— Jessica Gutierrez Alm, Attorney

No one does the Carlton quite like Carlton Banks.  (Queue Tom Jones’s It’s Not Unusual.)  Since actor Alfonso Ribeiro first performed the unique dance on The Fresh Prince of Bel-Air, it has been readily associated with him.  When the dance move recently appeared as a purchasable avatar dance in the popular video game, Fortnite, players quickly recognized Carlton’s signature move.

 

Fortnite is a battle royale-style combat game in which players, through their avatars, fight to the finish.  In-game purchases allow players to download character skins, clothing, and emotes (dances) for their avatars to perform on the battlefield.  In January 2018, the makers of Fortnite introduced a new emote available for purchase: a Carlton-esque dance called the Fresh.  When a player purchases and downloads the Fresh emote, the player’s avatar can perform the dance move on command.

Ribeiro filed suit against Fortnite creator, Epic Games, last month in a California federal district court.  The suit has been widely reported as a copyright case, prompting many to analyze whether short dance moves like the Carlton are eligible for copyright protections.  Their collective answer: probably not.

Copyright Choreography

While choreographic works are eligible for copyright, the US Copyright Office states that it will not register for copyright “short dance routines consisting of only a few movement or steps with minor linear or spatial variations, even if a routine is novel or distinctive.”  Individual steps or movements, such as the Waltz step, hustle step and grapevine are not copyrightable, according to the Copyright Office’s guidance in Circular 52.  Social dances are similarly not eligible for copyright registration.  “[U]ncopyrightable social dances are generally intended to be performed by members of the public for the enjoyment of the dancers themselves,” as opposed to registrable choreographic works, which are “intended to be executed by skilled performers before an audience.”  At most, it is unclear whether the Carlton is complex enough, or includes enough movements or length, to be eligible for copyright protections.  Of course even if the Carlton dance is copyrightable, NBC Productions might have something to say about ownership of the copyright.

But Ribeiro’s suit against the makers of Fortnite alleges more than mere copyright infringement.  In addition, Ribeiro is suing Epic Games for violation of his statutory and common law right of publicity.

Vanna White-bot, Here’s Johnny Toilets, and the Right of Publicity

In general, the right of publicity protects an individual’s right to control the commercial use of her name and likeness.  In California, courts have defined a broad right of publicity.

Federal courts have determined that the California common law right of publicity is not strictly limited to an individual’s name and likeness.  In White v. Samsung Electronics, Vanna White sued Samsung for its depiction of a robot adorned with blond wig, gown, and jewelry in a VCR ad.  971 F.2d 1395 (9th Cir. 1992).  The familiar robot was posed next to a gameshow letter board reminiscent of the Wheel of Fortune.  The caption read, “Longest-running game show. 2012 A.D.”  Notably, the case is from 1992, and the ad was part of a campaign depicting use of various Samsung products in a futuristic setting.  Recognizing that although the defendants did not actually use White’s name or image, the court determined that the ad was clearly intended to depict White and presented colorable right of publicity claim.

In another case, the Ninth Circuit held that Ford Motor’s use of a Bette Midler sound-alike voice was a violation of Midler’s right of publicity, even without any use of Midler’s name or image.  Midler v. Ford Motor Co., 849 F.2d 460 (9th Cir. 1988).  And in Carson v. Here’s Johnny Portable Toilets, the Sixth Circuit held that the defendant’s use of the phrase “Here’s Johnny” to market portable toilets was a misappropriation of Carson’s persona.  810 F.2nd 104 (6th Cir. 1987)

In light of this precedent, Ribeiro’s right of publicity claims seem stronger than his copyright claims.  The complaint also includes claims under the Lanham Act and California statutes for unfair competition.  Ribeiro alleges that the company’s use of the dance move creates a false impression that either Epic Games created the dance move or that Ribeiro provided sponsorship.

What are your thoughts on these unfair competition claims?   Are they stronger than the copyright infringement claims?

The Vanna White case also included a Lanham Act unfair competition claim.  The court in that case recognized a celebrity’s ability to bring such claims to protect her persona.  The court permitted the Lanham Act claim to proceed to a jury along with White’s right of publicity claim.  Ultimately, the jury found for White and awarded over $400,000.

Others Join the Fight

Ribeiro is not the only artist to challenge Epic Games on the IP battlefield.  Rapper 2 Milly (Terrance Ferguson) sued Epic Games for creating an emote based on his Milly Rock dance.  And most recently, Backpack Kid (Russell Horning) sued Epic Games for introducing an emote modeled after his viral Floss dance.  Both complaints include claims for copyright infringement, violation of right of publicity, and unfair competition claims.

