The Rise of Greenwashing

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JD Supra reports on the recent rise of “greenwashing” by the U.S. Patent and Trademark Office, the practice of subjecting applications for “green” trademarks with eco-friendly connotations to a higher level of scrutiny during examination.  This additional scrutiny was prompted by the increasing association by the public of the term “green” with eco-friendly products and services, the consequently increasing use of the term “green” by brand owners to commercially exploit that association, and in turn, the consequently increasing number of consumer complaints about misleading or false claims of eco-friendliness by brand owners.  In view of these developments, the number of refusals by the USPTO of marks incorporating the word “green” has also been increasing.  In particular, applications for “green” marks are receiving more refusals based on either descriptiveness (for “green” marks used with products or services that are actually eco-friendly), or deceptiveness (for “green” marks used with products or services that are not actually eco-friendly).  Since one argument for overcoming a descriptiveness refusal is that the mark is not actually descriptive (i.e., the “green” portion does not connote eco-friendliness, and thus is arguably deceptive), and one argument for overcoming a deceptiveness refusal is that the mark is not actually deceptive (i.e., the “green” portion does connote eco-friendliness, and thus is arguably descriptive), applicants for “green” marks face peril whether or not their products and/or services are actually eco-friendly.  While descriptive and deceptive marks have long faced obstacles to registration, brand owners need to be especially mindful of the new challenges that greenwashing presents for “green” trademarks.  Read the full article here.

Reposted from JD Supra.

Little League Has Big Trademark Problems

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PennLive reports that Little League Baseball, Inc. has big league trademark infringement problems stemming from the unauthorized use of its iconic name.  The first LITTLE LEAGUE trademark was registered in 1957, and the Pennsylvania-based organization currently owns a portfolio of dozens of U.S. and foreign trademark registrations protecting the LITTLE LEAGUE mark and logo.  As the largest youth-oriented sports organization in the world, Little League has a strong interest in maintaining its brand identity, and has a vigorous enforcement policy regarding its trademark rights.

Little League promotes itself on the web and on social media sites like Facebook and Twitter, and has taken advantage of the increasing popularity of such social media sites to extend its visibility.  However, the organization claims that the growth of social media in particular has resulted in an increase in infringing activity.  Little League’s primary enforcement goal is to maintain exclusivity and control over its trademarks, rather than monetary damages.  The organization also fears that the LITTLE LEAGUE mark could become the generic name for youth baseball, resulting in the loss of its trademark rights through “genericide.”  In view of the fact that the list of infringers includes individuals, companies, a musical group, the media, and the Army National Guard, that concern may be well founded.  Read the full article here.

Reposted from PennLive.

Why Trademark Clearance Matters

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The New York Times ran an article yesterday about small business owner Chanel Jones, who opened a hair salon in Merrillville, Indiana called “Chanel’s Salon.”  It is commonplace for small business owners to use all or part of their own names when selecting a business name (e.g., Erma’s Café, Smith’s Hardware, etc.), and this practice often presents no problems.  In this case, unfortunately, Ms. Jones happens to share her name with one of the most famous brands in the world, and that brand happens to be used in the same industry.  Unsurprisingly, Chanel Inc., the multinational fashion and beauty giant, sent Ms. Jones a cease and desist letter in July 2013 requesting that she remove the word “Chanel” from her business name.  After sending several follow up letters with no response (according to Chanel), Chanel filed suit against Ms. Jones for trademark infringement and unfair competition, seeking an injunction to prevent her from using the word Chanel in her business name.  The suit is still pending.

Besides being a compelling and dramatic human interest story that has future Hollywood blockbuster written all over it, this case highlights the critical importance of conducting a trademark search and clearance analysis for a prospective business name prior to using it.  As Ms. Jones learned, failure to do proper trademark clearance can result in your business being forced to change its name, face geographic restrictions that prevent expansion, defend itself in a lawsuit, and/or pay damages for infringement.

The case also illustrates the counterintuitive but common misperception that a person “owns” his/her own name and is therefore entitled to use it in a business name.  If a person’s name is identical or confusingly similar to another brand or business name in a related field of use, using that name for a business would be a risky proposition.  If your last name is Miller and you use that name for your brewery, you should consider starting a legal defense fund.  If your given name is Ronald McDonald, you still can’t call your restaurant “McDonald’s.”  And, as the article reports, Chanel Jones probably cannot call her business “Chanel’s Salon.”  Read the full article here.

By Eric Pouhier (Own work) [CC-BY-SA-2.5 (http://creativecommons.org/licenses/by-sa/2.5)], via Wikimedia Commons.

By Eric Pouhier (Own work) [CC-BY-SA-2.5 (http://creativecommons.org/licenses/by-sa/2.5)], via Wikimedia Commons.

Reposted from The New York Times.

