LAIPLA Blogger

Cohen IP Law Group PC, is proud to announce that we are one of the select new bloggers for the Los Angeles Intellectual Property Law Association (LAIPLA). The blog can be viewed here: http://www.laipla.net/category/trademark-lawyers-mind/

Ludacris’ Trademark Battle for Disturbing Tha Peace

Early this month, Demitri Brown and Donna Evans-Brown (the “Browns”) filed a federal trademark infringement suit against Christopher Bridges p/k/a Ludacris, claiming that Luda’s “Disturbing Tha Peace” trademark is confusingly similar to their mark “Disturb the Peace.” However, “Disturb the Peace” has been cancelled since August 31, 2004. This means that the Browns no longer have a valid US Federal Trademark Registration, which ultimately means that they may likely only claim common law trademark rights and not Federal trademark rights.

On the other hand, Ludacris has several trademark registrations that incorporates “Disturbing Tha Peace” (Reg. Nos. 3159855, 2945795, 2923163, 2925238, 3220495, 2791443, and 3268946). Although the Browns allegedly have been using “Disturb the Peace” since 1988, as mentioned, the Federal registration was cancelled in 2004. Ludacris has been using “Disturbing Tha Peace” continuously since he started his record label “Disturbing Tha Peace Records” in 2000.

What does “cancellation” of a trademark mean? Cancellation is the proceeding instituted with the Trademark Trial and Appeals Board (TTAB), in which the petitioner alleges that the registered trademark was not or is no longer, a valid trademark. Cancellation may be based on the fact that a registered trademark is weak, it was procured by fraud, or it was abandoned. In Ludacris’ case, he claimed abandonment. This means that he alleged that the Browns have not used their trademark “Disturb the Peace” in connection with the sale of the goods specified in the Browns’ trademark application (Serial No. 76090517) for the statutory amount of time. Ludacris filed the petition to cancel the Browns’ trademark in late 2003. Default judgment was entered granting the cancellation because the Browns failed to respond to the petition. As such, the mark was effectively cancelled in 2004.

Seven years later, according to the documents pertaining to the Browns’ “Petition of Reinstatement”, which was actually treated as a motion for relief from the final judgment under FRCP Rule 60(b), of their cancelled mark with the TTAB, Ludacris allegedly committed fraud in his cancellation proceedings in 2003. Ultimately, the TTAB determined that, among other deficiencies in the petition, the seven-year wait would cause undue prejudice against Ludacris since, not only has Ludacris successfully registered multiple trademarks incorporating “Disturbing Tha Peace” in the interim, but he has also “spent in excess of approximately one million dollars over the years in marketing, advertising, and promoting” of the mark. In short, the TTAB denied the Browns’ petition.

This holding, although not necessarily binding on the federal district court case, may nevertheless be telling of what types of arguments each side will allege. It may very well be considered strong evidence that Ludacris essentially won the TTAB case because the Browns failed to diligently protect their federal trademark rights back in 2004 if they in fact did not abandon use of such mark. What is the moral of this story? Diligently follow up on the status of your trademark. Although it was not explicitly discussed in the TTAB’s Order, the Browns had an obligation to check the status of registration. In fact, Section 108.03 of the TMEP entitled “Due Diligence: Duty to Monitor Status” states the following:

Trademark applicants and registrants should monitor the status of their applications or registrations in cases where a notice or action from the USPTO is expected. Inquiries regarding the status of pending matters should be made during the following time periods:

(1) During the pendency of an application, an applicant should check the status of the application every six months between the filing date of the application and issuance of a registration; and

(2) After filing an affidavit of use or excusable nonuse under §8 or §71 of the Trademark Act, or a renewal application under §9 of the Act, a registrant should check the status of the registration every six months until the registrant receives notice that the affidavit or renewal application has been accepted.

Should the status inquiry reveal that a paper is lost, or that some other problem exists, the applicant or registrant must promptly request corrective action. 37 C.F.R. 2.146(i). Failure to act diligently and follow up with appropriate action may result in denial of the requested relief. The USPTO may deny petitions to reactivate abandoned applications and cancelled registrations when a party fails to inquire about the status of a pending matter within a reasonable time. See TMEP §§1705.05 and 1714.01(d).

Apple Lightning Harley Davidson Trademark Deal

The LIGHTNING trademark, OHIM Reg. Nos. 011399821 and 011399862, were first issued to Harley Davidson in 2005. Recently, “Lightning” has also become the preferred moniker for Apple’s smaller, 8-pin dock connector. On or around November 22, 2012, Harley Davidson allegedly “partially transferred” trademark rights to Apple with respect to the LIGHTNING mark.

That’s great. But, what does this really mean? Well, according to the OHIM Trade Mark search database, Harley Davidson still owns trademark rights over the international classes 25, 26 and 18, while Apple now owns the rights over international classes 9 and 28. Cool. So what does this mean? Apple has exclusive rights to use the LIGHTNING mark in connection with such things as eyeglasses, eyeglass frames, goggles, audio and video equipment, recorded computer software, electric signs, toy vehicles, pinball machines, computer game programs, and “games and playthings” in general. On the other hand, Harley Davidson retains exclusive rights to use it in connection with leather and imitation leather goods, travel bags, clothing, footwear, lace, and embroidery.

