Political Ad Ruled Non-Infringing

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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.

Reposted from the Trademark & Copyright Law Blog.

RIAA Calls Piracy an “Assault on Our Humanity”

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From the rhetorical hyperbole department, TorrentFreak reports that the Recording Industry Association of America (RIAA) recently submitted its “2014 Out-of-Cycle Review of Notorious Markets” report to the Office of the United States Trade Representative.  Being a lobbying and advocacy group for the music industry, the RIAA is tasked generally with representing and promoting industry interests, and specifically with strengthening copyright policy and enforcement.  As such, the group’s opposition to the large-scale copyright infringement that occurs online on a daily basis is both understandable and laudable.

In its report, the RIAA takes particular aim at sites such as the Pirate Bay, whose proponents have called the RIAA’s anti-piracy efforts a form of censorship that hinders free expression.  While the copyright enforcement equals censorship argument is deeply flawed, particularly coming from those engaged in mass piracy, the RIAA’s response, characterizing online piracy as an “assault on our humanity” and a “misappropriation of fundamental human rights,” is perhaps just a teensy bit overwrought.  The report further expounds that, “[i]f the protection of expression is itself a restriction on freedom of expression, then have entered a metaphysical Wonderland that stands logic on its head, and undermines core, shared global values about personhood.”  It is worth noting that the RIAA has a long history of using such histrionics in its efforts to influence U.S. copyright law and policy, and has opposed nearly every new technology since radio that could conceivably facilitate infringement.  Since the RIAA has long been one of the most prominent voices in major copyright policy debates, a case could be made that such rhetoric is persuasive.  However, if the RIAA is right, and the millions of infringements that occur each day really are assaults on our humanity and misappropriations of fundamental human rights, then civilization may well be doomed by the next Taylor Swift album.  Read the full article here, and the RIAA report here.

By The Pirate Bay [CC0], via Wikimedia Commons.

By The Pirate Bay [CC0], via Wikimedia Commons.

Reposted from TorrentFreak.

It’s HALLOWEEN®!

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In honor of All Hallows’ Eve, the good folks at the Trademarkology blog have posted a Spooktacular Guide To Halloween Trademarks, which is exactly what it sounds like.  Fun fact—did you know that Coors Light is both THE WORLD’S MOST REFRESHING BEER and THE OFFICIAL BEER OF HALLOWEEN?  I know, right?!  Read the full post here, if you dare.  And use caution when trick-or-treating—there’s lots of infringement out there.

Reposted from Trademarkology.

Google Glass Banned in Movie Theaters

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As reported in Techdirt, the Motion Picture Association of America and the National Association of Theatre Owners have issued the following statement updating their existing “zero-tolerance policy toward using any recording device while movies are being shown” to expressly include “wearable devices” such as Google Glass:

The National Association of Theatre Owners (NATO) and the Motion Picture Association of America (MPAA) have a long history of welcoming technological advances and recognize the strong consumer interest in smart phones and wearable “intelligent” devices. As part of our continued efforts to ensure movies are not recorded in theaters, however, we maintain a zero-tolerance policy toward using any recording device while movies are being shown. As has been our long-standing policy, all phones must be silenced and other recording devices, including wearable devices, must be turned off and put away at show time. Individuals who fail or refuse to put the recording devices away may be asked to leave. If theater managers have indications that illegal recording activity is taking place, they will alert law enforcement authorities when appropriate, who will determine what further action should be taken.

The irony of the MPAA and NATO claiming to “have a long history of welcoming technological advances” will not be lost on anyone familiar with the major copyright debates of the last century.  As the article notes, the MPAA and others in the content-producing industries have opposed virtually every new technology that could possibly be used to facilitate copyright infringement, cut into their revenue streams, or force any changes to their business models.  This strategy has often clashed with the opposing interests of the consumer electronics industry, broadcasters, Internet service providers, and consumers who want maximum access to the latest technologies.  Thus far, technology seems to be winning most of the battles, given the enormous amount of copyright infringement that takes place every day on the Internet alone.  In the face of such challenges, the copyright concerns of groups like the MPAA and NATO are understandable.  Read the full article here, and the MPAA/NATO statement here.

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

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

Reposted from Techdirt.

