Tuesday, August 26, 2014

No Copyright Protection for Iconic Monkey Selfie

In 2011, wildlife photographer David Slater set up a camera on Sulawesi, a small island in Indonesia.  Mr. Slater received an unanticipated gift, a monkey picked up his camera and took hundreds of pictures, including self portraits or “selfies” that have gone viral on the web this past year.  Recently, controversy has erupted over who owns the copyright to the photos.  David Slater has claimed ownership, along with thousands of dollars in unpaid royalties from the photos that went viral.  As reported by the BBC and The Los Angeles Times, “Wikimedia, the nonprofit behind Wikipedia, says the pictures taken by the monkey belong to the public domain and has refused to take them down.  Slater has said that he is missing out on thousands of dollars in royalties and that he played a bigger role in the photos’ creation than he’s receiving credit for. “You could look at it like this: The monkey was my assistant,” he told the BBC.

The U.S. Copyright office addressed this issue recently in a public draft of the Compendium of U.S. Copyright Office Practices, Third Edition — which was released Tuesday.  It says the office will register only works that were created by human beings.  “Works produced by nature, animals or plants” or “purportedly created by divine or supernatural beings” don’t count, it says. The first example in that category is “a photograph taken by a monkey.”  Similarly, the Office will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.”

With some sound legal advice -Mr. Slater could have obtained copyright ownership if he digitally altered the images enough -where his creative choices would have given him ownership of the image under 102a of the US Copyright Act, which states “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device;” however this was not done.  Since the photos were all release unaltered, or without any significant alterations,  the photos are in the public domain according to the U.S. Copyright office.

Tuesday, July 8, 2014


For anyone in the food and beverage industry or involved in business marketing, Michael Cohen will be moderating a seminar on July 14, 2014 at 1PM entitled LANHAM ACT: ISSUES AFTER LEXMARK AND POM WONDERFUL.



Thursday, June 19, 2014

Redskins' Cancellation of Disparaging Trademark Interview

As a follow up to yesterday’s blogpost regarding the landmark decision by the TTAB to cancel the Redskins’ trademarks, I did an interview on KFI 640 AM with Bryan Suits.  Enjoy!


Wednesday, June 18, 2014

Redskins Trademark Cancelled by the Trademark Office

Today, the Trademark Trial and Appeal Board (TTAB), cancelled six registered trademarks, that include the term “Redskins” for the Washington Redskins, owned by the NFL.  The plaintiffs in the matter were able to prove by a preponderance of the evidence that the term Redskins is “disparaging” to a substantial composite of the Native American population.

Under Section 2(a) of the Trademark Act, words that “may disparage” individuals or groups or “bring them into contempt or disrepute” are not permitted as trademarks. The ruling pertains to six different trademarks associated with the team, each containing the word “Redskin.” When it comes to showing that a trademark is disparaging, the plaintiffs must meet a two-part test: (1) the likely meaning of the mark and (2) if that meaning refers to an identifiable group, that the meaning is disparaging to a substantial composite of that group.

After hearing both sides argue the meaning of the term “Redskins,” the Administrative Trademark Judge Kuhlke concluded in her opinion, that the meaning of the term “Redskins” retains the meaning to identify Native Americans even when it is also used for an NFL team. To argue the second prong about “disparagement,” both sides presented experts to prove whether the term “Redskins” was considered disparaging. Judge Kuhlke agreed with the Plaintiff’s expert, Dr. Barnhart, that the term refers to Native American’s skin color, as well as negative portrayals in the media, and also dictionary definitions that include “it is not a preferred term.”

To prove that the mark is disparaging, Judge Kuhlke pointed out that that only a substantial composite of Native Americans needed to be disparaged by the term at the time of the filing, not a majority. The Plaintiff used evidence of a resolution passed by the NCAI, one of the oldest organizations in the United States that represents various Native American tribes. It passed a resolution in 1993 where it corroborated a 1972 meeting with the President of the NCAI and the then Owner of the Washington Redskins. The NCAI President told the owner that “Redskin” was a racial slur. In 1972, NCAI represented approximately 30% of the Native American population. According to Judge Kuhlke, 30% satisfies the “substantial composite” requirement. Simply put:

“The ultimate decision is based on whether the evidence shows that a substantial composite of the Native American population found the term “Redskins” to be disparaging when the respective registrations issued. Heeb Media LLC, 89 USPQ2d at 1077. Therefore, once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”

As such, the TTAB held that the Plaintiff’s proved by the preponderance of evidence that the term “Redskin” is disparaging to a substantial composite of the Native American population and that the federal trademark for the Washington Redskins will be cancelled.