All in all, this sounds like Apple took appropriate measures by seeking a partial assignment of rights over the LIGHTNING trademark. They reached out to Harley Davidson and came to an agreement as to how they could co-exist in the marketplace rather than rely on the fact that Apple and Harley Davidson would likely use the mark with respect to “different goods.”

Smart decision, Apple! Ultimately, this will avoid costly litigation and retain a good professional relationship with another well-known brand (in regards to trademark usage against Harley Davidson anyway).

Kardashian Khroma Chroma Trademark Infringement

The Kardashians already had to deal with being accused of copyright infringement with their purse line, Kardashian Kollection. Now, just last week, Chroma Makeup Studios publicly denounced the Kardashians’ upcoming makeup line “Khroma Beauty by Kourtney, Kim & Khloe.” The Chroma Makeup Studios website’s home page is currently a long letter to its loyal fans declaring that it is in no way, shape, or form associated with the Kardashians. Further, it states a little blurb about the Federal trademark law and how the founders, Lisa Casino and Michael Rey III are “taking all appropriate steps to defend its reputation and the 12 years of goodwill [they] have built under the CHROMA MAKEUP STUDIO trademark.” But are these statements enough?

Oddly, after searching the USPTO, we were unable to find any registered or currently pending applications for Chroma Makeup Studio, under its business name or its other marks in which they claim trademark rights for including Chroma Colour, Croma Makeup Studio, Colour-Purity-You. But not surprisingly, the Kardashians have filed multiple applications for variations of KHROMA BEAUTY BY KOURTNEY, KIM, & KHLOE incorporating the “Khroma” mark.

We’re not clear why Chroma has not filed any applications as far as we can tell, and we won’t speculate either. However, without a registered trademark enforcement of their mark will be a bit trickery against the Kardashian’s. With that said, the question still remains – is the Kardashian’s “KHROMA” mark likely to confuse consumers or otherwise infringe upon the “CHROMA” mark? Maybe, maybe not, that would be up to a jury to decide. But even without a registered trademark, if the Chroma Makeup Studio’s letter to its fans were true, in that their customers are already confused, it could provide a strong basis for Chroma.

But another sticky issue that Chroma may have to deal with are the other companies like Revlon that have used the term Chroma, such as, “Revlon Chroma Chameleon” and “Chroma Luminescent” (Mana Products, Inc.). Why do so many cosmetic companies use the word “chroma”? Not sure, maybe, “chroma” has to do with the quality of a color or the “saturation” of a hue? With that said, it then seems appropriate that “chroma” has been used in connection with cosmetics, hair color, and paints. So, perhaps, the Kardashians may have a defense there.

Beverly Hills Bar Association Event: Dressing Up IP: Copyright, Trademark, and Licensing Issues in the Fashion Industry

Great event at the Beverly Hills Bar Association, the program is titled: “Dressing Up IP: Copyright, Trademark, and Licensing Issues in the Fashion Industry.” The program will be on October 11, 2012 and may be attended in person, streamed live online, or viewed via the internet at a later date.

Additionally, the program offers MCLE credit: “MCLE CREDIT: This activity has been approved for Minimum Continuing Legal Education credit by the State Bar of California in the amount of 1.5 HOURS and the Beverly Hills Bar Association certifies that this activity conforms to the standards for approved prescribed by the rules and regulations of the State Bar of California governing minimum continuing legal education. “

Letter of Protest to Oppose Trademark Application

We love filing letters of protest. The Cohen IP Law Group frequently uses this lesser known trademark procedure prior to the publication period to oppose a pending trademark application that my go to issuance without having to file an actual opposition proceeding. So what is a Letter or Protest? Essentially it allows a third party to bring forth evidence ex parte that was not known to the examining attorney assigned to a particular trademark application, to let him become aware that the pending application he is reviewing should not be issued. The Letter of Protest must be filed before Publication, although in some cases you may be able to submit after publication, but it is much more difficult, and typically you would need to file an Opposition by that time.

The beauty of the Letter of Protest is that if your evidence and reasoning is convincing, the examining attorney could base an Office Action (rejection) on it that he initially would not have. As a result, time and money is saved by avoiding a tougher Opposition or Cancellation filing.

Facebook's Patent Gets Approved

One of the features that attract people to Facebook is the ability to “block” certain individuals like bosses, coworkers, and family from being able to view possibly incriminating or humiliating photos and status updates. These privacy settings are unique to Facebook and CEO Mark Zuckerberg filed a patent application back in 2006 for the function– titled as “”Dynamically generating a privacy summary.” The application said: “As social networking has grown more popular, users have realized a need for a certain amount of privacy…not every particular user wants all the other users to be able to access the information about the particular user.” So true.

After a six-year wait and multiple rejections, the U.S. Patent and Trademark Office finally approved the patent for Facebook’s privacy settings. (U.S. patent 8,225,376) The patent summarizes how the privacy setting works: “One or more privacy setting selections are received from the user associated with the profile. The profile associated with the user is updated to incorporate the one or more privacy setting selections. A privacy summary is then generated for the profile based on the one or more privacy setting selections.”

