Category: Uncategorized

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.

New Boundaries For Copyright Law?

Here’s something we love about intellectual property law.

Technology has led to IP being shared more widely and easily than ever before. So even though the law itself can be slow to change, new potential matters pop up all the time.

What aspects of a photo need to be licensed? Who owns the laughing face emoji you just sent in a text? Those are just a couple of the modern copyright issues we tackle this month.

TOO UTILITARIAN FOR COPYRIGHT PROTECTION?

A recent federal court decision here in Florida is making waves in the legal community. In Pohl v. MH SUB I, LLC (2018 WL 3154467 Northern District of Florida, 2018), the plaintiff dentist sued a competitor for using the plaintiff’s “before and after” photos of his dental patients.

Though the plaintiff had already been granted copyright protection, the court ruled that the plaintiff’s photos didn’t qualify for it. The rationale was that the photos were utilitarian in nature and merely served to identify what someone could expect to get from the business.

In other words, the court said there was nothing original about the plaintiff’s photos. However, “originality” as required by the Copyright Act isn’t about doing something novel or creative; all it means is that the item sought to be copyrighted isn’t copied from somewhere else.

Moreover, it is difficult to quantify creativity and how much of it was required for the photos. To be sure, the images copied were close-up images of mouths. But many decisions were made in order to create them: who to model, what lighting to use, the camera angle, lipstick colors, and more. Are these not creative choices?

The possible implications of this case are massive when you consider other types of cases this ruling could impact. According to this reasoning, any photo that’s part of a reality-based ad campaign isn’t copyrightable.

We’re curious to see if the plaintiff will appeal to the Eleventh Circuit.

GRAFFITI ARTIST SUES GM FOR INFRINGEMENT

Should graffiti be copyright-protectable?

That question is at the heart of a lawsuit filed against General Motors by Adrian Falkner, the Swiss graffiti artist known as Smash 137.

Falkner had been commissioned several years ago to create a graffiti mural on a parking garage in Detroit. GM later did a photo shoot for a Cadillac ad campaign in front of the mural. Falkner didn’t authorize or even know about such use, so he filed his suit.

In theory, graffiti should enjoy strong copyright protection, as it is a fixed, tangible form of expression. Yet courts recently have been left to wrestle with a few issues that are far from clear. For example, should commissioned graffiti (like Falkner’s) enjoy more protection than unauthorized graffiti? And what constitutes protectable work? Do words on a bathroom wall deserve the same level of protection as Falkner’s work?

These “gray area” issues have yet to be resolved. Similar suits by other graffiti artists have been either settled out of court or dropped altogether.

For its part, GM defends that Falkner’s work isn’t copyrightable under 17 United States Code § 120(a), which states:

  • The copyright in an architectural work that has been constructed does not include the right to prevent the making, distributing, or public display of pictures, paintings, photographs, or other pictorial representations of the work, if the building in which the work is embodied is located in or ordinarily visible from a public place.

GM argues that Falkner’s work is part of the architecture, and its placement outdoors on the parking garage makes it publicly visible.

Falkner’s lawyers counter that this exemption within the law was intended to allow the public to photograph and post images of significant structures like the Empire State Building or the Capitol Building in Washington DC. Moreover, to render Falkner’s work not copyrightable under this clause would mean that most graffiti couldn’t be protected, as it’s generally on buildings and often publicly visible.

It’s worth noting that the copyright in a work is separate from the object on which the work is embodied. This is a hurdle GM will need to address as the case progresses.

Like the Pohl case, the implications here could be big. We’ll be watching to see if this case goes to trial.

WHO OWNS YOUR EMOJI?

Whether you’re texting or on social media, emojis have become an important part of how we communicate.

But here’s a question…

At some point, someone invented emoji. So does the inventor (or someone they assigned their rights to) “own” them?

In other words, are emoji copyrightable? By whom? How are they compensated?

First, a quick history lesson. During the early days of the internet, people would use punctuation keys to create emoji (and sometimes still do).

Pictorial emoji – the earliest versions of the images we see today – were introduced in 1999 for the Japanese mobile network NTT DoCoMo. As users sent them back and forth to each other, they became a huge hit, and other mobile carriers started introducing them.

The problem was that each company that developed their emoji according to their own standards. This meant that if you sent an emoji from your phone to a recipient who was on a different mobile network, they may see something completely different than what you’d intended.

The Unicode Consortium addressed the issue in 2010 when it designated 78 emoji as the standard for everyone (many more have been added since). Today, when you send an emoji between mobile networks, you can be sure the person on the other end is seeing what you intended, though there still can be some differences.

Certain emoji are recognizably Apple emoji, recognizably Google’s version, and so forth. For example, you can see the nuances of different companies’ “face with rolling eyes” and “sad but relieved face” in Unicode Consortium’s Full Emoji List.

Keep in mind that emoji consist of computer code. All the companies use the same code to create, say, their grinning face emoji. The subtle differences in how they all look on the screen or page are what makes them copyrightable, to the extent they are.

So every mobile carrier owns their own emoji. This means you’re not supposed to use them for other purposes – like printing them on a mug or pillow, or using them as part of your own communications service. You’d want to use open source or free-license emoji for that sort of thing instead.

