In recent USPTO news, Trader Joe’s, the supermarket chain known for its eclectic and unique foodstuffs, recently filed an opposition to registration of the mark “Trader Schmo,” which is described as designating a wide variety of Kosher foods. Understandably, Trader Joe’s took issue with the mark, and particularly its use in the food category. The company instituted an opposition (which I cannot help but note is #999,999), arguing that “Trader Schmo” will confuse consumers because consumers will naturally switch “Joe’s” with “Schmo,” given the popular phrase “Joe Schmo.”

This is not the first time Trader Joe’s has taken legal action to protect its brand. Notably, just a couple years ago the company sued “Pirate Joe’s,” a counterfeiter with a backstory almost too unbelievable to be true. Pirate Joe’s was a “rebel Canadian grocery operation,” which bought Trader Joe’s products in the United States and “smuggle[d] them across the border to Vancouver” to sell them. Pirate Joe’s eventually ran aground under the immense pressure of its legal fees.

Pirate Joe’s Comes Crashing Down, Credit: Georgia Straight

This new dispute reminds me of the famous “Dumb Starbucks” experiment by comedy TV series Nathan For You. Over one weekend in 2014, the show opened a coffee shop that looked just like a real Starbucks, except that its name and every drink it sold was preceded by the word “dumb.” The comedian behind the prank (or “art“) claimed that “Dumb Starbucks” was permissible fair use because both the use of the Starbucks mark, as well as the store itself, was one big parody. One cannot help but notice some parallels to Trader Schmo; the latter word refers to a hypothetical “dumb” person.

Comedian Nathan Fielder, Credit: New Yorker

Dumb Starbucks and Trader Schmo raise difficult questions about permissible comedic use under trademark law. On the one hand, the marks free ride on the notoriety of other marks, bringing attention. On the other, it seems unlikely the marks would cause actual consumer confusion, making them harmless jokes. Whether Trader Schmo runs afoul of the Lanham Act will likely depend on two major inquiries: (1) whether it constitutes infringement or dilution, and (2) whether statutory fair use defenses apply.

InfringementPreviously on this blog, I explained that infringement usually centers on likelihood of confusion, which is evaluated using a variety of factors:

whether the use is related, the strength of the mark, proximity of the use, similarities of the marks, evidence of actual confusion, marketing channels employed, the degree of care likely to be exercised by consumers, the user’s intent in selecting the mark, and the likelihood of expansion of product/service lines.

The factors could support a finding of infringement here. The uses are related (food). The strength of the Trader Joe’s mark rides the line between arbitrary and fanciful to descriptive; who is Trader Joe in the abstract, and what does he sell? Surely the marks are similar…sounding. But on the other hand, would an average Joe really mistake Trader Schmo for Trader Joe’s? As a counter, though, it seems reasonable to infer that Trader Schmo was selected because it is similar to Trader Joe’s.

Dilution: So there might be infringement. How about dilution? This occurs when the similarity between the accused mark and a famous mark is likely to impair the distinctiveness or reputation of the famous mark. Dilution does not require any actual or likely consumer confusion. Depending on how good Trader Schmo’s Baba Ganoush, Gefilte fish, Matzo ball soup, and Borscht taste, Trader Joe’s could have an argument for dilution–especially if Trader Schmo’s grows large enough to undermine the distinctiveness of Trader Joe’s as a famous brand.

Fair Use: Generally speaking, the fair use provisions for infringement and dilution both require: (1) that the accused mark be used in a descriptive sense and not as a mark, and (2) that use of the accused mark be fair and in good faith. However, fair use does not provide a defense to infringement if there is likelihood of confusion–but we’ll gloss over that for now.

First, Trader Schmo could arguably be descriptive, delineating traded products. And the word ‘schmo’ has Jewish roots, which could describe the Kosher foods the mark designates. On the other hand, Trader Schmo isn’t inherently descriptive in that it actually describes a product or a characteristic or quality (e.g., Vision Center, a store for glasses). And it’s being used as a mark. So fair use might not even apply.

Assuming descriptiveness, the second element (the ‘fair’ aspect of the doctrine of fair use) often implicates the kinds of First Amendment interests that protect parody, satire, and criticism. But there’s no indication that Trader Schmo is intended to comment on Trader Joe’s. Moreover, courts have rejected the idea that a use is “fair” or in good faith if its similarity to a protected mark is deliberately concocted to garner attention. Trader Joe’s could have a good case for that here–just as Starbucks likely had against Dumb Starbucks.

