Monday, March 29, 2010

Green Day Copyright Infringement of Scream Art

Immediately following a Green Day concert in LA last August, local artist Dereck Seltzer began receiving calls and emails, alerting him that his ‘Scream Icon’ art was being used as the backdrop to the show. Seltzer was surprised, since he had no previous contact with the band. Scream Icon was copyrighted by Seltzer in 2003. When he approached the band, complaining that they had used the art without regard for the registered copyright, they offered him concert tickets in settlement. Green Day continues to use artwork in promotional materials and backdrops.

Seltzer filed a complaint in the Central District of Los Angeles and is suing Green Day for Copyright Infringement, and unfair competition and false designation under Section 43(a) of the Lanham Act. However, Green Day’s attorney, Don Passman claims that "Green Day received Mr. Seltzer's image from a responsible company and was unaware that there could be any copyright or other issues."

It’s hard to be too careful about usage of graphics and artwork, and it’s important to know the actual source. Although it may seem harmless, much of it is legitimately copyrighted material. Even more important to be careful when dozens of sold out stadiums will be viewing the art in question.

Thursday, March 25, 2010

T.I.'s Clothingline Sued by Akoo for Trademark Infringement

Recently, Akoo Clothing, launched by rapper T.I. (real name Clifford Harris, Jr.), received considerable media attention for a sexually explicit billboard in New Jersey that was protested and subsequently taken down. The publicity stunt may have backfired though, as the billboard also got some unwanted attention from Akoo International, a social music television network.

Akoo International filed suit for trademark infringement against the clothing label Akoo, stating that they own the registered trademark and have used the name for years. Both parties operate in the music industry, and Akoo International was concerned that consumers could easily confuse the brands.

“Our primary obligation and goal is to prevent confusion among our consumers,” said Akoo International CEO Niko Drakoulis, “which is among the most basic objectives of trademark law.”

Interestingly, this is T.I.’s second suit of 2010 for intellectual property offenses. He was sued for copyright infringement in January for allegedly stealing parts of his hit song “Why You Wanna” from the 2004 song “Reverance” by Motoe Blizzid.

Tuesday, March 23, 2010

GM Trademark Infringement

For years, private manufacturers that made replicas of classic sports cars have been tolerated by the auto industry. They create interest and foster goodwill towards automobile brands by idolizing certain models of cars.

But according to an article in the Detroit News, GM is cracking down on one small time replica manufacturer, alleging trademark infringement. GM filed suit against Mongoose Motorsports LLC, an Ohio-based auto parts retailer and part-time manufacturer of the 1963 Corvette Grand Sport. The Grand Sport is one of the rarest and most valuable sports cars ever; only five were built. Mongoose Motorsports sells a replica Grand Sport for $90,000, while the authentic car goes for several millions at auction. But Mongoose is in no way licensed to sell the cars, and apparently enough of them are being produced to dilute the market. “This is not an homage,” said GM spokesman Tom Wilkinson.

The problem is that Mongoose is marketing exact replicas of the 1963 car, complete with trademarked Corvette logos.

Wednesday, March 17, 2010

Trademark Rejection of Khoran Wine

Last week, a panel of five TTAB judges shot down an application for wines bearing the trademark name Khoran. The decision was made based on the trademark’s similarity with the holy text of Islam, the Koran. The panel rejected the application on the basis of disparagement. In re Lebanese Arak Corporation. In previous cases, the board has rejected marks that are belittling to a specific group of people.

When filing trademark applications with the United States Patent and Trademark Office, applications can be rejected for a number of reasons, such as likelihood of confusion in view of an earlier filed application, or for other legal grounds regarding the mark itself, such as disparagement in this case.

To determine disparagement, there is a two prong test:
1) what is the likely meaning of the
matter in question, taking into account
not only dictionary definitions, but
also the relationship of the matter to
the other elements in the mark, the
nature of the goods or services, and
the manner in which the mark is used in
the marketplace in connection with the
goods or services; and

2) if that meaning is found to refer to
identifiable persons, institutions,
beliefs or national symbols, whether
that meaning may be disparaging to a
substantial composite of the referenced

The TTAB found that the second prong was easily met. The majority and dissent was split however, on the first prong. The dissent felt that this mark, in its context on the label of a wine bottle, would not be disparaging to Muslims. Moreover, they felt that the mark should be examined from the viewpoint of the average American wine consumer:

“We believe the Board must look to the general population of the United States and how they will understand applicant’s mark when it is being used in connection with the identified goods or services, in this case wine.”

And yet, it’s hard to believe that the average American would see the word Khoran (which is actually another spelling of the Islamic text), and not think of the Koran.

The wine in question is Armenian, where Khoran means “altar.” Apparently, it’s been sold under that name for several years there (and has been locally available through importers). But it looks like it’s not going to make it as a federally registered trademark in the U.S anytime soon.

Tuesday, March 16, 2010

Cybersquatting of New Domain Names

Here’s some interesting news: The likelihood of cybersquatting remains high for .com's but is much less ICANN’s new domains. According to a recent study by a top-level domain (TLD) consulting firm called Minds+Machines, internet domains other than .com (such as .net, .biz and .info) aren’t currently pursued by cybersquatters. Furthermore, the study suggests that the new assortment of generic top-level domains (gTLD’s), recently created by ICANN will not attract cybersquatters either. These domains include .mobi, .cat, .name, .asia, .pro, .tel and .travel.