Even though Facebook now has a patent for its complex privacy setting (the patent was reportedly rejected multiple times for its Section 103 “obviousness”), you should still be careful about what you post on Facebook. There are apps such as Stalkbook, which have tried to get around Facebook’s privacy settings to allow a user to view ALL of another individual’s profile, including hidden content.

We Buy Ugly Houses Trademark Dispute

“We Buy Ugly Houses” is the trademark that HomeVestors of America, Inc. registered back in 2001. The company specializes in training franchisees to buy homes, “flip,” and resell the homes. HomeVestors has in subsequent years also registered variations on “We Buy Ugly Houses” such as “We Buy Ugly Houses And Make Them Nice Again” and a Spanish translation “Compramos Casas Feas.”

Since popularizing its slogan, HomeVestors has stayed active in enforcing protection of its federally registered trademark. This includes preventing other real-estate companies from using “We Buy Ugly Houses” or something of that sort on their websites and as a part of their domain names. In the past, HomeVestors, Inc. has succeeded in lawsuits against defendants using domain names such as www.webuyuglyhousesphoenix.com.

Most recently, HomeVestors filed a lawsuit against the House Buyer Network and its CEO Duane LeGate, Inc., which provides a similar service as HomeVestors, Inc. The complaint states that HomeVestors “is known as the WE BUY UGLY HOUSES® people and is the number one buyer of houses in the United States.”

Apparently, the dispute between the two parties stems from a settlement agreement that they entered into in 2006 “whereby LeGate transferred a number of domain names to Plaintiff and whereby LeGate agreed to stop purchasing keywords incorporating the HomeVestors” trademarks. In the lawsuit, HomeVestors claims that LeGate and House Buyers Inc. violated the agreement and infringed on its trademark by continuing to buy Internet advertising keywords that included words similar to HomeVestors’ registered trademarks.

New Boyz Trademark Infringement Lawsuit

The American rap group, New Boyz, has experienced large success in a short period of time. The New Boyz music capitalizes on catchy beats and lyrics like:

“You’re a jerk! Jerk Jerk Jerk!” and “Tell all the homies she got bunz, bunz, bunz.” Surprisingly, the group has yet to trademark its name “New Boyz.”

In the polar opposite genre of music–Christian music, an Australian band called Newsboys has been around since 1985 and remains popular with Christian music listeners. The band registered the trademark “Newsboys” in 1994. The band recently filed a trademark infringement lawsuit against the New Boyz for allegedly infringing on their trademark.

The Newsboys claim that the name “New Boyz” confuses consumers because of the similarity in sound between the two names and since the rap group also uses the name in relation to entertainment/music. Additionally, Newsboys says that the confusion created by the similar name damages the band’s reputation. The New Boyz use explicit lyrics while the Newsboys obviously use wholesome lyrics in songs such as “He Reigns” and “In Christ Alone.”

The lawsuit states that: “Plaintiff has already documented several instances of actual confusion among its customers, prospective customers and other outside observers who mistakenly assume a connection between Plaintiff and Defendant and the respective music they offer.” If a court agrees that using the name “New Boyz” creates a likelihood of confusion with the registered trademark “Newsboys,” then the rap group will have to find a new name, which may affect their recognition with fans. Then again, maybe the New Boyz are just “too cool to care.”

Apple Trademark Dispute in China of Xuebao

Apple is engaged in yet ANOTHER trademark dispute in China. This time, the lawsuit involves the trademark “Snow Leopard,” which is the name of Apple’s operating system OS X 10.6 released in 2009. Jiangsu Xuebao, a Chinese company, alleges that it owns the Chinese trademark rights for “Xuebao.”

You may be thinking, but wait a minute how is that the same as “Snow Leopard.” Well, the Chinese word “Xuebao” literally translates to “Snow Leopard.”

Jiangsu Xuebao claims that Apple’s use of “Snow Leopard” confuses consumers because it also makes computer products and now demands about $80,000 from Apple. Back in 1998, Jiangsu Xuebao filed an application with the USPTO for the U.S. trademark rights to “Xuebao” (later abandoned). However, that application just stated that the trademark would be used in connection with goods such as dishwashing detergents, shampoos, scented soaps, shoe wax, and other similar products.

Considering that Apple just settled a trademark dispute with Proview over the rights to “iPad” in China for $60 million, Jiangsu Xuebao’s request doesn’t seem like much, but it does seem a little suspicious. The hearing for Apple and Jiangsu Xuebao will be on July 10th. Considering the large sum that Apple just paid to Proview, it will be interesting to see how this case turns out and whether more of these types of lawsuits pop up in China.

Trademark Infringement of Brave?

Disney released yet another mega blockbuster new animated movie this weekend called “Brave”. To no one’s surprise, the movie scored the top box office spot and has already grossed over $80 million worldwide. Just a few days before the release of Disney’s “Brave,” a company called Phase 4 Films released a low-budget version called “Kiara the Brave.” “Kiara” wasn’t released in theaters, but distributed through iTunes, Amazon, and I even saw it offered on On-Demand service through my TV.



