INTELLECTUAL PROPERTY Archives - Page 5 of 6

BRANDING, INTELLECTUAL PROPERTY, TRADE DRESS, TRADEMARKS

BRANDING MISTAKES – A JUICY TALE

A new seafood and sushi restaurant, The Juicy Crab in Owensboro, Kentucky made a big branding mistake in choosing its name when it opened for business recently.

BRANDING MISTAKES MAY LAND YOU IN BOILING WATER

According to an Owensboro Times article, almost immediately Facebook users were confused as to whether this Juicy Crab was affiliated with a chain of Juicy Crab restaurants based out of Duluth, Georgia. The owner of the Owensboro Juicy Crab apparently relied upon the availability of the name for registration with the Kentucky Secretary of State and the advice of a lawyer (presumably not one that specializes in Intellectual Property and Trademark Law) in adopting the name. Within days of opening, Juicy Crab Owensboro received a cease and desist letter from Juicy Crab Duluth alleging infringement of their U.S. Trademark Registration No. 5,139,205 for THE JUICY CRAB which is registered for use in connection with seafood restaurants.

TRADEMARK INFRINGEMENT AND BRANDING

The owner of a U.S. Trademark has the exclusive right to use the registered name in connection with the goods or services that it is registered for, and for goods or services that are the same or similar. Trademark infringement occurs when there is a liklihood of confusion as to the source of goods or services. Several factors affect whether there is a liklihood of confusion. The two primary factors are the similarity of the marks themselves and the similarity of the goods or services. In the case of Juicy Crab, the two names are identical and the services provide (seafood restaurants) are also identical. In addition, there appears to be actual confusion already and the Owensboro restaurant has only been open a short time. These factors point to an almost certain finding of infringement.

HOW TO AVOID BRANDING TRAPS

So what should a restaurant owner, or anyone opening a new business, do before choosing a name for their business? You should perform a trademark clearance search before registering the name with the state. The clearance search will help to ensure that the name is available for use as you intend to use it. You should engage a professional familiar with the resources needed to find all potentially blocking marks for the search. An experienced trademark attorney should render an opinion based on the search results. Had Juicy Crab Owensboro followed this path, the registration for Juicy Crab Duluth would almost certainly have been found. Knowing this, Juicy Crab Owensboro could have chosen a different name and avoided the conflict. No business owner wants to have to change their brand after the business is up and running. Customers may be confused by the name change and re-branding, which involves new designs, logos, signage, etc. can be expensive. It’s far better to properly vet a name BEFORE you hire someone to design your logo and branding. While there is a cost to doing so, it may just save you money, and your business, in the long run!

MARTIN IP CAN HELP

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake? Before you spend money on a logo or designs, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name. To protect your juicy brand and to avoid getting a crabby cease and desist letter, contact us to help with choosing, protecting and registering your brand.

ARTISTS, AUTHORS, COPYRIGHTS, INTELLECTUAL PROPERTY

STREET ART – CAN I TAKE A PHOTOGRAPH?

Street Art is artwork that is displayed on buildings, streets, walls, doors, windows, buses, trains, and on other public surfaces. When applied to walls or barriers, street art is commonly referred to as a mural. Street art traces its origins to graffiti and vandalism which were historically denounced as illegal and lacking in artistic merit. However, in the past decade or so there has been a significant shift of street art to the mainstream. One court recently noted that “street art” has “blossomed into far more than spray-painted tags and quickly vanishing pieces . . . painted by rebellious urbanites. In some quarters, it has become high art.”

COPYRIGHT INFRINGEMENT

Copyright laws exist to protect the rights of artists in their works. The issue of whether street art is protected under U.S. Copyright laws has recently been decided in favor of the artists. Copyright ownership gives the holder of the copyright the right to: 1) reproduce and make copies of an original work; 2) prepare derivative works based on the original work; 3) distribute copies to the public by sale or another form of transfer; 4) publicly perform the work; 5) publicly display the work, and 6) perform sound recordings publicly through digital audio transmission.