Having said that, any copyright protection for emoji is likely to be slim, given that they’re all derivative works of the same computer code. It’s difficult to know for certain how a court would rule, as there haven’t been any major cases about emoji and copyright infringement… yet.

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

Our firm focuses on intellectual property and entertainment law, including copyright, and would be happy to discuss your matter with you. Contact us at (561) 953-9300 or contact us online to schedule your free consultation.

IP Case Roundup: International Edition

It goes without saying that international laws aren’t a uniform concept. Trespassing in the US is a much different idea, for example, from trespassing in Scotland.

But then there’s intellectual property. This bundle of rights exists largely in the same form around the world. And ideally, IP would be treated equally and licensed correctly around the world. Of course, that’s not how things really happen.

A recent case that made headlines here in the US is a good illustration. There’s some interesting IP news coming out of the EU as well right now. Let’s dive in!

USPS OWES MILLIONS OVER ITS STATUE OF LIBERTY STAMP

Have you ever wondered where the United States Postal Service (“USPS” or “postal service”) gets its images from for postal stamps?

It’s simple – they use stock photos (at least for some). But the matter becomes complicated when they choose the wrong ones.

This is what happened when the USPS issued its Statue of Liberty stamp in late 2010. The post office chose an image showing a zoomed-in shot of Lady Liberty’s face…

But the photo they chose wasn’t of the real Statue of Liberty. It was a replica which is installed at the New York New York casino in Las Vegas.

The postal service was alerted to its error in 2011 but acknowledged that it would have chosen the same image regardless. The USPS continued distributing the stamp until retiring it in 2014, leading the replica’s sculptor to sue for royalties.

The postal service argued that the sculpture wasn’t entitled to copyright protection because it was a mere replica of a famous sculpture. Moreover, the use of the image was protected under copyright’s fair use doctrine because USPS derived little benefit from using the replica.

Robert Davidson, the sculptor, argued that his sculpture was sufficiently distinct from the original due to his attempts to feminize Lady Liberty’s face. (You can compare the images side by side here.) The US Court of Federal Claims agreed, deeming his work original and thus defeating the postal service’s fair use argument.

The court – which hears monetary claims against the government – then had to decide what Davidson was owed. The USPS asserted that there is huge demand to appear on a postage stamp and that it never had to pay more than $5,000 for a license.

The court disagreed. Instead, it focused on the percentage of the stamps that had been sold but never used. Those stamps were pure profit for the postal service, and as such, it should pay a royalty on them… along with the $5,000. Davidson was awarded a total of $3.55 million.

USPS assures that it has put safeguards in place to prevent this type of thing from happening again in the future. But if the price of postage goes up in the near future, perhaps we’ll know why!

VERSACE IS SUED BY NO FIXED ABODE

Fashion house Versace was recently sued for trademark infringement by a much smaller brand. (Yes, this might sound like the opposite of what you’re used to hearing.)

Streetwear brand No Fixed Abode claims it has been using a lion doorknocker emblem as its logo since the company began in 2013. Principal Emma Mann alleges that she previously alerted Versace to its infringement of her common law mark. After her application to register the mark was granted by the European Union Trademark Office, she brought suit in the British High Court.

No Fixed Abode is seeking injunctive relief banning Versace from using its own lion doorknocker image, along with monetary damages. Yet the ubiquity of this symbol, the newness of the registration, and the young age of the streetwear brand suggest that it may face an uphill battle.

Will Versace fight it out? Settle? File a counterclaim? Time will tell!

THE EU MAY BE STEPPING UP ITS BATTLE AGAINST SILICON VALLEY

The EU is continuing to regulate the role of American tech giants in their society. Fresh on the heels of the General Data Protection Regulation (known as the “GDPR”) coming into effect, a committee within the EU Parliament has just voted to strengthen copyright laws.

The new restrictions were suggested by the European Commission two years ago and propose making online platforms more accountable for their content. (This is a huge contrast with American law. The federal Digital Millennium Copyright Act actually specifies that online publishing platforms are frequently not liable for their content.)

Two aspects of the proposed law are particularly controversial. One provision would require search engines to pay publishers for using their news snippets. The other pertains to sites with a lot of user-generated visual content like YouTube, Instagram, and eBay. Those sites would be required to use a filter to prevent users from uploading copyright-protected materials without having a license.

Copyright holders are in favor of the proposed rules. Of course, they want to be compensated for their content. But they also say the rules will contribute to a better quality internet with more accurate information.

The Civil Liberties Union for Europe and others who are opposed argue that the rules will violate free speech. One prominent politician has vowed to challenge the rules and request a vote in Parliament.

DO YOU HAVE QUESTIONS ABOUT YOUR INTELLECTUAL PROPERTY RIGHTS?

Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us at (561) 953-9300 or click here to schedule your free consultation.

Dr. Dre, Dr. Drai, And What It Takes To Trademark Your Name

At the intersection of branding, marketing, and commerce is trademark law.

These are generally corporate concepts – and so, understandably, most people think of trademarks as something that applies to companies.

