Category: Uncategorized

A U.S. Trademark Application Requires a U.S. Attorney

What’s New?

As of August 3rd, 2019 all foreign-domiciled trademark applicants, registrants and parties to Trademark Trial and Appeal Board proceedings – yes Canada this includes you with limited exceptions – will be required to be represented by an attorney licensed and practicing law in the United States. Check out the law here.

What is the Point?

Well, of course the main goal of any new rule is to increase compliance, but the USPTO (United States Patent and Trademark Office) is also looking to improve the accuracy of trademark submissions made. Not only, will having an experienced US trademark attorney working with registrants increase the efficiency of the office, but it will likely save registrants costly fees associated with misfiling and corrections. Finally, it’s important to the USPTO to maintain the integrity of the office – with the increasing issues – specifically in regard to fraudulent trademarks – the office seeks to regain some control.

What does this all mean?

This means, basically, if a trademark applicant is based out of a country OTHER THAN the United States – Canada you have a slight exception you can check out here – you MUST retain an attorney licensed to practice law in the United States. These attorneys must be able to provide to the USPTO their name, postal address and email, a statement showing they are in good standing of a state or the federal bar and their bar number – if applicable. Without this, you will not be able to register or apply for your trademark in the United States.

Who Do I Turn To?

The Lomnitzer Law Firm, P.A. is an excellent resource for all of your trademark and intellectual property needs. Based in South Florida, The Lomnitzer Law Firm, P.A. has helped clients all over the world and at competitive and affordable rates. The attorneys at the firm have extensive experience in trademark registration and enforcement protection, as well as litigating trademark infringements. The Lomnitzer Law Firm, P.A. can provide all foreign based individuals or entities looking to protect their trademark with more than just registration. The Lomnitzer Law Firm, P.A. also features attorneys working in every aspect of intellectual property including patent law, entrepreneurial law, copyright, entertainment and small business consultation.

For more information on how to protect your trademarks and all intellectual or business law needs contact us at 800-853-9692 or via our website form.

What the Fuct?

Ending a nearly two year debate the Supreme Court, in Iancu v. Brunetti No. 18-302 (U.S. June 24, 2019), finally reached a decision on whether the Lanham Act provision ban on the registration of “immoral or scandalous” trademarks is constitutional…the answer is no!

The History of Fuct

Erik Brunetti, an artist and entrepreneur founded a clothing line using the trademark “Fuct.” The proper pronunciation of Brunetti’s trademark is actually F-U-C-T (said letter by letter) which stands for “Friends U Can’t Trust”, however, it’s easy to see how it may be confused with the past tense of a, well, common curse word.

Brunetti attempted to register the trademark for the first time in 2011. The United States Patent and Trademark Office (“USPTO”) refused to register his trademark based on Lanham Act Section 2(a), 15 U.S.C. 1052(a) being that the mark was “immoral or scandalous.” Brunetti quickly appealed to the USPTO’s Trademark Trial and Appeal Board (TTAB), but they affirmed the rejection. So, Brunetti took the next step and filed an appeal in federal court.

Ironically, the same time Brunetti is fighting for his mark, there was another case in federal court addressing trademark eligibility – Matal v. Tam – under the same clause of the Lanham Act, for a mark the USPTO found to be disparaging. In Matal v. Tam – an all Asian rock band wanted to register their band name “The Slants” but were refused a trademark in the same way as Brunetti was refused for his “Fuct” mark. After going all the way up the appeal ladder to the Supreme Court, the disparagement clause relied on by the USPTO and the lower courts was found to be unconstitutional in violation of the First Amendment because the Supreme Court decided, “… if a trademark registration bar is viewpoint based, it is unconstitutional. And second, the disparagement bar was viewpoint based.” Basically, just because some people might find it disparaging doesn’t make it OK to prevent other people from saying it – i.e. the entire point of our Constitution’s protection for freedom of speech.

Back to Brunetti…in 2018 he won his appeal in a lower federal appeals court. However, not quite ready to allow Fuct any protection, the USPTO actually raised the matter to the SUPREME COURT OF THE UNITED STATES, and the Supreme Court agreed to hear the issues. Now, after six months the decision has been issued – in a 6-3 decision – clarifying that the language of the Lanham Act stating that a trademark can be refused if it is “immoral or scandalous” is unconstitutional.

The Iancu v. Brunetti opinion written by Supreme Court Justice Kagan gets right to the point – it’s unconstitutional to not allow words to be trademarked because certain people disfavor those words. Such “viewpoint” based analysis has no place in free speech says the Supreme Court.

So Why Does This Even Matter?

The USPTO’s reliance on the “immoral or scandalous” bar in the Lanham Act has long been viewed as an attempt to regulate free speech and has denied some business owners federal trademark protection for their marks. The Supreme Court has just affirmed that free speech extends to choosing whatever terms you wish to represent your business identity. Now, should you choose a business name that is disagreeable to some, you may still proceed to request federal protection for your chosen trademark.