Because it is displayed in public areas, street art is easily copied by anyone with a camera or cell phone. Indeed, some public art, like that of mural artist Colette Miller, is specifically designed for the public to immerse themselves in by taking photos of themselves or “selfies” with the artwork. The act of photographing a copyrighted work does not itself constitute copyright infringement under the U.S. Copyright laws. However, the way in which that photograph is subsequently USED determines whether the photograph infringes the copyright owner’s rights.

THE “FAIR USE” EXCEPTION

Photographs of copyrighted street art that fall within the “fair use” exception do not constitute infringement and are permitted. Personal use of a photograph depicting copyrighted street art falls within this exception. Incidental use, where the artwork is virtually unrecognizable, appears for only a moment, or is not the main purpose of the image also fall within the fair use exception. In contrast, unauthorized commercial use resulting in income to someone other than the artist is generally prohibited.

The following illustrations provide some guidance on what is and is not appropriate.

Good of the Hive mural in Peterborough, New Hampshire

CASE STUDY #1

Buzz is a budding entrepreneur. He started a business offering pollination as a service, deploying boxes of bees on-premises to help farmers increase crop yields. On a recent trip to Peterborough, New Hampshire, Buzz came across The Good of the Hive mural by Matthew Willey. Buzz takes a photograph of the mural and decides to use it as the background photo for his business’ website. Because Buzz intends to use the photograph for commercial purposes, that use is infringement of Willey’s copyright.

Street Art - Greetings from Alaska mural

Greetings from Alaska mural in Anchorage, Alaska

CASE STUDY #2

Disheartened after his divorce, Sal is convinced by his friend Dean to quit his job, sell his belongings and buy an RV to travel the 50 states. On their travels, Sal and Dean encounter several “Greetings From” murals by Victor Ving and Lisa Beggs, including the Greetings from Alaska mural in Anchorage, Alaska. The design and beauty of each mural encountered captivates Sal and Dean. Sal takes a photograph of each mural and uploads it as his Facebook Cover Photo until encountering the next one. Although Sal is technically re-publishing the work, the use in question is personal rather than commercial. As such, it likely falls within the fair use exception. However, what if Sal were to later author a book based on those travels using the photographs? That would change the nature of the use to commercial and, without the author’s written consent, constitute copyright infringement.

CASE STUDY #3

Kylie is a social media influencer with 10 million followers on Instagram. Because she has access to a huge audience and can persuade others to act based on her recommendations, companies pay Kylie to post photographs of her using their product on Instagram. One of the companies that pays Kylie for posting images of her using their product is GreenCow Energy Drinks. GreenCow just released a new watermelon flavored energy drink. Kylie decides that it would be a good way to promote the new watermelon flavored energy drink by taking a selfie holding the drink in front of the Watermelon House by Wade Wilson (not to be confused with Deadpool) and Robert Banaszak in Washington, DC. Given the facts presented, Kylie’s use appears to be “commercial” rather than personal and would most likely constitute copyright infringement.

MARTIN IP IS HERE TO HELP

These are just a few examples of common situations that arise in the context of photography of street art. Every situation is fact sensitive. If you have concerns about copyright infringement relating to street art, contact us to see how we can help.

BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS, Uncategorized

DELTA SUES MARRIOTT FOR TRADEMARK INFRINGEMENT OVER DELTA HOTELS

Atlanta, GA – Earlier this month (March 2020), Delta Airlines filed suit against Marriott International for trademark infringement and dilution over Marriott’s use of DELTA trademarks as part of its U.S. expansion of it’s Canadian Delta Hotel chain. In court documents, Delta claims that “Marriott has embarked upon a calculated strategy of not only gratuitously using the name DELTA for its DELTA HOTELS chain of hotels in the United States, but also has adopted a sans-serif font and dark blue color scheme for its DELTA HOTELS business that closely mimics the font and color scheme used by Delta” (see photo). Delta further claims that Marriott has opened numerous “airport hotels” under the Delta Hotels name and is marketing that brand to airline travelers leading consumers to believe that the hotel chain is somehow associated with Delta Airlines.

