Kris Jenner: Mom, Manager, MOMAGER®

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The Hollywood Reporter reports today that celebrity manager and mother of six Kris Jenner “is proud of her role as combined mom and manager and is filing to trademark the ‘momager’ nickname she coined.”  The article further notes that, “[i]f the filed trademark is approved, Jenner would be entitled to sue anyone who uses the phrase without her permission.”  Efforts to secure federal trademark protection for a professional name, assumed title, or catchphrase are common in the entertainment industry (see earlier posts on this subject here, here, here, here, here, and here), so Jenner’s similar efforts are unremarkable.  What is remarkable, however, is the prevalence of what World Trademark Review has called “the confused and inaccurate reporting of trademark law in the media” (see earlier posts on this subject here and here).

In the instant case, the trouble begins in the very first sentence of the article, which states that Jenner is “filing to trademark the ‘momager’ nickname she coined.”  The phrase “filing to trademark” suggests that Jenner is seeking formal protection of the term MOMAGER for the first time, thus making it newsworthy, when in fact, she already owns two federal registrations, dating back to 2011, for the MOMAGER mark for a variety of management and entertainment-related services (see here and here).  Moreover, it is unclear whether the term MOMAGER was actually coined by Jenner, as the term has been registered by a different (and apparently unrelated) party since 2007.  The most consequential error, though, is the assertion that “[i]f the filed trademark is approved, Jenner would be entitled to sue anyone who uses the phrase without her permission.”  One of the more common misconceptions about U.S. trademark law is the notion that the use and registration of a word or phrase entitles the user/registrant to block all other usage of the term, regardless of how the term is used.  In reality, U.S. trademark rights are generally limited to the goods and/or services with which the mark is actually used in commerce, which is why Taylor Swift’s trademark application for THIS SICK BEAT cannot be used to stop the young folk from using that phrase in their daily discourse.  Also, since MOMAGER has already been registered by another party, it is very unlikely that Jenner would be able to stop the other party’s continued use and registration of the mark.  On the plus side, the article at least did not refer to Jenner’s MOMAGER mark as a patent or copyright.  Read the full article and pick your own nits here.  Reposted from The Hollywood Reporter.

How About the “Washington Red-gistrations”?

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The Washington Post reports that a Virginia man named Martin McCaulay and his company, Washington Warriors LLC, have applied to federally register dozens of trademarks for possible new names for the Washington Redskins football team, such as the Washington AMERICANS, BRAVEHEARTS, FEDERALS, FORCES, FOUNDERS, GENERALS, GLADIATORS, MONUMENTS, NATIVES, PANDAS, RED-TAILED HAWKS, TRIBE, VETERANS, and WARRIORS.  According to the article, McCaulay’s hope is that if the team changes its name as a result of the cancellation of the REDSKINS trademarks and the surrounding controversy (see prior posts on the subject here, here, here, here, here, and here), one of his applied-for names will appeal to the team’s owner, and the team will pay handsomely to obtain the rights to it.  This strategy, known as trademark squatting, is considerably more difficult than the related practice of cyberquatting, which basically only requires the purchase of an Internet domain name that trades on the goodwill of another person, business, or entity.  Because trademark registration in the U.S. requires actual use of the mark in commerce in connection with all of the goods/services recited in the application, trademark squatting can be a substantial undertaking.  McCaulay is reported to have already spent more than $20,000 on his efforts to register the names, and has had to create and sell merchandise bearing the fictional team names in order to prove use of the marks.  While McCaulay has successfully registered at least six of the fictional team names to date, it remains to be seen whether his expensive gamble will pay off with the real team—and its real team of lawyers.  Read the full article here.  Reposted from The Washington Post.

What’s More Objectionable: the Words or the Policy?

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World Intellectual Property Review recently conducted a survey of its readers on the question of whether they supported the U.S. Patent and Trademark Office (USPTO) policy of denying the registration of “disparaging” trademarks, and found that fifty-eight percent of respondents agreed with the USPTO policy.  The survey specifically addressed the USPTO’s recent, high-profile decisions to cancel six registrations incorporating the term REDSKINS, and to refuse registration of the mark THE SLANTS by an Asian-American band of the same name (see prior posts on the subject of disparaging marks here, here, here, here, and here).  Both decisions were based on § 2(a) of the Trademark Act (15 U.S.C. § 1052(a)), which provides, in pertinent part, that “[n]o trademark by which the goods of the applicant may be distinguished from the goods of others shall be refused registration on the principal register on account of its nature unless it (a) [c]onsists of or comprises immoral, deceptive, or scandalous matter; or matter which may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national  symbols,  or  bring  them  into  contempt,  or  disrepute.”  Finding that the terms REDSKINS and SLANTS are disparaging to Native Americans and Asian Americans, respectively, the USPTO held both terms to be unregistrable under § 2(a).

