Copyright Law’s “Blurred Lines” Will Remain That Way

Every once in a while, the law can be wildly unpredictable and interesting.

Not necessarily in a good way… but interesting nonetheless.

As is the case with the verdict in Robin Thicke and Pharrell Blurred Lines appeal. Though the verdict is bad news for a lot of music creators, it’s an interesting change in the application of the law.

But that’s not all that’s going on in the world of intellectual property news. There’s an interesting new case we’re keeping an eye on as well.

Details on everything below.

“Blurred Lines” Verdict Upheld, Leaving Questions in Its Wake

It was the verdict one expert and his colleagues were so sure would be overturned, they were counting the days waiting for it to happen…

But then, it didn’t.

The music industry was shocked three years ago when Robin Thicke and Pharrell Williams were found to have infringed Marvin Gaye’s “Got to Give It Up” in their 2013 hit “Blurred Lines.”

And it is now shocked again to find the verdict upheld in a 2-1 opinion issued by the Ninth Circuit appellate court. (You can download a copy of the 89-page verdict here.)

As we explained at the time of the lower court’s ruling, this case was a watershed moment because it wasn’t about infringement of a lyric or a melody. Rather, it was about the tone and feel of the song—the overall sound, with its recognizable cowbell and party vibe. These elements aren’t typically copyrightable.

As we also talked about when the verdict came down, Gaye’s hit was released in the mid-1970s, right around the time there was a major change in copyright law. Thicke and Williams appealed on the basis of that change in the law. They argued that the jury considered evidence it shouldn’t have been presented with—and as result, that evidence impacted the outcome of the case.

The appellate court took care to note that its decision was purely procedural, disappointing industry watchers who wanted the case’s substantive issues addressed. As Judge Smith wrote for the majority, “[o]ur decision does not grant license to copyright a musical style or “groove”… Rather, our decision hinges on settled procedural principles and the limited nature of our appellate review.”

For that reason, some say the outcome of this case doesn’t really change copyright law and won’t have much impact on future cases. The Gaye family’s lawyer agrees, pointing to a 1994 suit the Isley Brothers brought and won against Michael Bolton. That case was also supposed to be a landmark case but didn’t end up triggering the expected wave of lawsuits.

Yet many lawyers and forensic musicologists (a type of expert relied on in the Blurred Lines case) say they’ve already seen more cases, and faster settlements, since the “Blurred Lines” verdict was issued in 2015.

Industry watchers are hoping Thicke and Williams seek an en banc decision (where the entire Ninth Circuit court considers the case, rather than just a three-person panel) or appeal to the Supreme Court so this case can be decided on the merits. But in either event, there’s no guarantee the court will grant the request.

So for now, the 2-1 appellate decision stands. Even though one judge strongly dissented, pointing out that “[W]hat the majority overlooks is that the two works in the same genre must share at least some protectable expression in order to run afoul of copyright law.”

Now, Here’s Something Ironic

Do you remember Robin Thicke’s performance with Miley Cyrus at the 2013 MTV Video Music Awards?

When “Blurred Lines” was #1 on the music charts, the #2 track was Cyrus’s “We Can’t Stop.” At the MTV awards, the two performed a rather raunchy mashup of these songs.

As we all know, Thicke was sued for his song—and as it turns out, now Cyrus is being sued for hers.

Plaintiff Michael May asserts that Cyrus’s lyric “we run things / things don’t run we” is a misappropriation of his 1988 lyric “we run things / things no run we.”

Unlike the “Blurred Lines” lawsuit, the musical tracks at issue don’t sound alike. (You can judge for yourself here.) The point of contention is just the lyric. May estimates that his contribution to the success of Cyrus’s song is worth $300 million. He’s seeking an injunction to future sales and performances of “We Can’t Stop.”

And Here’s a Case that Seems Ironic But Isn’t

On a different note, here’s a case that at first blush seems ironic…

But really isn’t at all.

Tinder (or more specifically, its parent company Match) is suing Bumble, and Bumble is countersuing.

If you don’t know what those two companies are, let’s just say that one online dating company is suing the other.

Now, Tinder and Bumble both use “swipe left” and “swipe right” technology to connect (or reject) other members. The big difference is that on Bumble (the newer company), for heterosexual matches, the interface requires any conversations to be initiated by the woman.