Delta claims to be the leading airline in the world by total revenue, serving 200 million people every day. Delta also claims to be a leader in related travel services such as hotel bookings, credit card rewards programs, and hospitality services. Delta also partners with other companies in virtually every industry, including hotels, credit card providers, entertainment venues and stadiums, sports teams and charitable organizations. According to Kantar, in its 2020 BrandZ report on the Top 100 Most Valuable US Brands, Delta’ Airlines’ DELTA brand is among the 100 most valuable brands in the United States. In its complaint, Delta frames the dispute broadly as one involving the “travel industry” as opposed to airlines and hotels.

Marriott acquired the Delta Hotel chain, which had previously operated only in Canada, in 2015. After the purchase, Marriott began expanding the Delta Hotel chain into the United States. Marriott also made significant changes to the design of it’s logos – adopting a sans serf font, dispensing with a stylized, curling “D” design in favor of a straight “D” design, and changing to a darker blue color. Delta claims that all of these changes were intentionally designed to make the Delta Hotel marks much closer to the Delta Airlines marks, almost guaranteeing confusion when the Delta Hotels began operating in the United States. Since the purchase in 2015, Marriott has also opposed registration of several DELTA marks filed by Delta Airlines with the United States Trademark Office. Those oppositions continue to work their way through the system. Marriott has also filed over 70 applications around the world to register “DELTA” as a trademark on its own. All of this indicates that Marriott is taking a very aggressive approach to expansion of what to most in the United States is probably a previously unknown hotel chain brand.

Without the benefit of seeing Marriott’s answer to the complaint (it’s not due yet), it is difficult to understand what Marriott is thinking with its rapid and aggressive expansion of the Delta Hotel brand. With a multitude of other hotel brands under its umbrella, from Ritz Carlton and St. Regis to Fairfield and Townplace Suites, surely there is an existing U.S. branded hotel that aligns with the level of service provided by Delta Hotels in Canada. Marriott will almost certainly spend tens of thousands of dollars in attorney fees defending this suit, and if it loses, it could be rebrand, pay damages and possibly attorney fees to Delta. It will be interesting to see how Delta responds to the complaint.

Has someone misappropriated your brand? Are you starting out with a new business, venture, product or service and want to have some assurances that you won’t have to rebrand later due to an unseen infringement? We are here to help. Contact us to see how we can give you the peace of mind you deserve before you move forward.

BRANDING, INTELLECTUAL PROPERTY, TRADEMARKS

UNAUTHORIZED USE OF SUPER BOWL®️ MAY RESULT IN A PENALTY

With the “Big Game” between those football teams from Kansas City and San Francisco just days away, many people are gearing up to host or attend watch parties to celebrate the NFL championship game. You may have noticed in my opening that I didn’t use terms such as SUPER BOWL®️, CHIEFS®️, or 49ERS®️. That is because those names are federally registered trademarks. The improper and/or unauthorized use of those names could result in you being flagged for a penalty in the form of a cease and desist letter from the NFL, the Kansas City CHIEFS®️, or the San Francisco 49ERS®️ organizations. So what are the rules? When can I use SUPER BOWL®️, CHIEFS®️, 49ERS®️ and the plethora of other related words, phrases and images that are registered trademarks of these organizations?

As with many other legal questions, there is no simple yes or no answer to this question. Trademark infringement is defined as the unauthorized use of a trademark or service mark in connection with goods or services in a way that is likely to cause confusion in the minds of consumers about the source or sponsorship of the goods or services offered under the parties’ marks. It is the sponsorship aspect of infringement that is most likely to be at issue with regard to the use of SUPER BOWL®️ and related marks in that the use of those marks may give the impression that the event, goods or services are somehow endorsed or approved by the NFL. So technically, any use of such registered marks would constitute infringement.