Can a gang become a brand? This is a question asked in the new Netflix show, Trigger Warning,  produced by and starring Michael Render, AKA Killer Mike, one half of the Grammy-nominated rap group Run the Jewels.

Killer Mike of Run the Jewels performing at Pitchfork Chicago on July 19, 2015 (Photo Credit: Me)

In episode three, “White Gang Privilege,” Mike explores America’s love of the Outlaw, real and imaginary, and typically white: Al Capone, Tony Soprano, Tony Montana, Michael Corleone, Johnny Cash, Gordon Gecko, and Hells Angels, to name a few.  The episode begins with Mike asking: How is it possible for Hells Angels, a known biker gang, to sell t-shirts on Amazon? And what’s stopping black gangs from doing the same thing?

As Mike drives to a trap house in Atlanta to find out, he comments that “even though black gangs … are as well known as the Hells Angels, they haven’t been able to cash in and trademark their brands in the same way.”  So he meets with Crips gang members Yayo, Murdo, AC, and Newny to discuss legitimate business ideas, like zipper and button manufacturing, and, eventually, the gang lands on a new brand of soda: Crip-a-Cola.

Crip-a-Cola packaging as shown on The Late Show with Stephen Colbert

Spoiler alert: The episode proceeds to follow the gang through all of the typical startup business challenges: getting a loan (or at least trying), creating a minimum viable product (needs more sugar), working with a graphic designer (his first time working with a gang), consulting a beverage industry expert (impressed by the polished product), focus-group testing (everyone is afraid or skeptical at first, especially Mario!), advertising (a music video like commercial), and making that first sale (at a local farmer’s market), all while handling a new market rival (Blood Pop soda produced by the Crips’ rival gang, the Bloods).

Considering everything that went into the episode, and the seriousness of the effort, I was left scratching my head over the obvious, and perhaps true-to-life, startup oversight:  where’s the trademark lawyer?  I spotted at least four issues where a good trademark lawyer could have really helped.

Trademark Notice

Do you see the little circle-R next to the word Crip-a-Cola on the product packaging?  That means “registered trademark” and indicates that Crip-a-Cola is federally registered in the United States.  The only problem is that it’s not registered.  In fact, there isn’t even an application pending!  We’ve blogged before about misuse of the trademark registration symbol here (fraud?) and here (false advertising?).  A good trademark lawyer would have corrected that to a “TM” and filed an intent-to-use application before going live on Netflix (or even to that first farmer’s market).

Clearance

Another possible problem a trademark lawyer could have helped with: Clearance.  Can the Crips actually use “Crip-a-Cola?” despite at a minimum, perhaps calling to mind Coca-Cola?  While “calling to mind” is not infringement, does Crip-a-Cola step to closely to Coca-Cola, since Coca-Cola is a famous brand, and able to wield the full power of anti-dilution law?  What has Coca-Cola done with similar attempts?  A good trademark lawyer would investigate and find out: of course, Coca-Cola will protect its corner, just take a look at the mark CropaCola, which popped up in 2014, and which Coca-Cola quickly opposed, on likelihood of confusion and dilution grounds, asserting the following:

[Coca-Cola] is the world’s largest beverage company, serving more than 1.6 billion consumers each day, in more than 200 countries around the world.  [The] COCA-COLA brand is the cornerstone of its portfolio, which presently includes fifteen billion dollar brands.  COCA-COLA and DIET COKE are the top two soft drink brands in the world. . . .[T]he ‘CROPA’ term in [CROPACOLA] is confusingly similar in sight and sound to the ‘COCA’ term in [COCA-COLA], containing the same number of syllables and a similar phonetic impression, which is compounded by the addition of the ‘COLA’ suffix, in and identical manner as the use of [Coca-Cola’s] COLA suffix.”

Seems plausible that Crip-a-Cola could expect the same treatment from the largest beverage company on Earth.  This is where having a trademark lawyer in your gang would really help.  For one, to identify issues like these (never mind taste infringement) and identify strategies for going forward, but more importantly, to look for defensible legal positions and creative solutions, for example, perhaps seizing on this line in Coke’s opposition: “Furthermore, the ‘CROPA’ term has no independent meaning, further failing to distinguish it from [Coca-Cola].”  (emphasis added).  Here, Crip-a-Cola may have an advantage: unlike “Cropa”, the term “CRIP,” does have several independent, distinct meanings (perhaps the most helpful is the possible backronym: “Common Revolution In Progress.”) and is likely famous, or infamous, in its own right.