The NFL will certainly appeal in the federal courts primarily to flesh out the issue of their affirmative defense of laches, which is somewhat similar to a statute of limitations defense. The NFL may argue that the term “Redskins” has been used for so long that the unreasonable delay in seeking relief bars the Plaintiff recovery. However, Judge here pointed out that the laches defense should not apply in cases dealing with a term of disparagement.

“It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity. To apply laches to this type of claim contemplates the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter, merely because an individual plaintiff “unreasonably delayed” in filing a petition to cancel.”

The opinion bolstered its holding by using various examples where public policy concerns trumps a laches defense. Although the opinion shot down the NFL’s laches defense based upon a greater need of public policy, the TTAB reserved this issue for appeals and specifically stated that the issue can be revisited because of the more recent passage of the American Invents Act.

Redskins 640am

Thursday, May 22, 2014

Taylor Swift Trademark Infringement Lawsuit with Lucky 13

The clothing and apparel company, Blue Sphere Inc. doing business as Lucky 13, and Robert A. Kloetzly filed a complaint against Taylor Swift and her business entities. In the complaint, BLUE SPHERE, INC. et al. v. SWIFT, et al. CASE NO.: 8:14-cv-00782, Swift is accused of allegedly infringing on Blue Sphere’s federally protected trademarks by selling merchandise using the phrase “Lucky 13” without Blue Sphere Inc.’s authorization. The origin of the action is simple. “Lucky 13” is a clothing and apparel company that has federally protected trademarks using the phrase “Lucky 13” on clothing and their merchandise. However, Swift happens to also sell merchandise that uses the phrase “Lucky 13,” without the company’s authorization.

In the first cause of action, Plaintiff alleges that Swift’s use of “Lucky 13” on the clothing and apparel creates a likelihood of confusion that the goods are authorized, sponsored, or controlled by the Plaintiff, in violation of § 32 of The Lanham Act.

In the second cause of action, Plaintiff alleges that the infringing action confused the public similar to above, in violation of § 43(a) of the Lanham Act, False Designation of Origin and Unfair Competition

The third cause of action, Plaintiff alleges dilution by tarnishment or blurring, where the infringing items diminish quality and goodwill of Plaintiff’s product.

The fourth and fifth causes of action are for Unfair Business Competition under the California Business Code, and Common Law Misappropriation. These re-allege the same allegations as the first three.

E Online reported that Swift once explained her personal connection to the number 13 to MTV News: “I was born on the 13th. I turned 13 on Friday the 13th. My first album went gold in 13 weeks. My first No. 1 song had a 13-second intro. Every time I’ve won an award I’ve been seated in either the 13th seat, the 13th row, the 13th section or row M, which is the 13th letter.”

The Ninth Circuit will use their 8-factor likelihood of confusion test to determine whether Swift violated the Lanham act; which are the following:

1. The strength of the mark

2. Similarity of the mark

3. Proof of actual confusion

4. Defendant’s intent

5. Proximity of the two marks in the stream of commerce

6. The marketing channels used

7. The type of goods

8. The likelihood of expansion of the product line.

This will be an interesting case to follow, as it appears that Plaintiff has a strong argument. There is lot of money at stake, as well as the ownership of the phrase “Lucky 13.”

Thursday, May 8, 2014

U.S. Supreme Court Cracks Down on Patent Trolls

The Supreme Court last week struck a blow to patent owners who made a living off threatening others with frivolous litigation by loosening the standard for the prevailing party to collect legal fees. Patent owners that do not sell products or services, but earn or try to earn the majority of their income by enforcing their patents through frivolous litigation are commonly known as “Non-practicing entities” (NPEs) or “Patent Trolls.” For years, some NPEs would buy patents for the sole purpose of using their new ownership rights against corporations by demanding licensing fees, or litigation. The cost of paying a licensing fee frequently outweighed the cost of litigation because Federal Courts rarely allowed the prevailing party to recoup expensive legal fees. Under 35 U.S.C. § 285, “the court in exceptional cases may award reasonable attorney fees to the prevailing party.” (Emphasis added). The test for exceptional cases, outlined in Brooks Furniture Manufacturing, Inc. v. Dutailier Int’l, Inc., 393 F.3d 1378 (Fed. Cir. 2005), required the prevailing party to prove that both (1) the litigation was brought in subjective bad faith, and (2) the litigation was objectively baseless. This was so rigid that many chose to pay licensing fees, rather than prevail in litigation but still pay more in legal fees.

