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…

Twitter, the social media giant, is being sued by its internet cousin, TWiT.  TWiT, which initially stood for This Week in Tech, is a netcast network providing audio and video tech-related content.  TWiT owns the registered service mark TWIT for visual and audio entertainment performances.

According to the Complaint, TWiT founder Leo Laporte and Twitter co-founder Evan Williams had some discussions about the similar brand names in the mid-2000s.  The Complaint is available on Scribd, courtesy of TechCrunch.  In 2007, Laporte invited Williams on TWiT’s net@night show to promote Wiliams’s new company, Twitter.  Laporte alleges that although the two founders recognized their companies’ similar sounding names, at the time, they provided entirely different platforms—Twitter was text-based microblogging, and TWiT was video and audio streaming and downloading. The two founders apparently agreed informally that their companies would continue to coexist on their respective platforms.

Now, after ten years and still no formal agreement, Twitter is planning to launch original video streaming content.

Last year, TWiT sent a letter demanding that Twitter abandon its planned expansion into video content.  The parties’ subsequent attempts to resolve the dispute without legal action apparently have not been successful.

TWiT alleges twelve causes of action in total, including infringement of the TWIT mark.

Perhaps the moral of this story is: put it in writing (preferably more than 140 characters).  Presumably in Twitter’s early days, no one could have foreseen the future success of the social media platform and an eventual expansion into video content.  But maybe TWiT should have sought something more than a handshake coexistence agreement.  What do you think?

Tunnel View - YosemiteTunnel View – Photo by David Iliff. License: CC-BY-SA 3.0

As the saying goes, possession is nine-tenths of the law. That other tenth can be pretty complicated, depending on what you’re “possessing.”   When you’re arguing with an older brother over who “possesses” the remote control, it’s an open and shut case. But what about “possession” of trademarks? Trademarks represent the goodwill associated with a mark and the quality of the products or services sold under the mark. How do you “possess” goodwill?

This tension underlies a recent conflict between the National Park Service and former concessionaire DNC Parks & Resorts at Yosemite, Inc. As you probably guessed, the dispute has something to do with the “former” part of that last sentence. After the Park Service declined to renew the contract, DNC was required to sell its proprietary rights (fixtures, buildings, vehicles, etc.). DNC expected to be compensated for the trademarks associated with its services, such as Badger Pass, Ahwahnee Hotel, Curry Village, Wawona Hotel, and more. DNC valued these trademarks at $51 million.  The Park Service disagreed with the valuation and, ultimately, stated that if the trademarks were not available for use, the new concessionaire could simply rename the buildings. After nearly 10 months without obtaining a satisfactory resolution, DNC filed a lawsuit with the U.S. Court of Federal Claims.

DNC’s complaint is not a traditional claim of infringement but instead a breach of contract. DNC claims that the contracts signed among the parties required the new concessionaire to purchase the intellectual property from DNC. Back before the acrimony, DNC entered into a concession contract with the Park Service to provide services in Yosemite National Park. The services include operation of hotels, restaurants, and entertainment services such as the ski area, golf course, and other services.

For more than 20 years, DNC operated the establishments in Yosemite. They maintained the premises, cleaned the hotel rooms, and did all the items one would expect a business to do to build valuable goodwill and reputation associated with a brand. But did DNC possess the trademarks and service marks? Or was it merely a licensee of the Parks Service?

DNC’s contract requires the new concessionaire to purchase physical property, fixtures, and “other property.” DNC argues that intellectual property such as trademarks qualifies as “other property.” On its face, it seems like a relatively weak claim. However, prior to DNC, these services had been provided for more than 100 years by a single company, Yosemite Park & Curry Company (“Curry”). Curry successfully registered a number of marks with the U.S. Patent and Trademark Office. DNC’s original contract required it to purchase “intangible assets” from Curry, and Curry transferred these registrations to DNC after DNC took over operations. On a whole, these facts make DNC’s argument more plausible.

Unsurprisingly, this is not the first dispute of its kind. In 2006, the Ninth Circuit sided with a concessionaire over the State of California in Dept. of Parks and Rec. Bd. of Cal. v. Bazaar Del Mundo, Inc., 448 F.3d 1118 (9th Cir. 2006). More recently, a similar dispute arose between the Park Service and a concessionaire operating at the Grand Canyon. Ultimately, the concessionaire agreed to back down.

