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DOES COPYRIGHT LAW PROTECT RECORDED INTERVIEWS? IF SO, WHO OWNS THE COPYRIGHT?

On January 30, 2023, former President Donald J. Trump filed a lawsuit against author Bob Woodward, and publishers Simon & Schuster and Paramount Global alleging that their release of transcripts from Woodward’s interviews with Trump between December 2019 and August 2020 in the form of audiobooks and CDs entitled “The Trump Tapes” which was released in October 2022. In his complaint, Trump contends that he was only agreeing to be recorded for the sole purpose of Woodward being able to write a single book – “Rage”, which was published in September 2021, and seeking a declaration from the Court that he, not Woodward and the publishers, is the owner of copyright for the interview sound recordings.

Are Recorded Interviews Protectable under U.S. Copyright Law?

The Copyright Act of 1976 protects “original works of authorship fixed in any tangible medium of expression.” Accordingly, an interview is protected by copyright only if it satisfies the “originality” and “fixation” requirements of U.S. copyright law. The originality requirement is seldom an issue for an interview, and, in the case of Woodward’s interviews with Trump, the requirement is almost certainly satisfied. The fixation requirement is met so long as the copy “sufficiently permanent” to allow it to be perceived, reproduced, or communicated. An audio recording, which is at issue here, provides a verbatim account of the interview and certainly satisfies the fixation requirement. Other, less precise methods of recording, such as shorthand or note taking, could present issues with the fixation requirement.

Copyright law also requires that the work be made “under the authority of the author” for protection to exist. In the interview scenario, that requires that the interviewee actually consented to the interview and to it being recorded. Trump does not allege that the interview was conducted without his consent, so this element would appear to be satisfied as well.

Thus, the recorded interviews between Woodward and Trump appear to be protectable under U.S. Copyright Law. They are original, fixed, and were conducted with the consent of the interviewee, Mr. Trump,

Who Owns the Copyright to the Recorded Interviews?

Now that we have established that the recorded Woodward/Trump interview qualifies for federal copyright protection, who owns the copyright to that interview? Woodward? Trump? Simon & Schuster?  Under federal copyright law, absent a written agreement stating otherwise, the author is the owner of a copyright. But in an interview, who is the “author”? Is it Woodward, the interviewer–the person who ultimately controled the questions asked and the format of the interview? Or is it Trump, the interviewee–the person whose words and ideas are expressed throughout the interview? As you might expect, the law is not crystal clear on that issue and there are several possible answers.

One line of cases decided by Federal Courts between 1966 and 2000 would find in favor of Woodward, holding that the interviewer was the copyright owner of an interview. Those Courts reasoned that, although the interviewer might not be the copyright owner of the interviewee’s quotations, the interviewer would be the copyright owner of the compilation that includes the interviewee’s quotations and the interviewer’s questions, comments, and paraphrasing. One of these decisions also stated that the interviewee’s responses during the interview were not protectable “expressions” under copyright law but were merely “ideas” that not protected under copyright law. If the Court in the case recently filed by Trump follows this reasoning, copyright ownership to the interview lies with Woodward and the publishers and not with Trump.

Other Federal Court cases have granted the interviewee copyright ownership for his/her words. In cases where the parties have agreed in writing that the interviewee will be the copyright owner, this will always be the case. However, there is no mention in Trump’s complaint of a written agreement to that affect, so we have to dig a little deeper. Another instance where an interviewee may be recognized as the copyright owner of an interview is when the interviewer violates the interviewee’s right of publicity. It appears Trump may be playing that card since, in his complaint, he claims that “President Trump’s voice is one of the most recognizable voices in the world and hearing his words from his mouth or as directly articulated by him, is much more valuable and marketable than Woodward’s interpretation of the interviews in Rage.”

Something known as the “dual approach”, where the interview is treated as two distinct and separate works: format, organization, questions, comments and paraphrasing of responses owned by the interviewer and verbatim quotes in answers owned by the interviewee, is another possibility. While some legal scholars and the U.S. Copyright Office are supportive of this approach, it does not appear to have been adopted by any federal court in a binding decision to date

One last scenario would be to treat the interview as a single work where the interviewer and interviewee collaborated as joint authors. If that were the case, both Woodward as the interviewer and Trump as the interviewee would own an undivided interest in the entire interview. This would allow them to either make joint decisions regarding exclusive use of the work, or would allow either of them individually to exercise non-exclusive control over the work without obtaining permission from the other owner as long as an accounting is provided to that other owner. While Trump specifically denies that it was his intent to create a joint work, he does include a claim for an accounting should the court adopt this approach. Again, like the dual approach, there do not appear to be any binding federal court decisions adopting this approach at this time.

 

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FIVE TIPS TO CREATE A GREAT LOGO FOR YOUR BUSINESS 

Your logo is the thing that oftentimes people first see about your company. It’s their first impression, so you want to make it a good one. If you look at companies like Apple, like McDonald’s, they have very recognizable logos that you’ve seen, and you associate with their product or their service. That’s what you want to design – something that’s memorable, something that’s lasting and makes a good impression. Apple’s trademark portfolio is reported to be worth nearly a trillion dollars as of 2022. Your branding and your logo are important to your company, and you want to take the time to do it right. Below are 5 tips and tricks to ensure that your logo is not only great for you and your business, but also protectable.  