From public commentary, it appears that the principal substantive objection to, and source of much of the controversy about, the disparagement provision of § 2(a) is that it denies registration based on the content of the mark, which some view as a violation of the First Amendment.  Regardless of one’s own views regarding the propriety of the terms REDSKINS and SLANTS, there is an argument to be made that the differential treatment of such terms under federal law constitutes both a restriction of free speech and a judgment by the government of the relative value of certain speech.  On the other hand, a refusal by the USPTO to register a trademark does not prevent one from using and enforcing the mark as a trademark for one’s products and services—it merely prevents federal registration of the mark.  It thus can be argued that § 2(a) places no actual restrictions on free speech, since people are still free to use terms that others find disparaging, disreputable, or otherwise offensive—although the government is still making a judgment of the value of certain speech.  In any event, the refusals of both marks are still being litigated, and it remains to be seen whether the constitutional arguments in favor of registration will prove more persuasive to the courts than they apparently were to the survey respondents.  Read the full article here.  Reposted from World Intellectual Property Review.

For SKYPE Trademark, the SKY is the Limit

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BBC News reports that software giant Microsoft has just lost a legal battle in Europe over its SKYPE™ trademark.  The General Court of the European Union held this week that Microsoft’s SKYPE mark is confusingly similar to UK-based broadcaster Sky plc’s SKY® mark, upholding a refusal to register the SKYPE mark by the EU’s Office for Harmonization in the Internal Market.  According to the court, “the figurative element [of the SKYPE mark] conveys no concept, except perhaps that of a cloud,” which “would further increase the likelihood of the element ‘Sky’ being recognised within the word element ‘Skype,’ for clouds are to be found ‘in the sky’ and thus may readily be associated with the word ‘sky.’”  The court’s judgment follows an earlier, high-profile dispute between the two companies—Microsoft’s SKYDRIVE cloud storage service was changed to ONEDRIVE in 2014 following a British court’s ruling that the SKYDRIVE mark was confusingly similar to Sky’s SKY mark for similar services.  Read the full article here.  Reposted from BBC News.


Today in Copyright History: 4/29

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On April 29, 1802, the Copyright Act of 1790 act was amended to include “historical and other prints” and to require, for the first time, copyright owners to include a prescribed notice on every copy of a work distributed to the public.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Public domain, via Library of Congress (http://loc.gov/pictures/resource/cph.3a06218/).

Public domain, via Library of Congress (http://loc.gov/pictures/resource/cph.3a06218/).

Today in Copyright History: 4/27

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Ten years ago today, on April 27, 2005, the Artists’ Rights and Theft Prevention Act allowed for preregistration of certain works being prepared for commercial distribution.  As the U.S. Copyright Office explains, “[p]reregistration is a service intended for works that have had a history of prerelease infringement.  It focuses on the infringement of movies, recorded music, and other copyrighted materials before copyright owners have had the opportunity to market fully their products.”  However, “[p]reregistration is not a substitute for registration.  Its purpose is to allow an infringement action to be brought before the authorized commercial distribution of a work and full registration thereof, and to make it possible, upon full registration, for the copyright owner to receive statutory damages and attorneys’ fees in an infringement action.”  In order to take advantage of the benefits of preregistration, a copyright owner must formally register the work within one month after the copyright owner becomes aware of infringement, and no later than three months after first publication of the work.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Jay Z Now Has Only 98 Problems

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The Hollywood Reporter reports that hip hop mogul Jay Z has prevailed in a copyright ownership lawsuit brought by Chauncey Mahan, a sound engineer who worked on some of the artist’s early recordings.  Mahan’s case, filed in the Southern District of New York, was dismissed earlier this week on the grounds that Mahan’s claims were time-barred by the Copyright Act’s three-year statute of limitations, as the recordings in question were created in 1999 and 2000.  Mahan was asserting that his participation in and creative contributions to certain early recording sessions with Jay Z entitled him to a co-ownership interest in the recordings.  The court disagreed, finding that plaintiff Mahan “had reason to know of his alleged injury in 2000, if not earlier,” due to the constructive notice provided by Jay Z’s copyright registrations of the works, the commercial success of the recordings, and the conspicuous absence of any royalty payments, and thus could and should have brought suit within the three-year statute of limitations.  Because Mahan sat on his rights for fourteen years before making his claims, he effectively waived any ownership interest that he might have been entitled to under the Copyright Act.  Read the full article here, and the court’s decision here.  Reposted from The Hollywood Reporter.