Ownership

What else could a good trademark attorney help with?  How about determining ownership?  Absent a legal entity to own the CRIP-A-COLA mark and the related business, Yayo, Murdo, AC, Newny, and Killer Mike would own Crip-a-Cola jointly as individuals in a general partnership, the worst form of legal entity, due to the shared, personal, and unlimited legal liability each partner shoulders. Better to form an LLC at least, not only to more cleanly own the trademark, but also to remove personal liability, formalize ownership, management, and tax decisions, and adopt buy-sell provisions.

Furthermore, what about competing claims of ownership? Is there an official Crips entity that could claim false association?  Maybe – one trademark application filed July 5, 2018 for the mark CRIPS for “association services” and “Organizing chapters of a Community Revolution In Progress club and promoting the interests of the members thereof” suggests that an entity called Crips, LLC, may have been formed to claim leadership of the Crips.  This would be something any good trademark attorney would investigate, and develop a strategy for dealing with.

Legal Notices

Finally, the last issue in the episode I spotted, where good trademark lawyer would lend a hand, arises from the fine print claim made at the end of the Crip-a-Cola commercial (NSFW):

The fine print states that “unauthorized use of the Crip-a-Cola font is prohibited by law.”  The problem? Fonts, or typefaces, are only indirectly protected by law, and not in gross.  Sure, if your typeface is displayed as a result of computer software code operating on a device, then copyright protects the computer code necessary to display the typeface as a font. This is the main reason why certain fonts are licensed. But if the typeface is “copied” or used without authorization through other means, there is no recourse under copyright law.  Instead, one would have to turn to trademark protection of the stylized mark, which, absent a federal registration would be limited geographically by common law rights based on use, perhaps as narrowly as Atlanta or the State of Georgia.  And except for the famous typefaces of famous brands (for example the Coca-Cola script), such rights would be further limited by the goods in connection with which the typeface is used, to prohibit use on only identical or related goods (for example, complimentary goods, or goods within the likely “zone of expansion”), in this case, rival beverage or food products. So the claim that the “unauthorized use of the Crip-a-Cola font is prohibited by law,” while not entirely untrue, is mostly inaccurate.

Outlaws are known for having their criminal defense attorneys on speed dial.  Maybe it’s time to add the number for a good trademark attorney.

Better Call Saul? Only if he practices trademark law!

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

 

Congratulations to Stanford University’s Women’s Volleyball Team, winning the NCAA DI National Championship this past weekend in Minneapolis’ Target Center, defeating Nebraska in Set 5:

The competition was incredible, a real seesaw battle, Stanford winning Set 1 (28-26), Nebraska Set 2 (25-22), Stanford Set 3 (25-16), Nebraska Set 4 (25-15), setting up the Set 5 tiebreaker.

Even from our elevated vantage point, it was a challenge to ignore Stanford’s wild band, erratic cheerleaders, and bizarre dancing tree, during the many breaks in the action.

The Stanford Tree, not in the University’s official logo and seal, instead the spastic and gyrating Tree mascot, is simply “a member of the band” — as the University has no “official” mascot.

 

As the Sets progressed, an interesting pattern emerged, but not related to the random, spontaneous, and irrreverent motions and defiant gestures of the merry band of cheerleaders and Tree mascot. Any choreography appeared impossible to script.

No, the pattern I noticed was that each of the first 4 Sets was won by the team that had its back to the band, in other words, turned 180 degrees away from the Stanford Tree.

 

 

In contrast, the losers through Set 4, always faced the Tree, in defeat, coincidence, I think not.

The teams switched sides at the close of each Set. During Set 5, with its back to the Tree, Stanford was up 8-7 at the half, then switched sides again to face the Tree, but somehow was able prevail, in the end, while facing the Tree, winning the 5th and final Set: 15-12.

So, with all this turning away from the Tree mascot, positioning the team to win a National Championship on the one hand, and disavowing the Tree mascot on the other hand, specifically rejecting it as not the University’s mascot, I’m left wondering, who owns it?

In other words, clearly there is intellectual property wrapped up in the Tree mascot costume, I’m seeing both trademark and copyright at work here, but really, who owns it?

Put yet another way, who should Reese’s call for a co-branding opportunity to have the Tree mascot appear on packaging for these little gems, or perhaps, the gems themselves?

Can the University automatically own the intellectual property in an “unofficial” mascot? What are the legal distinctions, if any, between official and unofficial mascots?

For what it’s worth, disavowing the Tree, and its unofficial status, apparently hasn’t prevented the University’s payment of NCAA fines against Stanford when the Tree is especially unruly.

At Stanford, it appears that the student selected by the band to perform as the Tree for the academic year, wears the costume created by his or her predecessor from the previous year.

As to copyright, do you suppose there is a work for hire arrangement in place? So, who would you call to license the IP associated with the Tree? Here is a list of the apparent creators.