What Does this Mean for the Future?

Iancu v. Brunetti, does not automatically modify the Lanham Act, that’s the legislatures job. Will they do it? Will they find a way narrow the limits of “immoral and scandalous” to make it possible for the USPTO to once again reject some vulgar, sexually explicit, and profane marks, as the USPTO suggested it might be possible to do. We will have to wait and see. For now, we can expect that the USPTO will issue updated guidelines to its trademark examining attorneys on the review and registration of trademarks under section 2(a) of the Lanham Act, noting that trademark registrations cannot be disqualified on the basis of being “immoral or scandalous.”

For more information on trademark registration of your marks, or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Moral Rights… WHAT ARE THOSE?

Originating from the French term droit moral, moral rights refer to the personal rights of an author of any creative work related to the association between the author and the work itself.  Moral rights go beyond the monetary and economic value of the works and focus on the integrity of the work and protecting the reputation of the author.

The United States Copyright Office began an analysis of the United States moral rights framework in January of 2017. In April 2019 the office released a report based on its findings. This report is VERY in depth- about 157 pages –  and can be found here. If you would like to REALLY know everything the US has to offer in regard to moral rights, then definitely take a peek at the whole report.  If time is short, this blog is a good introduction.

Who Has Moral Rights?

The author or artist of a work is entitled to moral rights. It sounds simple, right? Well, it is a little more complicated than it appears – you see, moral rights are recognized differently throughout the world. The EEU and many European countries have very high moral rights protection – while the United States is a little more relaxed. The Berne Convention is the best place to look to try and understand moral rights and what they give to an author. Article 6bis of the convention states that the author has rights independent of the economic rights – specifically the right to claim authorship and object to any distortion, mutilation or any other derogatory action relating to the said work that would be prejudicial to their honor or reputation. What does that mean in plain language? To sum it up, there are two moral rights that all members of the Berne Convention must provide to authors – the right of attribution and the right of integrity.

Right of Attribution

The right of attribution – sometimes called the right of paternity – means that the author has the right to have their name on a work – or their pseudonym if they prefer. Seems simple… however, confusion arises for most when authors have transferred their rights in a work to someone else. If JK Rowling transferred all of her copyrights in her Harry Potter books to me can I put my name on the books as author? NO! Moral rights remain with the author even after they have transferred copyrights to someone else (this right of attribution can be waived but we won’t get into that today). Why would an author still want to keep their name on a work they transferred away for other purposes? Well, this goes back to the original idea of moral rights being meant to protect and recognize the inherent connection between an author of a creative work and the work itself.

Right of Integrity

The right of integrity is the other right granted authors by the Berne Convention and this right deals with – you guessed it – the integrity of a work and its effect on the reputation of the author. Even after an author has transferred their rights in a work people may still associate that author with the work. If a subsequent rights holder acquired JK Rowling’s magical Harry Potter works and turned the characters into deviant mass murderers – people may start to associate that content with Ms. Rowling, and it could affect her reputation as an author of family friendly works.

So Back to the United States – Moral Rights or Wrong?

Guess what – the United States is a member of the Berne Convention! That means the United States MUST protect the right of attribution and the right of integrity for all its authors. The United States, and any member of the Berne Convention, can create statutes and laws that expand moral rights – but cannot limit them!

So, the United States over the past 30 years has started to expand – slightly – on the protection of moral rights. When joining the Berne Convention in 1988, the United States met the minimum requirements for protection of moral rights through various federal and state laws. Over time, the moral rights have been enlarged through amendments to title 17 of the United States Code, and judicial decisions have addressed unfair competition and misappropriation laws, especially Dastar Corp. v. Twentieth Century Fox Film Corp. The US has even created the Visual Arts Rights Act (VARA), the first legislation enacted that specifically addresses moral rights, in certain works only – you guessed it, visual arts.

What did the United States Copyright Office Report Conclude Regarding Moral Rights?

As mentioned earlier, the report is very in depth so there was A LOT of information discovered, but the main outcome of this analysis was positive. The United States is doing a pretty good job protecting an author’s right of attribution and right of integrity. The report even suggests that there is no need – right now – to adopt a blanket moral rights law. They find the combination of laws, judicial decisions, and acts is doing a good enough job for now! Is there room for improvement? Always, specifically – suggested – in the areas of the Lanham Act, VARA, 17 U.S.C. § 1202, and the right of publicity.

For more information on moral rights, how to properly protect your moral rights or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Federal Trademark Protection for Hemp Derived Cannabis Products Now a Possibility

2018 Farm Bill and its Impact on Trademark Law

Although marijuana has become legal in many states, either medical and/or recreational, it is still illegal under federal law. According to case law and the rules of the United States Patent and Trademark Office, to be able to receive federal trademark registration the use of the mark in commerce must be lawful. Under the Controlled Substances Act (CSA), marijuana, or the cannabis plant, is a Schedule I controlled substance and therefore cannot be sold interstate. To summarize, interstate marijuana sales are illegal and federal trademark protection for cannabis derived products has not previously been possible.