Today in Copyright History: 4/15

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On April 15, 1912, the Royal Mail Ship Titanic sank on her maiden voyage after running afoul of an iceberg in the North Atlantic.  The disaster sent more than 1,500 people to their watery graves, and, like many events of widespread public interest, gave rise to countless copyrighted poems, songs, books, dramas, and artworks.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Public domain (http://commons.wikimedia.org/wiki/File:Titanic.jpg), via Wikimedia Commons.

Public domain (http://commons.wikimedia.org/wiki/File:Titanic.jpg), via Wikimedia Commons.

Today in Copyright History: 4/10

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On April 10, 1710, the Statute of Anne took effect in Great Britain.  Named after Queen Anne, the statute was the world’s first copyright act, and became the foundation for British and American copyright law.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Rand Gets Banned

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The Washington Post reports that “YouTube’s copyright system has taken Rand Paul’s presidential announcement offline” due to an allegation of copyright infringement by Warner Music Group.  Senator Paul’s announcement speech featured audio clips from the John Rich song “Shuttin’ Detroit Down,” the copyright to which is controlled by WMG.  The alleged infringement was flagged automatically by YouTube’s Content ID system, which allows copyright owners to “easily identify and manage their content on YouTube.”  According to YouTube, “[v]ideos uploaded to YouTube are scanned against a database of files that have been submitted to us by content owners.  Copyright owners get to decide what happens when content in a video on YouTube matches a work they own.”  After discovering the alleged infringement, WMG apparently elected to have the accused video taken down—the YouTube page for the video now simply states, “This video is private.”

As the article notes, “Rand Paul’s spirited cry against government intervention has been blocked from view because YouTube lets huge music companies preemptively apply copyright law.”  It will be interesting to see whether the libertarian Paul views WMG’s actions as a violation of free speech or a triumph of private property rights.  Read the full article here and decide for yourself.  Reposted from The Washington Post.

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

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

Today in Trademarkwise® History

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On April 1, 2014, one year ago today, the law firm of Trademarkwise LLC was born.  Originally conceived as an elaborate April Fools’ Day prank, the firm now represents a geographically and commercially diverse array of clients in their trademark, copyright, dispute resolution, litigation, entertainment, and contractual matters.  On behalf of David Payne and Trademarkwise®, many thanks to all who helped to make the firm’s first year a success.

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

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

Apple Now Has Its Own Sound Barrier

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Have you ever picked up your iPhone to ask Siri® a question and wondered if those familiar iOS beeping sounds are protected by one or more federally registered non-traditional trademarks?  Of course you have.  Well, wonder no more—as the iPelton® blog reports, Apple owns numerous non-traditional trademark registrations for product designs, icons, screen displays, store layouts, and yes, sounds (see an earlier post on sound trademarks here).  For example, the soothing, synthetic sound of Siri’s voice is invariably accompanied by the sounds of U.S. Registration No. 4689043, for “a synthesized bell tone playing a G#5 sixteenth note, followed by another G#5 sixteenth note,” and its companion No. 4689044, for “a synthesized bell tone playing a C#5 sixteenth note, followed by another C#5 sixteenth note.”

Lest users of Mac OS computers feel unprotected (or worse, slighted), Apple also took the trouble of federally registering its venerable Mac OS startup chime as No. 4257783, which, for the curious, “consists of a synthesizer playing a slightly flat, by approximately 30 cents, G flat/F sharp major chord.”  Since these sound marks were in use long before Apple became the most valuable company in the universe, it is possible to conclude that the three registrations for these marks are almost single-soundedly responsible for the company’s meteoric rise and vaunted position in the annals of capitalism.  Or maybe it was mostly product design and marketing.  In any event, anyone who tries to use Apple's registered sounds without authorization is likely to receive a sonic boom from the company's lawyers.  Hear the registered sound marks below, and see the three registrations here, and here, and here.  Reposted from the iPelton® blog.