It seems cut and dried that if Tinder came along first, Bumble is infringing.

But it’s not that simple. Here’s the backstory with these two companies.

Bumble founder Whitney Wolfe Herd was a co-founder of Tinder. She founded Bumble in 2014, the same year she left Tinder and sued that company for sexual harassment. Though Match denied her allegations, it paid Herd to settle the suit.

In 2017, Match offered to buy Bumble, but Bumble turned down the offer, citing the $450 million price as too low. So Match requested confidential marketing information and financial information, purportedly to raise its bid. After raising its offer, Tinder dropped its bid lower again, and negotiations fell apart.

Tinder announced that it would be adding the same woman-controlled feature to its app, and at the same time initiated suit against Bumble. The complaint cites infringement of two patents; infringement of Tinder’s “swipe” trademark, the application for which is currently on hold with the United States Patent and Trademark Office; and theft of trade secrets by two former Tinder employees who now work for Bumble.

But Bumble isn’t just playing defense. The company first published an open letter positioning it as the underdog in a David-and-Goliath style battle. Then it countersued for fraud and theft of trade secrets.

Bumble alleges Tinder is trying to devalue Bumble in the eyes of other potential financial suiters. Moreover, says Bumble, Tinder was already planning to sue Bumble when it sought confidential company information under the guise of raising its offer price.

One thing is almost certain: with this case just heating up, we’re sure to hear more surprising allegations between the parties if they don’t settle quickly.

Never Mind the Drama – We Can Help

You’ve already seen that intellectual property law can be dramatic.

It can also be confusing.

If you have a question about entertainment law or intellectual property law, then contact us for a consultation. It’s free, and there’s no obligation.

Our firm regularly handles both transactions and disputes around copyrights, trademarks, and patents. To learn how to protect your IP, visit us online, or call 561.953.5300 to schedule your complimentary appointment.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

 

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Copyright Law’s “Blurred Lines” Will Remain That Way

Intellectual Property + Politics = Lawsuits

Intellectual property rights used to be an esoteric concept to most people. But as more people become creators, they’ve learned more about this bundle of rights. It’s easier to see how they apply in real life.

But sometimes there are still surprises. Creations become misappropriated in an unexpected way. Good intentions can backfire. And as with many other fields, IP case law ends up being shaped largely by politics and current events.

Like these recent cases:

Cartoon Frog Becomes a Hate Symbol

Have you ever heard of Pepe the Frog? (If he doesn’t sound familiar, do a quick image search online. You’ll probably recognize him.)

Pepe started out in a comic strip, the same way many other hand-drawn characters do. But over time, he became more popular… more widely disseminated… and somehow, a symbol for the alt right. (Though he’s only been around since 2005, Pepe has had an interesting history and evolution.)

Within the past few years, more and more memes featuring Pepe as a white nationalist have been created and shared. In fall 2016, a number of news outlets reported on Pepe’s association with the alt right movement. Of course, this brought the character’s negative connotations further into the spotlight.

Matt Furie, Pepe’s creator, issued a statement through his publisher, Fantagraphics, speaking out against the use of the Pepe character in this manner. “[T]he one, true Pepe the frog, as created by the human being and artist Matt Furie, is a peaceful cartoon amphibian who represents love, acceptance, and fun,” the publisher said.

Furie also teamed up with the Anti-Defamation League to do a #SavePepe hashtag campaign encouraging people to create and share positive images of Pepe on social media.

But associations can be stubborn, and Pepe continued to be an alt right symbol. So when Furie found out about a cartoonist selling oil paintings showing Pepe in violent and politically charged situations, he sued. (The case recently settled.)

And he recently sued again. This time, he’s targeting a much larger defendant: the alt right website Infowars.com. The suit stems from a promotional poster for the website that’s available for purchase. The poster features the likenesses of Infowars founder Alex Jones, Ann Coulter, Milo Yiannopoulos… and Pepe (among others).

The suit alleges one count of copyright infringement. Furie is seeking financial damages (he licenses the Pepe character to other companies) along with an injunction.

Infowars’ Jones hasn’t responded to the complaint as of the time of this writing. But he has told the press that the poster is an expression of political speech protected by the First Amendment.

