Collaborations in Creativity & the Law

That Google Image Search Could Result in Trouble

Posted in Almost Advice, Branding, Copyrights, Fair Use, Marketing, Mixed Bag of Nuts, Social Media, Social Networking, Technology

One aspect commonly associated with building and maintaining a business is the company website. Establishing an online presence can be an important tool for connecting with customers. While website creation can be a delightful distraction for some and perhaps a frustrating obligation for others, platforms such as WordPress and Squarespace make it relatively simple for company owners to design and run their own websites. A business may choose to broaden its online presence even further with social media networking and blogging. On any of these platforms, businesses may wish to incorporate images into the design. Unfortunately, the Internet’s open atmosphere renders unknowing copyright infringement an easy trap.

Despite the ease of downloading images from a Google image search, businesses must be especially careful in using images found from other sources. Images on the Internet, just like photographs and artworks, are subject to copyrights. The owner of the image generally has the right to prevent others from making or distributing copies, including digital copies. Even if the image appears in a Google or other images search, it is usually not freely available to download a copy or paste it on a different website. Of course, there are exceptions:

  • Options such as Creative Commons allow image owners to make their images available to others for limited uses and for free or for nominal licensing fees. This can be a great source for finding usable images.
  • Fair use is a legal defense to copyright infringement, which provides that copyrighted material may be used for such purposes as criticism and comment. The doctrine is limited, and typically does not apply where the alleged infringer is using the material for commercial purposes.

Aside from these exceptions, use of an image found on the Internet, without the owner’s permission, typically infringes the owner’s copyright. Since the passage of the Digital Millennium Copyright Act (DMCA), image owners have a useful tool at their disposal for addressing infringing copies. The DMCA provides for “takedown notices,” which a copyright owner may submit to an Internet service provider, requesting that the infringing copy be removed. (See one attorney’s account of her own experience submitting a DMCA takedown notice to Google.) In other cases, a copyright owner may choose to send a cease and desist letter, or in some cases even a demand for licensing fees, leading to what some refer to as copyright bullying.

The intersection of copyright law and the Internet is often difficult to define. For this very reason, many argue for a relaxing of copyright laws with respect to online content. However, for at least the time being, an awareness of the potential copyright issues may in some cases help prevent them.

“Of All Time”

Posted in Branding, Marketing, Mixed Bag of Nuts, Social Media, Squirrelly Thoughts, Trademarks

Those three words are pretty bold, especially when we’ve only been around just over 6 years:

“‘Of all time’ is used to make a comparison, stating that something is the best throughout the ages.”

We’re pleased to report that DuetsBlog continues to be recognized as one of the top twenty-five intellectual property law blogs “of all time” — or, we might way, “throughout the ages.”

Hat tip to the Copyright Litigation Blog:

“Justia’s Blawgsearch Ranks the “Most Popular” intellectual property law blogs.  Out of 461 intellectual property law blogs listed in total by Justia, here are the top 25 of “all time.”  Visiting each one shows you just how alive thinking is in patent, trademark, copyright and related fields and how the blogosphere opened up this field of interest to public scrutiny and healthy debate.”

And another hat tip, to our friend Ron Coleman over at his Likelihood of Confusion blog.

We’re honored, as the graduating-kindergartner among the bunch, to be included in such impressive and adult company of lawyers . . . .

We’re not too shabby when it comes to rankings in the branding world either (top thirty “at the moment”) . . . . and no worries, we have no intention of resting on our laurels.


Posted in Advertising, Branding, Fair Use, Famous Marks, Fashion, Infringement, Social Media, Trademarks, TTAB, USPTO

In the fall of 2012, an upstart freshman quarterback at Texas A&M named Johnny Manziel earned the moniker “Johnny Football” during an incredible season, leading the Aggies to a number of huge wins. Yet after three years, a Heisman Trophy, and a shaky rookie season in the NFL, Manziel has yet to secure a trademark registration for JOHNNY FOOTBALL. It’s a lesson for anyone who begins widespread use of a trademark: get an application filed ASAP.

A recent ESPN article discussed Manziel’s progress leading up to his sophomore year in pro football. Manziel laments his role as a “distraction” on the Cleveland Browns in 2014 and says he will no longer do his “money sign” gesture on the field. It also contained this intriguing note:

A company called Already LLC, headquartered in Fort Worth, Texas, recently transferred trademarks it owns — Johnny Baseball, Johnny Basketball, Johnny Sports, Johnny Golf and Johnny Soccer — to Manziel. Manziel is still in the process of securing Johnny Football.