However, Courts, as they often do, have recognized exceptions to this – the most notable of which is the “fair use” exception. The concept of free speech and nominative fair use falls under the fair use exception and allows for marks to be used for purposes of reporting, commentary, criticism, parody, and comparative advertising. That branch of the exception is what allows me to use these marks as a part of this blog.

Noncommercial use is also recognized as falling within the realm of fair use on the basis that the mark is not being used in connection with a good or service. Based on this exception, an individual hosting a watch party in his or her home for friends that are not being charged admission may use the marks on invitations and the like without infringing. On the other hand, commercial use by bars, restaurants and businesses that stand to make money off of the event, regardless of whether they charge admission, likely does not fall within the fair use exception and may subject the owners to a penalty for trademark infringement.

Over the years, the NFL has aggressively pursued infringers in this category by sending out cease and desist letters to those commercial establishments who are using the marks without authorization. This stands to reason since many other commercial enterprises pay big money for the right to use the marks in connection with their products and services. For example, Anheuser-Busch InBev reportedly pays in the neighborhood of $250 million a year to the NFL for Bud Light to be the official beer of the NFL. This deal includes rights to use NFL trademarks, including those related to the SUPER BOWL®️.

A gray area also exists between those two extremes – private and/or not for profit entities that wish to host their own SUPER BOWL®️ party. In 2007, John D. Newland of Fall Creek Baptist Church in Indianapolis received a cease and desist letter from the NFL after promoting a church sponsored event where they planned to show the game on big screen TVs and charge $3.00 for admission. Newland ended up cancelling the party to avoid further entanglement. Arguably, notwithstanding copyright issues involved with the rebroadcasting of the game on big screen TVs, had Fall Creek not charged admission for the party, the fair use exception would likely have applied.

Whether you are a CHIEFS®️fan, 49ERS®️ fan (or a PATRIOTS®️fan licking your wounds this year), we hope that you enjoy the game with family and friends safely wherever you are and without issues of trademark infringement. If you have questions about trademarking a name for a product or service, or if you are concerned that your use of a name, symbol or phrase may infringe on the trademark rights of someone else, contact us to discuss how we can help you avoid being penalized or sacked and score a touchdown for your team!

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, START UP, TRADEMARKS

DAMSEL IN DISTRESS – HOW CHOOSING THE WRONG NAME CAN COST YOUR COMPANY BIG TIME

Toward the end of last month, Maiden’s Brewery & Pub in Evansville quietly changed its name to Damsel Brew Pub. It was reported by River City Weekend that the change was made in response to a demand from the legendary rock band, Iron Maiden, giving Maiden’s Brewery & Pub until the end of 2019 to change the name of its establishment and beer products.

My first reaction upon hearing this news was disbelief. How could someone confuse a simple brewery and pub in Evansville, Indiana with a legendary rock band, or somehow be lead to believe that the brew pub was somehow affiliated with or endorsed by the rock band? Impossible! But after doing just a little bit of research, it appears that Iron Maiden’s demand is most definitely legitimate.

Iron Maiden Holdings Limited is the owner of at least six (6) U.S. Trademark Registrations for the name “Iron Maiden” as both standard character marks and in stylized forms. The earliest registrations date back to September 1984 and include the words “Iron Maiden” in the stylized form as shown below. Compare that to the stylized wording used by Maiden’s Brewery & Pub, and we begin to see the basis of the rock band’s complaint

U.S. Trademark Registration owned by Iron Maiden Holdings

Maiden’s Brewery & Pub Logo

The font used by Maiden’s Brewery & Pub appears to be nearly identical to the distinctive font in the “Maiden” portion of Iron Maiden’s registered mark. The 1984 trademark registrations were for entertainment services, namely live musical entertainment performances (Registration No. 1,308,370), clothing, namely T-shirts, jerseys, sweat-shirts, hats, jackets and leather wrist bands (Registration No. 1,307,146), and posters, souvenir concert programs, stickers, calendars, photographs and decals (Registration No. 1,306,972).

