
Reposted from the TTAB.
On January 8, 1783, Connecticut passed the first U.S. copyright statute. Noted lexicographer Noah Webster was instrumental in securing its enactment. All other U.S. states except for Delaware followed suit.
World Intellectual Property Review reports that shoe maker New Balance has sued rival shoe maker Converse in federal court in Massachusetts, seeking a declaratory judgment that its PF FLYERS athletic shoe does not infringe Converse’s trademark rights in its CHUCK TAYLOR ALL STARS athletic shoe. Converse made headlines last October when it filed federal trademark infringement lawsuits and a U.S. International Trade Commission (ITC) action against thirty-one different retailers, including Walmart, Kmart, and Sketchers, all of whom sold athletic shoes that arguably bear similarities to Converse’s “Chuck Taylor” shoe (see an earlier post on the subject here). The Chuck Taylor shoe is protected by numerous federal trademark registrations covering various aspects of the shoe’s appearance, including Reg. No. 4398753, which “consists of the design of the two stripes on the midsole of the shoe, the design of the toe cap, the design of the multi-layered toe bumper featuring diamonds and line patterns, and the relative position of these elements to each other.”
New Balance, interestingly, was not named as a party in any of Converse’s enforcement actions. However, the company states in its Complaint that “[a] fair reading of the ITC complaint… reveals that Converse asserts trademark rights that, if upheld by the Commission, may improperly affect PF Flyers’ ability to compete with Converse.” The Complaint further alleges that “Converse’s ITC complaint seeks a ‘general exclusion order’ that purports to target the named respondents, but is broadly written so as to also potentially exclude long-time legitimate competitors, such as PF Flyers.” New Balance also alleges that the existence of numerous third parties selling similar shoes incorporating the claimed features of the Chuck Taylor shoe obviates any argument by Converse that it has an exclusive right to those features, and/or that a likelihood of consumer confusion exists, and/or that the features serve as an source indicator for the shoes. New Balance therefore seeks a declaratory judgment that (1) its “use of a toe bumper, toe cap, and striped midsole in connection with athletic footwear” is noninfringing; (2) its use of the claimed features precludes “any cognizable consumer confusion”; and (3) the claimed features are not protectable under the Lanham Act. The Complaint further seeks an order cancelling the 4398753 registration. Read the full article here, and the New Balance Complaint here.