This seemed hard to believe, at first. Even Wikipedia claims that the JOHNNY FOOTBALL nickname “is a registered trademark.” But for perhaps the first time in history, Wikipedia has this one wrong.

Manziel, filing jointly with an entity named “JMAN2 Enterprises, LLC,” applied to register the JOHNNY FOOTBALL trademark for a variety of apparel and entertainment services on February 2, 2013. The problem? An individual named Shannan Young had already applied to register the mark JUANITO FÚTBOL one month earlier on January 3, 2013. “Juanito,” of course, is the Spanish “diminutive” for Juan, which is roughly equivalent to “John” for an English-language name. In essence, Young beat Johnny Football to the PTO register for JOHNNY FOOTBALL.

The real kicker (no pun intended) is that old college rivalries appear to be behind the application. Take a look at Young’s specimen for the JUANITO FÚTBOL mark. Notice anything?

Screen Shot 2015-06-26 at 7.38.17 AM

That’s a logo for Texas Tech University on the product wrapped in the trademark. Texas Tech, of course, is an in-state (and former conference) rival of Texas A&M, Manziel’s alma mater. Also, it is unexplained why this was an acceptable specimen of use — the application identified “Hats; Jerseys; Sweatshirts; T-shirts” and the product shown appears to be some kind of cup. But the juanitofutbol.com site remains live and active, and continues to sell apparel products bearing the mark.

We recently noted the importance of policing use of trademarks and watching for potentially-infringing marks. The ongoing saga of Johnny Manziel emphasizes the importance of filing for trademark applications as soon as they are in widespread use — before a foe can swoop in and block registration of your mark.

As a result of Young’s quick actions, Manziel’s application was eventually suspended for nearly two years while Young’s senior application moved through to registration. Manziel’s application finally received an office action in January 2015 citing JUANITO FÚTBOL as grounds to refuse registration.

It appears that, eventually, Manziel was able to acquire Young’s registration – an assignment from Young to Manziel’s JMAN2 Enterprises entity was recorded earlier this month (though it appears to have actually taken place in April 2014). An office action response should make quick work to point this out and, finally, allow JOHNNY FOOTBALL to proceed to registration. But, perhaps, Manziel could have saved some of his calling-card money had he capitalized sooner on his nickname.


Update on Battle Over the Navajo Mark

Posted in Dilution, Fair Use, Famous Marks, Fashion, Genericide, Infringement, Law Suits, Trademarks

In a surprising move last week, Urban Outfitters and its subsidiaries (collectively “Urban Outfitters”) moved to withdraw their motion for partial summary judgment on the secondary liability claims being brought against them by the Navajo Nation (“the Nation”). You might recall that I informed you about the lawsuit and a pending summary judgment motion brought by the Nation in a post last month. The motion to withdraw had to be brought because the Nation refused to consent to Urban Outfitters’ voluntary withdrawal of the partial summary judgment motion.

The Nation is alleging that Urban Outfitters are liable for secondary liability for providing the premises, facilities and instrumentalities for infringement by third parties. Urban Outfitters’ actions in seeking to withdraw the motion do not mean that they believe the Nation will prevail on this claim. Rather, Urban Outfitters merely believes that there is now a fact issue that would preclude the court from granting the motion. Specifically, Urban Outfitters had initially brought the motion because the Nation had fully released them from liability with regard to products, sold by ONE 3 TWO, Inc., d/b/a OBEY clothing (“OBEY”). The Nation had not identified any other alleged third-party infringers at the time. However, in its opposition papers, the Nation identified New Name Inc., as a company that it alleged was distributing infringing products. Further, the Nation contended that Urban Outfitters are liable as principals for the infringing acts of their third party marketing affiliates (e.g., aiding and abetting these affiliates in purchasing the keyword “Navajo” and using the mark in ads and websites).

There will likely be more updates as the New Mexico District Court handling this case had 30 pending motions in the case as of June 18, 2015. Indeed, only last week, counsel for Urban Outfitters argued that its usage of the “Navajo” mark was fair use. Urban Outfitters’ own well-known house mark was what was drawing customers in, not the much smaller font “Navajo” that merely described the product being sold under the Urban Outfitters brand. There would be no confusion in the marketplace—consumers would know that the source was Urban Outfitters not the Nation.

No Coke, Pepsi. No Infringement, Summary Judgment?

Posted in Infringement, Keyword Ads, Law Suits

2015 was the 40th anniversary for the NBC comedy series, Saturday Night Live (SNL). After 40 years, a television show is bound to have a cultural impact. And one of the series’ most well known sketches involves Olympia Restaurant, where customers keep asking for Coke, but are repeatedly told, “No Coke, Pepsi.”

