What Scottish Independence Could Mean for Trademark Rights

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Against the historic backdrop of today’s vote on Scotland’s independence referendum, World Trademark Review examines the ramifications that Scottish independence could have for trademark and other intellectual property rights in that country.  Because Scotland is currently part of the United Kingdom, it does not have its own intellectual property office; the entire United Kingdom is covered by the UK Intellectual Property Office.  An independent Scotland will need to quickly adopt and implement a new system for IP protection, which would likely entail the establishment of its own IP office, and the ratification of certain international treaties concerning IP rights.  Interesting times may lie ahead for current and future owners of trademark, copyright, and patent rights in the UK.  Read the full article here.

By flickrtickr2009 (Scottish Flag Uploaded by Smooth_O) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons

By flickrtickr2009 (Scottish Flag Uploaded by Smooth_O) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons

Reposted from World Trademark Review.

Today in Copyright History: 9/17

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It’s Constitution Day!  On September 17, 1787, intellectual property rights were woven into the very fabric of American society with the signing of the U.S. Constitution in Philadelphia.  The foundation for modern copyright and patent law was laid in Article 1, Section 8, which provides that “[t]he Congress shall have power… to promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”  It remains an open question whether copyright was easier or harder to enforce in the 1700s when the most common tool of infringement was a quill pen.

Etsy Bans the R-Word

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As reported by The Verge, e-commerce website Etsy has instituted a ban on sales of merchandise with the name or logo of the Washington Redskins NFL team.  In a “Policy Update” blog post, Etsy explains that, “[l]ike the Trademark Trial and Appeal Board, we at Etsy find the opinion of the minority group itself to carry most weight in determining whether the mascot is disparaging.  In no uncertain terms, Native American groups have consistently advocated and litigated that the term ‘redskin(s)’ is disparaging and damaging to Native Americans.  Therefore, it will no longer be permitted in our marketplace.”  As noted in the Verge article, Etsy’s sellers are predominantly small businesses and individuals dealing in handmade goods, so it is unclear whether the ban will have a significant effect on the overall market for Redskins goods.  Moreover, given that most, if not all uses of the Washington Redskins name and/or logo on Etsy are likely unlicensed by the trademark owner, such products may already violate Etsy’s policies against trademark infringement.  Read the full article here, and the Etsy policy update here.

redskins_logo.gif

Reposted from The Verge.

Jay-Z Says “Oh” No to Copyright Claim

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Techdirt reports on the pending copyright infringement lawsuit in the Southern District of New York between TufAmerica and rapper Jay-Z over the latter’s use of a sample in his song “Run This Town.”  The issue in the case, TufAmerica, Inc. v. WB Music Corp. et al., is whether a sample of a one-syllable spoken word (the word “oh”) can constitute copyright infringement.  In a motion to dismiss filed last week, Jay-Z’s lawyers argued that a single word does not qualify as copyrightable expression, and that even if that single word was protectable under the Copyright Act, the copying by Jay-Z was too minimal to be actionable.  The case is being watched closely by industry observers for its potential implications for the use of short samples in sound recordings.  Read the full article here, and the Defendant’s Memorandum of Law in Support of Their Motion to Dismiss here.

By Joella Marano (Jay-Z) [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

By Joella Marano (Jay-Z) [CC-BY-SA-2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.

Reposted from Techdirt.

Google It All You Want, It’s Still Not Generic

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The Freedom to Tinker blog has a good post today about Google’s summary judgment win last week in Elliot et al. v. Google Incorporated.  The plaintiffs in that case argued that the GOOGLE trademark has become the generic term for searching the internet (“googling”) without regard to the search engine used, and thus has ceased to identify and distinguish Google’s particular search engine services.  If the GOOGLE mark was deemed generic, it would lose its significance as a trademark, and would take its place alongside aspirin, cellophane, escalator, laundromat, linoleum, thermos, videotape, zipper, and other famous trademarks that fell victim to “genericide.”

Fortunately for Google, the U.S. District Court for the District of Arizona ruled that even if “a majority of the public uses the word google as a verb to refer to searching on the internet without regard to search engine used... the primary significance of the word google to a majority of the public who utilize internet search engines is a designation of the Google search engine.”  Google was therefore entitled to judgment as a matter of law that the GOOGLE mark is not generic, which allows Google to continue to own and enforce the GOOGLE mark, and prevents people like the plaintiffs from using the term google in their own business branding (for similar products or services).  Read the full article here, and the full court opinion here.

Reposted from Freedom to Tinker.

Even Drug Dealers Understand the Power of Branding

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Wired has a fascinating, if somewhat morbid piece on the branding practices of heroin dealers.  While we should not expect to see ® trademark registration symbols on heroin bags any time soon (under 37 C.F.R. § 2.69 and T.M.E.P. § 907, use of a mark in commerce must be lawful use to be the basis for federal registration of the mark), drug dealers appear to recognize that the power of brand identification and loyalty is universal in the marketplace.  But please don’t call Trademarkwise® for advice.  Read the full article here.