Times They Are A Changing

However, the 2018 Farm Bill, recently signed into law on December 20, 2018, has made significant changes in regulations that deal with cannabis sales – specifically the sale of products made from or derived from “hemp”. Originally, the 2014 bill defined all parts of the Cannabis sativa L. whether growing or not, the seeds thereof […] as a Schedule I controlled substance, which included hemp. See Federal Statute 21 U.S.C. §802(16). Now, with the new laws being implemented hemp is no longer a controlled substance under the Controlled Substance Act. Hemp and marijuana, though often confused as the same thing are in fact different. Marijuana is still a Schedule I controlled substance, but hemp has been removed from that Schedule 1. This means that cannabis plants and derivatives such as CBD products that are derived from “hemp” and contain no more than 0.3% THC on a dry-weight basis are no longer controlled substances under the CSA, and product related federal trademarks are now a possibility.

On May 2, 2019, the United States Patent and Trademark Office released an updated examination guide for USPTO examining attorney’s to use when looking at the application of a hemp derived cannabis-related good or service. The USPTO has now amended the guidelines in accordance with the recent changes in federal law. The examining attorney will now look at the application to ensure the goods or services comply with both the CSA and the 2018 Farm Bill. Applications for qualifying hemp derived cannabis and cannabis-derived goods filed before December 20, 2018, regarding hemp will be offered the opportunity to amend their application filing date and basis to support their qualifying under these new guidelines..

Any and all trademarks must still comply with basic trademark requirements in order to be approved.

What Does This Mean for Owners of Hemp Derived Cannabis Products (non-CBD)?

To sum it up, some hemp derived cannabis and cannabis-derived good trade names can now be federally trademarked. Applicants will want to make sure their goods are identified on packaging and advertising as derived from hemp and specifying that they contain less than 0.3% THC.

What Does this Mean for Owners of Hemp Derived CBD Products?

There are still some restrictions blocking federal trademarks as to Cannabidiol (CBD) products, because these items are regulated by the FDA (Food and Drug Administration) and/or the FDCA (Federal Food and Cosmetic Act). Therefore, even though qualifying CBD products may now be legal under the CSA (meaning the CSA will no longer be grounds for denying their trademark), the CBD trademarks may still be denied due to lawful-use issues under the FDCA. According to the May 2, 2019, USPTO guidelines “registration of marks for foods, beverages, dietary supplements, or pet treats containing CBD will still be refused as unlawful under the FDCA, even if derived from hemp…”. These CBD product producers will have to wait for the day that the FDA completes its undergoing clinical investigations and approves CBD pursuant to FDA regulations. A CBD product that is not a food or dietary supplement may not be subject to these restrictions.

A Bit of Background – Trademark Basics

A trademark is an name, image, logo, sound or any other identifiable mark that a consumer can use to indicate a specific source of a product or service. There are three main different types of trademark protection. There is common law, state registration and federal registration.

Under common law trademark all an owner needs to do is be the first person to use a trademark in commerce. Sounds easy, well it is, however common law protection gives users only protection in the geographic area where it is identifiable. Basically, it’s the lowest amount of protection available.

Next level of protection is registering a trademark with the state in which the product is distributed. This doesn’t necessarily expand the area of protection, but may provide some more legal remedies to the company in the case of infringement. State trademark laws vary, so certain states have specific requirements, but all states will allow a company to register.

The highest, most coveted and most difficult trademark protection to attain is federal registration. This allows for trademark protection across the United States. We generally recommend our clients look at protecting their trademark on a multi-state or national level to try and federally register their mark with the United State Patent and Trademark Office, when possible.

Now, qualifying hemp derived products and services that meet basic trademarks and are approved by the USPTO are eligible for not only common law and state law protection, but federal protection as well.

Marijuana or devices creating or facilitating the smoking of marijuana still cannot receive federal trademark protection. That doesn’t mean that they cannot receive common law or state law protection. Registering within the state and the geographical area that the marijuana is being sold will allow a company to at least protect their mark in that area. This will allow the mark owner to use the mark in commerce and create brand recognition of their name or logo in preparation for that day in the future that federal trademark protection might become available.

Outlook for The Future regarding CBD and Marijuana Trademarks?

As of right now there is no concrete evidence that CBD, and marijuana products and services, will one day be federally trademarkable, but this particular change in the CSA shows progress is being made in this ever growing – no pun intended – area of agriculture. Laws are often changing so be sure to follow this blog to stay up to date on all changes in this area of the law.

For more information on how to properly protect your company and hemp derived product trademarks, or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Supreme Court Decides: Authors’ Access to Court is Granted Only After Copyright Office Acts on Application for Registration

When Does Copyright Registration Occur?