Instagram in Stagrâm, Part 2

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World Trademark Review reports on the ongoing trademark dispute between Instagram and writer Matt Unsworth over Unsworth’s registration of the domain names slutsofinstagram.com and whoresofinstagram.com (both safe for viewing).  As detailed in an earlier post, the slutsofinstagram.com domain registration earned Unsworth a cease and desist letter from Instagram, asserting that the domain name appears to incorporate the registered INSTAGRAM trademark, and appears to be used in a manner that infringes, dilutes, and tarnishes the reputation of the INSTAGRAM mark (i.e., sluts of instagram).  Unsworth publicly responded to Instagram by explaining that the domain name is properly read as “Slütsof in Stâgram,” the title of a fantasy story about a duck named Slütsof who journeys across the mystical land of Stagrâm in search of her brother Whöresof.

Unsworth appears to be sticking by his original story, telling World Trademark Review that “at no point was it a plan to start a website for people to post pictures of promiscuous girls they found on Instagram, nor was it all done as an elaborate prank on Instagram.  Slütsof in Stâgram is an original piece of art that I created because I like telling stories and enjoy the creative process.”  Unsworth also noted that, due to the media attention surrounding the dispute, the slutsofinstagram.com site received “a million hits in under a day.”

Instagram effectively had no choice but to send the letter, since trademark owners who fail to police the infringement or misuse of their marks risk losing their exclusive rights to the marks.  However, as Instagram’s situation shows, the act of trying to take down an unauthorized site can have the unintended consequence of increasing the amount of media coverage and web traffic to that site.  It will be interesting to see how the dispute will be resolved, and what ultimately becomes of poor Slütsof and Whöresof (and whether the two have any other long-lost siblings).  Read the full article here.

Reposted from World Trademark Review.

“How” Apparently Does Matter

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The New York Times reports on a pending trademark dispute between Dov Seidman, a prominent author and consultant, and Chobani, Inc., America’s largest Greek yogurt manufacturer, over the word HOW.  Seidman owns two U.S. registrations and a number of pending applications for the HOW mark, including an application for the mark HOW MATTERS, for a variety of educational and consulting products and services, all relating principally to business ethics and behavior.  Chobani, on the other hand, owns two pending trademark applications for the mark HOW MATTERS, for yogurt products and restaurant services.  Seidman has filed suit against Chobani and Chobani’s ad agency on the grounds that Chobani’s use of the mark HOW MATTERS infringes Seidman’s family of HOW marks.  Because the goods and services with which the two parties’ respective marks are used appear to be dissimilar, Seidman may have a difficult time proving that a likelihood of consumer confusion exists between the parties’ marks, which is the heart of a trademark infringement claim.  However, the motivation behind the lawsuit may have more to do with moral rights than trademark rights.  According to Seidman, Chobani is “using ‘How’ to convey and connote that they are an ethical company… [t]hey are using ‘How’ exactly the way I use it.  They’ve appropriated the foundation of my entire philosophy.”  It remains to be seen whether the use of a mark to connote a similar idea, but with unrelated goods and services, can sustain a trademark infringement claim.  Read the full article here.

ChobaniYogurt via YouTube.

ChobaniYogurt via YouTube.

Reposted from The New York Times.

Darth Trademark

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Did you know that sounds may be registered as trademarks under U.S. law?  Per Section 1202.15 of the Trademark Manual of Examining Procedure, “[a] sound mark identifies and distinguishes a product or service through audio rather than visual means.  Sound marks function as source indicators when they ‘assume a definitive shape or arrangement’ and ‘create in the hearer’s mind an association of the sound’ with a good or service.”  In other words, a distinctive sound is registrable if it is recognized by the public as an indication of source for particular products or services.

Even the relatively mundane sound of “rhythmic mechanical human breathing created by breathing through a scuba tank regulator” can be trademarked under the right circumstances.  For example, the sound mark of U.S. Registration No. 3618322, featured below, is instantly recognizable to a broad swath of the public, clearly associated with a certain dark and malevolent source of goods and services, and widely feared (for trademark infringement purposes) throughout the Empire:

77419252_1.jpg

IP in 3D

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JD Supra reports on the various intellectual property issues presented by the rising popularity of 3D printing, a technology that is taking the law into uncharted territory.  For example, trademark law may cover the branding of the 3D printed product, copyright and trade secret law may cover the “blueprint” of the product design, trade dress and design patent law may cover the appearance of the product, and patent law may cover the utility of the product or the printing process itself.  However, because the technology essentially enables users to print whatever they want, the existing legal framework for IP protection may prove inadequate to prevent or police the unauthorized manufacture of infringing or counterfeit goods.  As is often the case, the law may have trouble keeping up with the rapid pace of technological development.  Read the full article here.