Who comes to mind when I list the following character traits: lives in a dystopian metropolis, has a deceased parent, fights criminals, rides a motorcycle, has seemingly-superhero strength, is fearless, has dark hair, and–oh, by the way–his name is “Wayne.” More than that, you learn all these facts about Wayne by watching a trailer for a series about Wayne on YouTube, which informs you throughout that Wayne is a character “from the guys who wrote Deadpool,” a fictional superhero. Take a look for yourself:

It should probably come as no surprise that many people watching the trailer–myself included–thought this Wayne might be “Bruce Wayne,” the well-known secret identity of Batman. The comments to the official trailer demonstrate as much. Consider, for example, the “top comment” for the trailer:

The Bruce Wayne most consumers know is the wealthy orphan owner of Wayne Enterprises by day, crime-fighting superhero by night. YouTube’s Wayne shares many of the same traits (except, perhaps, the wealth), and one could certainly believe that the Wayne series might be an origin story for one of the most popular superheros of all time. Of course, by the end of the trailer, you get the impression that the Wayne you’re watching probably isn’t (though there’s no disclaimer):

In total there are over 7,200 comments for the trailer at the time of writing this post. Since the official trailer, YouTube has released additional teaser trailers for the series, each making it clearer that Wayne probably isn’t Batman. Yet, viewers still aren’t quite sure:

What I find interesting about these comments is that they are a readily-available (though perhaps unreliable) data set for proving, or disproving, the existence of customer confusion. Assume that DC Comics, the owner of the Batman mark and Bruce Wayne character (which does not appear to have been registered, but to which DC Comics could have common law rights and copyright protection) could sue YouTube for infringement or dilution. Arguably, the comments on the Wayne trailers show that consumers are drawing a connection between DC Comics and the Wayne series given the name, mood of the series, and common character traits with Batman. In this, YouTube may be free riding on Batman’s popularity. Depending on just how many comments reference Batman, the comments themselves could serve as strong quantitative data of confusion–akin to the kind of survey data usually used to prove that element of a trademark claim.

On the other hand, many of the comments for the series do not reference Batman or Bruce Wayne. Do non-references indicate a lack of confusion, or perhaps a confusion that is dispelled quickly after watching the trailers? This relates to the doctrine of “initial interest confusion,” which is temporary confusion dispelled before a sale or some other commercial harm, but still may be actionable because the party creating the confusion free rides on another’s mark to gain attention. Since widespread access to the Internet, initial interest confusion cases have increased tenfold, but courts disagree about the vitality of the rule. Regardless, that confusion appears to persist in this situation–as demonstrated by the comments for each new trailer–shows that the confusion here may be of the continuing and uncured variety on which many trademark claims are based.

Wayne fully releases on YouTube in January 2019. There do not appear to be any lawsuits pending at the moment. And there does not appear to be a “Wayne” trademark registration for the series. But if YouTube (or the series’ creators) file for one, DC Comics could oppose the registration–and has done so for similar marks in the past. We’ll keep you updated with any new developments! In the meantime, let us know what you think in a comment below.

Happy Halloween from DuetsBlog! I write today regarding a scary subject: unregistered intellectual property. The horror! Ask any IP professional about registration, and you’re likely to hear that registration is one of the most important steps in protecting IP. Whether it is a patent, trademark, or copyright, registering IP often provides the IP owner greater rights than if the IP was unregistered. There is sometimes an exception for trade secrets, but that’s for another time…

A scary place for some; credit: Gen. Progress

Registering IP, specifically copyrights, may become even more crucial in the future. One of the most important upcoming U.S. Supreme Court cases this term–which begins in October (coincidental?)–is Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC. The appeal addresses the question of whether the creator of an unregistered work may sue for copyright infringement so long as the creator has applied for a copyright on the work, rather than requiring the creator to wait for the Copyright Office to register the work. The dispute comes down to 17 U.S.C. § 411(a), which provides that:

no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made in accordance with this title.

Currently, the Fifth and Ninth Circuit Courts of Appeal have held that creators may sue for infringement as soon as they file the appropriate paperwork and fees for registration. Importantly, the Ninth Circuit encompasses Hollywood, providing greater protection to many of the nation’s creators. I ran into this issue myself on a case in these venues, and thankfully the law in these jurisdictions supported bringing a claim for copyright infringement without awaiting registration.

The Tenth and Eleventh Circuits have held that filing for registration is insufficient; a creator must have obtained preregistration or actual registration to sue for infringement. It’s the stuff of nightmares for procrastinating creators in Wyoming, Utah, Colorado, Kansas, New Mexico, Oklahoma, Alabama, Georgia, and Florida!