Microsoft vs. the Environment?

Eric Lundgren is an entrepreneur, inventor, environmentalist, philanthropist… and possibly, a criminal.

Lundgren began fixing and reusing computer parts during his teen years in Washington. By the time he was 19, he’d moved to Los Angeles and started an electronics recycling company.

Within the next 14 years, he went on to launch a facility that turns discarded electronics into functioning technology. And not just refurbished factory versions: Lundgren built a car from recycled electronics parts that outperformed Tesla in a road test.

His company processes 41 million pounds of e-waste annually. His donation of 14,000 cellphones to “Cellphones for Soldiers” and his efforts to help clean up e-waste in Ghana and China show that he cares about people as well as the planet.

But now Lundgren’s desire to help has landed him in trouble.

His legal issues relate to restore discs, which help computer buyers reinstall their operating system if their computer crashes or needs to be reset. Restore discs can only be used on computers that already have licensed Windows software. They’re usually provided at the time a new computer is purchased or can be downloaded from the computer manufacturer’s website.

Lundgren recently manufactured 28,000 of these discs—without Microsoft’s approval.

Not for profit, he said, but because of Microsoft’s planned obsolescence for certain computers. Over time, technology companies encourage buyers to spend money on new products by phasing out support for the older ones. The result is extra e-waste – another computer disposed of that pollutes both air and water when it’s burned.

Lundgren had hoped that by duplicating the restore discs, he’d save computer owners from unnecessarily trashing their old computers that could still be functional. Instead, he found himself on the receiving end of a software piracy lawsuit.

The court overseeing the case determined that the discs were worth $700,000 – an amount that came with a $50,000 fine and a 15-month prison term for Lundgren. However, in an unusual move, the appellate court granted his request to remain free while he appeals.

Do you have questions about intellectual property?

Do you have questions about your own intellectual property rights as related to someone else’s? Our firm regularly handles both transactions and disputes around copyrights, trademarks, and patents. To learn how to protect your IP, visit us online, or call 561.953.5300 for your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

Intellectual Property + Politics = Lawsuits

Looking to Cancel Someone’s Copyright? Here’s What You’ll Need to Prove

How would you or the music fan in your life complete this sentence?

“Everyday I’m _________”

Rapper Rick Ross says the phrase is “Everyday I’m hustlin’,” from his classic tune “Hustlin.’”

Pop band LMFAO says it’s “Everyday I’m shufflin,’” as used in their song “Party Anthem.”

Rick Ross alleged in a lawsuit that LMFAO is infringing.

Yet Ross’s three copyright registrations at issue are all defective. As the case made its way through the district court, the court sua sponte (on its own, without being asked by either of the parties) invalidated the registrations. Without owning a valid copyright, Ross had no standing to sue, and the court dismissed his case.

Trademarks and patents are occasionally invalidated after they’re issued. There are a number of reasons this can happen, from administrative to litigation-related.

But copyrights are invalidated less frequently. And as the US Court of Appeals for the Eleventh Circuit made clear in ruling on Ross’s appeal, someone seeking cancellation of a copyright has a high threshold to meet.

Scienter, or ill intent, relative to the registration is required.

It begins with one of the copyright statutes. The law specifies that, while a copyright automatically exists in applicable works, a plaintiff must have registered their copyright in order to sue for infringement. 17 U.S.C. § 411.

The Copyright Act notes that a registration certificate – even one with inaccurate information – serves as satisfaction of this requirement, unless:

  • The inaccurate information was knowingly included on the application; and
  • had the Copyright Office known of the inaccuracy, it would have refused to register the copyright.

Id. at (b).

Which leads to a few questions. For all registrations where the applicant should have known, or later became aware of, inaccurate or incomplete information be cancelled? Does it matter if the inaccuracy is of little consequence? Or should copyright applications be treated more stringently for someone who has negative intentions for the registration—if, for example, they’re looking to hide something?

As far back as 1982, the Eleventh Circuit (which has jurisdiction over federal cases in Florida, Georgia, and Alabama) has maintained that cancellation of a copyright requires scienter.

