Cohen IP Law Group will be attending SEMA 2014 in Las Vegas. SEMA is the number one annual convention of automotive specialty products. If you will be there, let us know!
This past June, Hershey filed a lawsuit in Colorado Federal Court against TinctureBell, LLC and TinctureBelle Marijuanka LLC- two companies that marketed cannabis-laced chocolate bars that were allegedly packaged to look like Hershey products. The causes of action listed in the complaint were: trademark infringement, trademark dilution, false designation of origin, unfair competition, and passing off. The candies included “Hashees” peanut butter cups, and are packaged similar to Reese’s Peanut Butter Cups. The Defendants’ Ganja Joy bars appear to look similar to Almond Joys, and lastly, their HashHeath Bars appear to look identical to Hershey’s Heath Bars.
The lawsuit settled relatively quickly for unknown reasons. If Hershey proceeded with litigation under its trademark infringement claims, it likely had a strong case under 43(a) of the Lanham act. For starters, at the present time, federal trademark law does not yet protect any marks for cannabis products under the Controlled Substance Act (CSA), and further cannabis is still classified as a schedule 1 drug. Additionally, the Defendants products at issue like “Hashees” very much resembled the look of Reese’s. Accordingly, it’s not far-fetched to conclude that a Court may hold that the Defendants were diluting Hershey’s marks by associating a child-friendly and world-wide brand with getting high.
According to The Denver Business Journal, “[t]he settlement between Hershey and TinctureBelle requires the Colorado retailer to ‘destroy all remaining specimens of each product, including without limitation cartons, containers, packaging, wrappers, labels, displays and any other materials …’ TinctureBelle is also prevented from ‘making any false or disparaging statements about Hershey and its products.’” However, the settlement will not have any impact on TinctureBelle’s current products, as the owner of TinctureBell, Char Mayes claimed to have “changed our entire label line approximately six months ago, long before these allegations surfaced.”
The future of trademark protection for cannabis goods is fluid and changing, but even if it is given full trademark protection one day, “canni-preneurs” will not be protected if their packaging confuses the public and dilutes existing brands. Every startup company should strive to create their own, unique, and identifiable brand. As the memorable marketing campaign by Apple once said, “Think Different.”
Here is an article about trademarks based off of my interview with McMurry/TMG for their hospitals clients.
Design patents are a critical form of intellectual property for businesses to protect their product designs. The prior term for design patents were fourteen (14) years from the issuance date. Now, pursuant to the changes made in the Patent Law Treaties Implementation Act of 2012 (PLTIA), design patents filed on or after Dec.18, 2013 have a term of fifteen (15) years from the issuance date.
The XPrize Foundation, Inc. in association with Disney’s new movie “Big Hero 6″ has created it’s own contest for young innovators. The challenge is for kids 8-17 to describe how they would S.T.E.A.M. (science, technology, engineering, arts, or mathematics) to solve problems out there in the world. The big winners get to walk the red carpet in Hollywood at the premiere of Big Hero 6. https://www.xprizechallenge.org/. The United States Patent and Trademark Office is also a sponsor of Xprize.
MGM , the film company that owns the rights to ROCKY sent a cease and desist letter to Philadelphia resident, Rebecca Shaefer who planned to launch a “Rocky 50K Fat-Ass Run” inspired by Rocky’s iconic jogging route through the streets of Philadelphia. Philadelphia Magazine columnist Dan McQuade‘s figured out that the boxer ran 30.61 miles by analyzing running montages in the films. MGM, which owns rights to the film objected on trademark grounds because they sponsor a Rocky themed 5k/10k run to take place in the city of Philadelphia in November. The “Rocky 50K Fat Ass Run” sparked concern of consumers being confused about source of sponsorship. The letter states the following:
MGM demands that you and your affiliates immediately remove the Rockyname and any references, images or promotions related to Rocky from any… materials you may be disseminating in connection with the Unauthorized Rocky Event…Please be advised that failure to comply with these demands will cause MGM to take appropriate legal action to protect its rights and interests to seek all injunctions, damages, fees and costs to which it is entitled under law.
It may appear that MGM has a legitimate claim based on the similarity of the events- in which both involve running, and the “Rocky” name. However, Ms. Schaffer may also have an argument based on fair use, and the first amendment. Such that, the “Rocky 50K Fat-Ass Run” is satirical in nature, in that no one is actually expected to take it seriously or run 50 kilometers.
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.
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.
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.
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.”
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.
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.”
This week, The U.S. Supreme Court began the oral argument stage for ABC Inc. v. Aereo, No. 13-461, a case with colossal ramifications on copyright law. ABC is joined by CBS, Disney, Fox, Comcast’s NBC Universal, and the federal government. The Aereo Company, based in Long Island, NY is an internet alternative to watching television. Aereo charges its subscribers a monthly fee to watch television stations over the internet, without the company having a license to do so, or paying retransmission fees to local affiliates.
The case turns on a part of the copyright law that requires copyright owners’ permission for “public performances” of their work. The law defines such performances to include retransmission to the public.” Aereo argues that since they have an individual antenna streaming to each individual subscriber over the internet, it is accordingly not classified as a public performance under U.S. Copyright Law.
According to Deadline, Chief Justice John Roberts proclaimed during oral argument that “[y]our technological model is based solely on circumventing legal prohibitions that you don’t want to comply with…There’s no reason for you to have 10,000 dime-sized antennas except to get around the Copyright Act.” Justice Ruth Bader Ginsburg pointed out at Aereo “[Is] the only player so far that pays no royalties whatsoever.”