 

TIP #1: ESTABLISH A BUDGET 

If you’ve looked online for someone to design a logo for your business, you’ve most likely seen prices ranging anywhere from $25 to $2,500. With logo designers, like attorneys and other businesses, oftentimes you get what you pay for. The ones on the lower end of that price range often times cut corners. They may not provide actual professional design work. Instead, they may just take some clipart from here and clip art from there, put some (very little sometimes) thought into it, and design your logo based on some things that are already publicly available. We’ve seen that happen here at Martin IP law group. Clients have come to us seeking protection for logos they paid someone to design, only to find out that the designer they hired to design their logo, took images from publicly available sites like iStockphoto and used that in their logo. The problem is, there’s no originality there, there’s nothing really that you can protect. And there’s nothing to differentiate you from other people because that mark and that that image is publicly available. Companies like iStockphoto have specific disclaimers on their site, saying that you cannot use these images as part of your logo, so you certainly cannot register them. If you hire a qualified designer, they’re going to know better, they’re going to design something on their own, and they certainly won’t take it from someone else.  

  

TIP #2: ESTABLISH A TIMELINE 

Designing a really good logo isn’t something that happens overnight. A claim to be able to give you a logo, at least one worth having, in 48 hours is not realistic. The designer needs to get to know you, and your business. They need to get to know your culture, so that they can design a logo that fits you and your business. So spend the time to sit down with a qualified designer and make that happen. We’re talking weeks or months, not just days or hours. So make sure you do it right.  

  

TIP #3: CHECK OUT THE DESIGNER’S PORTFOLIO 

Most graphic artists and logo designers are going to have a portfolio publicly or privately available where they can show you other work that they’ve done – other logos they created. Make sure to take a look and get a feel for what their style and effect is, and see if that matches your style.  

  

TIP #4: CHECK OUT THE REVIEWS 

Everybody has online reviews these days. That’s a good way to find out who they’ve worked for before and what these prior clients have to say about the process and working with that designer. 

  

TIP #5: MAKE SURE YOU OWN THE IP! 

Finally, you want to make sure that you own the intellectual property that’s created as part of this process. Make sure to document who owns the trademark and copyright for the logo, and get it in writing! It may be part of the designer’s standard contract language or something you put together that acknowledges that you own the IP, not the designer. Either way, make sure it gets put down in writing somewhere.  

A lot of people go online to have their logo designed, through sites like Upwork, or Fiver, or other common sites where you can go and you can contract somebody to design your logo. If you go to either Fiver or Upwork’s website, their Terms of Service, specifically state that it’s up to the agreement between the two parties – the designer and the purchaser (you) – to determine who owns the intellectual property. It also goes on to specifically say that the designer shall transfer or assign those rights to the purchaser, but ultimately there still needs to be a written agreement.  

Typically, when you pay someone else to design a logo for you, it will be considered a work for hire which you, not the designer, would own. But in that small fraction of cases where there is a dispute as to who owns it, having a written agreement will save you a lot of headaches, and money too!  

 

We have put together a handy checklist for you to use to ensure that you have not missed anything is designing your logo the right way. If you have any further questions about designing your logo, or protecting those rights, contact us here. We’d be happy to help! 

 

WORKING WITH FREELANCE LOGO DESIGNERS: A CHECKLIST

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Fractional IP Counsel – Is it right for your business?

Fortune 500 companies like Apple, Microsoft, and Google have teams of in-house intellectual property attorneys who constantly monitor and advise the company on how to identify and protect their ideas, inventions, and identity. The intellectual property of a small or medium sized business can be even more valuable to that company, but may not be extensive enough to justify a full-time, in-house intellectual property attorney on staff. Under our Fractional IP Counsel plans, your small to medium sized business will get the same or similar services as the Fortune 500 companies, albeit to a lesser extent based on your company’s needs, but for a fraction of the cost.

Intellectual Property is a huge asset that is often overlooked. It’s a big part of a lot of businesses, whether it be trademarks, patents, copyrights, or trade secrets. Whether you are a startup, small or medium sized business, or even a large business with an in-house general counsel who does not have expertise in IP law, your business would benefit greatly from one of our fractional IP counsel plans that can be tailored to your specialized needs.

Our Team works with you to provide proactive legal representation

One of the best benefits of hiring fractional counsel is that you are taking a proactive approach to risk management rather than a reactive approach. Instead of reacting to legal problems, you are working with an IP attorney and staff to prevent or mitigate future liability. Regardless of the size of the company, a reactive approach to dealing with legal matters increases the risk of future liability. A proactive approach can reduce the time and cost of dealing with legal matters.

Through our fractional counsel plans, we learn about your business, your goals, and your team to help you grow your company and develop legal strategies and plans that work for your company. Your fractional legal counsel is available to address your legal needs when you need a lawyer, not when a law firm can return your call. Our plans are customizable, so if your needs change, we can adjust the plan to grow with you.

Consistent and controlled cost for legal services

Our fractional counsel plans provide all of the legal services that your company needs for a set monthly fee. This allows small and medium sized companies to have the immediate access to legal counsel that has historically only been available to large companies with in-house attorneys. And by having a set monthly fee, your company has greater control over legal expenses and can budget for legal expenses much more effectively.

Free up your time to grow your business and save money on legal fees

Because our fractional counsel plans are proactive, legal emergencies rarely happen. When they do, you can rest assured that we will be there to handle them so you can continue to do what’s important – run and grow your business! Because the attorney is a part-time contractor, you control how much money you spend for ongoing legal services and what legal services are included in the contract.

Hiring a full-time in-house attorney with salary and benefits is cost prohibitive to many smaller companies. Hourly rates at law firms with attorneys experienced in handling complex intellectual property transactions can exceed $500 per hour. Hiring a part-time attorney with a flat-rate fee is less expensive than either option. And because we are contractors, not employees, you don’t incur the costs in providing comprehensive benefits.