Both of the animated films feature a redheaded, adventurous heroine and use a similar plot. So what gives? Lately there has been a phenomena of low budget movies that appear to be very similar to the mega blockbuster movies. These movies of course open right around the same time as the mega blockbuster version. It’s unclear how much the makers of “Kiara” have profited from the movie, but considering the mega popularity of “Brave,” “Kiara” seems to have the potential to capitalize off of the similarities between the two movies.

Most likely, there isn’t much Disney can do about “Kiara” liberally using a similar plot as “Brave.” It is not enough that “Kiara” uses a similar story line as “Brave” because it must also be substantially similar in tone and pace to win a copyright infringement case. In some situations, a court will not determine that the other party’s movie infringed a copyright without evidence that the other party had access to the script.

With respect to trademark protection, titles of movies have very little to no protection alone typically. Disney has filed multiple trademark applications for the word “Brave” in connection with the movie and other goods, but the applications have not issued yet. Further, and surprisingly, we stumbled upon another trademark impediment that Disney is facing against the Atlanta Braves! Disney applied for the trademark rights over “Brave,” but the Atlanta Braves baseball team filed an Opposition proceeding to many of the pending trademark applications in relation to the use of the trademark for a number of different classes of goods/services. The Atlanta Braves already registered the trademark “Braves” prior to Disney’s first use date of “Brave,” which was in March 2010. The opposition to the registration states:

“Applicant’s BRAVE mark so resembles Opposer’s BRAVES Marks as to be likely, when used in connection with Applicant’s goods and services, to cause confusion, to cause mistake, and to deceive the trade and public, who are likely to believe that Applicant’s goods and services have their origin with Opposer and/or that such goods and services are approved, endorsed or sponsored by Opposer or associated in some way with Opposer. Opposer would thereby be injured by the granting to Applicant of certificates of registration for Applicant’s BRAVE mark.”

Disney’s trademark is still pending, but may not be approved if the Trademark Trial and Appeal Board determines that there is a likelihood of confusion between Disney’s use and the baseball team’s use of “Brave.”

Hamilton Ventura Trade Dress Infringement Against Stuhrling Original

Did any of you moviegoers notice Will Smith’s watch during Men in Black III? Apparently Will Smith wore the same watch, a “Hamilton Ventura”, in all three of the Men in Black movies. The watch has also graced the wrists of Elvis Presley in Blue Hawaii and Rod Sterling on The Twilight Zone.

The Swatch Group Inc., which manufactures Hamilton brand watches, has filed a trade dress and trademark infringement lawsuit against Stuhrling Original LLC for “intentionally copying” the Ventura watch.

A product can only receive trade dress protection if there is public recognition of its “look.” This can be achieved through years of advertising, promotion, and popularity. The Swatch Group Inc. will likely bring up that Hamilton released the Ventura watch in 1957 and since then it has been labeled as one of the “most iconic wrist watches ever designed.”

Stuhrling sells the “Stuhrling Ricochet,” a watch that features a triangular design that could make it look similar to the Men in Black watch. The CEO of Stuhrling has said: “there are a lot of triangular watches out in the marketplace…we really don’t feel that the lawsuit has any validity.”

Supposedly what got Swatch Group Inc. really upset was a comment made by a ShopNBC host when the Stuhrling watch appeared on the segment. Shortly after the release of MIB, the show aired and the host said: “if memory serves, there is another motion picture release now where this is once again being touted.”

The Swatch Group has also named ShopNBC in the lawsuit against Stuhrling. It claims trademark infringement unfair competition, false advertising, and demands a permanent injunction. The Swatch Group has reportedly spent millions of dollars to promote the watch and now wants to ensure that people don’t get confused over the source of the “Hollywood favorite.”

Havana Club Trademark Dispute with US and Bacardi

Cuba and the US are at war…over Rum! Cuba’s state distillery sells the popular rum “Havana Club” in over 120 different countries (distributed through Pernod Ricard, a French company). But entry of Cuba’s delectable national drink is barred into the U.S. because of the embargo. The USPTO did however granted Havana Club International the U.S. trademark rights for “Havana Club.” However, the U.S. Treasury Department’s Office of Foreign Assets Control, which administers and enforces economic and trade sanctions, did not issue a license to the company to make a $200 renewal payment. Thus, a court recently refused the “Havana Club” trademark renewal.

Bacardi, which is the Havana Club brand’s global competitor, sold its own version of rum called “Havana Club” in Florida. Now that Havana Club International no longer owns the trademark “Havana Club” in the U.S., Bacardi may be free to apply for the trademark rights. The USPTO would surely not approve Bacardi’s application for “Havana Club” as long as Havana Club International held the rights to that trademark because there would be a likelihood of confusion between the two.

Bacardi plans on expanding sales of its “Havana Club” rum across the 50 states. Bacardi’s version reportedly uses the same recipe as Cuba’s “Havana Club. “ So for the first time, rum drinkers in the U.S. (40% of the world’s rum drinkers) may now get to enjoy a glass of the famous “Havana Club” rum.

For Bacardi, this decision represents more than an opportunity for economic profit. When the communist government took control of Cuba, it also seized Bacardi’s distilleries in the country. The VP of Corporate Communications at Bacardi has said:

“This is not a question of market share. Rather, this comes from our own experience as Bacardi’s assets in Cuba were illegally confiscated in 1960.”