When determining trademark infringement, the penultimate question is whether there would be a likelihood of confusion as to the source of the product. In other words, would the consumer of beer and related products (such as koozies) sold by Maiden’s Brewery & Pub likely think that those products were somehow produced by, or sold with the authority of the band Iron Maiden. Given the striking similarity of the very distinctive font used in both instances, in our opinion, Iron Maiden did in fact have a strong claim that confusion was likely.

You might be asking yourself at this point why Maiden’s didn’t just drop the stylized font and keep the name Maidens for its brewery, beer and related products. Surely just the mere use of the word “Maidens” without the distinctive Iron Maiden font would not lead to confusion given the products covered by the three trademark registrations. If those were the only registered trademarks for the name Iron Maiden owned by the band, Maiden’s may well have been able to do just that. However, in 2010, Iron Maiden Holdings was granted U.S. Trademark Registration No. 3,840,031 for Iron Maiden (standard characters) in connection with a number of products and services, including beverage ware, bottle openers, portable beverage coolers, barware and coasters. Then, in 2014, Iron Maiden Holdings was further granted U.S. Trademark Registration No 4,848,431 for Iron Maiden (standard characters) for use in connection with beers and alcoholic beverages.

The owner of a federally registered U.S. Trademark has the exclusive right to use the mark in association with the goods or services for which it is registered and with any other goods or services that may create confusion as to the source of the product or service. For trademarks which are considered to be famous (one could argue that IRON MAIDEN falls within this category), infringing use may occur where the use occurs in relation to products or services which are not the same as or similar to the products or services in relation to which the owner’s mark is registered.

Maiden’s plight is an all too common occurrence. Many fledgling businesses either don’t know the risks associated with choosing a name or simply decide not to spend the money up front to properly vet the name before adopting and using it. This strategy is penny wise, but pound foolish. The business that chooses not to invest hundreds of dollars to ensure the name they want to use is available may end up spending thousand or more in damages for trademark infringement not to mention the costs of starting over with branding after Wasted Years building a brand that they may be forced to abandon.

Are you thinking of starting a business or have started a business and want to ensure that you don’t make the same mistake? Before you Run to the Hills, let us conduct a trademark clearance search to determine if there are any trademark issues with your business name. Contact us to iron out your trademark concerns before you become a damsel in distress.

ENTREPRENEUR, INNOVATION, INTELLECTUAL PROPERTY, PATENTS, START UP

PATENTED “WEED BREATHALYZER” COULD MAKE BILLIONS FOR CALIFORNIA COMPANY AS MORE STATES LEGALIZE THE USE OF MARIJUANA

Hound Labs, an Oakland, California company that was founded in 2014, has invented a breathalyzer machine that can detect recent use of marijuana by a person that may indicate that the person is impaired. With several states having already legalized or de-criminalized recreational use of marijuana, such a device would make our highways and roads safer by finding and punishing people who drive under the influence of marijuana in the same way as those who operate under the influence of alcohol. The availability of such a device may also lead to the rapid legalization of marijuana throughout the country.

The handheld device detects the presence of marijuana in a person’s lungs. Its operation is simple – for two minutes a person breathes into the handheld device, which is reportedly a billion times more sensitive than an alcohol breathalyzer. The breath that the handheld device collects in a cartridge is loaded into another machine for analysis. After about ten minutes, the machine will tell you whether there is marijuana in a person’s breath that would suggest that they have used marijuana recently. Testing the breath appears to be a far better indicator of whether someone is “high”, as it tests whether someone has used marijuana in the past two or three hours – the time that correlates with the greatest level of impairment. The device is also capable of detecting vaped or ingested cannabis.