Copyright and Creativity

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Vox reports on a new study about the commercial and cultural effects that copyright protections can have on a society.  Stanford economists Michela Giorcelli and Petra Moser studied the state of Italian opera from the late 1700s through 1900, and discovered that after Napoleon invaded Italy and imposed French copyright laws, those laws were associated with an increase in both the number and quality (based on historical popularity) of operas composed in Italy.  The study validates one of the basic premises of copyright law, which is that providing a legal mechanism for compensating authors for their works incentivizes the creation of such works, and thus produces both commercial and cultural benefits for the state.  The article ends, however, with a counterpoint quoted from a recent New Yorker article (discussed in an earlier post here) about the state of copyright law in the digital era: “Statutes protecting copyright have never been stricter; at the same time, every minute of every day, millions of people are making or using copies of material-texts, sounds, and images-that they didn't create.”  Read the Vox article here.

By Thomas Rowlandson (1756–1827) and Augustus Charles Pugin (1762–1832) (after) John Bluck (fl. 1791–1819), Joseph Constantine Stadler (fl. 1780–1812), Thomas Sutherland (1785–1838), J. Hill, and Harraden (aquatint engravers)[1] [Public domain or Pu…

By Thomas Rowlandson (1756–1827) and Augustus Charles Pugin (1762–1832) (after) John Bluck (fl. 1791–1819), Joseph Constantine Stadler (fl. 1780–1812), Thomas Sutherland (1785–1838), J. Hill, and Harraden (aquatint engravers)[1] [Public domain or Public domain], via Wikimedia Commons.

Reposted from Vox.

Today in Copyright History: 10/28

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October 28, 1992 saw the introduction of royalties on the sale of digital audio recording devices.  The Audio Home Recording Act provided for royalties to performers and copyright owners of sound recordings, and to writers and publishers of musical works, upon the manufacture and sale of digital audio recording devices and media.

Six years later, on October 28, 1998, the Digital Millennium Copyright Act provided for implementation of the WIPO Copyright Treaty and the Performances and Phonograms Treaty, limited online infringement liability for Internet service providers, created a form of protection for vessel hulls, and clarified the role of the Copyright Office.

Stairway to Infringement?

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NPR reports that a relatively obscure band called Led Zeppelin has been sued for copyright infringement over a relatively obscure song called “Stairway to Heaven.”  The plaintiffs in the case are the heirs of Randy California, a founding member of the band Spirit, who authored a song called “Taurus” in the late 1960s.  Led Zeppelin toured with Spirit during that time period, and is thought to have been significantly influenced by Spirit’s sound.  California’s heirs assert that the opening riff of “Stairway to Heaven” was copied from the opening riff of “Taurus,” and are seeking monetary compensation and a songwriting credit for California.

To prevail on a copyright infringement claim under U.S. law, the claimant has to prove that (1) the accused infringer had access to the copyrighted work (because copyright infringement requires actual copying), and that (2) the accused work and the copyrighted work are substantially similar.  Given the history between the two bands, proving access should not be a problem.  As far as substantial similarity is concerned, the court will have to decide whether “Stairway to Heaven” is similar enough to “Taurus” to support a finding of infringement.  Read the full article here, and listen to the audio clips of the two songs below to make your own judgment.

Wikimedia Commons.

Wikimedia Commons.

Reposted from NPR.

The Empire Strikes Bock

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Per The Hollywood Reporter, Lucasfilm filed an opposition last week against a pending U.S. trademark application for the mark EMPIRE STRIKES BOCK, owned by the Empire Brewing Company of Syracuse, New York.  The EMPIRE STRIKES BOCK mark has been used by the Empire Brewing Company as a brand name for one of its lagers since 2004, but apparently has only recently come to the attention of Lucasfilm.  Lucasfilm alleges in its Notice of Opposition that the EMPIRE STRIKES BOCK mark for beer is confusingly similar to and dilutes the well-known THE EMPIRE STRIKES BACK mark, part of the Star Wars film franchise which has been extensively licensed for a wide variety of products, including alcoholic beverages.