Use Fractional IP Counsel to avoid the five most common mistakes businesses make in protecting their IP

Companies utilzing the traditional approach to hiring an outside IP attorney may ultimately obtain patents, trademarks or copyrights to protect their assets, but they are leaving a lot on the table in additional assets that could and should be protected. Issues concerning proper ownership and the best form of IP protection are often overlooked. Thinking global and monitoring competitors’ IP positions and portfolios are not often considered in the traditional approach. If you want to avoid the five most common ways in which companies fail to adequately protect their intellectual property, click here to download a copy of our FREE REPORT.

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Great Halloween Costume — But Does It Infringe? (Updated for 2022)

Halloween is one of our favorite holidays here at Martin IP Law Group. What’s not to like? Spooky decorations, apple cider, pumpkin carving and all of those creative costumes. Like other holidays in the United States, Halloween is big business for retailers. According to the National Retail Federation, total consumer spending this Halloween is projected to reach a new high of  $10.2 billion (up from the $9.1 billion in 2017 when this article first appeared in our blog), with 69% of Americans planning to partake in Halloween festivities. With all of that money at stake, it’s no surprise that retailers are increasingly seeking and enforcing the intellectual property rights associated with their Halloween costume designs. Copyright, trademark, trade dress and even patent protection exist for Halloween costumes. Does your costume infringe someone else’s intellectual property?

Creepy Copyrights

In general, Halloween costume designs do not qualify for copyright protection under US Copyright laws because, as clothing, they are considered to be “useful articles”. However, there are two exceptions where copyright protection has been found to apply to Halloween costumes, albeit in a limited way.

The first situation where copyright protection has been found to apply is for masks. In Masquerade Novellty v. Unique Industries, the court ruled that masks qualify for copyright protection because they broadly fall outside the “useful article”. This position was adopted by the U.S. Copyright Office with regard to registrability of masks in 1991. However, as is the case with any other work eligible for copyright protection, a mask must still have a certain required level of creativity to qualify for copyright protection. For example, in Don Post Studios, Inc. v. Cinema Secrets, Inc., a court has held that the iconic Michael Myers mask from the Halloween Movie Series, which by the way I will go out on a limb and predict that it doesn’t actually “End” this year, did not have adequate creativity as it was simply a mold of William Shatner’s head painted white.

Second, while functional elements of a Halloween costume (i.e., arm and neck holes) aren’t eligible for copyright protection, design elements that are “physically or conceptually separate” from the article can be protected. In 2011, SCG Power Rangers LLC had some limited success in a lawsuit against Underdog Endeavors, operators of MyPartyShirt.com, alleging copyright infringement of its Mighty Morphin Power Rangers costume. In 2017, the U.S. Supreme Court weighed in on the “useful article” debate in Athletica v. Varsity Brands. In a 5-2 decision, the Supremes extended copyright protection to cheerleading uniforms, calling into question copyright protection in the costume and fashion worlds. The majority opinion held that when a design can be “identified and imagined apart from the useful article,” it is eligible for copyright protection. Since the cheerleading designs could exist separately from the uniform—say, as a painting—they are subject to copyright protection.

Also, shortly before Halloween in  2017, Rasta Imposta, a New Jersey designer and manufacturer of Halloween costumes sued Kangaroo Manuafacturing (KMART) alleging that it’s Totally Ghoul Banana Men’s Halloween Costume infringed on Rasta Imposta’s copyrighted banana costume design, which was first introduced in 2001 and which K-Mart had previously distributed in its stores. The complaint alleged that K-Mart’s costume “has the same shape as the Banana Design, the ends of the banana are placed similarly, the vertical lines running down the middle of the banana are placed similarly, the one-piece costume is worn on the body the same way as the Banana Design, and the cut out holes are similar to the Banana Design.” In the 2019 decision Silvertop Associates Inc. v. Kangaroo Manufacturing Inc., the court applied the test outlined by the Supreme Court in Athletica and found that the combination of colors, lines, shape, and length (i.e., its artistic features) in Rasta Imposta’s banana costume’s were both separable and capable of independent existence, and thus were copyrightable.

Terrifying Trade Dress

Trade dress generally refers to characteristics of the visual appearance of a product or its packaging that signify the source of the product to consumers. Trade dress protection is intended to protect consumers from packaging or appearance of products that are designed to imitate other products – to prevent a consumer from buying one product under the belief that it is another. In order to make a case for trade secret infringement, a person is required to show that the trade dress is inherently distinctive or has acquired secondary meaning, and the junior user’s use of the allegedly infringing design would be likely to cause confusion among consumers. Rasta Imposta has also asserted claims of trade dress infringement against Kangaroo in that lawsuit.  While it would appear from the complaint that Rasta Imposta has a pretty strong argument that K-Mart’s new banana costume is designed to imitate their costume, it does not appear that the court addressed that issue in the Silvertop decision.

Thrilling Trademarks

A trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. Many Halloween costumes, particularly in the superhero arena, depict symbols and/or designs that are protected by the Lanham Act. Most notably, companies like DC Comics (Superman, Batman, Wonder Woman, Green Lantern) and Marvel (Captain America, Iron Man, Thor, Spider Man) use trademark law to protect their comic book characters, symbols and indicia. The primary issue in considering trademark infringement is whether there is a likelihood of confusion as to the source of the goods. Thus, if you are in the business or making or selling costumes, the unauthorized sale of a Batman costume, for example, would likely constitute trademark infringement as the customer would likely believe the costume was somehow endorsed or at least authorized by DC Comics. On the other hand, simply wearing you home made superhero costume would not likely constitute infringement absent some other representation that you are acting on behalf of the trademark owner.
Where a mark is so recognizable that it has acquired “famous mark” status, even in the absence of a likelihood of confusion, a claim could be made that a person wearing a home made or unauthorized costume bearing a trademark is diluting the distinctiveness of the mark. Dilution is the unauthorized use of a strong or famous mark in a way that weakens the distinctiveness of the mark or tarnishes it.