That year, the court noted that a common theme in certain copyright lawsuits was the “intentional or purposeful concealment of relevant information.” Original Appalachian Artworks, Inc. v. Toy Loft, Inc., 684 F.2d 821, 828 (1982). Where scienter is lacking, both district courts and appellate courts have generally upheld copyrights. Id., citing cases from various courts around the country.

The Toy Loft court found no scienter for the errors in the plaintiff’s copyright application, and the defendant’s claim that plaintiff’s copyright was unenforceable failed.

Yet the language of the relevant provision of the Copyright Act was amended in 2008. Would the amendment change the analysis if the same case were heard today?

In 2009, the Eleventh Circuit said no, reiterating its position in St. Luke’s Cataract & Laser Inst., P.A. v. Sanderson, 573 F.3d 1186.

In Sanderson, the court considered both the language of the statute (17 U.S.C. § 411 at (b)(1)) and the Toy Loft court’s finding that “[O]missions or misrepresentations in a copyright application can render the registration invalid” in the event of “intentional or purposeful concealment of relevant information.” Sanderson, 573 F.3d at 1201, citing Toy Loft, 684 F.2d at 828.

Based on the facts of the case, the Sanderson court found scienter, ending the plaintiff’s attempt to get a new trial.

But does this mean that scienter must be present?

As Rick Ross, LMFAO, and the rest of the Eleventh Circuit now know – yes.

Ross and his fellow plaintiffs appealed the dismissal of their copyright lawsuit. Roberts v. Gordy, 877 F.3d 1024 (2017). They argued that the lower court improperly invalidated their copyright registrations without evidence of scienter. LMFAO and their codefendants countered that scienter wasn’t required.

However, the defendants had never contested the validity of the plaintiffs’ copyrights in the course of the suit. And in failing to raise that point as a defense, they ultimately waived it. District courts aren’t supposed to raise defenses sua sponte (on their own accord) as they did here.

Moreover, the Eleventh Circuit found the lower court’s analysis incorrect. The appellate court made a point to state very directly that the Sanderson analysis reaffirmed Toy Loft. The amendment to the Copyright Act in between the two cases did not impact the court’s position.

The court explicitly found that “in order to invalidate a registration, (1) the application must contain inaccuracies, (2) the inaccuracies must be material, and (3) the applicant must have the required scienter of intentional or purposeful concealment.” Gordy, 877 F.3d at 1030 (emphasis added).

The Eleventh Circuit is the first appellate court to make this determination. The ruling will stand as precedent in Florida, Georgia, and Alabama, and it will be persuasive for courts in the rest of the country. So at least for now, this is the law of the land.

That’s good news for copyright holders whose registrations may be unintentionally defective…

Yet if you’re ever involved in a copyright dispute, it’s preferable not to have to spend the time and money litigating this point as Rick Ross did.

To minimize the chances of a dispute of this nature, you’ll want to ensure that all your copyright registrations are accurate. The Lomnitzer Law Firm can help. If you have questions about registering a copyright, trademark, or patent, visit us online, or call 561.953.5300 for your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

Looking to Cancel Someone’s Copyright? Here’s What You’ll Need to Prove

New Year, Same Lawsuits

As tempting as it is to say “new year, new lawsuits,” that’s only partially true.

Because while a slew of new suits will surely be filed in 2018, there are still plenty of pending cases that are worth watching even though they have yet to be decided.

One big theme in a number of pending cases is fashion. From shoes to jewels, there’s a suit, countersuit, or appeal coming up that could have big implications for other players in the fashion industry. And it’s no wonder: something so visually driven invites all kinds of trademark and design issues.

Here are a few cases we’re keeping an eye on this year.

  • Adidas sues Skechers… again.

Skechers is no stranger to lawsuits. In its 25 years of existence, the company has been taken to court more than once by both Nike and Adidas for knocking off their designs.

Chalk it up to Skechers’ “fast fashion” approach to doing business. Rather than spending a lot of money researching and developing innovations for their sneakers, Skechers takes a different tack. The company waits for the bigger shoemakers to test new shoe designs out first. Skechers then manufactures its own version of the shoes that are successful in the marketplace.

In spite of the numerous suits the company has had to defend against, the business model seems to be working for Skechers. The company surpassed Adidas to become the number-two selling athletic shoe company in the US in 2015.