The week before the opposition was filed, the Empire Brewing Company filed a trademark application covering only the STRIKES BOCK portion of the mark, and the lager currently appears on the company’s website under the STRIKES BOCK name rather than the longer EMPIRE STRIKES BOCK name.  Interestingly, the STRIKES BOCK application indicates that the mark has been used in its STRIKES BOCK form since 2004, the same date of first use listed in the EMPIRE STRIKES BOCK application.  It is unclear from the record whether the EMPIRE STRIKES BOCK mark, the simpler STRIKES BOCK mark, or both, have actually been used with the lager over the past decade.  If the company can establish that the mark has been used in the STRIKES BOCK form the entire time, then it may have the option of simply abandoning the pending EMPIRE STRIKES BOCK application and sticking with the simpler STRIKES BOCK mark.  Without the word EMPIRE, the STRIKES BOCK mark may have a greater chance of surviving a potential future opposition by Lucasfilm.  The STRIKES BOCK application thus may have been filed as a strategic, preemptive move on the Empire Brewing Company’s part to retain the brand equity it has built up over the past ten years.  It will be interesting to see how the saga unfolds (although if Lucasfilm resorts to using the force, all bets are off).  Read the full article here, and Lucasfilm’s Notice of Opposition here.

By Vox Efx (https://www.flickr.com/photos/vox_efx/2559311106/) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By Vox Efx (https://www.flickr.com/photos/vox_efx/2559311106/) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from The Hollywood Reporter.

Court Calls Food Flavor Trademark Claim “Half-Baked”

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Forbes has an interesting piece on this week’s ruling on a motion to dismiss in New York Pizzeria, Inc. v. Syal, 3:13-CV-335 (S.D. Tex. Oct. 20, 2014).  Texas-based New York Pizzeria sued a rival restaurant chain in federal court for trademark infringement, contending that, as the Court puts it, “the flavor of its Italian food… [is] entitled to protection under the trademark laws.”  The Court begins its analysis by noting that a mark is entitled to trademark protection “only if it distinguishes the source of a product,” and explains that “[b]ecause flavor is generally seen as a characteristic of the goods, rather than as a trademark, a flavor, just as in the cases of color and scent, can never be inherently distinctive… It is therefore only when a flavor has acquired distinctiveness, or ‘secondary meaning’—that is, when customers have learned to associate the flavor with its source—that it has any chance of serving as a valid trademark.”  However, even if a flavor has acquired distinctiveness (which the plaintiff in this case failed to establish), it will not be entitled to trademark protection if the flavor is functional, because other parties will face a competitive disadvantage if a single party is allowed to monopolize a feature that “is essential to the use or purpose of the article or… affects the cost or quality of the article.”  The Court then determines that “[t]he flavor of food undoubtedly affects its quality, and is therefore a functional element of the product,” opines that the hurdle of the functionality doctrine is “possibly insurmountable—in the case of food,” and further notes that, unsurprisingly, the plaintiff “is unable to cite any case recognizing a trademark in the flavor of food.”  Concluding with the benchslap that “the flavor infringement claim is plainly half-baked,” the Court dismisses the trademark infringement claim.  Although trademark protection is generally unavailable for food flavors, the article notes that “food vendors can still rely on trade secret law to protect their recipes” (think Coca-Cola).  Read the full article here, and the Court’s opinion here.

By jeffreyw (Mmm... veggie pizza  Uploaded by Fæ) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By jeffreyw (Mmm... veggie pizza  Uploaded by Fæ) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from Forbes.

88 College-Owned Trademarks, Arranged as a Poem

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From the idle hands department, The Chronicle of Higher Education took eighty-eight unusual trademarks owned by colleges and universities and arranged them into an interactive poem, resulting in a work of pure GENIUS JUICE that leads to FULFILLMENT BEYOND MEASURE.  For the curious individuals who believe that PEOPLE WHO ASK, KNOW, each mark can be expanded to show the trademark owner, filing date, and the goods and/or services with which that mark is used.  Remember, people, you don’t have to go to HAHVAHD or feed ROBOTUNA to a HOWLING COW to know that THE BOX DOES NOT EXIST.  Also, INSTABONE.  Just ASK DR. UNIVERSE.  Read the full article, and poem, here.