Some costume sellers like to see just how close they can come to infringing on the big Hollywood studio charicatures without being sued for infringement. Take for example the “Juice Demon” costume shown in this photo. Warner Bros. Entertainment owns several registered trademarks to the name Beetlejuice, including Registration No. 4,863,369, which covers the use in “Clothing for men, women and children… and masquerade and Halloween costumes and masks sold in connection therewith”. Clearly, had the seller of the costume shown in this photograph named the costume “Beetlejuice”, there would be a clear cut case of trademark infringement. However, by using the term “Juice Demon” instead, a case of trademark infringement is less clear. In that case, as will all cases of trademark infringement, the ultimate question is whether there is a liklihood that consumers will be confused as to the source of the product.

Petrifying Patents

A limited number of Halloween costumes are also subject to patent protection. U.S. Patent No. 6,904,612 issued to Chosun International is for a weather and climate adaptive Halloween costume. The owner of a patent has the right to exclude all others from making, using, selling, offering to sell or importing the patented invention. The claims of a patent, which appear at the end of the document, determine the legal scope of protection afforded to an invention. Properly drafted claims can provide broad protection resulting in a valuable asset to the owner, while poorly drafted claims can be like flushing money down the toilet.

So what’s a Ghoul to do?

Unless you are in the business of making or selling Halloween costumes, the chances that your costume would be considered an infringement is small. Still not sure? Still uncomfortable? Scared? Email us a picture of you in your Halloween costume and we will give you a FREE OPINION on whether your costume is infringing. Also, if you send us a photograph of your Halloween costume before November 4, 2022, you will be entered in a drawing to win a $50 gift card. Happy Halloween!

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WORKING WITH FREELANCE LOGO DESIGNERS: A CHECKLIST

• According to U.S. Copyright Law, the freelancer initially owns the copyright to the work (logo) that was created for you.

• Ownership of the copyright does not automatically transfer to you just because you paid the freelancer to design the logo.

• If you hired the freelancer through an online platform such as Fiverr or Upwork, check the platform’s terms and conditions to see if it addresses who owns the copyright to the logo.

• Even if the platform’s terms and conditions state that you own the copyright in the work, at a minimum, get confirmation of this in writing (i.e. email) from the freelancer. Best practice is to include a clause to transfer ownership of the work product and copyright to you in a written agreement signed by you and the freelancer.

• If the platform’s terms and conditions don’t specifically state that you own the copyright, or state that copyright ownership is governed by agreement between the customer and freelancer, be sure to enter into a written service contract with the freelancer which includes a clause to transfer ownership of the work product and copyright to you.

• If you have questions or are uncertain as to issues of copyright ownership, contact an attorney that specializes in representing clients in intellectual property matters, including copyright law.

 

Post is for educational purposes only. If you are seeking legal advice, call or email us to set up a consultation today:
☎ 812-492-4478 📧 admin@ipsolutionslaw.com

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A BRIDGERTON TOO FAR – WHEN FAN FICTION BECOMES COPYRIGHT AND TRADEMARK INFRINGEMENT

On Christmas Day 2020, in the midst of a global pandemic, Netflix debuted “Bridgerton”, a new series based on a collection of novels by author Julia Quinn. The series is set in Regency-Era London during the social season, and revolves around the fictional Bridgerton family. The show got generally good reviews in its first season, and in it’s second season became a worldwide sensation. As with anything or anyone famous these days, this resulted in a number of fan pages and “tributes” on social media sites. Among those was a TikTok tribute by started by fans Abigail Barlow and Emily Bear in early 2021. That fandom grew into a 15 song album, The Unofficial Bridgerton Musical, which was released in September 2021 and won a Grammy Award for best musical theater album in 2022. The songs on that album include verbatim lyrics, plot elements and scenes and characters that are lifted from Netflix’s Bridgerton series.

Then, on July 26, 2022, Barlow and Bear performed a live, for-profit stage show entitled “The Unofficial Bridgerton Musical Album Live in Concert” before a sold out audience at the Kennedy Center in Washington, DC. Three days later, Netflix filed suit alleging copyright infringement and trademark infringement in that Barlow and Bear have “taken valuable intellectual property from the Netflix original series Bridgerton to build an international brand for themselves.”

There can be little argument that the Unofficial Bridgerton Musical album and the live performance are derivative works based on the copyrighted Bridgerton series. Likewise, Barlow and Bear’s use of the term “Bridgerton” in its title, absent some other justification, is clearly a violation of Netflix’s trademark rights, notwithstanding the use of the word “Unofficial”. To hold otherwise would be akin to Ricky Bobby’s argument that he could say whatever he wanted so long as it was prefaced by “with all due respect”.

On it’s face, this would appear to be an open and shut case of copyright and trademark infringement. However, there are at least three legal theories upon which Barlow and Bear could prevail – fair use, latches and estoppel.

Does the Unofficial Bridgerton Musical constitute “Fair Use”

The doctrine of fair use permits limited use of copyrighted material without having to first acquire permission from the copyright holder. Fair use is often applied where the subsequent work is being used for purposes such as criticism, commentary, news reporting, teaching, scholarship or research. Four factors must be considered in determining whether the fair use exception applies:

  • The purpose and character of the use, including whether such use is of a commercial nature or is for non-profit educational purposes;
  • The nature of the copyrighted work;
  • The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
  • The effect of the use upon the potential market for or value of the copyrighted work.