Having entered into several settlement agreements since 1995, it seems that another could be on the horizon for these two parties. At the center of the dispute is Adidas’ “Springblade” technology which is intended to help propel runners forward.

The distinctive design was introduced in 2013. Skechers began offering its own modified version before Adidas received patents for the Springblade concept in 2016. Because of the timing, the court last summer found no willful infringement on behalf of Skechers and turned down Adidas’ request for a preliminary injunction.

The case was put on hold late last summer so the U.S. Patent and Trial Appeal Board could decide other issues related to the case. The trial is expected to move forward in April 2018—unless, of course, the parties settle (again).

  • Converse is trying to regain its rights in its trade dress.

For many shoppers, the Converse brand’s iconic shoe designs with a toe cap, bumper, striped midsole, and diamond-patterned soles have been around for more than their entire lives. The question is, when you see these elements on an athletic shoe, do you automatically think of Converse?

The company says yes, you probably do. With that in mind, Converse filed an infringement suit a few years ago against 31 entities including the likes of Walmart, New Balance, and other household names.

During the proceedings, the International Trade Commission (“ITC”) found that, aside from the patterned soles, the other elements at the heart of the suit weren’t protectable as trade dress. (Trade dress is a product’s overall appearance. Just as someone can have legal rights in a trademark, they can also have rights in trade dress.) This was a major victory for the defendants.

But Converse isn’t going away quietly. The Nike subsidiary is battling the ITC to have its design features recognized as protectable trade dress. Arguments are scheduled to be heard by the Federal Circuit appellate court in February.

Christian Louboutin (whose red-soled shoes enjoy legal protection) and Tiffany & Co. (whose “Tiffany blue” boxes are also protected) have filed amicus briefs for the court to consider. These are briefs submitted by nonparties who have an interest in the subject matter and want to provide additional, relevant information.

These companies argue that the ITC’s decision, if allowed to stand, sets a dangerous precedent that could upend trademark and trade dress law as we know it.

  • Speaking of Tiffany & Co., Costco is appealing the court’s verdict in favor of the jeweler.

Sound familiar? These parties have been embroiled in litigation for five years (though you wouldn’t be alone if you think it feels much longer).

Tiffany sued over Costco’s sale of what the retailer described as “Tiffany” diamond rings. Costco argued that the “Tiffany setting” is a generic description for a type of ring setting. While the argument has some validity, Costco’s display cases said “Tiffany” as a standalone term, which could be misleading as to the origin of the rings.

Tiffany prevailed, and the court last fall ordered Costco to pay $19.4 million. But the case isn’t closed because Costco appealed. The parties are due to meet in court again later this year. If Costco is successful in its appeal, the decision could loosen the rules regarding how you can describe your product.

But more than just the Tiffany suit, all three cases have the potential to have a big impact. We’re looking forward to seeing how they play out, and we’ll be sure to keep you posted about their outcomes could affect you.

Do you have any questions about a trademark, patent, or copyright matter? Our firm focuses on intellectual property and entertainment law and would be happy to discuss it with you. Contact us at (561) 953.9300 or visit us online at http://www.lomnitzerlaw.com to schedule your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

 

New Year, Same Lawsuits

The Slants’ Free Speech Victory Changes the Legal Landscape for Trademarks

It finally happened.

In Matal v. Tam, the Supreme Court handed down a long-awaited decision on a major trademark case, and opened the floodgates for a lot more trademarks to be registered.

In Matal, the defendant was the leader of an Asian-American band called The Slants. The word “slants” is a derogatory way to describe Asian-Americans. Yet Tam and his bandmates decided to re-appropriate the term, wearing it as a badge of pride.

There’s no question Tam and his bandmates can choose whatever name they want. However, while anyone can name their service or product freely, the chosen name may not necessarily qualify for trademark registration with the United States Patent and Trademark Office (“USPTO”). Thus, even with a legally permissible name, some would-be registrants end up unable to enjoy the legal benefits and protections that registration provides.

Which is exactly what happened with The Slants: the USPTO denied their application. Why?

Among its other duties, the USPTO administers the Lanham Act, the federal law which governs all trademarks. The Lanham Act contains a provision which states that registration shall be refused for trademarks that are disparaging (or that meet a few other specified conditions).