In a unanimous Supreme Court decision, copyright owners seeking protection must now wait for the Copyright Office to act on an application for registration before they can pursue infringement claims in court. Based on the recent Supreme Court ruling, copyright registration occurs – and a copyright owner may commence a lawsuit – when the copyright office ASSIGNS A REGISTRATION NUMBER, or declines to assign one, to an applied for work. The days of simply filing an application and claiming a pending registration in order to have standing in an infringement case are gone.

What’s Different Now?

What does this mean? Well, the decision in Fourth Estate Public Benefit Corporation v. Wall-Street.com has settled a long standing circuit split about when registration occurs. This decision now requires a copyright owner to wait until the U.S Copyright office has actually approved or refused their registration before they can file an infringement suit in court. Some Circuit Courts previously held that mere filing of an application for registration was sufficient to give an owner standing to bring an infringement suit. This was known as the “application approach.” Copyright owners would simply apply for copyright registration and have standing to immediately file their infringement suits. After Fourth Estate, this “application approach” will no longer be allowed. Authors, music publishers and record labels are among the authors of creative works who have already voiced their displeasure with the Supreme Court’s decision; highlighting that this will severely impact their ability to protect the fruits of their labor. They have to wait around for a registration number while their works are being infringed, rather than having the immediate access to court as with the “application approach.”

Why This Ruling?

So, if the creators of original works, whom the Copyright Act was created to protect, disagree with the decision, why did the Supreme Court rule the way they did? In a nutshell, not only will this decision make it easier and more efficient to keep a comprehensive public record of ownership of copyrighted works, but upon a comprehensive reading of the Copyright Act statute Justice Ginsberg highlights that the registration approach was what lawmakers had in mind.

This ruling is not taking away the protections offered to a copyright owner, it merely limits when a copyright owner can access the courts for relief. Once registration has been approved and the owner can file suit, damages can still be awarded for both pre and post registration infringement (though statutory damages are available only post registration, and often exceed pre-registration actual damages).

There are a couple of options for authors of creative works concerned about imminent infringement of those works. First, in limited circumstances an author of a creative work may file for preregistration to protect that work. Second, an author of a creative work may pay an expedited filing fee to speed registration from the six months or more which can be typical processing times, to less than a couple of weeks.

We encourage authors of creative works to apply for their copyright registrations as early as possible, and to consider submitting to the expense of expedited registration handling if the work is being infringed, or if there is a likelihood the work will be infringed immediately after publication.

For more information on how to properly protect your copyright or any other intellectual property needs, contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Can Celebrities Be Sued for Re-Posting Images of Themselves Found on Social Media?

Celebrities are used to having their photographs taken. And paparazzi are used to taking celebrity photographs. There’s always been a push and pull between the celebrity and the paparazzi. Some of their issues, such as privacy rights, stalking, and harassment issues are generally sorted out. What is still being sorted out between celebrities and paparazzi in this age of social media is what rights do celebrities have to their image, and how does that relate to the rights of the photographers who take photographs of these celebrities. In the past year, several lawsuits have been filed which examine the specific question:

Can celebrities be sued for reposting images of themselves on social media?

While the legal answer to this question is still evolving through the various court cases filed, it is clear the celebrities who appear in the photos, and the photographers who take the photos, are at odds. While celebrities claim right to publicity, the photographers claim loss of income due to the appropriation by celebrities of their copyrighted works.

The US Copyright Act Protects Original Works

United States copyright law protects original works of authorship fixed in any tangible medium of expression. In other words, as soon as a photographer snaps a photo fixing a digital or film image that photographer has created an original work of authorship entitled to protection under the United States Copyright Act. Once fixed, the photographers copyrights include the exclusive right to reproduce and distribute the work to the public.

The Celebrity “Copy and Post” May Violate Photographer Rights

Many celebrities retain control of their own social media platforms. Larger name celebrities are sometimes followed by tens of millions of people on these sites. As American fashion model Gigi Hadid is finding out, reposting an image of yourself to a social media platform, like Instagram, can have some unintended legal consequences.

In a recent suit filed against Hadid, a New York paparazzi operating under the business name Xclusive-Lee, Inc. (Xclusive-Lee, Inc. v. Jelena Nourga “Gigi” Hadid, Eastern District of NY, Case No. 19-cv-520), complains that Hadid copied and uploaded a photograph taken of Hadid by Xclusive-Lee to Hadid’s publicly available Instagram account without license or permission from Xclusive-Lee.