But creators around the country, especially in Hollywood, let out a collective shriek when the federal Government filed a brief in support of the Tenth and Eleventh Circuits, arguing that “a copyright-infringement suit may not be filed until the Register of Copyrights has either approved or refused registration of the work.” Beyond the statutory arguments in support of this position, the Government argued that  “although…the registration requirement may temporarily prevent copyright owners from enforcing their rights, that is the intended result of a congressional design to encourage prompt registration for the public benefit.”

Maybe the Government is right; requiring registration will certainly encourage registration. But on the other hand, many small creators either do not have the time or resources to seek registration for every work. However, even in cases in which there is copying, a creator can file an expedited application for registration, which sometimes results in a decision in less than a week.  So perhaps the rule from the Tenth and Eleventh Circuits isn’t that scary after all. A non-expedited application can take months, though. Thus, the rule from the Fifth and Ninth Circuits provides greater protections to creators who may face copying immediately after creating a work and who do not have the ability to file an expedited application. We’ll see what’s in the Supreme Court’s candy bowl this term. To be continued…

Video games offer a melting pot of intellectual property: trademark law, copyright law, and even patent law all come together in a delicious mix of intangible property. However, not all video game franchises are equal. Few can claim the same level of longevity, success, and nostalgia as Nintendo’s Mario Brothers series.

Among the most popular titles of the franchise is Mario Kart, a game in which characters from the franchise race each other in go karts. The characters repeat catch phrases, seek out power ups (invincibility, speed, etc.) and cartoonish weapons (banana peels, turtle shells, etc.), all with the singular goal of being atop the podium at the end of race. Over its 25+ years of existence, the game has resulted in significant sales, widespread nostalgia, and, unsurprisingly, numerous attempts from others trying to make money off of the characters. But a recent lawsuit in Japan brought media exposure to what might have been the greatest attempt yet to profit off the franchise: real life go-karting in Mario Brothers costumes in the streets of Tokyo.

How fun is that? From what I can tell, riders aren’t allowed to throw things at each other (thanks a lot, safety laws), but this tour would still be great. The attraction even attracted professional race car drivers. You don’t even need to provide your own costume, they’ve got a ton for you to choose from.

Race car drivers weren’t the only people to discover the tour. Nintendo’s lawyers did, too. I’d like to imagine they participated at least once before suing them, if only under the pretense of “fact development.” Nintendo sued and ultimately prevailed on claims of copyright infringement. The company has to pay Nintendo 10 million yen (about US$89,000) and can no longer hand out Mario Brothers character costumes.

It’s hard to quibble with Nintendo’s actions here. The MariCar company intentionally distributed character costumes in order to attract customers.

But what are Mario Kart fans supposed to do now? Well, there will be an official Super Nintendo World opening at Universal Studios Japan ahead of the 2020 Tokyo Olympics. The theme park will include a Super Mario World featuring Bowser’s castle, Peach’s Castle, and, yes, a “Mario Kart attraction.”

But if you prefer the thrill of participating in likely infringing activities, you can check out the Australia-based MUSHROOM RALLY race event purportedly coming to Denver, soon. Participants will have a chance to battle it out in Las Vegas for the championship race. Ticket prices are yet to be determined and are limited to just 600 participants. I suggest you read the fine print on the refund policy though – just a hunch…

— Jessica Gutierrez Alm, Attorney

 

Earlier this month, the United States Postal Service (USPS) was ordered to pay $3.5 million in damages to a sculptor for copyright infringement.

Seeking a unique redesign for its “Forever” stamps, the USPS searched stock photos for images of the Statue of Liberty.  They found a particularly striking photo on Getty Images and paid $1,500 for a license.  Between 2010 and 2014, the USPS produced and sold 4.9 billion Forever stamps featuring the Statue of Liberty photo obtained through Getty Images.  There was only one problem—this was not the Statue of Liberty.  Instead, the photo was of the Lady Liberty replica statue displayed in front of the New York-New York Hotel & Casino in Las Vegas.  The differences may be subtle, but on a side-by-side comparison, the distinction becomes clear.

On close inspection, you can even see the small plaque affixed to the crown of the Las Vegas statue.  “This one’s for you, mom”–the sculptor’s dedication to his mother-in-law.

The USPS discovered the mix-up in 2011 after only a few months of production.  They stated that they still would have selected the image had they known it depicted the Las Vegas statue, and continued producing the stamps.  Robert Davidson is the sculptor of the Las Vegas replica statue.  Recognizing that the USPS was profiting from his original work of art, Davidson sued the USPS for copyright infringement.

After a two-week bench trial, the court found in favor of Davidson.  The $3.5 million damages amount was calculated as a 5% royalty on the USPS’s profits on the stamp.

 

How can someone claim copyright on a replica of a famous statue?