A high-level analysis of the Trader Schmo mark suggests it could constitute infringement or dilution and is not fair use. This conclusion underscores trademark law’s general distaste for humor when it comes to commerce, as opposed to actual social commentary and comparison.

Aren’t digital advertising billboards amazing? My iPhone captured this rolling series of images just yesterday, for a health care organization using the Google trademark in the Minneapolis skyway:

My questions, permission, co-branding, no permission, but classic or nominative fair use?

Is Google flattered? Free advertising? Do they care? Should they care?

Discuss, to quote John Welch, on another subject.

AM General, manufacturer of Humvee military vehicles, has sued Activision Blizzard for trademark infringement, based on the use of the “Humvee” and “HMMWV” marks for the virtual military vehicles displayed in Activision’s Call of Duty video games. See the complaint here, filed last week in the Southern District of New York. For those of you who are not avid video-gamers, Call of Duty is a military-themed first-person shooter game–and it’s one of the best-selling games in the world, selling more than 250 million copies since 2003.

AM General owns federal trademark registrations for the marks HUMVEE (Reg. No. 1697530) and HMMWV (Reg. No. 3026594), for use in connection with the military trucks that the company manufactures. (“HMMWV” is an acronym referring to High Mobility Multipurpose Wheeled Vehicle.)

This dispute raises issues similar to those I’ve discussed in recent posts (such as here) regarding the gap between trademark use in the real-world, versus trademark use in the virtual realm, such as in video games, which involve depictions of arguably related goods or services. Here, it is questionable whether consumers would be confused as to source. There is no indication that AM General sells video games, or that Activision sells military vehicles.

For example, in E.S.S. Entm’t 2000, Inc. v. Rock Star Videos, Inc., 547 F.3d 1095, 1100 (9th Cir. 2008), the court held that consumer confusion was unlikely based on a video game’s reference to the mark “Play Pen,” referring to a real-world strip club, because: “The San Andreas Game is not complementary to the Play Pen; video games and strip clubs do not go together ….  Nothing indicates that the buying public would reasonably have believed that ESS produced the video game or, for that matter, that Rockstar operated a strip club.”

Nevertheless, confusion as to source isn’t the only actionable type of confusion–there’s an argument that consumers could be confused as to whether there is an affiliation, sponsorship, or approval between Activision and AM General as to the Call of Duty video games and the references to the HUMVEE and HMMWV marks, such as a licensing deal. Such an argument is reinforced by AM General’s allegations in the complaint that it has licensed the use of its HUMVEE mark in several other video games.

However, Activision may also have several defenses, including a nominative fair-use defense. The defense of nominative fair-use may apply where a defendant uses a mark solely to describe and refer to the plaintiff’s product, but not the defendant’s product, for purposes such as comparison, criticism, or simply a point of reference. Here, it would seem that Activision is using the HUMVEE and HMMWV marks nominatively, to refer to AM General’s military vehicles, rather than any of Activision’s products.

A free-speech defense may also apply for artistic expression under the First Amendment. The Rock Star Videos case, cited above, has relevant discussion of this defense in a similar context. In that case, the court applied the Second Circuit’s “Rogers test,” under which “an artistic work’s use of a trademark that otherwise would violate the Lanham Act is not actionable unless the [use of the mark] has no artistic relevance to the underlying work whatsoever, or, if it has some artistic relevance, unless [it] explicitly misleads as to the source or the content of the work.” Rock Star Videos, 547 F.3d at 1095 (quoting Rogers v. Grimaldi, 875 F.2d 994, 999 (2d Cir. 1989)). The court held that this defense was established, because the San Andreas video game was an artistic work; the reference to the “Play Pen” mark for a strip club had “at least some artistic relevance” (this is a low threshold–the level of relevance “merely must be above zero”); and the reference did not explicitly mislead consumers as to the source of the work.  Id. at 1099-1101.

Similarly here, Activision could argue that its video game and the references to AM General’s marks are merely artistic expression; that the references to the HUMVEE and HMMWV have at least some non-zero level of artistic relevance; and such references do not explicitly mislead consumers.