Fortunately for the Park Service, Congress has its back with a new law that took effect last December. The law is codified at 54 U.S.C. § 302106 and provides:

Notwithstanding section 43(c) of the Act of July 5, 1946 (known as the Trademark Act of 1946) (15 U.S.C. 1125(c)), buildings and structures on or eligible for inclusion on the National Register (either individually or as part of a historic district), or designated as an individual landmark or as a contributing building in a historic district by a unit of State or local government, may retain the name historically associated with the building or structure.

The provision allows the Park Services to continue to use the names of landmarks and buildings, what convenient timing! But what does “retain the name” mean? Can Park Services merely identify the buildings as their historical names? Or can it do more? Can DNC also use the marks? Could DNC maintain an infringement action if the Parks Service or its licensees do more than simply “retain the name?”

The provision helps, but it doesn’t address the real issue: does DNC own these trademarks? The Park Service exercises some quality control over the services, including the ability to terminate the contract. And it seems likely that public associates the hotel names like Ahwahnee Hotel with the Yosemite National Park, rather than a particular vendor. Does that mean the Park Service is the owner of the marks? Or, because of the inherent connection with Yosemite Park, are the names simply un-ownable when used in connection with services offered within Yosemite Park? Do they instead belong to the public?

It is possible that DNC’s lawsuit may succeed. However, if DNC wins, it may be the last successful concessionaire lawsuit as Congress may choose to further amend Section 302106 to make it even more difficult for concessionaires to bring similar lawsuits in the future.

– Derek Allen, Attorney –

Unless you’re inflicted with the most severe kind of equinophobia, you probably don’t get much satisfaction from seeing a dead horse get beat.  But since the horse that is the NCAA’s current player compensation system appears to still have some life in it, I have to admit I’m sort of enjoying the additional beatings it keeps taking (as I’ve written about here, here, here, and here).  As I’ve indicated previously, I and others have a fundamental problem with a multi-billion dollar industry not coming close to fairly compensating the people who make the multi-billions possible.

The recent fun started on August 6th when Jay Bilas, former NCAA player and current ESPN announcer, took to Twitter to expose a delicious bit of hypocrisy.  The NCAA has long contended that it doesn’t seek to profit from players’ likenesses.  In the NCAA’s mind, when someone buys a Texas A&M #2 jersey, it doesn’t have anything to do with current Heisman Trophy winner Johnny Manziel who happens to wear that jersey number for that team every Saturday.  But (at least until Bilas’ tweeting) the NCAA’s own website took you to a page where you could buy that very #2 jersey if you searched the name “Manziel” (with the profit from the jersey going to the NCAA, of course).  Similar results occurred for other star players.  Surely if the jerseys had nothing to do with the individuals, the NCAA’s own search terms are quite a coincidence.  The NCAA quickly realized its error, first removing the search bar from its website before ultimately deciding to stop selling jerseys altogether a few days later.  My sources report that Manziel and other stars haven’t seen a check yet.

On a similar note, the NCAA recently announced that it would no longer allow video game maker EA Sports to use its name and logo in EA’s college football game.  The NCAA cited pending litigation as a reason for its decision.  Individual schools and conferences are free to continue working with EA, but this seems to be an implicit recognition from the NCAA that the plaintiffs in that case might have a point.

Finally, the aforementioned Johnny Manziel is in hot water with the NCAA over allegedly being paid to sign autographs last winter.  If the NCAA finds him guilty of this offense, his college career is likely over as he’ll probably be suspended for this season and enter the NFL draft next spring.  Among myriad others, reigning NFL MVP Adrian Peterson weighed in with his belief that college players ought to be able to receive money for signing autographs.  After all, I (along with probably every reader of this post) could have done so in college had anyone been willing to pay for our autographs. Public consensus seems to be reaching the same conclusion that Peterson did.

In sum, the straws are piling up and the camel’s back looks like it’s about to give.  Within a couple of years, my feeling is that we won’t be talking about if to pay college players, we’ll be talking about how to pay college players (perhaps via a trust account they can’t access until leaving school or, even better, requiring them to graduate in order to access the account).