The short answer is: it’s not an exact replica.  As the court in this case explained, “a work of art need not be wholly original to be copyrightable.”  Rather “it need only be a new and original expression of some previous work or idea.”  The standard for obtaining any copyright protection is relatively low.  To demonstrate that Davidson’s statue is eligible for copyright protection, he need only show a “modicum of creativity.”  In a 1991 case, the Supreme Court described the level of creativity required as “extremely low” and stated that “even a slight amount will suffice.”  Feist Publ’ns, Inc. v. Rural Tel Serv. Co., 499 U.S. 340, 345 (1991).  In addition, to obtain protection for his sculpture, Davidson needed to show some nontrivial variation from the New York statue that distinguishes it in some meaningful way.

The court found that Davidson met this burden.  The court seemed particularly persuaded by Davidson’s testimony that he sought to give his sculpture a more “feminine” and “fresh” face, as compared with the “harsher” and “more masculine” look of the original.  Questions about the application of societal beauty standards to the Statue of Liberty aside, the court determined that the softened jaw line, rounded face, and modified eyes and lips were sufficient for copyright protection in the derivative work.

 

Since the USPS obtained rights to the image through Getty Images and paid a licensing fee, how was this an infringement?

This was my first question when I learned the USPS paid a licensing fee for the photo.  However, it turns out the photo itself was an infringing work.  According to Davidson’s complaint, the photographer took the photo and posted it for sale on Getty Images without Davidson’s permission.  Thus although USPS paid a licensing fee to the photographer, the license was still based on use of an infringing, unauthorized work.  Continued sale and distribution of the photograph, whether by the photographer or USPS, constituted additional infringement.

 

Isn’t this protected fair use?

The USPS raised the issue of fair use as a defense to the infringement.  Fair use does not have a clear-cut definition.  In determining whether an otherwise infringing use constitutes fair use, courts look to four factors: (1) The purpose and character of the use; (2) The nature of the copyrighted work; (3) The amount of the copyrighted work that was used; and (4) The effect of the use on the author’s market.  The USPS’s argument for fair use relied in part on its low profit margin on the stamps and a lack of any harm to Davidson’s ability to capitalize on the sculpture.  The court sided with Davidson.  As the court explained, although the profit margin for individual stamps was low, the USPS collected over $70 million in pure profit from the stamps.  The court also noted that the USPS never offered a public attribution or apology to Davidson.

 

Shouldn’t the sculptor have sued the photographer instead of the USPS?

It seems Davidson had options here.  Both the photographer and the USPS unlawfully used Davidson’s work.  The photographer produced and sold a derivative work (the photo) based on the original copyrighted work (the sculpture).  The USPS then reproduced and sold the same infringing photo.  Both the photographer and USPS used, and profited from, Davidson’s underlying original work.  It is likely that Davidson also could have sued Getty Images for displaying and licensing the infringing work.  It seems Davidson probably made the strategic decision to sue the U.S. government, rather than the photographer or Getty, as the potential for damages was considerably higher.

A few months ago, a federal district court in New York held that several publishers violated a photographer’s copyright when they embedded a photograph from one of the photographer’s Twitter posts. Goldman v. Breitbart News Network, No. 17-CV-3144 (KBF) (S.D.N.Y. Feb. 15, 2018). The photographer, Justin Goldman, had sued Breitbart News Network, TIME Inc., The Boston Globe and other online publishers last year for copyright infringement, alleging they displayed in various online news stories, without permission, a photograph he took of New England Patriots quarterback Tom Brady, which he had posted on Twitter.

In their defense, the publishers invoked the “Server Test,” based on the prominent Ninth Circuit decision, Perfect 10, Inc. v. Amazon.com, Inc., 508 F.3d 1146 (9th Cir. 2007), which held that the unauthorized display of Google Image search engine results, of photographs stored on third-party servers, did not constitute copyright infringement, provided that such images were not hosted on Google’s servers. Essentially, the Server Test provides that website publishers are not liable for copyright infringement if they embed content hosted on third-party servers, but not their own servers.

But in the Goldman case, the New York court (under the jurisdiction of the Second Circuit), questioned the validity of the Ninth Circuit rule, because the court concluded that the Copyright Act does not require physical possession of the copyrighted material. The court relied on Supreme Court precedent supporting that merely transmitting copyrighted material can constitute infringement, regardless of “invisible” technical distinctions regarding the means of the infringing display or distribution, see American Broadcasting Co.s, Inc. v. Aereo, Inc., 134 S. Ct. 2498 (2014). Therefore, the court declined to apply the Server Test, and concluded that the publisher defendants “violated plaintiff’s exclusive display right [and] the fact that the image was hosted on a server owned and operated by an unrelated third party (Twitter) does not shield them from this result.”