It is doubtful even the most ardent lovers of SNL would have expected that the show would have an impact on trademark jurisprudence. Yet in Multi Time Mach., Inc. v. Amazon. com the Ninth Circuit is considering whether to adopt a “No Coke, Pepsi” rule in the context of online shopping.

The case involves a trademark infringement claim brought by a watch manufacturer. The district court granted summary judgment for Amazon.com, finding that there was no likelihood of confusion as a matter of law. 926 F. Supp. 2d 1130 (C.D. Cal. 2013). The oral argument before the Ninth Circuit can be viewed here, with an audio only version available here.

The Ninth Circuit follows the Sleekcraft factors in determining whether a plaintiff has established a likelihood of confusion. However, in cases of internet advertising, and in particular, use of trademarks as a search term, the Ninth Circuit utilizes a modified approach first adopted in Network Automation, Inc. v. Advanced Sys. Concepts, Inc., 638 F.3d 1137 (9th Cir. 2011). In that decision, the Ninth Circuit added a new factor for internet advertising, namely, “the appearance of the advertisements and their surrounding context on search engine results.”

The plaintiff argued that Amazon’s display of search results created a likelihood of confusion as to whether the watches displayed as a result were somehow connected with Multi-Time Machine (MTM). Amazon did not carry MTM watches. Yet when entering a search, Amazon’s results did not say “no matches found.” Instead, Amazon uses an algorithm which displays products that internet users may be likely to purchase based on past consumer behavior (i.e., they searched for MTM and later purchased a Casio watch). The search results were not labeled as “sponsored ads” or “other items you might like.” However, each of the results clearly identified the model and brand of each product.

The plaintiff argued that this was insufficient. Instead, it reasoned that Amazon should have stated “No MTM, Casio, Luminox, etc.” Because the MTM brand still appeared in the search engine form at the top of the page, MTM claimed that there was a factual dispute as to whether an internet user might mistakenly assume that the results were sub-brands of MTM, or were connected in some other way to MTM.

In response, Amazon contended that under Ninth Circuit precedent, the relevant consumer was a “reasonably prudent consumer accustomed to shopping online.” Toyota Motor Sales, U.S.A., Inc. v Tabari, 610 F3d 1171 (9th Cir 2010). Each search result clearly identified the manufacturer of the watch and, as a result, internet shoppers could not reasonably assume a connection with MTM merely because it appeared in the search bar.

Amazon could have its search screen state whether a user’s search returned any exact results. But from a practical perspective, what would this look like? If I search for Take 5 on Amazon, must amazon inform me that it does not sell Take 5 candy bars, even if I’m actually looking for a Dave Brubeck vinyl? And what if Amazon actually had the MTM watch, should it have been required to display only MTM watches? Or, what if a consumer is actually using the mark as comparative advertising, similar to walking into retail store and asking whether they have something like a Calvin Klein jacket?

The degree of care and reasonable expectations of internet shoppers continues to evolve. In my own internet shopping, I’m easily able to discern between Amazon search results which include competitors’ products. But maybe I’m more discerning than others in my online shopping. No decision has been issued in the case, though, so MTM will just have to wait and see whether the Ninth Circuit’s response will be “No Remand, Affirmed.”

Purple-Colored Fabric Tags Attached to Remote Control Found Inherently Distinctive

Posted in Articles, Branding, Fashion, Marketing, Non-Traditional Trademarks, Sight, Technology, Touch, Trademarks, USPTO

News flash, last Friday the USPTO approved for publication a non-traditional trademark that I’ve seen in real life before. Let’s just say it is attached to one of our many remote control devices that I’ve had to dig out from under the sofa cushions more than a few times:

RokuPurpleTagThe claimed mark consists of “the configuration and material composition comprising a fabric tag in the color purple attached to the housing of the goods.” Note how the purple tag shown on the drawing doesn’t include the ROKU brand name:RokuDrawing

I’m thinking the USPTO should have required that the drawing to the right and the specimen of use match, and then the ROKU brand name appearing in white could have been shown in dotted lines to make clear it wasn’t being claimed as part of the non-traditional trademark. Do you trademark types out there agree?

The Examining Attorney at the USPTO assigned to the application asked Roku for the following information and documentation:

(1) A detailed explanation as to what purpose or function the “fabric tag” serves as used on the goods.

(2) Any available advertising, promotional or explanatory literature concerning the goods, particularly any material that relates specifically to the applied-for color mark and configuration.