While Gibson’s Guitar Gently Weeps

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DuetsBlog reports that Gibson Guitar is attempting to register the shape of its guitar bodies as a product configuration trademark, described in U.S. Application Serial No. 86168793 as “the uniquely shaped three-dimensional configuration for the body portion of the guitar with a curved base, rounded body shape, and stylized cutaway rounded curves at the top left and right of the guitar body.”  The pending application was recently published for opposition, and was jointly opposed last week by no less than fifteen different parties, all claiming that they will be damaged by the registration of the mark.  The fifteen opposers (U.S. Music Corporation, ESP Shibuya Enterprises, Cordoba Music Group, Collings Guitars, Ed Roman Enterprises, Armadillo Enterprises, Schecter Guitar Research, Westheimer Corporation, Peavey Electronics Corporation, Warwick GmbH & Co. Music Equipment KG, James Trussart Guitars, JS Technologies, Premier Builders Guild, Sadowsky Guitars, and John Hornby Skewes & Co.) allege in their Notice of Opposition that dozens of guitar manufacturers have been using the claimed guitar configuration since the 1960s, and that as a result of this “rampant use by third parties, the ‘793 Body Shape is a generic electric guitar body shape, does not function as a source identifier and has become a standard style of guitar.”  Gibson has not yet filed an Answer to the Notice of Opposition, but it will be interesting to see what substantive arguments the company will make to establish an exclusive right to the claimed guitar body shape, and whether such arguments will ultimately be persuasive to the Trademark Trial and Appeal Board.  Read the full article here, and the Notice of Opposition here.

Reposted from DuetsBlog.

Dodge Has a New Challenger

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As reported in Autoweek, Chrysler Group was sued for trademark infringement last week in the Central District of California by Scat Enterprises, an aftermarket specialty auto parts manufacturer.  The lawsuit involves a decades-old trademark dispute between the two parties over Chrysler’s use of the term SCAT PACK as a trim designation for certain Dodge models.  The dispute arose in 1968, when Chrysler first used the SCAT PACK mark with the Dodge Charger R/T, Coronet R/T, and Dart GTS models.  Chrysler stopped using the SCAT PACK mark in 1971 after receiving a cease and desist letter from Scat Enterprises, but revived the mark in 2013 for a version of the Dodge Challenger.  As part of the 2013 branding campaign, Chrysler filed U.S. Trademark Application Serial No. 86048726 for the SCAT PACK mark, but the USPTO recently issued a final refusal of the application based on a likelihood of confusion with the portfolio of SCAT-based marks owned by Scat Enterprises.  The USPTO’s refusal notwithstanding, Chrysler is publicly arguing that the PACK portion of its mark renders it dissimilar to the prior SCAT marks owned by Scat Enterprises, and is calling the Scat Enterprises lawsuit “a meritless and opportunistic attempt to hold Chrysler hostage just days before the upcoming SEMA show.”  Chrysler further pledges to “vigorously defend itself against this attack and look to enforce its own rights in [the SCAT PACK] moniker.”  Read the full article here, and the Scat Enterprises complaint here.

By duggar11 (2012 Dodge Challenger RT  Uploaded by russavia) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By duggar11 (2012 Dodge Challenger RT  Uploaded by russavia) [CC-BY-2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Reposted from Autoweek.

Today in Copyright History: 10/19

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On October 19, 1976, President Gerald Ford signed the fourth general revision of the copyright law.  The Copyright Act of 1976 extended federal protection to all works, both unpublished and published, once they are fixed in a tangible form.  The new copyright term for works created on or after January 1, 1978, the effective date of the law, was the life of an author plus fifty years.

200px-US-CopyrightOffice-Seal.svg.png

Don’t Try This in Court

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Above the Law reports on the case of Denison v. Larkin (N.D. Ill. Aug. 13, 2014), in which Illinois attorney Joanne Denison sued the Illinois Attorney Registration and Disciplinary Commission on the grounds that the Commission’s use of excerpts from Denison’s own blog as evidence against her in a disciplinary proceeding constituted copyright infringement.  As numerous legal scholars and commentators have noted, the use of a party’s copyrighted materials as evidence against that party in a legal proceeding has long been considered a non-infringing fair use by the courts.  Professor Nimmer went so far as to characterize attempts by parties to block the introduction of evidence on the basis of copyright infringement as being among “weakest infringement claims of all time,” and wrote that “[i]t seems inconceivable that any court would hold such reproduction to constitute infringement either by the government or by the individual parties responsible for offering the work in evidence.”  It was therefore unsurprising that the Court rejected Denison’s infringement claims on the basis of fair use, and granted the defendants’ motion to dismiss.  What is surprising is the fact that, in the face of a long and essentially unbroken string of rulings against such claims, copyright holders nonetheless keep trying.  Read the full article here, and the Court’s opinion here.