The oral arguments were reportedly watched in person today by Fox co-COO, James Murdoch as well as Aereo CEO Chet Kanojia. The high stakes of this case is clear. If the court rules for Aereo, it could be a deathblow for the television broadcasting model that has been fighting the internet for years. If the court rules for the broadcasting companies, the Aereo business model will be finished. The U.S. Supreme Court is expected to rule on the case in June.
The 2nd trial between Apple and Samsung is 5 days in, Apple is seeking $2.2 billion in damages from Samsung for alleged infringements of 5 of Apple’s patents. Apple filed Apple Inc. v. Samsung Electronics Co., Ltd et al in the California Northern District Court on February 20, 2012, and to make things interesting Samsung filed a counterclaim, alleging that two patents have been infringed on by Apple. Samsung is seeking $6 million, a fraction in comparison. The two tech heavyweights have been at each others throats for years, and by July 2012 had over 50 lawsuits against each other around the world.
The latest news from the case involve Apple’s expert, Christopher Vellturo, who testified this week that the infringement covers 37 million phones and tablets sold during a 2 year period, and the patents at issue involved software that makes the smartphone user friendly. The damages total $2.2 billion. The argument is that Samsung cut into the public demand for Apple’s products by infringing on their patents. Not surprisingly, Samsung’s lawyers think the $2.2 billion demand in damages is a “gross, gross exaggeration.”
If Apple prevails on the merits, although unprobable, but not impossible, that the tech giant will collect billions in damages. While even Apple’s trial lawyers may not believe they can get it, the late Steve Jobs, who declared “holy war” on Google, would be pleased with the fighting spirit. The trial has just begun, and Samsung could use the victory after losing to Apple in a separate, but similar trial, otherwise Apple may feel empowered to push Samsung even further and more frequently into the court room.
At the end of March, The Trademark Trial and Appeals Board granted Disney a 90 day extension to file an opposition against a pending trademark sought by Ronica Holdings, Limited, on behalf of the popular EDM artist, Joel Zimmerman, known as “Deadmou5” (pronounced “Dead Mouse”).
The pending trademark, shown below (Serial No. 85972976) features a smiling black and white mouse head with big ears, similar to the Mickey Mouse silhouette, also shown below. It is likely that Disney and Zimmerman’s representatives are trying to hash this out during the 90 day period.
In one scenario, Disney may seek to block the trademark outright fearing a black and white mouse logo may lead to a likelihood of confusion with the iconic Mickey Mouse trademark. Moreover, Disney may also fear that a similar mouse logo used in connection with the edgy EDM scene, may tarnish the Mickey Mouse’s family friendly image that Disney has worked to build up for many years.
Alternatively, the parties may reach an agreement where both trademarks may co-exist with certain agreed upon limitations.
Zimmerman’s mark at issue is already used in interstate commerce and around the world. According the Deadmou5 wikipedia page, Joel Zimmerman created his mouse head logo using 3D graphic design software, and has used similar mouse designs on his album artwork dating back to 2005. Moreover, Zimmerman is recognized for performing as Deadmou5 while wearing a giant electronic mouse head.
While on one hand, Zimmerman may argue that there is no likelihood of confusion based on his continued use of the mark without a problem for almost ten years, but on the other hand, Disney’s ability to litigate this to the fullest may give Mr. Zimmerman good reason to avoid a high cost legal battle, and seek a quick compromise.
Paramount Pictures is not happy about the way a Twitter user is sharing one of its movies. The Twitter user @555hz attempted to show the entire film “Top Gun” on Twitter through tweets of the film as frame-by-frame clips and images.
The Twitter user posted content from the film every half hour, generating over 1,500 tweets in one month. The user has gained a following of over 6,900 other Twitter users. The handle “@555hz” is suggested to reference the number of frames per second at which the film was being “shown” on Twitter. According to this calculation, the film could be tweeted in 7,000 postings at a rate of two tweets posted per hour. At this rate, the entire film would be on Twitter within 145 days.
Paramount obviously caught this well before the 145-day mark. The last frame was posted on Twitter on February 25, 2014, with Paramount threatening legal action. Paramount issued a Digital Millennium and Copyright Act (DMCA) takedown notice on February 21, 2014. The DMCA provides a safe harbor for internet service providers and imposes no liability on providers for transmitting information that may infringe a copyright. However, the DMCA requires that the providers remove material from their users’ websites when they receive proper notice that their users are engaging in acts of copyright infringement. This gives copyright holders an avenue to limit those who are infringing their rights.
Though Twitter has not removed @555hz from its site, the user has not posted any Tweets since February 25, 2014. Many of the tweets showing frames of the movie are still available on the user’s Twitter feed, while a few posts are unable to be seen, with the message, “This image has been removed in response to a report from the copyright holder.”
Generally, infringement of a film through the use of film clips would typically be seen on video-based platforms such as YouTube. Additionally, Twitter ostensibly seems like an unlikely candidate as a platform for viewing copyrighted materials, however we now know otherwise with advancements in social media that can lend to such potential infringements. So this case shows the ease, or maybe we should say creative ways, in which individuals may potentially infringe copyrighted material. It enforces the need for lawyers to be quick in responding to infringement (at two frames uploaded per hour, @555hz got quite far!), and the need for the law to keep up with the ways in which users may interact with developing platforms and technology.
We have a law clerk opening for a 3rd year law student or recent graduate pending bar results. Must have taken trademark law and preferably other IP courses in law school. Please send cover letter and resume to firstname.lastname@example.org. No phone calls please.
Great story about a young innovator from the African country of Sierra Leone, creating important tools to help his community with limited resources. He lands an invitation from MIT to foster his abilities.