(3) An explanation as to the use of the identified “fabric tag,” or similar tag, if any, extending from the housing of electronic goods, in applicant’s industry and any other similar use in applicant’s industry.

(4) Color photographs and color advertisements showing competitive goods in applicant’s industry using tags appended to housings for related goods.

(5) An explanation as to whether and how the goods’ function, purpose and cost are affected by the “fabric tag.”

Roku’s response was brief and to the point, but one might debate whether it covered all the requested points, information, and documentation:

“The Examining Attorney requested additional information and responses to inquiries regarding Applicant’s mark. Applicant responds as follows: 1. The purpose or function of the purple fabric tag is to be a label for the goods, just as a fabric tag is used as a label for articles of clothing. 2. Attached is a screen shot from Applicant’s website showing the mark as used on the goods. 3. To the best of Applicant’s knowledge and recollection, no others in Applicant’s industry use a fabric tag as a source identifying label or indicator of origin on the housing of these consumer electronic devices. Applicant is unaware of any goods in its industry that use fabric tags appended to the housings of the goods. 4. The function, purpose and cost of Applicant’s goods are unaffected by Applicant’s appending of a fabric tag on the goods. The fabric tags offer no particular functional or cost advantage of any kind. They merely serve as an inherently distinctive indicator of origin given the uniqueness of having a fabric tag appended to the housing of consumer electronic goods such as those produced by Applicant and those in its industry.”

Nevertheless, the brief response immediately led to approval of the claimed inherently distinctive mark for publication. I’ll have to say, it was more than a bit surprising to me that the response didn’t trigger a lack of distinctiveness refusal, at least as to the color purple, especially since the four prior registrations Roku was asked to claim ownership of were all non-distinctive Supplemental Registrations: 43296634329664, 4329666, and 4336488.

To the extent you, like me, thought about the apparent inspiration of Levi’s red pocket tab on jeans, David recognized that point, long ago, nearly five years ago now.

So, the claimed non-traditional color/fabric trademark has been around almost five years now, but why wasn’t a disclaimer of the color purple required unless Roku could prove up a partial acquired distinctiveness claim as to the color purple?

Going YARD with the VARO Brand for Batters?

Posted in Articles, Branding, Marketing, Non-Traditional Trademarks, Patents, Product Configurations, Sight, Technology, Trademarks

Time spent with my boys in Omaha at the College World Series is hard to beat. Although, last year, Father’s Day weekend was hard to beat too. And, the archives indicate five years ago was pretty wonderful as well. Basically, it’s all good.

On this particular road trip, we were fortunate to score tickets to the Thursday night game between TCU and LSU, a great game. We also scored better and even cheaper tickets right behind the Florida Gators’ dugout for their last two games against Virginia, unfortunately for the Gators they fell to the Cavaliers on Saturday night, in a very close game, 5-4.

One of the benefits of our close vantage point behind the dugout was to see the players’ methodical preparation before heading to the plate for each at bat. I’ll have to admit, it was hard not to wear my trademark helmet from this vantage point. Besides the different and unique, but consistent and repetitive metaphorical trademark style of each batter, there was a very visually striking and unique bat weight being used by some of the Gators batters that caught my eye.

Convinced the brand name on the bat weight appeared to be YARD, I thought to myself “what a great suggestive mark,” but to my dismay, between-inning research on my iPhone revealed the brand to be VARO, not YARD:


Given the stylization of the VARO brand name, can you offer me at least a modicum of sympathy in mistaking VARO for YARD? Clearly my vision would never qualify me to be an umpire, and when typed, I fully admit these are clearly distinguishable words, but can you agree that from a little distance the thick all cap V could be mistaken for a Y and the chunky O could look a lot like a D?

One mental clue that may have lead my eyes down the Y and D path, instead of the V and O path, is that VARO means nothing to me (turns out it too is a great suggestive name, a foreign term translating to LAUNCH — something every batter would like to do to the baseball). The other more persuasive mental clue leading my eyes to read YARD — without thinking too hard — is the well-known slang phrase GOING YARD meaning to hit a home run. The context of baseball certainly helped my eyes see YARD, not VARO.

Seemed like a great trademark story to write about when it was just about YARD, but after digging a little deeper and discovering the VARO connection, I’m thinking this post went from a single or double to going yard itself. But, I won’t ask if you agree.

At least for me, one of the takeaways is the need to take the chosen stylization into account when searching word marks — we’ve talked about this before. Although I haven’t been able to locate any problematic YARD hits on the USPTO website, without considering stylization and the word’s visual impression, I’m doubting that any hits for YARD would have resulted during VARO trademark searches and due diligence.