The “Havana Club” makers have decided to create a new name for the rum to push back against what the brand feels is a trade bias against Cuba. Pernod Ricard has already registered “Havanista” as a trademark in the U.S. and plans on selling the rum under that name if the U.S. embargo is lifted.

No Doubt Lawsuit with Activision Right of Publicity

No Doubt enjoyed mainstream success during the 90s with hits like “Don’t Speak” and “Just a Girl.” Last week, the band announced its plans to reunite and release an album this September. The same day that the band shared the news of their planned comeback, a judge gave permission for the band’s lawsuit against video game maker Activision to be heard by a jury. “Hella Good” day for No Doubt.

The video game created by Activision, Band Hero, features the band members’ likenesses as video game characters. Players of this video game can select a character that is modeled after a No Doubt band member’s likeness and make the character sing a song selected by the player. No Doubt did allow Activision to use of the likeness its band members, but alleges that Activision overstepped the terms of this contractual agreement.

Supposedly, No Doubt had agreed to allow the use of its band members’ likenesses in 3 songs, but the video game allows the appearance of the likenesses in about 60 songs. Additionally, the video game allows the No Doubt characters to sing songs besides those that No Doubt previously approved of, which are songs that No Doubt sang or performed in real life.

The Los Angeles Times reported that No Doubt feels that the video game “transformed No Doubt band members into a virtual karaoke circus act” and “the Character Manipulation Feature results in an unauthorized performance by the Gwen Stefani avatar in a male voice boasting about having sex with prostitutes.”

This lawsuit includes a right of publicity claim, but is more complicated than a mere unauthorized use of a celebrity’s likeness.

No Doubt did authorize Activision to use each band members’ likeness in the video game, but now challenges how the video game uses and manipulates a band member’s likeness. While No Doubt will likely emphasize that it did not agree for the likenesses to be used in such ways, Activision may argue that some flexibility is needed to make the video game functional. Although the specifics of the contract between No Doubt and Activision are unclear, this cases raises questions about what the scope of permitted uses should be when a celebrity authorizes use of his/her likeness for a video game character.

Google's Fair Use Defense to Authors Copyright Infringement

Last month, Google got the vote for “most popular technology brand,” beating out Facebook, Twitter, and Apple. Google has grown to include its own specialized search tool for Maps, News, Shopping, Videos, etc.

A few years back, Google started Google Books and made an agreement with several research libraries to scan books for its Google Books Library Project. It has scanned 12 million books over the course of the project.

The website for Google Books describes that you can view a few “snippets” or sentences of copyrighted books and you can fully view a book that is out of copyright. The website states:

“The Library Project’s aim is simple: make it easier for people to find relevant books – specifically, books they wouldn’t find any other way such as those that are out of print …”

Members of the Authors Guild are alleging that Google scanned their copyrighted books without authorization. Last week, a federal judge gave the ok for the members of the Authors Guild to sue jointly (a class-action lawsuit). So now thousands of authors can sue Google since the class includes: “all U.S. authors and their heirs with a copyright interest in books scanned by Google as part of its Library Project.”

Google’s plans to create the world’s largest digital book library could come to a halt depending on whether a court agrees with the authors that Google’s e-books infringed their copyright protection. But wait a minute. Google may have a claim to “fair use” of these works under copyright law, which Google will reportedly use as its primary defense in this case.

The line between fair use and infringement can get blurry. The doctrine of fair use, section 107 of copyright law, says that certain purposes can qualify as “fair” such as scholarship, research, etc. Section 107 also says a court should consider:

1. The purpose and character of the use, including whether such use is of commercial nature or is for nonprofit educational purposes

2. The nature of the copyrighted work

3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole

4. The effect of the use upon the potential market for, or value of, the copyrighted work.

The outcome of this case will undoubtedly have effects on the future of ebooks and digitization. It’ll be up to a judge whether Google’s actions qualify as fair use, but what’s your opinion based on what you know about the case and considering the fair use factors?

Charlie Sheen Trademark Infringement and Right of Publicity

For $250, guests of a New York Gentlemen’s Club could eat sushi off the body of an almost-naked woman in the “Charlie Sheen Room.” At least until Sheen’s lawyer sent the Cheetahs Gentlemen’s Club a cease and desist letter threatening a lawsuit for millions, which the club complied with.

The “Charlie Sheen Room” featured Sheen’s name and images. It sounds a little creepy, but hey, to each his own. The president of the company owning Cheetahs, Sam Zherka, denied that it used Sheen’s name to promote the business. Rather, he says that the strip club used the name for comical effect and felt that it would help, not harm, Sheen’s reputation.

Sheen apparently did not appreciate the effort. Sheen’s lawyer, Marty Singer, reportedly commented: “You can’t use any celebrity name to promote a business without permission. They had no right to use his name.”

Sheen’s lawyer likely relies on the right of publicity laws in California. California Cal. Civ. Code Section 3344 states:

“Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent…shall be liable for any damages sustained by the person or persons injured as a result thereof.”

Although Zherka says that the purpose of using Sheen’s name and images did not include promoting business and customers did not visit the club to see the “Charlie Sheen Room,” Sheen may have had a good argument. Sheen’s reputation may not be the best, but his controversial reputation has helped attract attention and profits. In 2011, Sheen set a new Guinness World Record for the “Fastest Time to Reach 1 Million Followers” on Twitter and his nationwide tour “My Violent Torpedo of Truth/Defeat is Not An Option” sold out in 18 minutes.