While no one factor alone is determinative, the first and fourth factors are generally given the most weight. Looking at the first factor, the fact that the live performance was for profit makes it less likely to qualify as fair use. Unless the live musical performance can be considered “transformative” – a use that adds something new, with a further purpose or a different character”, the first factor is likely to weigh heavily in favor of Netflix. With regard to the fourth factor, Netflix alleges that the live performance adversely affects its ability to profit from its own planned release of a live event entitled “The Queen’s Ball: A Bridgerton Experience.” Given the commercial nature of the live performance, it is difficult to imagine a court siding with Barlow and Bear on a fair use defense.

Laches and Estoppel – Did Netflix waive its right to object to continued and/or further use?

Even according to the complaint filed by Netflix, they took little more than token efforts to stop the infringing actions of Barlow and Bear for more than a year and a half. The doctrines of laches and estoppel provide for the denial of claims of infringement where the claim is not acted on in a timely manner.

When asked about the impending release of the Unofficial Bridgerton Musical Album in a September 2021 interview, Barlow stated “Ask and you shall receive. Netflix was very, very supportive”  suggesting that Netflix may have given permission. Netflix’s own complaint admits that they knew about Barlow and Bear’s Bridgerton inspired TikTok posts as early as December 2020. Although Netflix alleges that they repeatedly told Barlow and Bear that their works were not authorized, Netflix did nothing to stop those unauthorized works until after the live musical performance in July 2022. The complaint specifically states that Netflix believed that it “would be consulted before Barlow & Bear took steps beyond streaming their album online in audio-only format.” Is that an acknowledgement of permission? Time will tell.

How will the outcome of this case affect fan fiction in the future?

If the case proceeds to trial, which is rare in intellectual property litigation, the court’s decision could have a significant affect on fan fiction activities in the future. If the court sides with Brown & Barlow and finds that the doctrines of laches and estoppel prevent Netflix from asserting claims of copyright and trademark infringement, you can expect movie and music producers like Netflix to be far more aggressive in pursuing posts on TikTok and social media that make unauthorized use of their materials. On the other hand, if the court rules in favor of Netflix, there may be a chilling effect on fan fiction posts on social media in the future. While this may better protect the intellectual property interests of companies like Netflix, the support from fan fiction posts is certainly good for their brand too. In the end, the best interests of both parties is likely better served by maintaining the status quo rather than having the courts draw a line in the sand that may not be good for either.

 

 

 

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HOW OHIO STATE WAS ABLE TO TRADEMARK “THE”

If you have ever watched an NFL football game on TV, you have probably heard a player introduce himself as having played college football at “The” Ohio State University. Earlier this week, the United States Patent & Trademark Office granted a US Trademark Registration for THE to The Ohio State University. It seems strange that a trademark could be granted for what is probably the most common word in the English language. Five of the first 72 words in this article are “the”.  Have I just committed five acts of trademark infringement? “The” answer is a resounding “no”. Rights granted to words by the U.S. Trademark Office are limited to the specific goods and/or services specified in the application. As such, it is not unusual for the same word to be registered as a trademark by multiple parties for different goods and services. In fact, I predict that you will see another company be granted a trademark for “The” before the end of 2022. The primary issue is whether such multiple registrations create a likelihood of confusion as to the source of the product or service.

The trademark registration for “The” was not just granted without a fight. Ohio State had to overcome two obstacles on their way to registration. For one thing, they were not the first party to file an application to register “The” in connection with clothing. Fashion designer Marc Jacobs filed his application to register “The” for a line of clothing on May 6, 2019 – three months before Ohio State filed it’s application. Also, the way in which Ohio State originally proposed to use the mark was deemed by the examining attorney at the USPTO to be ornamental, and not indicative of the source of the clothing, which is required for a word to function as a trademark.

HOW CAN TWO TRADEMARK REGISTRATIONS FOR “THE” BE GRANTED FOR CLOTHING?

Ohio State’s trademark registration for “The” for use on and in connection with clothing in Class 25 was granted on June 21, 2022. Marc Jacobs’ trademark application for “The” for use on or in connection with clothing in Class 25 was allowed on October 5, 2021, and will issue as a trademark registration after Jacobs shows proof that he is using the mark in commerce and files a Statement of Use. It is very unusual for the same word or phrase to be registered by two different entities for goods that are so closely related. A closer look at the history of each of “The” applications, however, provides a relative simple answer – the parties agreed that both marks could be registered and that the granting of such rights would not create confusion.

A suspension notice was originally issued in Ohio State’s application. Suspension notices are commonly issued when there is another pending application that would pose grounds for refusal if it were registered as a trademark. So the USPTO suspends the later filed application pending the outcome of the earlier filed one. If the earlier filed application is granted and a trademark registered, the USPTO will usually reject the later filed application at that time. However, in this case, Ohio State intervened in Jacobs’ application by filing a notice of opposition during the processing of Jacobs’ application. After a trademark application has been allowed, but before a registration issues, it is published for opposition in the Official Gazette. That begins a 30 day period where any interested party may file to oppose registration of the mark if such registration would adversely affect use of their own similar mark.

After nearly a year of negotiations, Ohio State and Jacobs entered into a Concurrent Use Agreement in August 2021. A Concurrent Use Agreement is often used by trademark owners to define the line between each other’s markets, and specifically allows for both marks to proceed to registration. In this case, Ohio State amended its original description of the clothing sold under its mark to include language that it only applied to clothing “being promoted, distributed, and sold through channels customary to the field of sports and collegiate athletics”. Similarly, Jacobs amended his original description to limit his trademark to clothing “being promoted, distributed, and sold through channels customary in the field of contemporary fashion”. The Concurrent Use Agreement almost certainly further provided that the opposition would be dismissed, that neither party would seek to oppose or cancel the other’s mark, and that each party specifically consented to the registration of the other party’s trademark. By submitting the agreement to the USPTO, Ohio State was able to overcome the objection to registration of its mark based on the earlier filed application of Jacobs.