 

There was some news yesterday that Will.I.am of the Black Eyed Peas “sued” Pharrell Williams, one of my favorite producers and member of N.E.R.D. and The Neptunes, over the I AM OTHER brand.   If you have never heard of N.E.R.D. and are looking for some new music, seriously check out  N.E.R.D.’s first album – “In Search Of….”

I Am Other Entertainment, founded by Pharrell, applied for the mark I AM OTHER with respect to various goods and services.  Will.I.am owns several registrations for the mark WILL.I.AM,  has a registration for I AM for apparel, and has applied for the mark I AM in connection with other goods and services.  The last time I saw Will.I.am and Pharrell go head-to-head was when the Black Eyed Peas open for N.E.R.D. at The Rave in Milwaukee in 2004 (Pharrell 1, Will.I.am 0).

Entertainment news reports of trademark or copyright issues often present a lot of misinformation about the law.  One major music magazine claimed that Pharrell was being sued regarding his new brand name by Will.I.am for a “copyright” claim, which I suppose Will.I.Am correctly denied. Another article stated that Will.I.am was not suing Pharrell and that Will.I.am’s lawyers dismissed claims of a dispute but that it was an easily resolved trademark dispute.  How calling it a trademark dispute dismisses claims of a dispute is interesting.   Will.I.am himself has denied suing Pharrell on Twitter:


The truth, as usual, lies somewhere in between.  Even if he does not want to admit it on Twitter, Will.I.am has opposed the registration of I Am Other Entertainment’s trademarks.   Opposing registration is procedurally akin to a lawsuit, with the desire to stop the other party from registering (and using) their applied-for mark.  There is a complaint (called a “notice of opposition”), an answer, discovery, trial testimony and ultimately a decision as to whether the mark will register or be administratively abandoned.  The major difference is that an opposition proceeding occurs within the Trademark Office at the Trademark Trial and Appeal Board, while litigation usually occurs in court.

Will.I.am may not be a party to a lawsuit, he certainly can tweet #iamopposer.  We’ll see if he’ll be able to tweet #iamwinner when this comes to a conclusion.

Will.I.am does own a registration for I AM with respect to apparel, a mark which is wholly incorporated into  Pharrell’s I AM OTHER trademark, which Pharrell has applied for with respect to apparel.  But there are many registered marks that incorporate I AM for use with apparel that could be problematic for Will.I.am, including the recently registered I AM. & Design mark.  As for WILL.I.AM versus I AM OTHER, it will be tougher for Will.I.am to convince the Trademark Office there is a likelihood of confusion in the marks which differ in sight, sound and meaning.   Hopefully, with the attention given to this, the two can reach an amicable agreement.

If not, maybe next they can start another “non-dispute” over each other’s hand gestures

 

There was a time when a certain kind of small business owner — strapped for cash — with a meager promotional budget, easily could be tempted to adopt a “clever” name, as a “short-cut,” to “play off” a well-known, iconic brand, but in the end, he or she probably was convinced by counsel that doing so would be foolish: It would be certain to draw a long, distracting, losing, and costly fight.

One tried and true way of effectively steering a business to avoid this kind of fire has been to have it “put the shoe on the other foot.” In other words, having those involved answer the hard question of what they’d honestly do if they managed the famous brand in question and someone came along doing exactly what they are proposing to do. Often yielding: “Oh, now I get it.”

Nowadays though, with the hungry media’s fascination over the ever-popular “trademark bullying” accusation, the juicy David v. Goliath story-lines, and the prevalence of mysterious litigation settlements with undisclosed terms, as well as a growing appreciation that large brand owners would prefer to avoid the shaming label altogether, there is a growing and legitimate concern that small business owners may be more and more inclined to bait large brand owners into fights for the publicity — to help launch their new product — and eventual confidential settlement.

If not actual bait, then at least these David-style “benefits” unfortunately appear to be factored into the trademark decision-making under the present trademark landscape.

Now, I certainly don’t know the true motivation behind the latest trademark to trigger an iconic brand owner’s legitimate objection, but based on what I’ve seen thus far, I do tend to believe that the latest brand to undeservingly wear the pejorative and media-baiting “trademark bully” label is: Tootsie Roll.

Over the weekend, CNNMoney reported the filing of a trademark lawsuit by Tootsie Roll Industries, LLC, owner of the more than century old Tootsie Roll confection brand, against Rollashoe, LLC, a small business based in Miami Beach, Florida, selling women’s footwear under the Footzyrolls name and mark.