It will be interesting to see the defenses raised by Activision and how this dispute ultimately plays out. Activision’s answer to the complaint will be due in a couple weeks. How do you think this case will be resolved? Stay tuned for updates.

 

–James Mahoney, Razor’s Edge Communications

Recently violinists Rhett Price and Shiva Chaitoo got two very different lessons on the downside of posting performances on the Internet.

According to an article in The Boston Globe, a fan of Price alerted him to a video of Chaitoo’s playing. Turns out, Chaitoo was pulling a Milli Vanilli, fingering his violin over a sound-track of Price’s recordings. And he’d been doing it for at least a couple of years, and getting paid gigs from people who’ve seen the vids or his “live” performances.

Long story short: Price isn’t looking for anything more than for Chaitoo to stop his “tribute.”

What’s really interesting about the situation, though, is the copyright aspect of it, and the apparent lack of legal remedies available to Price.

According to Paul Litwin, a partner of Shames & Litwin entertainment lawyers, when Price posted his videos on YouTube and offered free downloads in exchange for email addresses, he essentially granted some use-rights. YouTube’s terms of service include “a worldwide, non-exclusive, royalty-free, sub-licenseable and transferable license to use.”

Litwin says, “If you buy and download a song, you can pretend to play and sing along with it. By posting his music on YouTube, Rhett is allowing the YouTube community to use it. [Chaitoo] isn’t saying he’s Rhett, so from a legal standpoint, he does not appear to be infringing copyright laws.”

Really? The YouTube T&S notwithstanding, it seems to me that this would usually come under fair-use category. Since Chaitoo used it for a marketing tool (and probably also “performed” the tracks at his paid gigs), I think he hit some very sour copyright notes. There’s a world of difference between playing air-violin in your living room and what Chaitoo did.

As I’ve mentioned often before, I’m no lawyer (though I play one in the living room by reading aloud Steve Baird postings as if they were my own), so what do you knowledgeable folks think about both the situation and Lawyer Litwin’s assessment?

And one final factor to consider: Chaitoo lives and works in Trinidad and Tobago, which may complicate the copyright issue and Price’s available recourse.

CR Poster

At some point in this digital age, almost every individual or business in the creative space will discover that somebody has copied them. You may see it yourself, or you may get the stomach-dropping “Doesn’t this look an awful lot like…..” e-mail from a friend. It might be that potential client who said your design “was nice, but wasn’t for us.” It could be a big company with a new shirt/container/advertisement with a strikingly similar photograph. It could be a blog post that . . ., well, you get the idea. When you discover that someone copied something that you created, there are a lot of questions and it’s rarely as simple as “someone copied my stuff!” So here are a few things to consider as you decide on next steps.

First, does your work qualify for copyright protection? Any one who creates an original, creative work of authorship has a valid copyright interest as soon as the work is fixed in a tangible medium of expression. The bar for what is “creative enough” to qualify is low. Very low. Even the mere selection, arrangement, and display of facts in a graph or a telephone book may qualify as a creative work of authorship.  However, there are some limitations. Copyright law only protects the expression of an idea, not the idea itself. So while a cookbook focused on chicken sandwiches would be protected, the underlying recipe (and sandwich) is not. Also, words and short phrases like book or movie tittles are not protected by copyright. But yes, the image you grabbed from a Google image search through likely is.

However, as long as you meet have a modicum of creativity, and as long as you didn’t copy someone else’s expression, you likely have a valid copyright. This is true even if you haven’t registered your copyright with the Copyright Office. However, a registration (or pending application to register) is generally a prerequisite for bringing a lawsuit, and can open up additional types of relief if the infringement occurred after the registration of the copyright.

Second, are you the owner of the work? Generally, the author is the owner, unless ownership has been transferred. For businesses, if an employee created the work within the scope of their employment, then the employer is likely the author. The work for hire doctrine can be tricky, so it is best to drill down and confirm ownership before asserting any claim of infringement. If you’re not the author, you may be able to contact the former employee, contractor, etc. and obtain an assignment of the copyright interest.

Third, is the “infringer” really infringing? Copyright law only protects the expression of a work, not the idea of a work. The James Bond franchise has a number of valuable copyright protected works: books, movies, characters, etc. While there are broad rights associated with the franchise, the copyright does not give the owner the ability to claim rights in the idea of a British secret agent. The tough part is locating the fine line between idea and expression. There also a question of  whether the “infringer” is making a legitimate “fair use” of the copyright work. Is the copy part of a social commentary on a relevant issue or topic, like gender stereotypes? Could creation of an online repository of shared links, images, and articles a la Pinterest qualify as a fair use? These are important questions to consider when deciding whether to pursue any further action.