ORNAMENTAL USE VS. TRADEMARK USE

Ohio State’s original application was also refused because THE as used on the specimen submitted with the application was deemed to be “merely a decorative or ornamental feature of applicant’s clothing and, thus, does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” The size, location, dominance, and significance of a mark as used on the goods are all relevant factors in determining the commercial impression of the applied-for mark. With respect to clothing, consumers may recognize small designs or discrete wording as trademarks, rather than as merely ornamental features, when located, for example, on the pocket or breast area of a shirt. Consumers may not, however, perceive larger designs or slogans as trademarks when such matter is prominently displayed across the front of a t-shirt.

Original Specimen

 

Substitute Specimen

 

In Ohio State’s application, the originally submitted specimen showed the applied-for mark, THE, located directly on the upper-center area of the front of the shirt, where ornamental elements often appear. Furthermore, the mark was displayed in a relatively large size on the clothing such that it dominates the overall appearance of the goods. As such, THE application for registration was refused as it appeared to be used in a merely decorative manner that would be perceived by consumers as having little or no particular source-identifying significance. In other words, consumers would view THE as used on the t-shirt submitted with the application as a decorative or ornamental feature of the shirt, rather than as a trademark to indicate the source of the t-shirt and to distinguish them from others.

Ohio State later submitted a substitute specimen in an attempt to overcome the refusal. As you can see from the photo, the substitute specimen no longer depicted THE in big, bold letters on the front of the t-shirt. Rather, it was depicted on the inside collar area of the shirt where labels denoting the maker/source of the shirt is commonly found. The substitute specimen satisfied the examining attorney at the Trademark Office, and the refusal was withdrawn. As an aside, it is worth noting that when it submitted the substitute specimen, Ohio State did not amend it’s originally alleged date of first use of August 2005. If, as I suspect, they were not using THE in the manner depicted in the substitute specimen in August of 2005, the registration may be susceptible to challenge.

“THE” CONCLUSION

So that is THE story about how THE Ohio State University was granted a U.S. Trademark Registration for THE. Anyone out there want to try and register “A”? If you do, or if you have another common term that you want to register for a product or service, or if you just want to protect your brand before someone else like Marc Jacobs files for protection first, contact us. We are here to help you with all of your branding concerns.

 

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CRAFT BEER NAMES WORTH PROTECTING

To celebrate Craft Beer Week, we thought that we would post some of our favorite names for craft beers. But before we do that, lets take a look at how the industry has grown since our last post on beer names in 2015 (Where have all the good craft beer names gone?). According to the Brewers’ Association, as of 2021, there are 9,124 brew pubs, tap rooms, microbreweries and regional breweries in the United States. That is more than double the number (4,225) in 2015.

In 2015 we questioned whether, with such explosive growth, brewers could continue to come up with new, distinctive names for their breweries and their beers. As you might have guessed, we were dead wrong. With more brew pubs, breweries and tap rooms, we have been exposed to more new and creative names for beers and breweries. A recent search of the records of the US Trademark Office revealed over 63,000 active registrations and published applications for beer names alone. This number is up from the 22,000 we found in 2015. Registration of your brewery and beer names is vital to protecting your brand and to prevent others from using the same or similar names in a way that may confuse your customers.

It looks like brewers are not only running out of names for their beers, but they are getting more creative. And some of the more savvy brewers are registering their beer names to protect their brand. Here are some of our favorites:

10. HOPOPOTOMUS, Big Rock Brewery, Calgary, Alberta. A hazy and full bodied Pale Ale with notes of ripe mango, guava and tropical fruit coming from the hop varieties and Kviek yeast.

9. HOPPY ENDING PALE ALE, Palo Alto Brewing, Palo Alto, CA. U.S. Trademark Registration No. 4,723,684.  A great way to end the night!

8. GOATMEAL STOUT, Turoni’s Pizzary & Brewery, Evansville, IN. Every week, local goat farmer Dennis Brenner picks up our spent grain and hauls it back to his farm in Princeton, Indiana. The grain is then drained and served to his stock of Billy Goats. This partnership keeps our grain waste program environmentally sound, and those goats don’t even know they’re on our payroll. You’ll never meet some of the most important members of our team, but at least you can drink to them!

7. WEE MAC, Sun King Brewery, Indianapolis, IN. U.S. Trademark Registration Nos. and 4,064,657 and 4,176,639. A Scottish-style Ale is an enticing and malty brown ale with caramel, cocoa, and hazelnut character balanced with toffee undertones. Also, a personal friend of mine claims the beer was named after her. Not sure if I believe her or not?

mockups-design.com

6. POLYGAMY PORTER, Wasatch Brewing Co., Salt Lake City, UT. U.S. Trademark Registration Nos. 4,345,494 and 4,253,333. Why just have one? Polygamy Porter is a smooth, chocolatey, easy-drinkin’ brown porter that’s more than a little naughty. Take some home to the wives!

5. SEXUAL CHOCOLATE, Foothill Brewing, Winston Salem, NC. A cocoa-infused Russian Imperial Stout, brewed with responsibly-sourced organic Peruvian cocoa nibs. Big chocolate aroma with notes of espresso, blackstrap molasses, dark sweet toffee and dark fruit.

4.DRIVER PICKS THE MUSIC, Myriad Brewing, Evansville, IN. A crisp tangerine wheat.

3.COCOMUNGO, 3 Floyds, Munster, IN. Behold the legend of Cocomungo. This devastating Imperial Stout was aged for over a year in Willett bourbon barrels with maple syrup and toasted coconut.

2.WHEELS GOSE ‘ROUND, Left Hand Brewing Co., U.S. Trademark Registration No. 5,686,348. Refreshingly tart & crisp ale with raspberry, a twist of lemon & a hint of salt. Enjoy this tart ale brewed to raise awareness for Multiple Sclerosis, a disease millions of people around the world fight today.