By matt buchanan (originally posted to Flickr as Apple iPad Event) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By matt buchanan (originally posted to Flickr as Apple iPad Event) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

Today in Copyright History: 3/27

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On March 27, 1991, the U.S. Supreme Court decided Feist Publications, Inc. v. Rural Telephone Service Co., finding a white pages telephone directory to be uncopyrightable, and holding that the sole basis for copyright protection is creative originality.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

By © 2010 by Tomasz Sienicki [user: tsca, mail: tomasz.sienicki at gmail.com] [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC BY 3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

By © 2010 by Tomasz Sienicki [user: tsca, mail: tomasz.sienicki at gmail.com] [GFDL (http://www.gnu.org/copyleft/fdl.html) or CC BY 3.0 (http://creativecommons.org/licenses/by/3.0)], via Wikimedia Commons.

Supreme Court Rules in Trademark Preclusion Case

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Yesterday, the U.S. Supreme Court issued its second trademark ruling of this term, holding in B&B Hardware, Inc. v. Hargis Industries, Inc., No. 13-352, that “a court should give preclusive effect to TTAB decisions if the ordinary elements of issue preclusion are met.”  In this case, discussed in earlier posts here and here, petitioner B&B owns and uses the registered mark SEALTIGHT® for sealing fasteners.  Respondent Hargis petitioned to cancel B&B’s registered mark in order to register its own phonetically identical mark SEALTITE for sealing fasteners, but the Trademark Trial and Appeal Board (TTAB) held that Hargis’s SEALTITE mark created a likelihood of confusion with B&B’s SEALTIGHT mark, and refused to cancel B&B’s mark or register Hargis’s mark.  B&B then sued Hargis in federal court for trademark infringement, but, contrary to the TTAB’s finding, the jury found no likelihood of confusion and ruled against B&B.  The Eighth Circuit Court of Appeals upheld the district court’s ruling, declining to give preclusive effect to the TTAB’s prior finding of a likelihood of confusion.

Yesterday’s ruling by the Supremes addressed the issue of “whether the District Court in this case should have applied issue preclusion to the TTAB’s decision that SEALTITE is confusingly similar to SEALTIGHT.”  Finding that “the Eighth Circuit rejected issue preclusion for reasons that would make it difficult for the doctrine ever to apply in trademark disputes,” the Supreme Court reversed the Eighth Circuit’s decision, and instructed that “[o]n remand, the court should apply the following rule: So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply.”  The decision has the practical effect of making TTAB registration decisions potentially much more consequential with respect to subsequent infringement determinations between the same parties in federal court, and therefore will almost certainly affect the strategies and practices of litigants before both tribunals.  Read the Court’s opinion here.

Joe Ravi [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

Joe Ravi [CC BY-SA 3.0 (http://creativecommons.org/licenses/by-sa/3.0)], via Wikimedia Commons.

MARCH MADNESS®

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Now that a certain annual collegiate sports tournament is underway, a certain national collegiate athletic association would like to remind you (yes, you) that, no matter how mad you are this month, you may not describe said madness as MARCH MADNESS® without proper permission.  As the NCAA’s website helpfully explains, the association owns a lengthy list of registered and pending trademarks for the phrases MARCH MADNESS®, NCAA SWEET SIXTEEN®, ELITE EIGHT®, FINAL FOUR®, and dozens of others, for a variety of different products and services (e.g., athletic gear, clothing, conducting annual basketball tournaments at the college level, etc.).  The administration, use, and licensing of this trademark portfolio is managed by the NCAA Trademark Protection Program, and the association’s marks are “carefully controlled and aggressively protected to be consistent with the purposes and objectives of the NCAA, its member institutions and conferences and higher education.”  Because the NCAA’s championships “are the subject of great public and media interest… [t]he The NCAA must be vigilant against the unauthorized use of its trademarks, tickets and references to its championships,” and “requests your [yes, your] cooperation in this regard.”

Under ordinary circumstances, a trademark owner’s rights are basically limited to the products and/or services with which the mark is used or registered.  However, owners of sufficiently famous marks may also have the right to prevent others from using their marks in connection with products and/or services that are outside the nominal scope of the owner’s use or registration, under the law of trademark dilution (this is how the NCAA can assert rights over mere “references to its championships”—such references by unauthorized parties can suggest a false sponsorship by or affiliation with the NCAA).  Since few things gives rise to actual March madness like receiving a cease and desist letter from the NCAA’s lawyers, it may be worth considering whether that feeling you’re trying to evoke is really more like February Frenzy, or April Absurdity, or even May Hem.  See the madness here.