Hadid, who removed the picture from her page days after uploading it, has now responded in the case filing a pre-motion letter asking the judge to throw out the lawsuit, which Hadid characterizes as merely an effort to “extract” money from her. The pre-motion letter argues that the paparazzi already exploit Hadid’s image for profit on a day-to-day basis, photographing her every move, and it is disingenuous to now demand damages based on a social media post made by the person whose fame and image the paparazzi sought to exploit in the first place. Further, the pre-motion letter argues, among other thing, that Hadid had an implied license to use the photograph as she “permitted the photographer to take a photograph of her and, by posing, contributed to the photograph’s protectable elements.” Hadid concludes that from this interaction “a license can, and should, be implied permitting Hadid to use the photograph—at least in ways that do not interfere with the photographer’s ability to profit.”

Hadid is not the first celebrity to have to defend themselves against this type of copyright infringement claim. Other social media A-listers such as Khloe Kardashian and Odell Beckham Jr., have been sued for republishing photographs taken of them. Celebrities, like Hadid, argue in defense that the public is interested in them and their image, so they should maintain some control over how and when their image is used.

Photographers, on the other hand, maintain that when celebrities post, re-post, or share a photographer’s original work without license or consent, the photos are no longer “exclusive” and lose most of their value in the paparazzi market.

Outside the US, laws tend to favor celebrities regarding control of how their names and photos are being used in the public. However, in the US, the law of rightful ownership of a celebrity to their image is not as clear, resulting in most of these cases, like those against Hadid, being settled outside of court.

We will continue to monitor developments in this area of copyright law since social media, the internet, and technology will continue to affect authors of original creative works; and, celebrities will continue to exploit social media, the internet, and technology to stay relevant and successful. We expect cases, like those against Hadid, will become more prevalent until the law reaches a balance between a celebrity’s right to publicity in their own image, and a photographer’s right to reproduce and distribute original works depicting celebrities.

The Lomnitzer Law Firm focuses on all aspects of intellectual property as well as entertainment law. If you have a matter regarding these concerns, we would be happy to meet with you. Contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Dance Moves May Be Protected – But Fortnite Doesn’t Agree

Hold the Victory Dance: Rapper Sues Fortnite Makers Over Claims Game “Swiped” His Moves, Fortnite Moves to Dismiss

Epic Games, the company that makes the smash hit video game “Fortnite Battle Royal,” finds itself involved in a battle outside of the game defending against a copyright infringement lawsuit filed in Central District of California federal court by rapper 2 Milly, Case No. 2:18-cv-10110-AS. 2 Milly alleges that Epic Games offers its players the opportunity to purchase a victory dance for their characters to perform which is an exact duplication of his signature move the “Milly Rock.” Epic calls the move the “Swipe It” in the game.

While it is undeniable that the dance moves provide both a direct and indirect monetary gain, the question here is whether Epic Games is committing copyright infringement.

Rapper Claims He’s Not the Only Victim

2 Milly also alleges that Epic Games has copied Snoop Dogg’s “Drop It Like It’s Hot” moves, and the famous “Carlton” dance originated by actor Alfonso Ribeiro on the television hit show “The Fresh Prince of Belair.” According to 2 Milly, this evidences Epic Games pattern of behavior copying popular dances without permission or licensing the moves from the creators.

Indeed, Ribeiro, the Instagram-famous “Backpack Kid” originator of a move dubbed the “Floss,” and rapper BlocBoy JB with his move the “Shoot,” all have their own lawsuits pending against Epic Games. All four suits ask the court to block Epic Games from further use of the dance moves, award Defendants the money Epic Games earned from sale of the moves, and to award punitive damages and attorneys’ fees.

Epic Games: “No One Can Own a Dance Step”

Epic Games maintains they have done nothing wrong and has moved to dismiss the lawsuit. It’s Epic Game’s position that a single dance step or movement cannot be copyrighted, and that the “Swipe It” move is different from the “Milly Rock” step in any case.

Epic Games points out that even famous moves such as the “Hustle Step,” “Basic Waltz Step,” “Grapevine,” and “Classic Ballet’s Second Position,” are merely “building blocks of free expression,” and not independently entitled to protection as intellectual property.

The Choreography Copyright Act, section 102(a) (4), looks at trademark and copyright infringement in “choreographic works.” It defines choreography as the arrangement and composition of dance movements in related series and patterns, organized in such a way that it presents a coherent whole. It further implies that choreography having ordinary commonplace gestures or movements, social dances, athletic movements, or motor activities may lack sufficient original authorship in order to be qualified for copyright protection. Examples of gestures or commonplace movements that cannot be registered under the Copyright Act choreographic works include:

  • Yoga positions
  • A set of movements choreographed in a way such that a group of people spell out letters using their arms
  • A celebratory athletic victory gesture or end zone dance move

Though Iconic the Milly Rock, Carlton, and Floss, Might Not be Protectable Works of Creative Expression

For the dance moves in question to be clearly protected, they must be sufficiently original and have key elements such as a presentation before an audience, textual or musical accompaniment, be a series of dance movements rather than a single move or idea, including facial expressions, or gestures in a defined sequence or a story conveyed through movement. Though iconic, these Plaintiffs will have to prove their moves are sufficiently original when compared to other dances, and that the moves are their own singular expressive work rather than just a building block of an “idea, procedure, process, system, method of operation, concept principle, or discovery” which would not rise to the level of being copyrightable pursuant to the Copyright Act, 17 U.S.C. §102(b).