We will never know which way a court would have ruled in this case, but it seems like Cheetahs took the smart route by taking down its unauthorized use of Sheen’s name and images from its VIP room.

Gucci Trademark Infringement Against Guess

After three years, the Gucci v. Guess trademark infringement battle finally ended earlier this month when Gucci received a settlement of $4.7 million in damages (Gucci initially demanded $221 million). The judge’s words: “Over the past three years, the parties have put in countless hours and spent untold sums of money, all in the service of fashion — what Oscar Wilde aptly called ‘a form of ugliness so intolerable that we have to alter it every six months.’”

Ever since the end of the case, the web has been abuzz with talk about what this decision means for future trademark disputes and how it relates to the now-infamous Louboutin v. YSL lawsuit. In that case, a judge ruled that Louboutin could not protect its red-soled shoes from use by YSL based on the idea that denying an artist the use of a certain color is too restrictive. Louboutin appealed that decision, but the appeal is still pending.

The Gucci v. Guess case echoes aspects of Louboutin v. YSL because one of the marks that Gucci alleged that Guess copied was its green-red-green color stripe pattern. Additionally, Gucci claimed that Guess copied its “quatro G” pattern of interlocking G’s. Along with the settlement mentioned above, the judge awarded a permanent injunction, which means that Guess is now barred from using the “quatro G” pattern, the green-red-green color pattern, and other square G marks on Guess merchandise. Gucci reportedly says that it will file similar cases in Italy, China, and France.

It’s possible that this case could lead to stricter restrictions in the fashion industry with respect to using a similar pattern to another brand. However, it doesn’t seem that a win for Gucci signals a sure victory for Louboutin on appeal. While Louboutin disputed the use of the color red, Gucci argued against the use of a striped pattern of color. It’s unclear whether this would make a difference to the district court judge that decided the Louboutin case, but the fact that Guess used a similar color pattern and not just a solid color does seem to make the two cases distinguishable. It also gives less weight to the idea of artistic freedom to use a certain color because it involves a specific pattern.

A judge could decide though that the use of the red-sole deserves trademark protection based on public recognition and secondary meaning associated with the red-sole (partly thanks to “Sex and the City”). Louboutin continues to fight for protection against similar use and it will be interesting to see the outcome of the case after appeal.

Ipad Chinese Proview v. Apple Trademark Update

So what’s new in Proview vs. Apple? If you remember from our earlier blogs, since late 2011 the two companies have engaged in a trademark dispute over the iPad name. Proview Technology, a now bankrupt Chinese manufacturer, registered the trademark “iPad” in 2001. Apple released the iPad in 2010 and states that it purchased the rights to the “iPad” trademark in 10 countries from Proview in 2009. Apple paid Proview around $55,000 for purchasing the trademark, but Proview later demanded $10 million for Apple’s use of the name “iPad” in China.

Proview says that it still retains the right to the trademark in China because when Apple purchased the trademark in 2009, it dealt with Proview Electronics (Proview’s Taiwanese affiliate) and not Proview Shenzhen (which it claims owns the Chinese trademark). Thus, Proview did not honor the agreement to transfer the trademark right to use in China. Until Apple paid up, Proview threatened to request custom officials to cease the import/export of Apple iPads into China. In February, a Chinese court ruled that Apple distributors should stop selling the iPad in China and authorities began removing the Apple iPad. A Shanghai court denied Proview a preliminary injunction and allowed continued sales of the iPad in Shanghai.

However, Apple claims that it was led to believe that Proview Electronics had the right to transfer trademark ownership of use in China. Additionally, prior to bankruptcy in 2010, Yang Rongshan served as the chairmen and chief executive officer for all Proview’s entities. A judge hearing the case in the High Court of Hong Kong sided with Apple (Proview appealed), but the Beijing National Copyright Administration recognized Proview as the rightful owner of the iPad trademark in China even after the 2009 transaction.

Earlier this year, Proview filed the case in a California Superior Court, but a judge dismissed the case. A spokesperson for Apple previously said that Apple feels that Proview is “unfairly trying to get more from Apple for a trademark we already paid for.” Now, the two companies are participating in out-of-court settlement talks. Earlier this month, Apple offered Proview a settlement (supposedly $16 million), which Proview said is too little.

Top Trademark Firms Cohen IP Law Group, P.C.

We are proud to announce that Michael N. Cohen of Cohen IP Law Group, P.C. has again ranked in the 2012 edition of Intellectual Property Today magazine survey for its Top Trademark Law Firms . The law firms are ranked according to the number of U.S. trademark registrations issued in 2011 where the firm or attorney is listed as the legal representative on the registration. This is the third year in a row that Cohen IP Law Group, P.C. has received this honor.

Cohen IP Law Group, P.C. is a premier boutique intellectual property law firm specializing in complex trademark prosecution and litigation matters in addition to other intellectual property transactions and litigation. Our firm has litigated successfully against some of the largest law firms in the world at a fraction of the cost. Michael N. Cohen is highly regarded in the trademark community and has been interviewed by the BBC, The Wall Street Journal, and other news sources to discuss intricate matters of intellectual property.