By Jacklau96 in English Wikipedia [Public domain], via Wikimedia Commons.

By Jacklau96 in English Wikipedia [Public domain], via Wikimedia Commons.

Reposted from Above the Law.

A Copyright Critique

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The New Yorker has a lengthy and fascinating essay on the history of copyright law in the United States, and the ways in which the law has tried to keep pace with changes in both technology and business practices.  The piece provides a nice overview of the legal theories underlying copyright law, and raises questions about the direction that the law is headed, particularly with regard to the numerous term extensions that have kept important works from falling into the public domain.  Read the full article here.

By Editor at Large, Ttog, Stephan Baum (Self-published work by Editor at Large) [GFDL (http://www.gnu.org/copyleft/fdl.html), CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/) or CC-BY-SA-2.5-2.0-1.0 (http://creativecommons.org/licenses/…

By Editor at Large, Ttog, Stephan Baum (Self-published work by Editor at Large) [GFDL (http://www.gnu.org/copyleft/fdl.html), CC-BY-SA-3.0 (http://creativecommons.org/licenses/by-sa/3.0/) or CC-BY-SA-2.5-2.0-1.0 (http://creativecommons.org/licenses/by-sa/2.5-2.0-1.0)], via Wikimedia Commons.

Reposted from The New Yorker.

Converse Sues Over Chuck Taylor Knock-Offs

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The Boston Globe reports that Converse Inc. has filed federal trademark infringement lawsuits against thirty-one different retailers, including Walmart, Kmart, and Sketchers, claiming that the defendant retailers are selling unauthorized knock-off versions of its ubiquitous Converse All Star shoe, commonly referred to as “Chuck Taylors.”  The iconic shoe design dates back to 1917, and Converse claims to have sold more than one billion pairs.  Due to the enduring popularity and distinctive appearance of Chuck Taylors, many rival companies have produced and sold similar-looking shoes over the years.  Converse has responded by taking steps to protect and defend its rights in the design, and has secured federal trade dress registration of numerous aspects of the shoes’ appearance, including the toe cap, toe bumper, heel bumper, side stripes, circular “All Star” logo, grommets, and sole of the shoe.  According to CEO Jim Calhoun, the competitors “have chosen to ignore our common law rights and registered trademark rights to capitalize on our brand.”  Given the vast size of the market, the parties on both sides of this dispute have ample incentive to defend their perceived share.  Read the full article here.

Reposted from the Boston Globe.

Don Henley Doesn't Take It Easy

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As reported in the Wisconsin State Journal, Eagles founding member Don Henley filed a federal lawsuit last week in the Central District of California against Wisconsin-based clothing retailer Duluth Trading Company, claiming trademark infringement, false endorsement and unfair competition, and violation of right of publicity (note—the article erroneously characterizes the suit as a copyright infringement case).  The suit was prompted by an October 6, 2014 advertisement for henley-style shirts run by Duluth Trading Company using the tagline, “Don a Henley and Take it Easy.”  In addition to the statutory and common-law rights of publicity attached to his famous name, Henley owns two U.S. trademark registrations for the mark DON HENLEY (Reg. Nos. 2337742 and 2359466), which formally protect his name as a trademark.  Henley claims that the clothing company knowingly and willfully infringed on his rights by using both his name and the song title “Take it Easy” in its ad without permission.  Because the suit was just filed last week, Duluth Trading Company has not yet filed an Answer to Henley’s Complaint, and it is unclear how the case will ultimately be resolved.  However, the case provides an overview of the various types of protection that musicians, actors, models, performers, athletes, celebrities, and other individuals and groups can use to protect and promote their public personas.  Read the full article here, and Henley’s Complaint here.

Reposted from the Wisconsin State Journal.