The study was conducted thusly: Minds+Machines examined domain name registration of more than 1,000 Fortune 100 brands. They reason that if a trademark name is available at a domain, neither the company nor cybersquatters are concerned with the open real estate. The danger of trademark infringement is assumed to be low, given the apparent lack of interest in the site. According to the study, 100 percent of the companies were registered in .com sites. The already-established gTLD’s outside of .com (.org, .net, .biz and .info) had between 65 and 87 percent name registration. The new categories mentioned above had less than 30 percent registration.

These numbers do show that cybersquatting is an issue in the .com category. However, they fail to prove anything about the future of internet domain value. Will these new domains continue to be ignored in the long term? It’s hard to say. Current internet patterns may not be indicative of the future. Fifteen years ago, could anyone have predicted the current power of social media?

Thursday, March 11, 2010

AMEX Black Card Trademark Infringement

American Express’s Centurion Card, also known as the “black card” has become an iconic status symbol in American pop culture. The card has no limit and a whopping 2,500 annual fee. Introduced in 1999, the card quickly gained attention in books, rap songs, and TV shows. American Express really had a hit on their hands. But they didn’t trademark it. Visa actually owns, more recently in mid 2009, granted issuance of a registered trademark for Black Card.

Last month, Amex filed a complaint with the New York district court, alleging that Visa has:
“perpetrated a scheme to confuse the public and misappropriate for itself the enormous goodwill of the Centurion Card by launching its own, imitation “Black Card” that not only rips off the Centurion Card’s “Black Card” alias, but also, as shown below, copies the trade dress of the unique, distinctive Centurion Card. Even more brazenly, defendant (which audaciously incorporated under the name Black Card LLC and promotes its card at the website, is seeking to register a family of BLACK CARD trademarks so that it can claim the exclusive right to use that mark, which the public long has associated exclusively with the Centurion Card and American Express.”

American Express is going to be fighting an uphill battle. The term “black card” was widely used to refer to the card almost from its inception. It’s unthinkable that Amex didn’t immediately slap a trademark on it. Through the power of 1B intent to use applications, Visa was able to lock in an application in 2005 even though they didn't start using "Black Card" until 2009. AMEX will have to prove its priority of use and association of the term "black card” in the mind of consumers.

Monday, March 8, 2010

Baseball Trademark Infringement Slugout with Major League and Upper Deck Trading Cards

Last week, Major League Baseball settled a trademark infringement case against the Carlsbad, CA based trading card company, Upper Deck. Upper Deck failed to completely eliminate the MLB logo from some lines of their 2010 baseball cards.

Although Upper Deck’s 2010 baseball cards did not display MLB’s logo on any of its packaging or cards, the logo was visible in certain photos, on several of the players’ uniforms and hats. Upper Deck failed to airbrush off the logos. And yes, even a minuscule MLB logo on a player’s hat is still a trademark. Exclusive rights to a trademark mean exclusive rights.

In October of last year, rights to the MLB name and logo were given to Topps Company, Inc., Upper Deck’s main competitor.

The settlement wasn’t for small change, either. Just one specific part of the settlement, for certain 2009 misuses of the logo, was for $2.4 million dollars. In addition to that, Upper Deck must pay MLB an amount for the unlicensed cards it sold in 2010. Further, Upper Deck must get MLB's approval for any future use of baseball jerseys, pants, jackets, caps, helmets or catcher’s equipment in products featuring players.

Should’a double checked, before they hit the print button…

Wednesday, March 3, 2010

Trek Trademark Infringement...Dismissed!

In true David vs. Goliath style, an obscure California winery held its ground in court yesterday against Trek, the largest U.S. manufacturer of bicycles and related products. Novato-based Trek Wines was sued by Trek Bicycle Corporation in October 2009 for trademark infringement, in the matter of Trek Bicycle Corporation v. Trek Winery, LLC, in the Western district court in Wisconsin. Trek Bicycle Co. accused the winery of federal and state trademark infringement when three cases of their wine made it to Wisconsin (Trek bikes’ home state) last year.

U.S. District judge Barbara Crabb granted Trek Wine’s motion to dismiss, stating that “Plaintiff cannot argue seriously that three isolated sales show that defendants have made such purposeful availment of the benefits of Wisconsin’s laws that they could reasonably anticipate being hauled into court in this state.” According to the North Bay Business Journal, two of the cases sold in Wisconsin went to relatives of Trek Wine owners. The other was sold to a Trek Bicycles employee, according to Judge Crabb, “to confirm that defendants were able and willing to sell wine into the state.” (Come on Trek, a setup?)

American small business owners can rest assured; their registered trademarks are every bit as valid as those registered by the big boys.

Monday, March 1, 2010

Facebook Patent Unleashed!

Facebook obtains potentially powerful patent on Newsfeed technology

In 2006, Facebook filed a patent application on its much-imitated Newsfeed technology. Last week the patent was granted. Facebook has yet to announce any plans for legal action, but Web sites all over must be feeling more than a little apprehensive. After all, Twitter is essentially one big news feed. Google, Myspace and Flickr all use a similar technology.

The USPTO granted coverage to “the generation of activity elements associated with a user through a social network, tethering an information link associated with at least one these activities, limiting access to material in question to a predetermined list of users and assigning an order of publication for these different elements.”

Before Facebook sues anyone for patent infringement, it must consider the potential fallout from such a drastic move. In 2007, when Facebook tried out its first News Feed technology, called Beacon, users felt violated and many deleted their accounts. Mark Zuckerberg, Facebook CEO, issued a public apology and rescinded the service (although it slowly crept back in without any large-scale reactions). Facebook better use its new weapon of mass destruction tactfully. But it probably will use it. Stay tuned…