Another takeaway to ponder is what might be a reasonable scope of rights surrounding the particular trademark stylization used? In other words, could trademark rights in the VARO stylization shown above extend to prevent another’s use of YARD on competitive products?

If so, what is the likely success with a switch-hitter hypothetical and scenario? That is, what if the original brand was, in fact, YARD, and the newcomer in direct competition launched VARO as the competing brand with the above script, same result?

On another personal branding note, when he’s able, perhaps Gator lead off hitter and left-fielder Harrison Bader would be a perfect spokesman for the VARO brand, going YARD twice at the 2015 CWS, no doubt thanks to his warmup swings with the VARO Arc batting weight:

Harrison Bader Single in the top of the 9th

Harrison Bader Single Top of 9th in Game 13 of CWS Against Virginia

Harrison Bader Single Top of 7th in Game 13 of CWS Against Virginia

Harrison Bader Single Top of 7th in Game 13 of CWS Against Virginia

I’ll Take a Trademark, Up, With a Twist

Posted in Almost Advice, Branding, Product Packaging, Trademarks, USPTO

Indeed Brewing Company, a popular brewery here in Minneapolis and a favorite of mine, announced that they were revamping their acclaimed packaging.  A story in the Minneapolis-St. Paul Business Journal unveiled their new packaging:

indeedcansAs a really nicely executed design, it de-clutters the look of the can while keeping the well-known artistic features and color palette of their packaging.

As the number of breweries, wineries, and distilleries skyrockets, there are abundant opportunities for creative agencies to get involved in conveying the company’s story through their marketing and packaging.   But while navigating these opportunities, there are important considerations regarding trademark usage and compliance with federal labeling guidelines that creative agencies should keep in mind.  Here are my three tips for elevating your design work:

1. Label approval can be the pitsIn my discussions with owners in this industry, one of the significant (and frustrating) challenges to getting product on the shelves is label approval from the federal government.  It can take about a month for the label design to be reviewed by the TTB, and a new approval is required at least when you change the class or type of product, the brand name, the address, or the actual bottler or importer or add when you add new graphics, pictures, or text with some exceptions.  The TTB has strict guidelines about what must appear and how it must appear, and also what must not appear on a label for alcoholic beverage.  There are also separate state guidelines.  If you’re servicing clients in this industry, become familiar with these guidelines.  Some are seemingly silly – like that a Kolsch beer must specifically say “Kolsch style ale” – but failing to meet them may mean a re-work of the design or a delay in product being released.

2. Know your client’s trademark registrationsYour client may have trademark registrations in a word mark for their house brand, and a revised logo doesn’t generally affect that registration but should be a consideration when re-designing a logo.  As a disclaimer, I’ve only seen the above view of the new cans.  For its house brand, Indeed Brewing Company only owns a trademark registration for a word only mark as INDEED BREWING.  The images of the can shown above are unlikely to be accepted as specimens for maintaining the mark INDEED BREWING because the mark INDEED bisects BREWING and COMPANY, appearing almost as BREWING INDEED COMPANY.   The views shown above do not show use of the mark INDEED BREWING.

3. Know what your client could own.  Are you creating new valuable source identifiers for your client?   It can be helpful to have a trademark search conducted for at least the major elements of a new design to see whether they are available for your client to lock up –  whether it’s a tagline like on the upper band of the can or perhaps a logo or icon that’s included on the packaging.   Earlier this month, Indeed Brewing Company applied for WE ARE THIRSTY CREATURES INDEED – the tagline on the upper band.  The use of the new logo on the mark could also help the brewery lock up INDEED as a trademark for beer, where prior use may not have supported registration of INDEED alone.  You also want to avoid design choices that may be confusingly similar to marks owned by other brewers.

Working with a trademark attorney who understands these labeling issues early on in the process can help save valuable time (and money) in revisions to packaging to address label approval and trademark issues.

When is enough, enough with trademark applications?

Posted in Almost Advice

How many trademark applications should I file and for what goods and services? These are two critical questions to any filing strategy, and a close second is how often should I file?

The answer to how many applications to file is the number of marks that you realistically believe consumers will rely on to identify your core goods or services times the number of core goods or services you offer. Once you have this base protection in place, you can expand the filings to secondary goods and services. These filings add to the scope of the protection in the mark.

You should consider filing new applications for the same mark when modernizing the mark. Depending upon what changes are made, it is possible that a new application will be required.

A thoughtful trademark application filing strategy is key to establishing a strong commercial brand.