Finally, what are your options? You could start with a short email or phone call. Third-parties may not realize something is protected. The “infringer” may happily stop selling/posting/distributing the copied work. An attorney can assist, providing you with talking points, ghost writing a letter, or if you prefer contact the alleged infringer directly. If the copy is on the internet, there is likely a method for you to request that the website/app/hosting service remove access to the infringing work through a Notice of Claimed Infringement. YouTube, Facebook, eBay, and others all have online submission forms. Be aware, however, making wholly unreasonable claims of infringement could lead to the alleged infringer turning the tables.  Of course, a lawsuit is an (expensive) option but as noted above, a registration or pending application is necessary to bring  a lawsuit. If the work has value (economic or personal), you should consider applying to register the copyright to at least expand your response options, and your potential recovery.

Creative individuals and companies put a lot of time, effort, and money to create something that is valuable to them. When you discover that someone took a shortcut at your expensive, it can be personally offensive and you want to make it stop, now. The law provides an avenue for relief, but unfortunately it often may not provide you with the scope of protection you thought you had. So if you or a client runs across a copycat, hit the pause button. Someone may have “copied your stuff,” but they may not have committed copyright infringement.

Fanfiction refers to the art of creating fiction using another author’s characters or universe.  I was first introduced to the concept in high school, when a friend began writing Harry Potter fanfiction.  (Side note: this is not one of those situations where the “friend” is actually me.)  My friend used the same well-known characters—Harry, Hermione, Ron, etc.—and details of the world created by J.K. Rowling, including Hogwarts, muggles, the Ministry of Magic, and Diagon Alley, to create an otherwise original plot.

Fanfiction is typically shared among fellow enthusiasts, and rarely results in publication, movie deals, or notable profits.  For this reason, intellectual property rights are often not enforced against fanfiction creators, which has led many to mistakenly believe that fanfiction is a categorically protected use.

While IP rights holders typically tolerate—and even encourage—fanfiction, one recent fan-sourced plotline caught the attention of CBS and Paramount.  In 2014, Axanar Productions launched a crowdfunding campaign to produce a “feature-quality Star Trek film,” entitled “Axanar.”  The campaign raised over $1 million through combined Kickstarter and Indiegogo campaigns.  To promote the campaign, Axanar Productions released a 20-minute preview entitled “Prelude to Axanar.”  And it’s awesome.

Whether it was the impressive production value, the appearance of actor Richard Hatch from Battlestar Galactica, or the overwhelmingly successful crowdfunding campaign, Axanar Productions caught the attention of the makers of Star Trek.

In late 2015, CBS and Paramount sued Axanar Productions for copyright infringement.  The amended complaint, summarized here by Ars Technica, alleges 57 instances of copyright infringement divided into categories, including characters, races, costumes, settings, logos, plot points, dialogue, and theme.  It’s pretty clear that both the Prelude to Axanar, and the planned Axanar film, are intentionally based on the Star Trek universe and incorporate at least some copyrightable Star Trek elements.

Axanar takes place 20 years prior to the start of the Star Trek Original Series (i.e., the William Shatner series).  At least one episode of the Original Series includes characters discussing the “Battle of Axanar,” in which Garth of Izar was a heroic victor.  According to the Kickstarter campaign, “Axanar tells the story of Garth and his crew during the Four Years War, the war with the Klingon Empire that almost tore the Federation apart.  Garth’s victory at Axanar solidified the Federation and allowed it to become the entity we know in Kirk’s time.”  The preview, Prelude to Axanar, is a documentary-style telling of the Axanar battle by the characters themselves, including Garth of Izar.

Axanar Productions appears to be relying primarily on a defense of fair use.  The fair use defense considers four factors in determining whether a work that technically infringes a copyright is excused nonetheless.  The factors include: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the copyrighted work used; and (4) the effect of the use on the potential market for the copyrighted work.  Some recognized forms of fair use are parody, criticism, and journalism.  While perhaps not a parody or criticism, fanfiction does seem potentially defensible under fair use, due at least to the transformative nature of the work.  That is, Axanar Productions does not seek to supplant the existing Star Trek films, books or television series, but rather to create an entirely new work with their own creative process.