Furthermore, the court emphasized a “critical” distinction with Perfect 10 regarding the “paramount” role of the user. The web users in Perfect 10 were required to click on the thumbnail images in the Google Image search, in order to see the full-size images hosted on third-party servers. By contrast, in the Goldman case, visitors to the defendants’ websites would immediately see the full-size image, without any volitional act of clicking to connect to a third-party server.

On March 19, the district court granted the publisher defendants’ motion to certify the decision for interlocutory appeal to the Second Circuit, acknowledging the parties’ representations that the decision created “uncertainty for online publishers” with a significant “impact beyond this case” due to the popularity of Twitter and “retweeting.” Some commentators, such as the Electronic Frontier Foundation, suggest that the Goldman decision threatens in-line linking and, if followed by other courts, could require monumental changes to online news publishing. One amicus brief in the New York case also predicted that the Goldman ruling will “transform the internet as we know it.” While some of these gloomy predictions may be overstated based on a single district court decision, the appeal to the Second Circuit will certainly be closely watched, so stay tuned for updates.

 

There is a battle brewing over songs by Minnesota’s own Prince.  I, for one, am anxious for the dispute to be resolved so we can enjoy these recordings. Who knows, there may be another worldwide hit “Purple Rain” out there.

The initial lawsuit was brought by Prince’s company Paisley Park Enterprises, which is now owned by his estate and its representative Comerica Bank & Trust, N.A.  (Collectively “Prince’s Estate”). Prince’s estate filed a Statement of Claim against George Boxill who was the sound engineer who worked with Prince on several music performance recordings. Before working with Prince, Mr. Boxill signed a confidentiality agreement. Prince’s estate states that the agreement explicitly stated that all recordings from the consultation remained the property of Paisley Park Enterprise. In 2006, Boxill worked with Prince to record five songs that have not been released yet. Other songs from this work were released on Prince’s album titled 3/21, which credited Boxill as a sound engineer. However, that same year, Boxill refused to return the five recordings to Paisley Park Enterprises. Prince’s estate now argues that this refusal to return the musical recordings violated his agreement.

A year after Prince’s untimely and tragic death, and ten years after working with Prince, Boxill mixed and edited the Prince songs. Boxill and Rogue Music Alliance, LLC and Deliverance, LLC (“music companies”) began promoting and selling the recordings under the name of “Prince” on the website www.princerogersnelson.com (the artist’s full name). They issued a press release announcing a nationwide release of an EP titled Deliverance that included songs by the late iconic Prince. This caused Prince’s estate to commence arbitration against Boxill and another case against Boxill and the music companies in federal court to stop the release of the songs and return them to Prince’s estate.

On April 20, 2018 (five days before the evidentiary hearing in the arbitration proceedings), Boxill and the music companies filed an emergency motion in the United States District Court for the District of Minnesota to enjoin the arbitration. United States District Court Judge Wilhelmina Wright denied the motion.

Boxill and the companies filed another motion to stay the hearing, arguing that the Copyright Act preempted the state law claims asserted in the arbitration proceedings. Judge Wright again denied the motion and ruled that the Eight Circuit lacked jurisdiction to review her order.  Despite this second order, Boxill filed the appeal.  Prince’s estate not only opposed the appeal but also asked for sanctions against Boxill and the record companies. The Eighth Circuit denied both motions.

Hopefully, this dispute will be resolved quickly and we can all enjoy recordings from the late great Prince.

You may have heard of a little movie called Star Wars. If you haven’t, well, I’ve got some movies for you to borrow. The film was released in 1977, and soon spawned a trilogy of movies that are among the most popular film franchises in the world. Fast forward forty years and eight of the nine triple-trilogy movies have been released, along with spin off movies such as Rogue One and the soon-to-be released Solo. However, the new Solo movie has created a spin-off of its own: a lawsuit filed by a U.K. gamemaker claiming that Lucasfilm’s movie and subsequent advertising infringes on his trademark rights in the mark SABACC.

The complaint was filed by Ren Ventures (“RV”) and its licensee Sabacc Creative Industries and the main issue involved is which party owns rights in the SABACC name and trademark. From the best I can tell, the name Sabacc was coined by George Lucas (the creator of Star Wars) or one of his co-writers at Lucasfilm. The game is mentioned in the original 1977 Star Wars movie and is referenced throughout the Star Wars universe of books and movies. For example, Han Solo “famously” won his spaceship the Millennium Falcon in a Sabacc game. That story likely plays out in the plot of the new Solo movie, which likely explains why Sabacc is prominently featured in advertising related to the movie, like this Denny’s commercial.