We can expect 2 Milly to oppose Epic Game’s Motion to Dismiss sometime in March, 2019, and for the court to hold a hearing on themotion in early April, 2019 . If the court rules in favor of Epic Games, it will be game on for the continued use of the Swipe It in Fortnite without credit or compensation to 2 Milly. If the court rules in favor of 2 Milly, the case will continue. If that’s the case, look for more artisits more artists to file claims against Fortnite.

Do You Have Questions About Copyright or Other Intellectual Property Rights?

Our firm focuses on intellectual property and entertainment law, including copyright, trademark, and patent law. We would be happy to discuss your matter with you. Contact us at (561) 953-9300 or through our website form to schedule your free consultation.

Out With a Bang: December IP News

ENDING THE YEAR ON A HIGH NOTE… AND A LOW ONE

There’s some great news as we end 2018: filmmakers are suddenly free to use a lot more preexisting material in their own work.

And there’s some bad news too. Ticketmaster is once again at odds with its customers.

This month is a perfect example of how intellectual property comes into play in all forms of entertainment, whether music, sports, or film. Let’s dive in.

“YOU CAN’T SUE US,” SAYS TICKETMASTER

If you’re a big live music fan, it has been interesting to watch the changing dynamics of the ticketing industry over time. A lot of small ticketing operations vowing to take on Ticketmaster have come and gone, and by joining forces with Live Nation, the behemoth has gotten even bigger.

Meanwhile, the ticket purchasing process has become increasingly automated – and even with less labor involved, ticket surcharges continue to rise.

One thing that hasn’t changed, however, is Ticketmaster’s longstanding anti-scalping policy… or has it?

A group of angry Ticketmaster customers have filed a class action lawsuit in Northern California alleging otherwise. While Ticketmaster outwardly deems scalping unfair competition, the suit claims that the service allows scalpers to purchase tickets in bulk and then begin reselling them virtually immediately.

The alleged scheme allows Ticketmaster to collect payment twice: once when the ticket is sold to a scalper, and a second time when the scalper sells it and gives Ticketmaster a cut.

These sound like serious allegations that might interest the Federal Trade Commission or the Department of Justice…

Yet Ticketmaster argues the entire suit needs to be thrown out.

The rationale? Ticketmaster’s user agreement. Whenever someone buys a ticket to an event, they’re agreeing to a host of conditions which are in the fine print. And according to Ticketmaster, the fine print states that people who buy tickets waive the right to sue. Instead, they must enter into binding arbitration.

For the suit to move forward, the court must agree with the Plaintiffs that this was a hidden clause the company knew no one would ever read. If the court agrees with Ticketmaster that the fine print is an enforceable agreement, then the case will indeed be throw out.

Keep an eye on this one. It has the potential to be a big case with serious impact.

“SCARY TERRY” ROZIER FACES A FRIGHTENING LAWSUIT

Every few years, a basketball player comes from seemingly nowhere to capture our attention and imagination.

Last season, it was Terry Rozier of the Boston Celtics. He’d spent a lot time on the bench until he came off to replace an injured teammate. But when he did, he made the world take notice.

Along with great plays on the court came goofy antics off the court – and the introduction of the “Scary Terry” character. Rozier liked the nickname bestowed on him by his fans. His favorite movie is Scream, and he even has an image of the film’s Ghost Face mask tattooed on himself.

Soon enough, Scary Terry became a commercial figure. One of Rozier’s representatives initially proposed a mascot of Rozier wearing a hockey mask like the one from Friday the 13th. Rozier suggested using the Ghost Face mask instead. The character began appearing on clothing (a first run sold out quickly) and caught the eye of Fun World, the owner of the Ghost Face mask’s intellectual property.

Fun World licenses its IP – which is how the Scream film series was able to use the mask and turn it into something iconic. Yet no one from Rozier’s camp ever approached Fun World ask about securing a license. As a result, Fun World brought suit.

The company asserts that Rozier owes up to $150,000 for each act of willful infringement, plus damages and fees. It also seeks a permanent injunction.

Click here to find out some of Rozier’s potential defenses in the suit.

THAT’S A WRAP!

We believe in ending the year on a high note, so we’ve saved some good news for the end.

In the copyright world, you may have heard of exemptions for fair use, or the Fair Use Doctrine. But have you heard of DMCA exemptions?

The Digital Millennium Copyright Act, or DMCA, codifies the allowance of technical protection measures to copyrighted materials and prevents their circumvention. For instance, encryption software or other technical locks can be used to prevent others from copying digital files like music or movies.