Great Article About INTA (International Trademark Association)

http://www.forbes.com/sites/jesscollen/2012/05/10/265/

Tupac Hologram Copyright and Intellectual Property Issues

Most of you have probably heard about the Tupac hologram at the Coachella Music Festival in California over the weekend. If you haven’t…read the news, there was a Tupac hologram at the Coachella Music Festival over the weekend. Now that’s out of the way, why is this important? First, it was a great post-mortem performance along side Dr. Dre and Snoop Dogg which can be seen here.

Tupac hologram copyright

Second, in addition to the incredible technical feat of the hologram, which was a collaboration pushed by Dr. Dre and done by Digital Domain Productions and AV Concepts, Pandora’s box blew up with speculation of resurrecting great performers like Jim Morrison and Michael Jackson for possible tours.

So what does this mean? IP issues run amok. Where do we begin? Essentially it can be broken down into copyright law and right of publicity. Namely, the creators of the hologram would need to obtain a license of the music that was performed. Most likely AV Concepts obtained the rights from ASCAP for that, nothing too unusual there. However, the creation of the hologram, which we believe was an original recreation of Tupac’s movement (rather than just a copy of footage from one of Tupac’s prior videos) would be a copyright owned by AV Concepts or whomever created the hologram.

But the biggest question is the right of publicity which would be the threshold question. Right of publicity laws are state laws, and in California Cal. Civ. Code Section 3344 states:

“Any person who knowingly uses another’s name, voice, signature, photograph, or likeness, in any manner, on or in products, merchandise, or goods, or for purposes of advertising or selling, or soliciting purchases of, products, merchandise, goods or services, without such person’s prior consent…shall be liable for any damages sustained by the person or persons injured as a result thereof.”

Therefore, Dr. Dre and AV Concepts had to get consent from the executors of Tupac’s estate which is controlled by Afeni Shakur, Tupac’s mother who was apparently thrilled with the end result. So although obtaining consent to a celebrity’s likeness to be used with products is nothing new; posthumous hologram acts for live performances places a new intellectual property spin the likes of which we’ll probably see more of. Now if we can just get Dr. Dre to bury the hatchet and get Eazy-E to come back, how epic would that make up be?

The Velvet Underground Sues Andy Warhol Foundation for Trademark Infringement

Issues of copyright and trademark ownership can become tricky when an artist makes a work for hire.  This is currently the case with The Andy Warhol Foundation for the Visual Arts and 60’s rock band The Velvet Underground.  Many people would recognize the Andy Warhol stylized print of a banana as the Velvet Underground’s unofficial logo.  Many of the same people would also know that the banana was created by Warhol, who often collaborated with the band.  But who owns the rights to the iconic print? 

The banana print was never properly trademarked through a trademark attorney, neither was the copyright.  The Velvet Underground recently filed a trademark infringement lawusit that claims that the print was taken from a newspaper ad that was part of the public domain.  The Andy Warhol Foundation currently owns most of Warhol’s copyrights, which are valued at over $120 million.  The foundation earns about $2.5 million a year by licensing these copyrights.  When the foundation decided to start using the banana print as part of its copyrighted repertoire, the band sued.  According to the lawsuit, the band wants a judicial declaration that the foundation has no copyright protection for the banana icon.

Yahoo Patent Infringement Dispute with Facebook

 

As Facebook readies itself for an initial public offering this spring, tensions are running high in Silicon Valley.  A bit too high, perhaps.  Yahoo has just sued Facebook for patent infringement over 10 patents that involve methods to advertise online.  A similar suit occurred in 2004, when Yahoo sued Google just prior to its IPO.  Yahoo has recently come under the management of a new CEO, and it looks like he means business.  After initially becoming the internet’s main source of networking and online searching, Yahoo has fallen in recent years to Google and Facebook.  A Facebook spokesman recently told the L.A. Times “We’re disappointed that Yahoo, a longtime business partner of Facebook and a company that has substantially benefited from its association with Facebook, has decided to resort to litigation.”

Apparently this kind of lawsuit has been on the rise in recent months in Silicon Valley.  Most of these suits come from firms that buy technology patents to create large IP portfolios.  The Yahoo suit is more of a surprise, although the cozy business relationship implied by Facebook’s statement is probably a bit of an exaggeration.

Pinterest Walking a Copyright Infringement Tightrope

 

The content sharing mega-site “Pinterest” is rapidly gaining online momentum.  The site features a virtual “pinboard” where users can post photos they find online and arrange them into albums, sort of like scrap booking.  The site is hugely popular to women under the age of 35; Pinterest’s Facebook page is “liked” by 97% women.  This site has been rapidly hailed a demographic marketing super-success, and with good reason.  But the site has also drawn an increasing amount of criticism and scrutiny.  Pinterest is coming under intense legal pressure; the copyright infringement issues seem blaringly obvious.  Unlike Facebook, Youtube, and other very popular social networking sites, Pinterest’s content is not primarily user-generated.  Instead, users are pulling copyrighted works from all over the web and reproducing them, mostly without attribution. 