The owners of Rollashoe, were quoted applying the trademark bully label to their adversary:

“This lawsuit it completely frivolous and has no merit,” Rolloshoe owners Sarah Caplan, 28, and Jenifer Caplan, 34, said in a statement. “This is just another example of Tootsie Roll trying to bully a minority-owned women’s small business.”

I couldn’t help but notice the absence of quotes that the Caplans were shocked to hear from Tootsie Roll. Didn’t the Caplans have to know they were walking into a serious fight with a major brand owner?

And not a frivolous trademark fight either: Tootsie Roll is a federally-registered trademark for clothing, a popular Halloween costume for babies and adults, the Tootsie Roll brand has been around more than 100 years, sixty-four million Tootsie Rolls are produced each day, and “tootsie” has a widely-known meaning for a person’s foot, putting aside the fact that the iconic Tootsie Roll brand is likely famous and trademark dilution requires no likelihood of confusion.

Giving the Caplans the benefit of the doubt, perhaps they had never heard of trademark dilution before, and maybe they truly thought confusion was the test and impossible.

Yet, at the close of 2010, Tootsie Roll reported to shareholders record sales of $517 million, as detailed in its Annual Report, specifically noting: “Our key competitive advantage lies in our well known brands . . . .” It also identified “candy buying mothers 25-44 years of age, [as] a key Tootsie Roll demographic group.” These facts aren’t surprising and neither is Tootsie Roll’s objection.

Tootsie Roll wasn’t exactly trigger-happy on this one either, having expressed concern about the FOOTZYROLL mark back in 2009 and formally opposing registration of the mark in early 2010; it held off seeking injunctive relief in federal district court until now.

Again, when you’re tempted to mechanically apply the “trademark bully” label to a brand owner’s particular enforcement effort, it might be a good idea to ask the brand owner’s enforcement target what it would be like if the shoe were on the other foot.

Has anyone bothered to ask the Caplan sisters if they were surprised to hear from Tootsie Roll, and what they’d honestly do if the shoe were on the other tootsie?

–Susan Perera, Attorney

Dusting off the archives, you may remember a 2009 blog post by Tiffany about a trademark infringement lawsuit initiated by Levi Strauss against Abercrombie & Fitch over the back pocket design on the respective parties’ jeans.

In that case the jury determined that the pocket designs, shown below, were not confusingly similar; thus, no trademark infringement.

Making news once again, yesterday the 9th Circuit Court of Appeals overturned the lower court’s verdict, holding the incorrect standard was applied (the test is not if the designs are identical or near identical, rather the test should have been whether Abercrombie’s design blurred the distinctiveness of Levi’s design.) So look for a new trial on this matter soon.

Levi is apparently no stranger to the court room, with sources reporting it has filed over 100 suits since 2001, many over the same back pocket design, against such parties as Espirit, Fossil, Guess, Jordache, Jelessy Jeans, Lucky, Polo, Silver, and Von Dutch. With some implying that Levi may have an axe to grind with these designer brands that are outcompeting Levi in the market.

So how timely is this story in the current trademark bullying landscape. Is this vigilant trademark enforcement, or trademark bullying? Maybe the line is as easy to blur as Levi’s design.

–Susan Perera, Attorney

Like most 20-somethings who went to college during the rise of this social media monster, I am quite familiar with Facebook. However, I wasn’t aware of the website Lamebook until the current legal dispute began. Lamebook, a self-proclaimed, “humor blog” was designed to allow people to share the most “ridiculous” things posted on Facebook. The Lamebook website is a satirical reflection of Facebook using similar colors, layout, and a variation of the Facebook mark.

Facebook, apparently not one to take a joke, requested that Lamebook cease use of its highly similar looking website and mark. The confrontation has led both parties to file lawsuits regarding the matter.

Facebook has made news in the past by going after websites with similar names such as Placebook and Teachbook, but this may be the first time they have gone up against a parody site. And, based on a cursory look at the matter, I would say Lamebook has a pretty good argument for fair use as a parody, which is protected under the First Amendment.

This dispute comes at the heels of another well-known trademark parody earlier this year, when The North Face sued The South Butt (discussed on DuetsBlog by Brent Lorentz and guest blogger Jason Voiovich). During that dispute, The South Butt received a bit of notoriety and publicity while The North Face braved some media criticism for going after the little guy. A few months ago the North Face dispute ended in an undisclosed settlement agreement, after which The South Butt has continued to run its website selling its parody apparel.