1.HAZED & INFUSED, Boulder Beer Company, Boulder, CO.  U.S. Trademark Registration No. 2,784,476. A unique infusion of floral hops creates a piney, earthy, floral ascent, belayed by a complex, dank, fruity backbone. The surprisingly nimble balance of this Hazy proves sometimes the original is the best route.

In researching this blog, we even came across AI beer naming tools! Like any other branding, it’s important to protect your more valuable brands by registering them with the U.S. Trademark Office. As you can see, some of the more creative and recognizable brands above have done just that! If you need help registering your beer name or brand, contact us, we can help – and we’d love to try your beer too!

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2022 Party Over its Out of Time – Does Andy Warhol’s Illustration of Prince Infringe Lynn Goldsmith’s 1981 Copyrighted Photo?

A Case of You – What Brought this About?

In 1984, artist Andy Warhol created a series of silkscreen prints and pencil illustrations depicting the musician Prince (Warhol’s illustration is shown above on the right). Warhol’s prints and illustrations were based on a photograph of Prince that was taken by photographer Lynn Goldsmith in 1981 in which she holds copyright (Goldsmith’s photo is shown above on the left). Goldsmith licensed the photograph to Vanity Fair magazine for use as an artist reference. Unbeknownst to Goldsmith, that artist was Warhol. Also unbeknownst to Goldsmith (and remaining unknown to her until 2016), Warhol did not stop with the image that Vanity Fair had commissioned him to create, but created an additional fifteen works, which together became known as the Prince Series.

The Question of U – What is Fair Use?

Copyright protection extends both to the original creative work itself and to derivative works, which it defines as, in relevant part, “a work based upon one or more preexisting works, such as a[n] . . . art reproduction, abridgement, condensation, or any other form in which a work may be recast, transformed, or adapted.”

The fair use doctrine seeks to strike a balance between an artist’s intellectual property rights to the fruits of his/her own creative labor and the ability of others to express themselves by reference to the original work. The statute provides a nonexclusive list of four factors that courts are to consider when evaluating whether the use of a copyrighted work is “fair use.” These factors are:
(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes;
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
(4) the effect of the use upon the potential market for or value of the copyrighted work.

The fair use determination is an open ended and context-sensitive inquiry, “not to be simplified with bright-line rules[.] . . . All [four statutory factors] are to be explored, and the results weighed together, in light of the purposes of copyright.”

Controversy -Transformative Work or Derivative Work?

While a determination of whether “fair use” exempts a work from infringement, this post, and the case involving the Prince Series, focuses primarily on the first factor – the purpose and character of the use. This factor requires consideration of the extent to which the secondary work is “transformative” or “derivative” in nature. In making this determination, one must consider “whether the new work merely supersedes the objects of the original creation, or instead adds something new, with a further purpose or different character, altering the first with new expression, meaning, or message.” The intent of the artist to create something of a different nature or character is not controlling.  Rather, one must consider how the secondary work may “reasonably be perceived” in relation to the original work.

Congress, in defining “fair use” in the Copyright Act, specifically recognized certain uses as being transformative. Criticism, comment, news reporting, teaching, scholarship, and research are all considered by statute to be “transformative” and thus not an infringement. The Supreme Court has further recognized parody as transformative in that it “needs to mimic an original to make its point”. In each of these situations, it is quite easy to see how the secondary work serves a manifestly different purpose from the original work itself.

The “transformative uses” listed in the statute are not exclusive. Courts have determined many secondary works to be transformative that do not fall into these enumerated categories.  For example, in another case similar to this one, a court considered secondary works that incorporated, among other materials, various black-and-white photographs of Rastafarians
from the primary work. In determining that at least some of the secondary works were transformative, the court observed that the secondary artist had incorporated the primary photographer’s “serene and deliberately composed portraits and landscape
photographs” into his own “crude and jarring works . . . [that] incorporate[d] color, feature[d] distorted human and other forms and settings, and measure[d] between ten and nearly a hundred times the size of the photographs.”

On the other hand, lets consider a film adaptation of a novel. Such adaptations commonly add a significant amount to their source material: characters are combined, eliminated, or created out of thin air; plot elements are simplified or eliminated; or new scenes are added to name a few. These modifications are further filtered through the creative contributions of the screenwriter, director, cast, camera crew, set designers, cinematographers, editors, sound engineers, and myriad other individuals integral to the creation of a film. Courts have long recognized that “[w]hen a novel is converted to a film . . . [t]he invention of the original author combines with the cinematographic interpretive skills of the filmmaker to produce something that neither could have produced independently.” Despite the extent to which the resulting movie may transform the aesthetic and message of the underlying literary work, film adaptations are almost universally considered to be derivative works rather than transformative. For instance, even though one familiar with his work can readily recognize the Godfather films as a product of Francis Ford Coppola, they nonetheless are still too closely based on the novel by Mario Puzo to be considered transformative.

Nothing Compares 2 U – Goldsmith’s Photo compared to Warhol’s Illustrations

One can see that in the case of the Prince Series, there is no clear cut answer.  Warhol’s secondary work cannot reasonably be perceived as commentary, criticism, parody, or any of the other recognized uses that are routinely considered transformative.  On the one hand, Goldsmith argues that the pose in which Prince is depicted in her photo bears a number of striking similarities to the pose in Wahol’s illustration – the angle, expression, even Prince’s hair style are “substantially similar”. Goldsmith further argues that in copying these aspects of her photo into his illustration, Warhol has failed to transform the meaning or message of the work into something different from the original. Goldsmith concludes that the Warhol illustration shared the same purpose as her photograph and retained its essential artistic elements, and therefore is not transformative.