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

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

Reposted from JD Supra.

Virtual Marilyn Monroe Creates Real Legal Issues

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As reported in The Hollywood Reporter, the Estate of Marilyn Monroe is being preemptively sued in New York federal court by Virtual Marilyn LLC, a company that produces a “computer-generated virtual actress adopting the persona of Marilyn Monroe.”  Virtual Marilyn is seeking a declaratory judgment that its use of the “Virtual Marilyn” character does not constitute unfair competition or infringe any trademarks, copyrights, or rights of publicity belonging to the Estate of Marilyn Monroe.  The article provides an interesting overview of the types of intellectual property protection that celebrities and other famous individuals can use to protect and financially exploit their public personas.  Read the full article here.

By Trailer screenshot (The Prince and the Showgirl trailer) [Public domain], via Wikimedia Commons.

By Trailer screenshot (The Prince and the Showgirl trailer) [Public domain], via Wikimedia Commons.

Reposted from The Hollywood Reporter.

Hasbro Cracks Down on Scrabble Rousers

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Slate reports on the recent efforts of Hasbro Inc., maker of the popular game Scrabble, to claim and assert copyright ownership over lists of words used by Scrabble players and tournaments.  Digital versions of Scrabble word lists have been circulating online for more than two decades, and in some instances have been compiled by the players themselves.  In addition to the practical difficulties in policing the circulation of such lists on the Internet, Hasbro’s action also raises the interesting question of whether a list of words has sufficient originality to qualify for copyright protection.  In addition to exploring the legal issue of whether a Scrabble word list can be copyrighted, the article also provides a fascinating glimpse into the world of competitive Scrabble playing.  Read the full article here.

AbelCheung; http://creativecommons.org/licenses/by-sa/3.0/legalcode.

AbelCheung; http://creativecommons.org/licenses/by-sa/3.0/legalcode.

Reposted from Slate.

A New Business Model for Musicians

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PandoDaily examines the non-traditional music career of Scott Hansen, better known as the electronic artist Tycho, and the various ways that technology and consumer preferences have changed the business model for the music industry.  Tycho's story illustrates the new possibilities for a successful music career that exist in an industry that has seen seismic changes in the past few years.  It also underscores the importance of understanding copyright and ownership issues for musical artists, as well as the potential perils of signing contracts without a clear understanding of their provisions and effects.  Read the full article here.

By migster14 (originally posted to Flickr as Trinity) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By migster14 (originally posted to Flickr as Trinity) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from PandoDaily.

Instagram in Stagrâm

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The Domain Magnate blog has a post illustrating one of the major problems faced by trademark owners online—the unauthorized registration by third parties of derivative internet domain names incorporating the trademarked term.  In clear cases of unauthorized use or misappropriation of a registered trademark, the trademark owner has several means available to force the infringing user to take down or relinquish the domain, such as ICANN's Uniform Domain Name Dispute Resolution Policy.  However, as Instagram recently learned, some defenses are more creative than others.

Instagram sent a cease and desist letter to the owner of the domain slutsofinstagram.com on the grounds that the domain appears to incorporate the registered INSTAGRAM trademark, and appears to be used in a manner that infringes, dilutes, and tarnishes the reputation of the INSTAGRAM mark.  The domain owner responded in epic fashion by explaining that slutsofinstagram was, of course, actually Slütsof in Stagrâm, “an online fantasy series about a princess duck named Slütsof and her adventurous journey across the mystical lands of Stagrâm.”  Slütsof is apparently on a quest to find her long-lost brother Whöresof, whose own adventures are chronicled in the companion series Whöresof In Stagrâm, conveniently located at whoresofinstagram.com.  Slütsof and Whöresof are still awaiting Instagram’s next move.  Read the full article here.

Reposted from Domain Magnate.

James Cameron Wins Avatar Copyright Lawsuit

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As reported by JD Supra, a copyright infringement lawsuit against filmmaker James Cameron over the blockbuster film Avatar was dismissed last week by the U.S. District Court for the Southern District of New York.  The case, Dean v. Cameron et al., was brought by William Dean, a noted visual artist, who claimed that some of the imagery and visual elements of the fictional world Pandora were copied from his works.  In the opinion dismissing the case, the Court held that “Plaintiff cannot show that a substantial similarity exists between Avatar and the copyrightable elements of Plaintiff’s artworks,” because “no average lay observer would recognize Avatar as having been appropriated from the copyrighted work.”  The opinion provides a useful overview of the boundaries of copyright protection, and of the well-established legal principle that “not all copying results in copyright infringement”; as the Court notes, “many Hollywood movies take their inspiration from other movies or works — or go even further — without running afoul of the Copyright Act.”  Read the full article here, and the Court’s opinion here.

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

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

Reposted from JD Supra.