So what are brand owners to do when they face a distasteful parody? They might do well in ignoring it. Most consumers would have never known of The South Butt or Lamebook had these suits not been brought.  Especially in the case of a “small potatoes” website, making a ruckus might only provide free press for that which you’re trying to suppress.

What are your thoughts on Lamebook and parody sites?

 

—Joy Newborg, Attorney

New ideas are the lifeblood of Hollywood and television, as executives are scrounging to find the next wildly popular Avatar or “Friends.” However, there is a little evil known around the industry as idea theft, where a person believes that their idea has been used but they were not given credit or compensation for their idea. How do they fight back to get their due?

The problem resides in the fact that ideas, themes and historical events are not protected by copyright law, as Karen Brennan nicely explains in her post “Out for Blood (or Money)”, but rather the expression of ideas. But what’s to stop someone from stealing an idea and changing the wording of a script or characteristics of a character so that it’s no longer protected under copyright? Say, changing a character from married man to a confirmed bachelor or from an uncle to a brother? And is that the end of the story? Not necessarily, there is a life-line called breach of an implied contract.

In the Benay brothers’ lawsuit against Warner Bros for idea theft with the film The Last Samurai, which coincidentally happened to be the same title as the Benays’ script, the Benays pointed out the similarities between the film and their script, including the historically unfounded character of an American war veteran who goes to Japan to train the Imperial Army during the time of the samurai uprising, regrets personal involvement in an American battle, suffers from flashbacks and is spiritually transformed by his experience. Very convincing argument, especially when you hear that the script the studio claims it was previously working on underwent a drastic change in direction after the Benays handed over their script. But the Court of Appeals explained that after they stripped away all the similar ideas and themes, which were not protected under copyright law, there were insufficient similarities left to prove copyright infringement. However, the court did not stop there. It stated that if the parties entered into an implied-in-fact agreement, generally where there was an understanding that disclosure of the idea was conditioned on being compensated for such idea when used, then the Benays may have a claim for breach of implied contract. Under this type of claim, the court stated that it can now look at all the similarities between the script and film – including ideas, themes and all other unprotected copyright items –  to determine if the ideas were used. As the breach of contract claim was remanded back to the lower court, we must wait to see if the Benays are successful in their fight.

One party that hopes to benefit from the Benays’ case is Hayden Christensen, who played Anakin Skywaker in the Star Wars prequels, along with his brother. They recently sued USA Network in connection with the recent television hit show “Royal Pains.” According to the lawsuit, the Christensens wrote a treatment for a television series about a concierge doctor in Malibu, CA (hmmm… sounds familiar), the treatment was sent to USA Network, they scheduled a meeting to pitch the idea and met with an executive who is claimed to have said that he was unfamiliar with the concept of concierge doctors. In this lawsuit, the Christensens didn’t bother with a copyright infringement claim, but will be relying on a breach of an implied contract, unfair competition and unjust enrichment claims instead. So time will only tell if the “force” is with him.

–Dan Kelly, Attorney

Have you ever seen a bottle with a top that resembles this image?  Do you associate it with a single source?  Do you associate it with a particular product?  If so, which source or product?  Would you think that the product pictured below comes from the same source?

  How about this one? 

These are the basic facts in a lawsuit brought last month by Maker’s Mark Distillery against Jose Cuervo International and related entities.  Maker’s Mark owns a federal trademark registration (more than one, actually) on its wax seal for use in connection with whiskey.  Jose Cuervo sells the bottles pictured above as part of its Jose Cuervo Reserva de la Familia line of tequilas.  While news outlets reported this new case last month, and indeed a new case was filed then, these two parties have been in litigation since 2003 on the same issues.  In the 2003 suit, the Cuervo parties have counterclaimed to cancel the Maker’s Mark trademark registration, in part on the basis that the wax seal is functional. The parties are currently briefing a motion for summary judgment brought by the Cuervo parties, so there may be a disposition within the next several months.

It is not presently clear to me how the two lawsuits are related.  In any event, these suits, if tried to published decisions, will add a helpful data point to the body of non-traditional trademark law.  We’ll keep you posted.