The Slants say they don’t use the word in a negative manner. After all, they’re talking about themselves. Instead, they’re using their name (along with some of their song lyrics) to draw attention to racial issues.

No matter. Because “slants” is widely viewed as disparaging, the USPTO denied the band’s request for registration in accordance with the statute. The band sued in response, citing the government’s violation of their free speech rights.

While the case was working its way through the courts, a similar issue came about involving the Washington Redskins. In contrast to The Slants, The Redskins’ marks had already been registered. Yet over the years, numerous Native American groups have sued over the NFL team’s name, citing its derogatory connotations. In the course of one of those suits, the USPTO cancelled the Redskins’ registrations under the Lanham Act’s anti-disparagement clause.

The team has been embroiled in the appeals process since then. When it became clear that The Slants’ case would be heard first, the Redskins requested the Supreme Court hear their case at the same time, due to the similarities. But the Court denied the request and scheduled only the Matal case on its docket. (Maybe they knew their decision on that case would resolve the Redskins case without their having to directly intervene.)

In the end, it was a unanimous decision. The Slants won, and the ban on disparaging trademarks was struck down. As Justice Alito wrote for the majority, “If affixing the commercial label permits the suppression of any speech that may lead to political or social ‘volatility,’ free speech would be endangered.” (Justices Kennedy and Thomas wrote concurring opinions.)

As for the Redskins, the plaintiffs realized that the Matal ruling left them with little basis to proceed with their suit. They dropped their case against the football team days after the ruling. The Redskins’ trademark registrations will remain in effect.

Yet many still feel that regardless of the Matal case outcome, the Redskins’ marks should stay cancelled. For his part, Tam himself says the team should change its name. “Just because something is permissible, it doesn’t mean it’s the right thing,” the Slants’ frontman said.

Whether or not that will happen, there’s likely to be an uptick in the number of applications received by the USPTO, as many marks that were previously denied might now be eligible for registration. And with more businesses being able to protect their intellectual property, those assets may become more valuable.

Are you thinking about registering a trademark? Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us at (561) 953.9300 or visit us online at http://www.lomnitzerlaw.com to schedule your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

The Slants’ Free Speech Victory Changes the Legal Landscape for Trademarks

How the Courts are Shaking Up the Intellectual Property Legal Landscape

It’s that time of year when the Supreme Court hurries to clear their docket before adjourning for summer.

And this spring, within the space of a week, the Court issued two decisions that will have big implications for patentees (patent holders), their customers, and their legal adversaries.

At the appellate level, one of the federal circuit courts also issued a major decision recently that could spell trouble for online service providers and internet service providers.

Patent owners’ rights disappear when they sell their product.

The Court’s most recent tech decision, Impression Products, Inc. v. Lexmark International, Inc., dealt with the exhaustion of patent rights. When there is an authorized sale of a patented item, what rights does a patentee (patent-holder) give up to the purchaser? And what rights does the patentee retain after the sale?

Lexmark International sells refillable printer cartridges. Impression Products purchases the used cartridges, refills them, and sells them for a lower price. Not liking this practice, Lexmark sued Impression for infringement.  Following a line of precedent from other cases, the Federal Circuit ruled in Lexmark’s favor, finding that the company retained some of its post-sale rights.

But the Supreme Court recently overturned that decision. It held that all of a patentee’s rights are exhausted at the time of the first authorized sale. After that occurs, patentees have no further rights. This is true whether the first sale takes place in or out of the United States.

This decision changes 20 years of precedent. It’s made patent law simpler and more consumer-friendly. The lack of restrictions after the sale might mean result in lower prices for used goods.

At the same time, this ruling might force patentees to rethink how they do business. Because the Court didn’t say that Lexmark has no cause of action. It simply said patent exhaustion precludes there from being a cause of action for infringement.

In order to be able to retain certain rights, companies might need to change their agreements with their licensees and customers. They may also need to revisit some of their strategies, especially those related to pricing.

The implications are big, and will start making themselves clear as fewer patent exhaustion cases emerge.

But Impression Products was actually the second consumer-friendly patent ruling handed down by the Supreme Court recently…

The venue for a patent lawsuit must be convenient for the defendant.