Hound Labs has reportedly raised $65 million and has already secured nine U.S. Patents on its invention, with at least two more applications pending. The “weed breathalyzer” was recently featured in Newsweek and on The Today Show, where it was mentioned several times that the device will be expensive. But with law enforcement looking for better ways to keep the streets safe from impaired drivers, it’s a good bet that many will invest in the devices as marijuana use increases due to legalization. Assuming Hound Labs was able to secure relatively broad protection for the invention with its patents, it could be the sole supplier of “weed breathalyzers” to police departments across the country for the next 20 years! What a great example of how to use intellectual property to make money and grow a business while also providing a needed and valuable service to the community!

Do you have the next billion dollar idea? If so, you should consult with an attorney who specializes in intellectual property protection early in the process and develop a strategy to best protect your idea and business. We help clients do just that all the time. Contact us to see how we can help you.

BRANDING, ENTREPRENEUR, INTELLECTUAL PROPERTY, TRADEMARKS

FREE TACOS! LEBRON’S ATTEMPT TO TRADEMARK “TACO TUESDAY” FAILS

Here at Martin IP Law Group we love tacos so much that we celebrated Katlyn’s last day of work with our firm by hosting a taco bar, on a Tuesday no less! Thanks to the U.S. Trademark Office, we were able to use the name “Taco Tuesday” without fear of stepping on LeBron’s rather large feet.

In August, LBJ Trademarks, LLC, owned by LA Laker’s superstar LeBron James filed a U.S. Trademark Application attempting to register the phrase “Taco Tuesday” for a number of goods and services including downloadable audio/visual works, advertising and marketing services, podcasting services, and online entertainment services. On September 11, 2019, the USPTO rejected LeBron’s application to register “Taco Tuesday” on two separate grounds.

The primary grounds for refusal was that the phrase is a commonplace message that cannot function as a trademark or service mark to indicate the source of LBJ’s goods or services and differentiate them from the goods and services of others. The trademark examiner cited a variety of sources where “Taco Tuesday” was used to convey an “ordinary, familiar, well-recognized concept or sentiment.” Among the sources cited were several restaurants that used the phrase, and numerous newspaper articles showing wide usage of the phrase Taco Tuesday by various parties to express enthusiasm for tacos. In the end, the examiner concluded, correctly in my opinion, that Taco Tuesday conveys an informational message and would not be perceived by consumers as representing a particular party’s goods or services.

Registration was also refused based on the likelihood of confusion with U.S. Trademark Registration No. 5,505,122 for TECHNO TACO TUESDAY. In the refusal, the examiner referred to the two primary considerations for likelihood of confusion – the similarity of the marks and the similarity of the goods/services. Other than the omission of the word “Techno”, the marks are identical. The examiner concluded that, notwithstanding this difference, LBJ’s mark was “highly similar to the registered mark.” Further, the registered mark TECHNO TACO TUESDAY is registered for use in connection with a number of services including “advertising, marketing and promotion services”. As with the mark itself, the good/services need not be identical to find a likelihood of confusion. They need only be “related in some manner and/or if the circumstances surrounding their marketing are such that they could give rise to the mistaken belief that the goods or services emanate from the same source.” Here, the examiner concluded that LBJ’s services are “highly similar” to the registrant’s services.

It’s also interesting to note that US Trademark Registration No. 1,572,589 for TACO TUESDAY used in connection with restaurant services was issued in 1989 to Taco John’s and is still a registered mark today. One has to wonder if, given the comments of the examiner in LBJ’s trademark application, that registration has succumbed to genericide (see our X/x/x blog post for further description on that issue).

The ball is now in LeBron’s court. He has until March 11, 2020 to respond to the refusal to register Taco Tuesday. Maybe if he spent a little more time on the court, rather than looking for ways to get into court, he could lead the talented Lakers to another NBA title.

Do you have a phrase or slogan that is of value to you or your company? If so, it might be registrable as a federal trademark which gives you several competitive advantages. Contact us to see if your phrase or slogan is appropriate for protection.