Last week, the Supreme Court ruled on two cases that loosened the “exceptional cases” test: Octane Fitness, LLC v. Icon Health & Fitness, Inc., and Highmark Inc. v. Allcare Health Management System, Inc. In Octane Fitness, Justice Sotomayor threw out the Brooks Furniture 2-part test, by holding “nothing in [section] 285 justifies such a high standard of proof. Section 285 demands a simple discretionary inquiry; it imposes no specific evidentiary burden, much less such a high one.” Furthermore, the Court strengthened it’s new stance on §285 by throwing out the Brooks Furniture test again in Highmark Inc. “Our opinion…rejects the Brooks Furniture framework as unduly rigid and inconsistent with the text of §285.” In Highmark Inc., the court held that since “exceptional” is in the judgment of the District Court, the decision on appeal may only be reviewed for abuse of discretion.

Since the Supreme Court’s reinterpretation of section 285 allows the sitting judge more flexibility to determine “exceptional cases,” newly empowered patent owners may be able to fight back against frivolous litigation. Interestingly, approximately 200 patent infringement cases were filed around the time of these decisions. This is a definite upswing in the volume that is normally filed. It’s possible that the increase is due to adverse ruling for patent trolls and the accompanying legislation in congress taking place to curb NPEs. One NPE in particular filed 87 lawsuits in April in Texas.

Tuesday, April 29, 2014

Jay-Z Copyright Infringement Case with Dwayne Walker

Back in 2012, Dwayne Walker filed a lawsuit against Jay-Z for breach of contract and copyright infringement for failure to pay royalties, claiming that he designed the iconic logo for Roc-A-Fella records, Jay-Z’s record company and is owed $7,000,000. The lawsuit, Dwayne D. Walker, Jr. v. Shawn Carter (“Jay-Z”) et al, case no. 12-cv-05384(ALC)(RLE), was filed in U.S. District Court in the Southern District of New York in 2012. The Plaintiff’s alleges that that “Jay Z, Dame Dash, and Kareem “Biggs” Burke, all agreed to pay Walker $3,500 for the design of the Roc-A-Fella logo. However, Dwayne Walker stipulated in the agreement that he be compensated with two percent of future royalties for ten years after the first year of use. Walker, who claims to own the copyright to the logo, received the $3,500, but the royalties have never come.”

One does not need to have registered with the US Copyright office to actually have copyright protection, but a registered copyright holder has the presumption of ownership in court- whereas an unregistered owner does not. The logo at issue was registered with the USPTO by ROC-A-FELLA RECORDS, INC., reg. no.: 2310169.

Recently, Mr. Walker is claiming that Jay-Z’s legal team is stalling by complicating the legal proceedings. As reported by The Daily Mail, Walker’s attorney accuses Defendant’s legal team of using behavior to ‘mislead, harass, and needlessly increase the cost of litigation’ as the case. RadarOnline writes that for example, “Jay Z’s legal team is “unwilling to cooperate in producing a joint report” and “changed terms of the proposed schedule” numerous times to suit Jay Z’s needs and timetable, the documents claim.” In response, Jay Z’s attorney’s wrote “that they have considered Walker’s prior settlement offer” but believe “that there is NOT a possibility for promptly settling or resolving the case.”

If Mr. Carter’s legal team is trying to scare the Plaintiff away through prospect of high legal fees, it seems that it isn’t working. “This is a straightforward breach of contract case,” explains Berry. “Mr. Walker agreed to create a logo for Jay-Z and his partners, and he did create a logo that has become intimately tied to the enormous success of Jay-Z. Mr. Walker upheld his end of the bargain when all the parties were just starting out, and now they need to uphold theirs.”