By Nick81aku at en.wikipedia [Public domain], via Wikimedia Commons.

By Nick81aku at en.wikipedia [Public domain], via Wikimedia Commons.

www.yourcompany.sucks

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World Trademark Review reports that domain registrations for the new “.sucks” gTLD will cost $2,499 per year, about 250 times the typical cost of a “.com” registration.  Vox Populi Registry Ltd., which manages the “.sucks” gTLD, initially planned to charge a whopping $25,000 for registrations during the sunrise period, but recently reduced the annual fee to the still hefty $2,499.  According to the company’s website, “dotSucks is designed to help consumers find their voices and allow companies to find the value in criticism.  Each dotSucks domain has the potential to become an essential part of every organization’s customer relationship management program.”  In view of this statement and the pricing, Vox Populi Registry is clearly targeting brand owners and businesses who want the “.sucks” domains as part of a defensive registration strategy, rather than critics and consumer advocates who would use the domains as forums for the airing of grievances.  Brand owners and businesses will have to decide whether it sucks more to suck it up and pay $2.5K per year for “.sucks,” or gamble that their brands and business names will avoid being sucked into an easily accessible forum for people to vent their frustrations at how much those brands and businesses suck.  Read the full article here, and the Vox Populi Registry site here.  Reposted from World Trademark Review.

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.

Today in Copyright History: 3/19

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On March 19, 1834, the U.S. Supreme Court held in Wheaton v. Peters that an author has perpetual rights in unpublished works, but after publication, rights are limited by statutory provisions imposed by Congress.  This landmark case was the first copyright decision by the Supremes, and laid the groundwork for modern U.S. copyright jurisprudence.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Public domain; 19th century illustration of Henry Wheaton.

Public domain; 19th century illustration of Henry Wheaton.

Today in Copyright History: 3/17

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On March 17, 1884, the U.S. Supreme Court in Burrow-Giles Lithographic Co. v. Sarony upheld the copyrightability of photographs.  Napoleon Sarony, a well-known photographer of theatrical stars, photographed Irish author Oscar Wilde in 1882 when Wilde visited New York.  Reposted from the History of Copyright Timeline at the U.S. Copyright Office.

Napoleon Sarony [Public domain], via Wikimedia Commons.

Napoleon Sarony [Public domain], via Wikimedia Commons.

St. Patrick’s Day, and Harps the Right Way

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St. Patrick’s Day is upon us, and as those who are in the know know, a holiday is just not a holiday if it doesn’t involve some sort of long-standing trademark dispute.  The dispute du jour comes courtesy of the Trademark & Copyright Law blog, which reports the actually rather interesting fact that while Guinness (the unofficial beverage of St. Patrick’s Day) and the government of Ireland both use the design of a harp as a trademark, the two parties have conscientiously avoided consumer confusion with their respective harp designs.  The Guinness harp, as many alcoholics can attest, faces right, while Ireland’s harp faces left, thus eliminating any possibility of confusion among the drunken rabble.  Read the full post here, and imbibe a Guinness or three at your local watering hole.  Reposted from the Trademark & Copyright Law blog.

U.S. Trademark Application Serial No. 86112318.

U.S. Trademark Application Serial No. 86112318.

“Blurred Lines” Jury Lays it on Thicke (and Pharrell)

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The Wall Street Journal Law Blog reports that “[a] federal jury in Los Angeles on Tuesday ordered singers Robin Thicke and Pharrell Williams to pay about $7.4 million to the family of Marvin Gaye, after finding the duo’s 2013 hit song ‘Blurred Lines’ copied parts of Mr. Gaye’s ‘Got to Give it Up.’”  The size of the $7.4 million verdict is reported to have sent shockwaves throughout the music industry, despite being substantially less than the more than $25 million sought by Gaye’s three children.  Gaye’s children are also seeking an injunction to stop further distribution of the song “Blurred Lines.”  Thicke and Williams have not indicated whether they plan to appeal.  Read the full article here.  Reposted from The Wall Street Journal Law Blog.

By Melissa Rose (Flickr: IMG_6563) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.

By Melissa Rose (Flickr: IMG_6563) [CC BY 2.0 (http://creativecommons.org/licenses/by/2.0)], via Wikimedia Commons.