Most content sharing and social networking sites are protected from the infringing actions of their users by the Digital Millennium Copyright Act (DMCA).  But the DMCA specifies that sites must follow DMCA takedown procedures when they receive a proper takedown notice.  Pinterest has been lax in this regard, committing two key shortcomings in following DMCA.  First, they leave it up to their own discretion as to whether to remove the content or not, after receiving a DMCA takedown notice.  Secondly, there is no provision to ban repeat offenders.  Both of these flaws in their system fall short of DMCA guidelines.    And a quick stroll through the online galleries reveals that the vast majority of images are copyrighted works, by and large not attributed.

It will be interesting to see how this plays out, especially if Pinterest decides to start advertising on its pages.  Currently it does not, which may be why would-be DMCA enforcers are turning a blind eye.

Apple iTV Trademark Infringement

Apple has been cooking up a new TV-like product for a while, and it’s been coming closer and closer to fruition.  Steve Jobs announced “iTV” a while ago, although it has not been launched, only hinted at, and talked about internally.  No doubt, consumers will be eager to jump on the iTV bandwagon, as soon as it arrives, and it is rumored to be on schedule for a Christmas 2012 launch.  Last week the New York Post reported that Apple was in communications with cable content providers to provide Apple users with some kind of cable-like service.

The only issue is that a company called iTV Entertainment, LLC, based in San Francisco, owns a trademark for “iTV.”  Today, iTV Entertainment issued a press release preemptively warning Apple of trademark infringement issues that would be raised if they go ahead with iTV.  Apple has a patent (U.S. No. 2011/0154394) that includes drawings displaying an iTV symbol.  The patent describes a visual and audio entertainment system.  This could play out similarly to the current iPad China debacle, but Apple will probably be relieved that litigation would take place in a court here in the U.S.

Copyright-Infringing Artist May do Hard Time

Obama Hope 2008

 

 

 

Is it possible to do jail time for copyright infringement?  If you destroy and falsify discovery information during your federal trial, the answer is yes.  You are probably familiar with the iconic Obama posters from the 2008 election.  The hugely successful posters were created by Los Angeles artist Shepard Fairey.  Fairey based the image off a copyright-protected image, owned by the Associated Press.  In 2009, perhaps in a preemptive move, Fairey sued the Associated Press in Federal Court, seeking a declaration that the poster constituted “Fair Use.”  The AP countersued.  Fairey claimed he had used a certain image of Obama with actor George Clooney, when in reality the image was based off a closely cropped solo shot of the presidential candidate.  As the proceedings rolled along, it was discovered that Fairey had created several fake documents and deleted others to try and support his claim.  This, of course, led to a criminal case, to which Fairey pled guilty on February 24^th.  He now faces up to 6 months jail time, and $5,000 in fines.

Michael Jordan Trademark Issue in China

Michael Jordan can certainly relate to Apple’s trademark nightmare in China.  Jordan recently filed a law suit in China against the Chinese company Qiaodan for using his name without permission since 2000.  Qiaodan means “Jordan” in Chinese, and that name is synonymous with basketball there.  Qiaodan has actually filed trademark applications with a trademark attorney for many Jordan-related themes, even names of his children.

According to Michael Jordan:

“It is deeply disappointing to see a company build a business off my Chinese name without my permission, use the number 23 and even attempt to use the names of my children.”

Qiaodan has over 100 Jordan-related trademarks, and its sales are booming in China. Apple’s uphill battle is probably not a good indicator of how Jordan would fare in Chinese intellectual property court.

Newt, SOPA, and the Cybersecurity Act of 2012

 

Much of the hoopla regarding SOPA, the “Stop Online Piracy Act” has died down during the past month and half.  Why?  The huge outcry by just about everyone ranging from Facebook, Google, Wikipedia, petition drives, (one by Google claiming it received 7 million signatures), and on and on, has effectively drove the message to Congress that SOPA was something that people were not happy with, even my buddy Newt and his GOP comrades were all against it. (The exceptions were with many of the large entertainments studios and some other surprising SOPA proponents).  Towards the end of January, Reuters reported that Congressman Lamar Smith, one of the originators of the bill, retracted the measure “until there is a wider agreement on a solution.”  So is it dead?  Everyone thinks it is but there is some grumbling that it has evolved into an ugly version created by Department of Homeland Security, called the Cybersecurity Act of 2012 just introduced on February 14th.  So has SOPA simply done a makeover with a new name?  Not really.  The bill introduced by Sen. Joseph Lieberman, calls for DHS to “monitor” privately owned networks and systems for “disruptions” that “would cause mass death, evacuation, or major damage to the economy, national security, or daily life”.  At least for now, it appears that it aims to go after real bad actors, especially from hackers and foreign soil from committing cyberattacks, in spite of some of the Orwellian language as interpreted by opponents of bill.  SOPA/PIPA on the other hand was interpreted as giving a means to one industry to attack another or censoring it without due process.

So will SOPA come back?  I would expect so.  Although, on January 14, 2012, the Obama administration stated that while it would not support legislation with provisions that could lead to Internet censorship, squelching of innovation, or reduced Internet security, it encouraged “all sides to work together to pass sound legislation this year that provides prosecutors and rights holders new legal tools to combat online piracy originating beyond U.S. borders…”