But does Lucasfilm’s use of SABACC as a fictional card game in movies and books create enforceable trademark rights? I haven’t seen any current use of SABACC with any specific goods or services, so there doesn’t appear to be any traditional trademark usage (affixed to goods or their packaging). However, Lucasfilms has sought and obtained registration for a number of similar features of the Star Wars universe, as you may recall from this Handy List of Star Wars References that Might Get You Sued. These registered marks include LIGHTSABER, THE FORCE, JEDI, and others. Of course, these marks are used with toys and other merchandise, making Lucasfilm’s claim to trademark rights a bit easier.

In fact, Lucasfilms distributed a licensed Sabacc card game in 1989. An image of the rules are below, but it appears this was a limited distribution.

Given that SABACC is a term coined by Lucasfilm and used only in the Star Wars universe, what type of Jedi mind tricks is RV using to assert its own rights in the SABACC name? Surprisingly, they’re relying on some ancient dark magic – a trademark registration. According to the complaint, RV sought to adopt a trademark for a game that mixed the rules of poker and blackjack. The complaint alleges that RV “searched the public domain for names” for such games, and the search revealed the names Pojack, 727, 727 Poker, Home Card, and Sabaac (ed note: one of these names is not like the other…). It’s unclear what RV meant by searching the “public domain,” as that phrase is normally used for copyright protected works that have lost their protection. Nonetheless, RV filed an application to register the SABACC mark for various computer game software and entertainment services. The application was published for opposition on June 7, 2016 and, after no third-party opposed, a registration issued on Aug. 23, 2016.

Although Lucasfilm actively enforces its rights at the U.S. Patent and Trademark Office, likely with the assistance of numerous watch services, its hard to fault Lucasfilm for not opposing. After all, even with all that Disney money, it might be difficult to justify a watch notice for each every made up element from the Star Wars universe. Regardless, Lucasfilm eventually learned of the registration and filed a Petition for Cancellation on May 1, 2017 with the Trademark Trial and Appeal Board (“TTAB”). Lucasfilm filed a Motion for Summary Judgment and, shortly thereafter, RV filed an infringement action and requested suspension of the cancellation proceeding at the TTAB.

RV has begun use of the SABACC game to promote online games, including at the iTunes store. A screenshot of the store is shown below:

You’ll notice that there are a number of word choices in the description that reference the Star Wars universe. This includes the reference to a “Cantina” (the Mos Eisley Cantina plays a major role in the original Star Wars movie), the word “galaxy” and the phrase “far, far away” (A reference to the films’ opening credits), and a reference to Cloud City, which plays a major role in the Empire Strikes Back. The use of a single one of these might not be concerning, but all of them in combination with Sabacc? Coincidence, I’m sure…

Setting aside Lucasfilm’s potential claims for trademark and copyright infringement, the facts strongly suggest that Luasfilm has a claim of unfair competition against RV. Based on all of these “coincidences,” the facts strongly suggest RV is attempting to capitalize on the goodwill and popularity of Star Wars. RV has essentially created the exact same game from the movies and books, is promoting the game utilizing similar imagery of robots, and utilizing words and phrasing uniquely associated with the Star Wars franchise to promote the game.

RV seems to be placing all of its eggs in the basket of “Lucasfilm didn’t use the mark in commerce and therefore we established valid trademark rights.” Unfortunately, there is at least one allegation in RV’s complaint that they might break a few of those eggs:

when consumers encounter Plaintiff’s pre-existing SABACC brand video playing-card game in the marketplace, they are likely to mistakenly believe that Defendants are the source of, and/or sponsor or endorse, Plaintiff’s SABACC brand video playing-card game, and/or that Defendants, the upcoming Solo Film, and/or Defendants’ Hand of Sabacc Commercial is/are otherwise associated or connected with Plaintiffs, Plaintiff RV’s SABACC Mark, and/or Plaintiff SCI’s pre-existing SABACC brand video playing-card game

The allegation arguably eliminates any need for Lucasfilm to establish use in commerce of the SABACC mark. The allegation suggests that the mere use of playing a Sabacc game in the movie or a in a commercial creates a likelihood of confusion with RV’s video game. If that’s all that it takes to create a likelihood of confusion, it makes it pretty easy for Lucasfilm to agree and simply gather the evidence of Lucasfilm’s use of Sabacc games in its films, moves, books, and related merchandise since 1977, and assert its counterclaim for infringement based on these prior rights.

With an upcoming premiere date of May 15 at the Cannes Film Festival, and a U.S. release date of May 25, there isn’t much time for the parties to work out a settlement. I’m not one with the Force and certainly can’t read minds, but I have a feeling this lawsuit won’t change Lucasfilm’s timeline.