ARTISTS, COPYRIGHTS, INTELLECTUAL PROPERTY, SONGWRITERS

L.A. Jury Awards $2.8 Million to Christian Rap Artist

Because of the time and expense involved, it is rare for any intellectual property infringement action to be tried before a jury. Recently, a case against pop star Katy Perry did just that, and resulted in a $2.8 Million verdict against Perry and her producers. The ruling is part of a growing trend of claims against big time pop song artists and is causing a great deal of concern among musicians and songwriters who are concerned that the ruling stifles creativity.

The lawsuit concerned alleged similarities between Perry’s 2013 hit song “Dark Horse” and a 2008 Christian rap song “Joyful Noise,” by Marcus Gray aka Flame. The lawsuit alleged that Perry and her collaborators copied Joyful Noise’s hook. The case was filed in 2014 and concluded with a seven day jury trial in July 2019. As discussed in our March 2019 Blogpost, a copyright plaintiff must register his or her work with the U.S. Copyright Office prior to bringing suit in Federal Court, something that Gray did by securing Copyright Registration No. PA0001900321 for “Joyful Noise.” It is worth noting that Gray did not secure copyright registration until June 3, 2014 — seven years after creation of “Joyful Noise”, and presumably very shortly before filing suit against Perry. One has to wonder if the jury’s award would have been even bigger had Gray registered the work within three months of its publication which would have entitled him to statutory damages of $150,000 per infringement, plus attorney fees.

In order to prevail in his copyright infringement claim, Gray also had to prove that Perry and her collaborators “copied” his work. Theoretically, two works could be identical and there not be infringement if the second work was independently created without the author having knowledge of the previous work. Not surprisingly, Perry and her collaborators claimed that they had never heard of “Joyful Noise” before writing and recording “Dark Horse.” But since most artists don’t live the isolated life of a Buddhist monk at the Key Monastery, factors other than an artists claim to have independently created a work must be considered. Most often this is done be the copyright plaintiff showing that the alleged infringer had access to the copyrighted work and that the works are substantially similar. Gray did so in this case by claiming that “Joyful Noise” had been widely distributed (more than 2 million YouTube views) and that there was a good chance the Perry, who started her career as a Christian musician, or her collaborators could have heard the song before writing and recording “Dark Horse.” In finding for Gray, the jury apparently believed that Perry had access and that the two works were substantially similar.

The question of substantial similarity in this case also raises significant concerns for songwriters. Western music is made up of only 12 notes, which means that there are nearly 9 trillion different combinations that can be made. A copyright plaintiff does not have to show that the works are identical, only that they are substantially similar. So if the combination of a series of notes are not identical, but close, infringement can still be found. My more experienced readers may recall the case of alleged copying by Vanilla Ice in his song “Ice, Ice Baby” of the bass line from Queen/David Bowie’s “Under Pressure.” Notwithstanding Ice’s infamous claim that his song was different because he added a beat between notes, the case was settled out of court and Queen/Bowie received songwriting credit. More recently, in 2015 Robin Thicke’s “Blurred Lines” was found to have infringed Marvin Gaye’s 1977 “Got to Give it Up,” resulting in a $7.3 Million verdict.
Many in the music industry claim that the musical elements at issue in the Perry/Gray dispute are generic. Perry’s attorney went so far as to claim that “they’re trying to own basic building blocks of music, the alphabet of music that should be available to everyone.” They argued further that the beats found in the songs are so common they can be found in tunes as standard as “Mary Had a Little Lamb.” One concern expressed is that such rulings will lead to increased litigation which they worry will stifle creativity. The concern appears to be well founded given the consistent rise in copyright infringement cases since the “Blurred Lines” ruling in 2015.

What do you think? Are the two songs “substantially similar”? Are the musical elements at issue generic? Check them out – Joyful Noise – and post your opinion!