Warhol, on the other hand, points to the removal of certain elements from the Goldsmith Photograph, such as depth and contrast, and embellishing the flattened images with “loud, unnatural colors” as transformative in portraying Prince as an “iconic” figure rather than the “vulnerable human being” depicted in Goldsmith’s photograph. While these changes clearly turn the work into something that is readily recognized as a work by Warhol, the appeals court considered this to be akin to the adaptation of a novel into a film. Just as Coppola’s adaptation of Puzo’s The Godfather was not transformative, even though it is readily recognized as a Coppola film, the court concluded that Warhol’s adaptation of Goldsmith’s photo was not transformative.

Sign O’ The Times – SCOTUS to make final decision

On March 25, 2022, the U.S. Supreme Court agreed to review the appellate court’s finding that the Worhol painting was not transformative. The Court could either side with the lower court finding that the Worhol work was transformative, or affirm the appeals court finding that it was not. In any event, the Court will almost certainly give some additional guidance on how to apply the fair use test to determine when such works do, or do not, qualify as a transformative use that does not infringe. The Court isn’t expected to hear the case until the fall term commences in October, so a decision won’t be made until probably sometime in early 2023. Stay tuned and we will provide updates when the case is heard and decided.  In the meantime, if you have issues or concerns regarding copyright infringement, contact us – we would be happy to help you!

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USPTO Adds New Tools for Brand Owners to Challenge Registrations and Applications

The Trademark Modernization Act, which took effect on December 18, 2021, added three new tools for brand owners to remove USPTO trademarks and applications based on inaccurate claims of use in U.S. commerce. The new tools, letters of protest, expungements, and re-examinations, provide a faster, more efficient, and less expensive alternative to a contested inter parties cancellation proceeding previously only available through opposition and cancellation proceedings before the Trademark Trial and Appeals Board (TTAB).

Letters of Protest

A Letter of Protest is a tool that allows a third party to give the USPTO evidence about the registrability of a trademark in a pending application that belongs to another trademark owner. The third party may point out potential issues with a trademark application and make a case for rejection of the application using a Letter of Protest, before a registration is ever issued. There is no limitation on the ground for refusal – any ground upon which an examining attorney could refuse registration can be asserted. The Director is required to act expeditiously on the letter – within 2 months of submission. The Director’s decision is final and non-reviewable, but an unsuccessful challenger can still raise the issue in another proceeding (opposition, cancelation, litigation).

Expungements

While Letters of Protest can be filed during the application phase, Expungements and Re-Examinations are meant to challenge marks that have already been registered.  Any party may request cancellation of some, or all, of the goods or services in a registration because the registrant never used the trademark in commerce with those goods or services. The challenger must request Expungement between three and ten years after the registration date.

To institute an expungement proceeding, the complaining party must conduct a “reasonable investigation” and supply evidence thereof showing that the registered mark was never used for the challenged goods and services. Upon finding of a prima faciecase, the Director will provide notice to the registrant. If no prima facie case is found to exist, the petition is dismissed.

Re-Examinations

Any party may request cancellation of some or all of the goods or services in a use-based registration on the basis that the trademark was not in use in commerce with those goods or services on or before a particular relevant date. For applications that were based on actual use, the relevant date will be the filing date of the application. For applications that were based on intent to use, the relevant date is either: the date that an amendment to allege use was filed; or the date that the deadline to file a statement of use expired, including all approved extensions of time. The challenger must request Re-Examination within the first five years after registration.

To institute an re-examination proceeding, the like an expungement proceeding, the complaining party must conduct a “reasonable investigation” and supply evidence thereof showing that the registered mark was not used in U.S. commerce as of the “relevant date.” The “relevant dates” at issue all involve sworn statements that the marks were being used in commerce. As such, re-examination proceedings aim to address registrations that were obtained through false statements.  However, re-examination proceedings also apply to registrations that include innocent misstatements or misunderstandings about what is required for “use” in commerce.

How Can Brand Owners Use These New Tools?

How will these new, more cost effective tools be utilized by brand owners? Here are a few scenarios that we anticipate:

Company A has come up with a Brand Name for its hot new product, and is really excited about the Brand Name.  Before launch, Company A commissioned a trademark clearance search to make sure that Brand Name was available for use in connection with the goods associated with the new product. Unfortunately, the search came back with a nearly identical registered mark that was registered for nearly identical goods four years ago. Company A, however, has been in business for years and has never seen any products offered in the marketplace under the registered mark.  Since the mark was registered four years ago, it falls within the time frame for either an Expungement (3-10 years after registration) or a Re-Examination (0-5 years after registration).  A good strategy would be for Company A to have its attorney conduct a “reasonable investigation” to determine if grounds exist for filing an Expungement or Re-Examination.  If an Expungement or Re-Examination is successful, the path for Company A to register Brand Name can be cleared.

Company B is the owner of Registered Trademark. Company B’s attorney employs a watch service to monitor for applications for marks that may conflict with its Registered Trademark.  The watch service identified a New Trademark Application that is similar to Company B’s mark and is used for some similar goods that Company B is considering expanding its Registered Trademark to cover.  Rather than waiting for the New Trademark Application to be examined and possibly approved for publication, Company B can file a Letter of Protest to present it’s case for refusal of the New Trademark Application before it may be approved for publication.

How Can We Help You?

If you are an attorney interested in learning more about the impact of the Trademark Modernization Act, Rick Martin is teaching a live video webinar on Detangling The Trademark Modernization Act on February 28, 2022 at 10:00 am CST.

If you are a brand owner trying to figure out how to best protect your brand, we are here to help. Contact us to see how we can use these new tools to help you strengthen and protect your valuable brand.

 

 

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