Dueling Ukeleles

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BBC News reports that The Ukulele Orchestra of Great Britain is engaged in a trademark dispute with The United Kingdom Ukulele Orchestra.  The former group, which has been performing for nearly three decades, is seeking to prevent the latter group, formed in 2009, from using what the former considers to be a confusingly similar professional name.  The story serves as a cautionary tale for musicians, bands, and performing acts of all types, and highlights the fact that securing trademark protection for your stage name can be a critical step in maintaining your professional reputation (and averting a full-scale ukelele melee).  Read the full article here.

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

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

Reposted from BBC News.

The Turtles and Their Royalties Are Happy Together

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The Music Technology Policy Blog has an informative, if less than impartial take on this week’s summary judgment ruling for the plaintiff by the U.S. District Court for the Central District of California in Flo & Eddie Inc. v. Sirius XM Radio Inc., et al., CV 13-5693 PSG (RZx).  The Court ruled that the plaintiff, a corporation that administers the licensing rights for the 1960s band The Turtles, is entitled to back royalties under California state copyright law for pre-1972 sound recordings, which are exempt from federal copyright law.  Because federal copyright law does not include a public performance right or digital performance right for sound recordings made before 1972, defendant Sirius (and other digital broadcasters such as Pandora) have taken the position that no royalties are required for digital transmissions of such recordings.  This argument, know as the “Pandora loophole,” was rejected by the Court, which held that “copyright ownership of a sound recording under [Cal. Civ. Code] § 980(a)(2) includes the exclusive right to publicly perform that recording.”  The ruling is being hailed as a victory for artist’s rights, and for the principle that musicians should be compensated for the use of their pre-1972 works.  Read the full article here, and the court’s Order Granting Plaintiff’s Motion for Summary Judgment here.

By 2bgr8 (File:Money Cash.jpg) [CC-BY-3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

By 2bgr8 (File:Money Cash.jpg) [CC-BY-3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

Redskins v. Native Americans

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The Washington Post has a piece today on the ongoing legal saga between Pro-Football, Inc. and a group of Native Americans over the Washington Redskins name (see prior blog posts on this subject here, here, and here).  Following 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, Pro-Football filed a federal lawsuit against the Native American group that brought the cancellation proceeding against the six trademarks.  The Native American defendants have now filed a motion to dismiss the lawsuit, arguing that Pro-Football’s dispute is with the U.S. Trademark Office, rather than with the defendants, and that a proper remedy would be to simply appeal the TTAB’s ruling.  The defendants also speculate that Pro-Football may have elected to sue them instead of appealing the TTAB ruling in order to avoid the risk of a final judgment from the court in favor of cancellation.  Read the full article here, and the Memorandum of Law in Support of Defendants’ Motion to Dismiss here.

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

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

Reposted from The Washington Post.

Circuit Courts Split on Copyright Fair Use Analysis

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JD Supra has an interesting article on last week’s ruling by the 7th Circuit Court of Appeals in Kienitz v. Sconnie Nation LLC, No. 13-3004, 2014 WL 4494825 (7th Cir. Sept. 14, 2014).  In Kienitz, the 7th Circuit affirmed a summary judgment ruling by the U.S. District Court for the Western District of Wisconsin for the defendant Sconnie Nation, holding that the defendant’s alteration and use of plaintiff Kienitz’s photograph of Madison mayor Paul Soglin was a permissible fair use under the Copyright Act.  Notably, the 7th Circuit criticized and declined to follow the “transformative use” analysis recently adopted by the 2nd Circuit in Cariou v. Prince, 714 F.3d 694 (2nd Cir. 2013).  As the article notes, while the 2nd Circuit’s “transformative use” analysis has come under criticism before, “Kienitz is the first Circuit-level critique of Cariou” and “represents the genesis of a noteworthy Circuit split on the correct application and significance of a work’s ‘transformative use’ on the fair use inquiry.”  Read the full article here, and the 7th Circuit's opinion here.

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

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

Reposted from JD Supra.

Unity and UnityPoint Reach Point of Unity

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In local trademark news, the Wisconsin State Journal reports that the trademark infringement lawsuit filed last December by Wisconsin-based Unity Health Plans Insurance Corporation against Iowa-based UnityPoint Health has been resolved.  According to a joint press release issued by the two companies, “Unity Health Plans Insurance Corporation and UnityPoint Health have resolved the pending trademark litigation.  Both parties are pleased with the resolution and look forward to working together in the future.  Terms of the resolution are confidential.”  Because the terms of the settlement have not been disclosed, it is unclear whether the parties have agreed to a name change by one of the parties, a coexistence agreement, or some other solution that will help to avoid consumer confusion between the UNITY and UNITYPOINT marks.  Read the full article here, and the joint press release here.

Reposted from the Wisconsin State Journal.