At the same time, the Copyright Office has the authority to determine exemptions to these prohibitions. While these exemptions are narrower than those covered by Fair Use, the purpose is the same – to protect creators without needlessly inhibiting legitimate uses of the protected content.

Exemptions had already been in place for documentary films (just as, similarly, the Fair Use doctrine makes an exemption for news items). But now they’re available for makers of films of all genres, including fiction. This is a huge victory for the industry and will make it easier to create and share more ideas without worrying about violating someone else’s legal rights.

Do You Have Questions About Copyright or Other Intellectual Property Rights?

Our firm focuses on intellectual property and entertainment law, including copyright, trademark, and patent law. We would be happy to discuss your matter with you. Contact us at (561) 953-9300 or through our website form to schedule your free consultation.

What’s Happening In The Intellectual Property World?

One thing that always keeps us interested in intellectual property is its huge role in everyday life. People of all ages are exposed to a staggering amount of material each day that is protected (or protectable) by copyright, trademark, and patent law.

But what’s really interesting is that this exposure actually helps to shape the law. Where do people that know your brand live? What do people associate with your brand? Are they confused between your work and someone else’s?

The answers to these questions and others like it can help businesses decide whether to expand. They can determine whether a band will have enough in royalties to retire comfortably, or if they’ll need to keep working.

So in spite of some appearances to the contrary, the law can be highly practical… highly influenced by the world around it… and as you probably know by now, it can be high stakes.

RIP to Pabst Blue Ribbon?

Imagine a world without Pabst Blue Ribbon, Old Milwaukee, Cold 45, Schlitz, Tsingtao, or Stroh’s. You may not care about any Pabst Brewing Company’s (“PBC”) 20+ historic beer brands, but you probably know a college student and/or hipster who does.

And that world could soon be a reality. Because as this is being written, PBC is currently duking it out in court against MillerCoors. At issue is PBC’s very existence.

The two conglomerates entered into an agreement in 2001 in which MillerCoors would brew PBC’s beers. As MillerCoors is the only brewery with the willingness and capacity to do so, it ultimately kept PBC in business. In return, it got a piece of the younger PBC demographic it craved.

The deal is due to end in 2020, with a window built in to negotiate an extension. But PBC has alleged that MillerCoors is attempting to sabotage the agreement. Claims against the latter include fraud, misrepresentation, breach of contract, and breach of anti-competition laws. If MillerCoors doesn’t brew PBC’s beers, PBC says it will have to shut down its operations—a move which MillerCoors is trying to engineer with its underhanded activities.

On its behalf, MillerCoors claims that it has the right to decide whether to keep brewing PBC’s beers, and that doing so has become more costly. PBC’s beers are brewed at a second brewery that MillerCoors may close in the face of rising competition and the strong popularity of craft brews. However, MillerCoors says that if it keeps the second brewery open, PBC can stay.

A verdict (or settlement) is imminent, as the trial is scheduled to conclude at the end of this month.

The Napster of the Teens

Though Napster and swapping MP3s online might feel very retro, this sort of thing still goes on all the time. The difference is what people are sharing. These days, it’s video games more than music. Other than that, the same rules largely apply… as do the penalties.

A couple in Arizona just found this out the hard way. Through two different websites, the couple offered unofficial downloads of hundreds of popular games. Not surprisingly, a manufacturer of many of those games – Nintendo of America – brought suit against the couple.

The complaint suggested assessing the maximum damages allowed by law: $150,000 for each Nintendo game hosted on the site, and $2,000,000 per trademark violation. The total would be more than $100,000,000.

Recognizing the grimness of their situation, the defendants recently settled with Nintendo for $12.23 million – still far more than most people can afford, but a bargain compared to the original request.

Will the judgment ever be satisfied? It’s not likely. Even so, it has already been successful for Nintendo in terms of its deterrent effect. A number of sites similar to those run by the defendants voluntarily stopped operating after the suit was filed.

The Latest Celebrity Infringement Feud (for Now)

Some readers may remember folk musician Tracy Chapman’s hit “Fast Car” from the 1980s. Those who don’t have probably heard it sampled elsewhere.

Though it was Chapman’s biggest hit, it isn’t her only song. And recently, one of her compositions is gaining new exposure as the subject of a copyright infringement suit.

Chapman claims that Nicki Minaj’s song “Sorry” infringes Chapman’s “Baby Can I Hold You.” The suit alleges Minaj’s song samples Chapman’s without authorization. After the fact, Minaj’s team attempted to secure the rights from Chapman. Though Chapman never consented to the use of her song, a New York DJ premiered Minaj’s “Sorry” on his radio show, leading Chapman to file her lawsuit.

Chapman is looking to prevent third parties from using Minaj’s “Sorry.” She’s also seeking damages and profits. Minaj has yet to respond to the suit.

Do You Have Questions About Copyright or Other Intellectual Property Rights?

Our firm focuses on intellectual property and entertainment law, including copyright, trademark, and patent law. We would be happy to discuss your matter with you. Contact us at (561) 953-9300 or via our website.