A California federal district court disagreed with Axanar Productions’s fair use defense.  Ruling on motions for summary judgment earlier this month, a federal judge concluded that Axanar and Prelude to Axanar are not protected under fair use.  The court found all factors of the fair use analysis weighed in favor of CBS and Paramount.  Regarding the effect on the plaintiffs’ market, the court held that the Axanar films take the place of stories that the plaintiffs might want to create in the future or might want to license.  As David Post Points out in the Volokh Conspiracy, this results in somewhat circular reasoning—albeit reasoning supported by precedent.  Because others would be willing to pay a licensing fee to make these works, they’re not fair use.  But suggesting that others would be willing to pay a licensing fee presumes that the works are not fair use to begin with.  The case is set to begin trial on January 31st to decide the issues of “substantial similarity” between the works and willful infringement.

What do you think? Is fanfiction permissible fair use?  Should it be?  Is this another situation where a culture of information sharing and technology is at odds with antiquated IP laws?  (See Napster.)  Does it depend on profit?  (Axanar Productions maintains that it is a nonprofit organization.)  Does it depend on the funding and/or sophistication of the infringer?  And in that vein, who qualifies as a “fan?”  If Disney were to create Axanar, would that be fair use?

Notably, CBS and Paramount recently released some “Fan Films” guidelines, promising not to enforce their IP if their very specific guidelines are followed.

 

Check out this City of Atlanta Facebook page.  The funny thing is that it’s not run by the City of Atlanta.  Although the posts are titled “City of Atlanta” and use the City’s official seal, the page consists of satirical humor composed by Ben Palmer, an Atlanta resident.  Although the first post was only a couple weeks ago, the page is quickly growing in popularity, with over 27,000 likes as of today.  For example, see the most recent post by the “City of Atlanta” about building another football stadium:

Atlanta Facebook Satire Photo1

Here are a couple other examples:

“We have invested 90 million dollars in a trolley system that will allow citizens to travel 10 whole blocks in a total of 3 hours.”

“Our homicide investigation unit has relocated to the inside of Kroger, next to the sample lady. Please be mindful of this as you do your grocery shopping.”

Two days ago, the actual City of Atlanta informed Ben Palmer that it did not find his page very funny.  More specifically, the City sent a demand letter to Mr. Palmer, informing him that the City had requested Facebook to remove any use of the City’s seal.  The City’s seal is a federally registered trademark (Reg. No. 3089604):

City of Atlanta Seal

The Facebook page uses a modified version of the seal, with the addition of a stylish top hat and a monocle:

14671230_662047237287512_7554220690476831254_n

The City’s demand letter stated:

“The owner of the satirical City Facebook page was not authorized to use the City’s trademark. We are working with Facebook to remove the City Seal and any other information on the Facebook page that might confuse or mislead the public into believing that the page or its contents represent the positions, policies or practices of Atlanta City Government.”

Mr. Palmer responded with some more tongue-in-cheek satire on the Facebook page, referring to his commonly invoked criticism of the city trolley:

“If you make a satirical Facebook page mocking the city of Atlanta, you will be charged with a serious crime that is punishable up to 3-5 years in prison or be force[d] to ride the trolley.”

In the two days since the City’s demand letter, Mr. Palmer has continued to use the City’s seal.  If the City decides to file an infringement lawsuit, it will raise interesting questions regarding satirical or parodying uses of trademarks.

In some courts, trademark parody or satire is not a defense per se to trademark infringement, but rather something to consider in the likelihood-of-confusion analysis.  For example, one court held that a trademark parody of baseball cards did not infringe because the effect was “to amuse rather than confuse,” and no one would mistake the Major League Baseball Player’s Association (MLBPA) “as anything other than the targets,” not the origin, of the parody cards.  Cardtoons, L.C. v. Major League Baseball Players’ Ass’n, 95 F.3d 959, 967 (10th Cir. 1996). Another court has stated that “[t]he strength and recognizability of the mark may make it easier for the audience to realize that the use is a parody and a joke on the qualities embodied” in the trademark. Tommy Hilfiger Licensing, Inc. v. Nature Labs, LLC, 221 F. Supp. 2d 410, 416 (S.D.N.Y. 2002).  See also, for example, MasterCard Int’l Inc. v. Nader 2000 Primary Comm., No. 00 Civ. 6068, 2004 WL 434404 (S.D.N.Y. Mar. 8, 2004) (concluding that Ralph Nader’s “priceless” political ads did not infringe MasterCard’s trademarks).