In TC Heartland LLC v. Kraft Foods Group Brands LLC, the Court unanimously limited the venues (locations) in which a patentee could sue an infringer. Previously, a plaintiff could effectively bring suit wherever it sold products.

The court found that there’s only one venue statute that’s relevant for patent matters. The statute, 28 U.S.C. § 1400(b), states that  “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.”

The Court ruled that because a corporation’s “residence” is the place it’s incorporated, a suit can be brought either there, or in a place where the defendant has a physical place of business.

Traditionally, the view has always been that a plaintiff should have its choice (with some limitations) of where to file a suit. TC Heartland is a big blow to a lot of patentees who like to bring suit in the Eastern District of Texas. Delaware, where many businesses are incorporated, is now preparing for an influx of IP cases. This decision will also have the result of transferring a lot of the costs of litigation from defendants to plaintiffs.

What other impact will TC Heartland have?  As with everything else law-related, it will probably take some time to tell.

Can websites be liable for content posted by third parties?

Have you ever wondered why certain websites don’t get sued for the information they publish? Those sites are protected by a “safe harbor” provision of the Digital Millennium Copyright Act (“DMCA”). That provision specifies that online services providers (“OSP”s) and internet service providers (“ISP”s) are protected from liability for infringement so long as certain requirements are met.

Part of the theory behind the safe harbor provision is that it would be impractical for an OSP or ISP to be responsible for everything that appears thereon. For example – Google, the company, cannot possibly be aware of everything that appears on Google, the website. Nor should Google be expected to know what material, of everything posted on the site, is infringing on someone else’s copyright.

Therefore, the law shields OSPs and ISPs from liability for infringing acts that are committed by third parties. But, in order for a service provider to qualify for the safe harbor provision, the infringers must truly be third parties. The OSP or ISP cannot have hand in the infringement or any right or ability to control the actions of the infringer.

But what if a website that accepts third-party content has moderators for that content? Are the moderators acting on behalf of the website in question? Is the website exercising control over the infringement? This is the question asked by Mavrix Photographs LLC v. LiveJournal, Inc.

LiveJournal is a website that accepts user content; the content is moderated by volunteers before going live online. Mavrix Photographs brought suit against LiveJournal for infringing 20 of its photographs. LiveJournal moved to have the suit dismissed on the grounds of the safe harbor provision of the DMCA, and the district court granted the motion.

However, the appellate court disagreed. LiveJournal has a process for reviewing photos before they’re posted, a list of resources not to post from, and a tool which blocks all posts from a certain source. As such, the appellate court determined that the ISP might have a right or ability to control the infringement through the moderators. And if that’s true, then the ISP can’t enjoy immunity from liability under the safe harbor provision.

The appellate court reversed the judgment for LiveJournal and sent the case back to the lower court, where LiveJournal will have to prove that it has no role in the infringement in order to be shielded from liability.

OSP and ISP operators are understandably nervous about this case. We’ll be keeping an eye on it as it makes its way through the court system.

Our attorneys have worked on cases dealing with infringement liability and the DMCA. We’ve also helped our clients update their legal contracts to keep pace with changes in the law. To set up a free consultation to discuss your matter—whether related to copyrights, trademarks, patents, trade secrets, entertainment law, or business law—call The Lomnitzer Law Firm today at 561.953.9300 or visit us online at wwwlomnitzerlaw.com.

How the Courts are Shaking Up the Intellectual Property Legal Landscape

Your Personal Name as Your Brand: What to Watch Out For

If you’ve read any of our prior blogs, you know that at the Lomnitzer Law Firm, we’re big proponents of protecting intellectual property rights.

One question we get asked a lot is, what if your intellectual property is your personal name – that is, if your business name is your given name? Is it protectable as a trademark?

Like so many other things in law, it depends.

A Trademarks Primer

Here’s a quick primer on how trademarks work. They’re attached to a particular type of goods or services. And when you register a trademark (or service mark, for services—here, we’ll just say “mark” to refer to either one), you’re registering it for goods or services for which you’re already using the mark in commerce, or intend to soon.

The idea is to prevent a monopoly on the use of a mark across categories in which the mark’s owner does not intend to do business.