But what happens when an individual is the company or brand? Can a personal name be trademarked?

Yes, with limitations.

If you want to secure a trademark for your name, you need to be using it in commerce, either directly in connection with providing goods and services, or in the advertisements for them. At the very least, you need to be actively planning to use it and can demonstrate that intent.

In other words, you can’t simply apply for a blanket trademark that prevents others from using your name across the board.

For example, George Foreman has a number of trademarks. One of them is for meat and poultry. If someone comes along and starts selling beef jerky under George Foreman’s name, that might be deemed infringement. But suppose George Foreman sues someone for selling school supplies under his name. Now he has a weaker case, because he doesn’t have a registration that covers those types of products.

Further, consumers wouldn’t necessarily assume that the school supplies were affiliated with George Foreman, the boxer and grillmaster. To the contrary – school supplies might seem like a strange product line for him to get into, given the other types of products he sells.

So to register your name, you need to do it for specific goods or services affiliated with you personally. And there needs to be a connection in the mind of the consumer between you and your product(s).

Basically, for George Foreman to trademark his personal name for barbecue grills, there needs to be demonstrable evidence that when people hear his name, they think of grills.

If you think being a celebrity might help with all of this, you’re right. Fame makes it easier to build the case that people associate you specifically with your product or service. Of course, there is no absolute rule for how well-known you have to be.

So how do these principles play out in real life? It would be reasonable to think these cases generally go the celebrity’s way, to give them maximum control over their own brand. Yet a few recent examples show that’s not how it always goes.

DR. DRE VS. DR. DRAI
In late 2015, ob/gyn Draion Burch, also known as Dr. Drai, filed his application to trademark that nickname. Dr. Drai has appeared on television and written books. He sought to trademark his name for his books, plus videos, podcasts, speaking services, and more.

Enter Andre Young—better known worldwide as Dr. Dre. When the rap producer/businessman got wind of Drai’s trademark application, he filed a complaint with the Trademark Trial and Appeal Board (“TTAB”) to block the registration.

His rationale was that the names, which sound identical, would lead to consumers being confused about the source of the services. He argued that the types of goods and services Dr. Drai intended to sell were associated with the entertainment industry in which Dre himself is a well-known figure. He also alleged that the doctor was trading on the goodwill of Dre’s name.

Dr. Drai claimed that consumer confusion is unlikely, given that he’s a medical doctor and Dre is a “doctor” in name only. Moreover, the reason he chose the name was that it’s his given name.

Finally, Dr. Drai argued that any affiliation with Dre would actually be detrimental to his own brand. As an ob/gyn who is part of the LGBT community, he asserted that wouldn’t want to be associated with some of Dre’s misogynistic and homophobic lyrics.

The TTAB sided with Dr. Drai and dismissed Dre’s complaint. Dr. Drai’s trademark application will continue making its way through the US Patent and Trademark Office (“USPTO”).

STEVE JOBS, FASHION BRAND
A pair of Italian brothers were surprised several years ago to find out that Apple hadn’t trademarked co-founder Steve Jobs’ name. So they did what any enterprising young entrepreneurs would do.

They started a clothing company called “Steve Jobs” and registered their own Steve Jobs trademark.

Needless to say, Apple didn’t appreciate the shout-out to its late leader—especially given that the logo is a “J” with a bite taken out it and a leaf accent. The company sued…

And lost.

Late in 2017, the EU’s Office for Harmonisation in the Internal Market found that Steve Jobs, the clothing brand, doesn’t infringe on any of Apple’s marks. After all, the letter J isn’t an apple itself, but a letter.

The company reportedly makes bags, jeans, and t-shirts. But the brothers say they intend to expand into other products—including, possibly, electronics. Such a move into Apple’s terrain would likely prompt a fresh trademark complaint. For the moment, however, Steve Jobs is sticking to clothing.

KANYE WEST’S TRADEMARK LAPSE
Kanye West has been known as Yeezy for years. Which is probably why the Chinese firm Fujian Baby Network Technology Co. (“FBNT”) recently decided to try to trademark the term “Yeezy Boost” – the name of a sneaker designed by West.

Apparently West had let some of his trademarks lapse. Noticing an opportunity, FBNT applied last year to register the mark for clothing.

But FBNT had everything going against it. Trademark law isn’t just about first registration. It’s about a reputation you’ve built, and a brand. West has called himself Yeezy since at least 2009, and he designed clothing and shoes under that name for several years before FBNT applied for the mark in the same category. There’s a strong connection in the mind of the public between West and the word “Yeezy.”

FBNT seems to have seen the writing on the wall. Rather than enter into a protracted legal battle that it would be likely to lose, the company abandoned its attempted registration of the mark.

ARE YOU LOOKING TO TRADEMARK YOUR NAME?
Are you thinking about trying to trademark your personal name, or anything else? Our firm focuses on intellectual property and entertainment law and would be happy to discuss your matter with you. Contact us via our website or call (561) 953-9300 to schedule your free consultation.

Please note: this blog is intended to provide general information which should not be taken as legal advice.

Original article posted on our dedicated blog on June 15, 2018 https://lomnitzerlaw.wordpress.com/