Other courts apply a parody/satire distinction similar to the fair use analysis in copyright cases (see Campbell v. Acuff-Rose Music, Inc., 510 U.S. 569, 577–78 (1994)), under which courts may hold that parodies are less likely to infringe a trademark than satires.  Some commentators have criticized the creep of the Campbell copyright fair use test into trademark case law, stating that “reliance on Campbell to aid trademark infringement analysis tends to obscure the ultimate issue in any infringement case: the likelihood of confusion.”  Bruce P. Keller & Rebecca Tushnet, Even More Parodic than the Real Thing: Parody Lawsuits Revisited, 94 Trademark Rep. 979-1016 (2004).  Keller and Tushnet further explain:

“[T]he parody/satire divide is unhelpful in addressing the central question in trademark infringement cases: whether the defendant’s use is likely to cause confusion among a substantial number of consumers. If a joke is recognizable as a joke, consumers are unlikely to be confused, and whether the butt of the joke is society at large, or the trademark owner in particular, ought not to matter at all.”

Here, it appears that Mr. Palmer’s Facebook page could have elements of both parody (modifying the City’s seal by adding a top hot and a monocle) and satire (making humorous criticisms of the City through the posts), which could lead to an interesting analysis if a lawsuit arises.  Stay tuned to see how this situation develops.

 

-Wes Anderson, Attorney

As the hustle and bustle of the INTA 2016 Annual Meeting drew to a close yesterday, I reflected on the session “#HASHTAGS #EverythingYouNeedToKnow” from Tuesday. It seems trademark protection may not (yet) fit comfortably into the hashtag world.

DuetsBlog previously provided a helpful tutorial on the nuts and bolts of hashtags and how they function, particularly on the sites Twitter and Instagram. As James Mahoney alludes in his post, hashtags serve a collaborative purpose – they organize ideas, topics, and events, effectively creating “threads” of discussions on a medium that is otherwise a stream of consciousness. As brand owners grow in presence on social media, a question has arisen whether certain hashtags may become trademarks – and thus allow brand owners to stop others using those hashtags.

The U.S. Patent & Trademark Office now provides explicit guidance on the standard for registration of hashtags:

A mark consisting of or containing the hash symbol (#) or the term HASHTAG is registrable as a trademark or service mark only if it functions as an identifier of the source of the applicant’s goods or services.

Most of the foreign jurisdictions discussed at the INTA session articulate a similar standard. Essentially, I see this standard to mean a hashtag mark must itself function as a trademark, and not just “contain” a trademark or house brand. If you’re familiar with hashtags, this might lead to some head scratching.

Consider how the appearance changes when a brand name is used as a hashtag. Applebee’s® gives all the information straight away, thanks in part to use of the registration symbol – it tells others that this is a brand name. But #applebees doesn’t readily convey as much information (and in fact here omits the apostrophe, because for some time hashtags were often “broken” by punctuation or numbering).

Among the social media savvy, the hashtag symbol itself is weighted with its own meaning – a hashtag is a self-contained invitation to be used by third parties on social media, much like an invitation to search for a term on a search engine. It invites users to see what’s already been posted containing that hashtag, and to contribute their own content. Consider the more natural functions of hashtags, such as charity events like today’s #RedNoseDay, which is trending this morning on Twitter. The very idea is to encourage unsolicited and unpoliced third party usage.

This is anathema to many trademark owners, who of course wish to (and are required to) establish control over use of their brand names. And there certainly can be exceptions for hashtags that zealously function as trademarks, and that consumers recognize as brand names unto themselves. Even then, brand owners must be prepared for rampant third-party use of a hashtag mark, and understand that nominative fair use is far more likely to apply in the hashtag context.

Twitter announced some new changes to its 140-character message limit, and will now no longer count username mentions, links, and photos toward the limit. So, we know nothing is set in stone when it comes to Twitter. So I would not be surprised should there come a day when some tweaks here and there make hashtags more trademark-friendly.

