Trademark & Copyright Law
On February 15, 1972, Congress extended federal protection to sound recordings fixed and first published on or after that date. Recordings fixed earlier remained under the protection of state laws.
By Indale Iglesias (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.
Reposted from the History of Copyright Timeline at the U.S. Copyright Office.
Friday the 13th is considered by many people to be one of the unluckiest days of the year, and some of the more superstitious among us are fearful of even leaving their homes on such a portentous day. Well, thanks to the Sierra Nevada Brewing Company and the well-established scientific principle that alcohol = liquid courage (and that any day that includes beer can’t be all bad), a frothy libation now exists that is undoubtedly up to the task of turning a superstitious frown upside down—RYEDAY the 13th®. The company’s flagrant and fearless Friday flaunting brings a much-needed measure of mirth to an otherwise woeful day, and if anyone can conceive of a better omen than the recent granting of U.S. Trademark Registration No. 4649156 for the RYEDAY THE 13th mark, this author would like to hear about it. So come out from under those bedcovers, head to the nearest liquor store, and celebrate Friday with a RYEDAY. Just be careful not to break the bottle as you step under the ladder to avoid that black cat.
Thanks to Erik Pelton of the IPelton® blog for flagging this one.
Variety reports that the ecosystem of online copyright infringement is evolving from downloading to streaming as a means of distributing pirated content, according to a new report from the Digital Citizens Alliance, a self-described “coalition of consumers, businesses, and Internet experts focused on educating the public and policymakers on the threats people from all walks of life face on the Internet.” A shift from downloading to streaming has many potential ramifications for digital copyright enforcement, which has historically been based on the ability to trace infringing files back to a specific location, such as a server or personal computer. In order to detect infringing content by that means, the content has to be stored on a more than a transitory basis (i.e., downloaded). A streaming model, by contrast, delivers content in an ephemeral manner, and does not require a transfer of content from one location to another—when a stream ends, the content simply disappears. An additional issue with streaming is that the streaming location can easily be moved to a different server, or even a hacked server operated by an unwitting third party. Both of these issues understandably make tracing and enforcement efforts more difficult, and can implicate innocent third parties that are unknowingly trafficking infringing content from their hacked computers. Read the full article here.
By Gmaxwell (Own work) [Public domain], via Wikimedia Commons.
Reposted from Variety.
Timberlake Law’s Trademarks Are Magic blog has a rundown of “This Week in Katy Perry Trademark Filings.” Perry’s company, Killer Queen LLC, filed five intent-to-use U.S. trademark applications on February 6, 2015, just five days after Perry is alleged to have performed at some televised sporting event in Arizona, for the marks LEFT SHARK, RIGHT SHARK, DRUNK SHARK, BASKING SHARK, and the design of a friendly blue fish-like creature that was featured onstage with Perry during said alleged performance. All five applications cover “cell phone covers, stickers, mugs, t-shirts, sweatshirts, hats, costumes, plush toys, action figures, figurines, and live musical and dance performances.” Interestingly, while four of the newly-filed applications remain pending, the design application for the fish creatures was expressly abandoned by Perry’s company on February 10, 2015. Although no reason was given for the express abandonment, one suspects that it may have something to do with a pending dispute over ownership of the design in question. Read the full article here.
U.S. Trademark Application Serial No. 86527730.
Reposted from Trademarks Are Magic.
The Hill reports that the Senate Judiciary Committee could vote on President Obama’s nominee to head the U.S. Patent and Trademark Office as soon as Thursday of this week. The nominee, Michelle K. Lee, is currently the Deputy Director of the USPTO, but has been serving as the acting director since January 2013. Lee has already testified twice before the Judiciary Committee, and is expected to win confirmation to the Director’s post with little opposition. Approval of her nomination by the Judiciary Committee will send Lee’s nomination to the full Senate for an up-or-down vote. Read the full article here, and an earlier post on this subject here.
Reposted from The Hill.