By Mpv_51 at English Wikipedia (Transferred from English Wikipedia) [Public domain], via Wikimedia Commons

By Mpv_51 at English Wikipedia (Transferred from English Wikipedia) [Public domain], via Wikimedia Commons

Reposted from Wired.

The APPLE WATCH Watch

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The Wall Street Journal Law Blog examines a stealthy business practice used by Apple and other brand owners to obtain trademark protection for their future product names while effectively keeping such names a secret.  As discussed in The New York Times article from yesterday’s post, Apple was widely expected to call its new smartwatch the iWatch, in keeping with its conventional practice of using “i”-formative product names (iMac, iPhone, iPad, etc.).  However, the company bucked the trend by simply calling the device the Apple Watch.

If Apple had filed an intent-to-use U.S. trademark application for the name APPLE WATCH to reserve the name in advance, the application would have been publicly available for all to see, and the traditional veil of secrecy that cloaks new Apple products prior to their launch would have been lost.  To maintain some level of secrecy while still securing an early filing date, Apple took advantage of the Paris Convention for the Protection of Industrial Property, a treaty between the U.S. and 174 other countries that allows a trademark application filed in one member country to claim priority to an equivalent trademark application filed in any other member country, if the later application is filed within six months of the filing date of the earlier application.

In this case, Apple filed a trademark application for the mark APPLE WATCH in Trinidad and Tobago on March 11, 2014, which allows the company until today, September 11, to file an equivalent U.S. trademark application for APPLE WATCH with an effective filing date of March 11, 2014.  Apple was thus able to wait until after its September 9 unveiling of the Apple Watch to file its U.S. trademark application, relying on the relative obscurity of the Trinidad and Tobago Intellectual Property Office to effectively hide its earlier filing (Apple presumably filed or will file its U.S. application sometime between September 9 and today, but new applications take a few days to publicly appear in the USPTO database).

Apple’s tactic in protecting the APPLE WATCH name highlights some of the strategic options available to brand owners, and demonstrates how the seemingly opposing goals of secrecy and trademark protection can actually work in harmony.  Plus, it provides a perfect excuse to post another picture of the product itself.  Read the full article here.

AplWatch-Hero-Tumble-PRINT.jpg

Not iWatch, Because iSwatch?

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As The New York Times reports, the long-rumored and much-ballyhooed Apple Watch was announced yesterday to great fanfare.  While its feature set includes the latest technological advances, the Apple Watch is arguably most notable for what it omits: an “i” at the beginning of its name.  For the past sixteen years, “iBranding” has been a central part of Apple’s success, with names such as iMac, iPhone, iPad, iPod, iTunes, iMovie, iPhoto, iLife, iWork, iBooks, iCloud, and iOS ranking among the most iconic and recognizable brands in the world.  Apple has not publicly stated the reason for eschewing the iWatch moniker for its new device, but a contributing factor may have been a desire to avoid a threatened trademark dispute with Swatch over that company’s iSwatch product.  Read the full article here.

Reposted from The New York Times.

Intellectual Property is in Fashion

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In honor of Fashion Week, The New York Times has an interesting feature on intellectual property protection for fashion designs, with opinions from different industry observers about the scope of available protection, potential changes in the legal landscape, and the challenges posed by knockoffs and counterfeit goods.  Read the full article here.

Korea.net / Korean Culture and Information Service

Korea.net / Korean Culture and Information Service

Reposted from The New York Times.

Law Professor Wants the R-Word Off the Air

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The ABA Journal reports that a George Washington University law professor has filed an FCC petition opposing the renewal of a radio station’s license over its use of the term “redskins.”  The professor, John Banzhaf, maintains that the name of Washington’s NFL team is a racially derogatory word that should be viewed in the same light as the “n-word,” and points out that a radio station that repeatedly used the “n-word” in sports broadcasts would lose its license.  The FCC petition follows a June ruling by the Trademark Trial and Appeal Board cancelling all six of the team’s REDSKINS trademark registrations on the basis that the term is disparaging to Native Americans.  Read the full article here, and the full petition here.

Reposted from the ABA Journal.

Getty Images Sues Microsoft For Bing-fringement

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As reported in GeekWire, Getty Images sued Microsoft yesterday for copyright infringement over Microsoft’s new Bing Image Widget, a software tool that allows websites to display images retrieved in Bing’s search results.  Getty Images alleges in its complaint that Microsoft “has turned the entirety of the world’s online images into little more than a vast, unlicensed ‘clip art’ collection for the benefit of those website publishers who implement the Bing Image Widget, all without seeking permission from the owners of the copyrights.”  Read the full article here, and Getty Image’s complaint here.