Led Zeppelin Is Going To California – And Back To Court

There’s a lady who’s sure all that glitters is gold…

The question is, who gets the gold?

She’s Climbing the Stairway to the Courthouse (Again)

The music industry breathed a big sigh of relief two years ago when Led Zeppelin beat a lawsuit accusing the band of infringement in their anthem “Stairway to Heaven.” It was only a year after Robin Thicke and Pharrell Williams “Blurred Lines” was found to infringe Marvin Gaye’s “Got to Give it Up.” That decision had left the industry reeling, and so the stakes in the instant case felt even higher for music creators.

The jury decided in favor of Led Zeppelin quickly. At the time, experts noted that while there could be cause for the plaintiff to appeal, an appeal would probably be unsuccessful due to the stringent standard required.

In spite of facing an uphill battle – and additional legal costs – the plaintiff did indeed appeal…

And won on a few critical points.

(This happened after Thicke and Williams lost their appeal – again surprising the industry, and not in a good way.)

Parts of the decision have been vacated and the case remanded, leaving the parties and the court to start over. The parties need to reargue their cases, and the court needs to (a) treat certain evidence differently and instruct the jury more fully.

Has Led Zeppelin Infringed?

When one party accuses another of infringement, what does that actually entail?

There are two factors required for infringement: a valid copyright and the copying of protect aspects. The copying of protected assets requires (1) copying and (2) unlawful appropriation.

Take note of the fact that copying is required. It is possible for two people could separately dream up a song that sounds substantially similar with neither copying the other. Were such a coincidence to occur, there would be no infringement, because independent creation is complete defense.

Of course, to prove infringement (or any other case), you need evidence. Without direct evidence of the elements of copyright infringement, a plaintiff can try to prove their point with circumstantial evidence. In this case, they need to show that Led Zeppelin had access to the protected material and that the original composition in question, “Taurus,” and the copy (“Stairway to Heaven”) share probative similarities.

Now, let’s look at the second part of copying: unlawful appropriation. This requires substantial similarity. Such similarity(s) must include parts of the plaintiff’s work that are protected.

Whether substantial similarity exists can be determined by a pair of tests. The extrinsic test is an objective comparison test. It compares the individual copyrighted elements from the original with those of the copy. The intrinsic test is a more subjective comparison which seeks to know whether an average, reasonable listener would find a similar concept and feel between the original and the copy.

Available Protections Depend on When “Taurus” was Registered

“Taurus,” the song allegedly being infringed by Led Zeppelin, was registered with the Copyright Office in 1967; at that time, the Copyright Act had last been amended in 1909. In accordance with that version of the Act, whatever was deposited with the Copyright Office was what was to be protected. And the deposit copy consisted of sheet music.

In other words, the musical composition (the melody, the instruments, lyrics, and so forth) was filed and thus protected, but the sound recording wasn’t. The Copyright Act of 1909 didn’t account for sound recordings as deposit copies.

Because of this, the district court kept the music out of the courtroom and barred the plaintiff from playing it in front of the jury. The rationale was that it would’ve been too prejudicial, creating bias within the jury that could affect the outcome of the case.

The appellate court said this was improper. While the recording of “Taurus” couldn’t be played to show substantial similarity, the lower court should have allowed for it to be played to demonstrate access. Any confusion on the jury’s behalf as to how to use the recording should have been used could have been mitigated by a proper explanation.

And that’s not all…

The Jury Instructions Were Misleading

Small musical elements aren’t copyrightable per se. For instance, a single music note can’t be protected. But a collection of notes strung together certainly can.

The trial judge in this case instructed the jury that certain elements aren’t protectable, but failed to instruct that the selection and arrangement of unprotectable musical elements can be protectable.

This is especially problematic in light of the findings of one of the plaintiff’s experts. Using the extrinsic test, the expert found substantial similarity based on a combination of five elements. Some of those elements were in the public domain, but some were protectable.

A different instruction didn’t specify that the “original” part of a work need not be new or novel. However, the instruction did state that elements from public domain or prior works aren’t original, and therefore not protectable by copyright.

These omissions in the instructions weren’t technically incorrect, but the appellate court found them misleading. They suggested that notes strung together would not be copyrightable – even if they were arranged in an original, creative way, as “Taurus” was.

The court found this to be prejudicial. The conclusions a reasonable jury could draw from the instructions and their omissions completely disregard the expert’s findings of substantial similarity under the extrinsic test.

Ultimately, the decision was vacated in part and remanded for a new trial. (Read the full opinion here.)

And so the industry waits again for the outcome…

Do You Have Questions About Copyright or Other Intellectual Property Rights?

Our firm focuses on intellectual property and entertainment law, including copyright, trademark, and patent-related matters. We would be happy to discuss your matter with you. Contact us at (561) 953-9300 or complete our website form to schedule your free consultation.