An article at World Trademark Review sheds further light on the “[furor] surrounding trademark applications filed by pop star Taylor Swift,” and how it exemplifies “the confused and inaccurate reporting of trademark law in the media” (see an earlier post on this subject here). In addition to the media’s interchangeable and apparently synonymous use of trademarks, copyrights, and patents when discussing any form of intellectual property, the coverage has incited a public backlash against “what is, in reality, normal practice for any individual or [organization] selling merchandise.” Swift is “not actually seeking to trademark lyrics,” which is not permissible under current trademark law, but rather “is using, or planning to use, phrases in connection with merchandise that she already sells, and those phrases happen to be associated with her songs.” The article laments the “false impression to the public of a [monopolization] of the English language” that the media coverage has fostered, and notes that “Swift is certainly not acting unusually in her brand protection strategy”—Kanye West’s 337 trademark applications number nearly three times as many as Swift’s 121, and numerous other famous pop artists have similarly applied for dozens of trademarks for various types of products and services. Unfortunately, the damage may already be done—the media coverage has already “sparked possibly the first trademark protest song,” aptly titled “This Sick Beat” by the “avant-garde metal artist Peculate.” Read the full article here, and hear Peculate’s protest song here.
By Eva Rinaldi from Sydney Australia (Taylor Swift Uploaded by russavia) [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.
Reposted from World Trademark Review.
An article from PetaPixel illustrates a fundamental but sometimes misunderstood principle of copyright law: copyright infringement requires copying. Unlike trademarks and patents, which can be infringed regardless of whether the infringer is aware of their existence, copyrights can only be infringed if the infringer has access to the copyrighted work and engages in actual copying of the work. As such, an independently created work of authorship, by a person (or more than one person) who has never seen the work alleged to be infringed, cannot give rise to a copyright infringement claim, even if the independently created work is very similar or even identical to the allegedly infringed work. Unsurprisingly, the independent creation of two essentially identical works of authorship by two different authors rarely occurs, and most works of authorship that are essentially identical to existing works result from copying. However, “rarely” does not mean “never.”
As the article reports, a UK-based photographer named Sarah Scurr was accused in 2015 of copyright infringement for a 2006 photograph of an iceberg off the coast of Chile that she entered in a photo competition in 2009. The accuser, Chilean photographer Marisol Ortiz Elfeldt, alleged that Scurr had taken one of her photographs, edited it, and submitted it to the competition. The sponsor of the competition compared and analyzed the original images from both photographers, which to the unaided eye appear to have come from the same original image. However, upon closer examination, slight differences were detectable in the perspectives of the two images, leading the sponsor to conclude that “the two women captured nearly identical photographs of the same scene at roughly the same moment and from roughly the same vantage point,” which “lead to the remarkable conclusion that the two women were standing beside one another when they took the same photo just seconds apart.” No copying, no infringement. Apparently, it happens. Read the full article and compare the two images here.
By Bernie (Own work) [Public domain], via Wikimedia Commons.
Reposted from PetaPixel.
The Telegraph reports that UK-based luxury car maker Aston Martin Lagonda is suing one of its suppliers, design firm Envisage Group, for trademark, copyright, and design infringement. Envisage used to provide design services to Aston Martin, but began designing and producing its own line of cars last year. Aston Martin alleges that Envisage has misappropriated several design elements from its own iconic designs, including designs of wheels and headlights. The suit also alleges that Envisage is using a logo that is “identical” to the famous winged logo that has appeared on Aston Martin cars for more than eighty years, in “a clear exploitation on the coat-tails of the Aston Martin Lagonda trademarks.” Aston Martin cars are most famous for being the cars of choice for a certain fictional British spy, and have appeared in eleven James Bond films dating back to the 1960s. Read the full article here.
By jeremyg3030 (Aston Martin Vantage S) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
Reposted from the Telegraph.
The European Union’s Office for Harmonization in the Internal Market (OHIM) reports that the first set of its updated Guidelines entered into force on February 1, 2015. The updated Guidelines, adopted by OHIM on December 4, 2014, serve as a manual of OHIM office practices and procedures relating to trademarks and community designs. The second set of updates is due to be released in mid-2015, at which point the current cycle of revision will be complete. Read the full article here, and the updated trademark Guidelines here.