Reposted from GeekWire.

The Michelin Man Used to Be Even Creepier

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Wired takes a look at the history behind five of the world’s most famous logos: the Michelin Man, the NASA logo, the CBS logo, the peace sign, and the AT&T logo.  The origins of the five logos, along with two dozen others, are explored in detail in the book TM: The Untold Stories Behind 29 Classic Logos, written by Mark Sinclair.  Fun fact: the Michelin Man, or “Bibendum,” was registered as a US trademark in 1970, but has been terrifying children and haunting dreams since 1898.  Read the full article here.

Reposted from Wired.

Jennifer Lawrence Uses Copyright Law to Take Down Hacked Photos

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CBC News reports that Jennifer Lawrence, Kate Upton, and other celebrities who have had intimate photos stolen from their digital devices and leaked online are using copyright law to fight back against websites and individuals who post the pilfered images.  Read the full article here.

"Jennifer Lawrence SDCC 2013 X-Men" by Gage Skidmore - https://www.flickr.com/photos/gageskidmore/9362866300/. Licensed under Creative Commons Attribution-Share Alike 2.0 via Wikimedia Commons - http://commons.wikimedia.org/wiki/File:Jennifer_Lawren…

"Jennifer Lawrence SDCC 2013 X-Men" by Gage Skidmore - https://www.flickr.com/photos/gageskidmore/9362866300/. Licensed under Creative Commons Attribution-Share Alike 2.0 via Wikimedia Commons - http://commons.wikimedia.org/wiki/File:Jennifer_Lawrence_SDCC_2013_X-Men.jpg#mediaviewer/File:Jennifer_Lawrence_SDCC_2013_X-Men.jpg

Reposted from CBC News.

Changes in EU Trademark Rules May Require New Strategies for Trademark Owners

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JD Supra has a good piece on the European Union’s recently enacted changes in the rules governing the scope of protection afforded to design trademarks with no color claim (black and white design marks).  In the US, black and white design marks are granted broad protection, essentially covering the design in any color.  Under the prior rules of the EU, however, different jurisdictions had different rules governing the scope of protection for black and white design marks.  While the new changes aim to harmonize the inconsistent approaches in different countries and set standards for the EU as a whole, they may also require trademark owners to rethink their strategies for both the protection and use of their marks.  Read the full article here.

Reposted from JD Supra.

Heart of Darknet

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World Trademark Review has a useful infographic that sheds some light on the Darknet, the part of the Internet that is not indexed by search engines, and where users can surf anonymously.  Perhaps unsurprisingly, the Darknet is a known haven for counterfeiting and other infringing activities that are of particular interest to trademark and copyright owners.  View the infographic here.

Reposted from World Trademark Review.

ALS Association Seeks to Trademark “Ice Bucket Challenge”

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As reported by The Washington Post, the ALS Association has applied to register the terms ICE BUCKET CHALLENGE and ALS ICE BUCKET CHALLENGE as trademarks for charitable fundraising services.  If successful, the ALS Association would have the right to prevent other charitable organizations from using the term ICE BUCKET CHALLENGE in their fundraising campaigns.  Neither the term nor the technique appears to have originated from the ALS Association, so it is unclear whether the ALS Association will be able to secure exclusive rights through trademark registration.  The real “ice bucket challenge” may be a legal one.  Read the full article here, and view the two trademark applications here and here.

“John Maino performs the ALS Ice Bucket Challenge” by Rauglothgor - Own work. Licensed under Creative Commons Attribution-Share Alike 4.0 via Wikimedia Commons –  http://commons.wikimedia.org/wiki/File:John_Maino_performs_the_ALS_Ice_Bucket_Cha…

“John Maino performs the ALS Ice Bucket Challenge” by Rauglothgor - Own work. Licensed under Creative Commons Attribution-Share Alike 4.0 via Wikimedia Commons –  http://commons.wikimedia.org/wiki/File:John_Maino_performs_the_ALS_Ice_Bucket_Challenge.jpg#mediaviewer/File:John_Maino_performs_the_ALS_Ice_Bucket_Challenge.jpg

Reposted from The Washington Post.

Company Files Trademark Lawsuit to Silence Critic

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CBS News reports on the efforts of a trademark owner, First Premier Bank, to use a trademark infringement lawsuit to prevent CardHub, a credit card comparison website, from negatively reviewing its credit card offerings.  Numerous publications and websites have criticized First Premier Bank for its allegedly usurious rates and unfriendly terms, and such reviews have traditionally been considered to be a non-infringing use of a trademark.  First Premier’s lawsuit thus appears unlikely to succeed, and even less likely to improve the company’s image among its detractors.  Read the full article here.

Reposted from CBS News.