For instance, take the word “Apple.” Apple is a registered mark which refers to computers, software, computer peripherals, and other similar products. If you were to introduce a new technology called Apple and tried to register a trademark for it, you might have some difficulty. The U.S. Patent and Trademark Office (“USPTO”) would probably say that what you’re offering is too similar to the other Apple. Not to mention that Apple itself (the California company) would also likely oppose any attempt to register the trademark.

But suppose you were opening a chain of fitness centers under the name Apple. You may be able to register that mark because it’s in a completely different category of goods and services that one may not necessarily expect Apple (the California company) to expand into.

Yet you wouldn’t be able to register the name Apple to describe the fruit of the same name. Why? Because it’s too descriptive of that object. To preclude everyone in the world from referring to an apple as such would be unfair and impractical.

Basically, the more creative a trademark is—in either the wording itself or in the way it’s being used—the likelier a trademark will be granted. The less creative the mark—whether the word is merely descriptive or generic for the item or service it identifies—the more difficult it will be to register the trademark.

When the USPTO is in the process of approving a mark, it publishes the mark in gazette to give people the opportunity to oppose the registration. If no one opposes it, it’s generally smooth sailing. But if someone opposes the mark, the approval process becomes a bit more complicated.

Personal Names in Action as Brands

With all that in mind, consider these recent happenings in the trademark world relating to personal names.

Entertainers Beyonce and Jay Z (the “Carters”) applied last year to trademark their daughter’s name, Blue Ivy Carter, across a broad range of goods and services—14 categories, to be exact. They range from entertainment services to skincare products to baby teething rings.

But the Carters may face opposition from a woman who registered the name Blue Ivy (without “Carter” at the end) in 2012 for party planning and event management services. When the Blue Ivy Carter mark was published for opposition last month, the Blue Ivy owner filed for an extension of time to oppose it, signaling that she intends to do so.

Assuming she does, both sides have a valid point in their arguments. The Carters have an interest in protecting their young daughter’s name from being misappropriated. At the same time, the Blue Ivy mark owner has several arguments in her favor. She could argue that some of the categories the Blue Ivy Carter mark would cover are too similar to hers, causing confusion. She might also argue that Blue Ivy Carter is not currently being used in commerce in all the categories under which the Carters applied. And finally, she would likely want to argue that Blue Ivy Carter is too descriptive, because it’s the name of the individual who would be providing the goods or services.

We’ll be watching this to see what happens after the Blue Ivy owner files her opposition.

President Donald Trump has spent years fighting for the rights to his name for construction services in China and was finally handed a victory. Under China’s “first come first served” trademark registration policy, someone else received the rights to use the name because he had applied before Mr. Trump did in 2006. However, the original mark was invalidated late last year, while Mr. Trump’s application was allowed to proceed and is expected to be approved quickly. (This has led to speculation that China is attempting to win over the President, and that Mr. Trump’s acceptance of the registration of the marks might violate a provision of the U.S. Constitution. But that goes beyond the scope of this blog.)

A recent case in the UK involving designer Karen Millen and the company Karen Millen Fashions Limited is reminiscent of one in the US several years ago which involved fashion designer Joseph Abboud. Abboud had sold his trademarks to JA Apparel Corp. and then began a new fashion line called Jaz with the tagline “a new composition by designer Joseph Abboud.” Abboud was sued by JA Apparel for using his own name in this manner, but the court ruled in his favor, and he is allowed to use his name subject to certain limitations.

General Guidelines

So it seems that you can trademark a personal name, at least in certain circumstances. Here are a few guidelines:

The name needs to identify and distinguish the services or goods specified in the trademark registration, and not merely the individual. There needs to be a connection in the mind of the consumer. For example, for George Foreman to register his personal name for barbecue grills, there needs to be demonstrable evidence that when people hear his name, they think of grills.

The name needs to be used in commerce, either directly in connection with rendering goods and services, or in the advertisements for those goods and services.

Finally, a certain level of fame or celebrity helps – though there is no bright-line rule for how well-known you have to be.

Are you thinking about trying to trademark your personal name, or anything else? Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us at (561) 953.9300 or visit us online at http://www.lomnitzerlaw.com for your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.  

Your Personal Name as Your Brand: What to Watch Out For