Reposted from OHIM.
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.
By Federal Judiciary [Public domain], via Wikimedia Commons.
Reposted from the History of Copyright Timeline at the U.S. Copyright Office.
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.
By Marcin Wichary from San Francisco, U.S.A. Uploaded by MyCanon (Taylor Swift) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
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.
U.S. Trademark Registration No. 3428287.
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.
Richard Yaussi [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.
Reposted from World Intellectual Property Review.
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.
Court documents.
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.
By Daderot (Own work) [Public domain], via Wikimedia Commons.
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.
By Detroit Publishing Co. [Public domain], via Wikimedia Commons.
Reposted from the History of Copyright Timeline at the U.S. Copyright Office.
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.
By Joachim Roncin (proof), Charlie Hebdo (charliehebdo.fr) Typefaces authors: Mark van Bronkhorst (Sweet Sans Heavy), H. Hoffman/H. Berthold (Block Condensed) (Joachim Roncin’s tweet, PDF adapted to SVG.) [CC0], via Wikimedia Commons.
Reposted from World Intellectual Property Review.
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.
Read the full article here, and yesterday’s post on this topic here.
Public domain, via Wikimedia Commons.
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.
By OTFW , editor Eugenio Hansen, OFS [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.
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.
Mathew Brady [Public domain], via Wikimedia Commons.
Reposted from the History of Copyright Timeline at the U.S. Copyright Office.
![By Indale Iglesias (Own work) [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1424042726471-G9ZRL10LUNTK2N33EOCL/image-asset.jpeg)
![By Gmaxwell (Own work) [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1423803047716-51005TUMOB12OBRBA5L8/image-asset.png)
![By Eva Rinaldi from Sydney Australia (Taylor Swift Uploaded by russavia) [CC BY-SA 2.0 (http://creativecommons.org/licenses/by-sa/2.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1423545252011-TEAPAZHWDHUOWMOMGK0S/image-asset.jpeg)
![By Bernie (Own work) [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1423115701220-WS4QE6T9D9VTJOXCM7MU/image-asset.jpeg)
![By jeremyg3030 (Aston Martin Vantage S) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1423024056591-7YOXGEGCK0HERN15P4H3/image-asset.jpeg)
![By Federal Judiciary [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1422629969967-3M7BPWFWQFF6LXVPVLPV/image-asset.jpeg)
![By Marcin Wichary from San Francisco, U.S.A. Uploaded by MyCanon (Taylor Swift) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1422597519482-KP7DFETF7DADWXIBN58H/image-asset.jpeg)
![Richard Yaussi [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1422422823392-EGDW18XQUDJNJ1AKRD43/image-asset.jpeg)
![By Daderot (Own work) [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1422076952221-S7B91PG6AWXVE893FIO8/image-asset.jpeg)
![By Detroit Publishing Co. [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1421907657068-EFKOWA2QM6P8CI9H7NE7/image-asset.jpeg)
![By Joachim Roncin (proof), Charlie Hebdo (charliehebdo.fr) Typefaces authors: Mark van Bronkhorst (Sweet Sans Heavy), H. Hoffman/H. Berthold (Block Condensed) (Joachim Roncin’s tweet, PDF adapted to SVG.) [CC0], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1421905817240-D0ZVPZ3XUNY7ASD2AR0C/image-asset.jpeg)
![By OTFW , editor Eugenio Hansen, OFS [CC BY-SA 4.0 (http://creativecommons.org/licenses/by-sa/4.0)], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1421701538349-E3WDWNY8IKWKA12VSCS8/image-asset.png)
![Mathew Brady [Public domain], via Wikimedia Commons.](https://images.squarespace-cdn.com/content/v1/539530d2e4b0e3021538f0db/1421469127012-3BQNVVJNLO24G9QFA9L4/image-asset.jpeg)