 

Three-dimensional printing technology continues to be a new frontier of creativity, advancement, and of course, legal issues. The laws surrounding 3D printing have always been a topic of concern, but the discussion took center stage over the last few weeks in an unprecedented way.

If you’re new to the idea of 3D printing, here’s a basic summary: a printer using hot plastic places the plastic in layers to build an object from the bottom up (Let CNN explain). In order to create the object, the printer relies on a design files (CAD files) that contain the code regarding how to build the object. CAD files can be original creations, or users can use a 3D scanner to scan an object and help generate a CAD file. Simple, right? (previous DuetsBlog articles on 3D printing are available here, here, here, here, and here).

Many users share, distribute, and sell their CAD files through online databases like Shapeways and Thingiverse. For example, if you had a 3D printer, you could download and create this World’s 2nd Best Lawyer Award for free!

2nd Best Lawyer

3D printing raises a number of legal issues, as users can scan and print objects that may infringe upon a third-party’s copyright, trade dress, or patent rights. These possibilities led one of our authors to wonder if 3D printing would become “the next Napster.” As with most new technology though, there is a lot of gray area, and little in the way of court decisions for guidance.

However, the 3D printing community recently was forced to confront this gray area head-on. News began circulating that an eBay user, just3Dprint had taken over thousands of CAD designs from Thingiverse and other websites and was selling the physically printed products on its eBay page for profit. Although all of the listings have been removed as of this posting, you can also visit Just 3D Print website for more information on its 3D printing services.

Understandably, many 3D printing community members were upset. Just 3D Print had taken the exact CAD designs (along with the accompanying photographs) and placed them on eBay for sale, reportedly without any attribution. While many Thingiverse users agree to license the use of the CAD files for free pursuant to a Creative Commons license, many of those licenses restrict the license to non-commercial use. As a result, Just 3D Print may have infringed the copyright in (1) the CAD file, (2) the physical object, and (3) the photographs.

But Just 3D Print doesn’t see it that way. In a lengthy response under the username JPI, the company made a number of claims, including that (1) CAD designs are unprotectable and that (2) that by uploading the designs any protectable rights in the designs became part public domain; and (3) Creative Commons licenses are unenforceable. We can easily disregard the public domain claim because merely publishing a copyrighted work does not place the work in the public domain.

The protectability of CAD designs is a more interesting issue, though. CAD designs of copyright protected objects could be protected as a derivative work of that object. CAD designs can also be original technical designs created without scanning a physical object. Yet if the design is merely a scan of a common object, it is possible that the CAD design may not meet the originality threshold if there is a limited number of ways to express the idea of printing that object. If that is the case, the “expression” (the drawing) merges with the idea (the common object) and the expression is not protectable. This is known as the merger doctrine.

Of course, in light of the sheer number of copied files, the use of the photographs, the intent to profit, and the blatant disregard of the Creative Commons licenses, I’d predict it is unlikely that the merger doctrine protects all of Just 3D Print’s actions. But if I’m going to print off an award for the World’s Second Best Lawyer, I had to at least ask the question.

NoPhotosWell, it is opening day at the 2015 Minnesota State Fair, it was a great day, perfect weather, thank you very much!

Happy to see that Lulu’s Public House is going strong, she appears to have some new food items this year, and they look amazing — a Minnesota Wild Rice Benedict Muffin and a Mac & Cheese Cupcake! Can’t wait to try them.

We’re not sure what happened to the lawsuit, the trademark infringement suit that was filed last year by Lulu’s Market & Deli from St. Paul, anyone know?

As you know, from following this blog over the past more than six years, intellectual property issues abound at the State Fair, so I couldn’t resist defying the signage at one vendor in the West End, and snapping the above shot to make a point.

Having said that, as a courtesy, I respectfully cropped out the yard and exterior sculptures that I presume the sign was intended to address — such things can, of course, be subject to both design patent protection and copyright protection, and even non-traditional trademark protection, assuming the configuration and/or trade dress is non-functional and distinctive.

Trade secrets would not apply since these sculptures are on public display. I’m thinking the vendor probably is focused on copyright, if so, the sign doesn’t constitute a valid copyright notice, but most probably get the point. Please is present perhaps in recognition of fair use?

The ultimate point here is, everyone is thinking about intellectual property these days, but few understand it, that’s why we’re here, so thank you for spending time with us.