INTELLECTUAL PROPERTY

LET FREEDOM (OF SPEECH) RING!

As we approach Independence Day 2019, it’s nice to find a story that involves both freedom and intellectual property. In a unanimous decision on Monday, June 24^th, the Supreme Court ruled that the USPTO cannot reject trademarks that it deems immoral or scandalous. This follows a similar decision from 2017 where the Court upheld the right of the Washington Redskins to register their name despite the provisions of the disparagement clause of the Lanham Act which authorized the PTO to refuse registration to, or even cancel a trademark if it disparages a substantial percentage of a distinct group of people, be it a racial, ethnic, religious or political group.

This case involved clothing designer Erik Brunetti who sought to register FUCT which he claimed was an acronym for Friends U Can’t Trust. Brunetti’s business, which includes street wear clothing with FUCT prominently displayed, was started in 1990. He sought to register the mark so that he could pursue action against counterfeiters who were costing him money. Despite several attempts over the years, Brunetti’s efforts to register his mark were rebuffed by the Trademark Office based on the provisions of the Lanham Act that bars trademark protection for immoral, shocking, offensive and scandalous words.

During oral arguments in April, the justices were very careful to avoid saying FUCT out loud, with Justice Elena Kagan, who wrote the majority opinion, commenting that “[t]he First Amendment does not allow the government to penalize views just because many people, whether rightly or wrongly, see them as offensive.” The justices unanimously held that the provisions of the Lanham Act banning “immoral” trademarks was overly broad in that it allowed the government to deny trademark registrations to messages that it did not approve.

However, on the “scandalous” provision, the justices were divided. The majority, led by Justice Kagan, found that the “scandalous” provision of the Lanham Act also violated the First Amendment guarantee to freedom of speech by disfavoring certain ideas. In so doing, Kagan pointed to a couple of instances where messages similar to those that had been approved were denied based on the ideas conveyed: “Say No To Drugs” granted protection, while “You Can’t Spell Healthcare Without THC” denied; “Praise The Lord” and “Jesus Died For You” granted, while “Bong Hits for Jesus” denied. The dissenters — Justices Roberts, Breyer and Sotomayor — would have upheld the statute by interpreting it narrowly to ban profane, vulgar and obscene messages from being registered as trademarks.

It is expected that the decision will result in a flood of new trademark applications for profane, racist and offensive messages. Even though the decision opens up the floodgates for a whole category of words that had previously been unregisterable, such words still cannot be registered in connection with goods or services that are associated with the common meaning of the mark. Such marks are considered to be generic and not registerable.

Have you been denied registration of your mark because it was considered to be “immoral” or “scandalous”? Or have you not pursued registration of a brand name because you feared that it would be denied in these grounds? If so, the time is now to file your application for registration. Contact us to see how we can help.

ARTISTS, AUTHORS, BRANDING, COPYRIGHTS, INNOVATION, INTELLECTUAL PROPERTY

USE OF AN UNAUTHORIZED IMAGE MAY COST YOU THOUSANDS OF DOLLARS

Nearly everyone if familiar with the old adage “a picture is worth a thousand words”. It refers to the notion that a picture often times can convey a message better than a written description, That adage is particularly true when it comes to creating your company’s image and brand, both through traditional means and online through websites, blogs, Facebook and other social media platforms and the like. But beware, the unauthorized use of “free” downloaded images may end up costing you thousands of dollars.

The creator of a photograph or other image has the exclusive right under the law to display, publish or distribute copies of their work and to authorize (or not authorize) others to do the same. The use of a copyrighted image without permission could result in a statutory damage award of between $750 (minimum amount by law) and $150,000 (maximum award for willful infringement). Statutory damages are available to the copyright owner even if they cannot prove that they suffered any actual damages as a result of the infringement!

The availability of statutory damages has, in part, contributed to the existence of copyright trolls – lawyers who scour the web for copyright infringement and then take a cut from defendants who pay a settlement to avoid being sued. These trolls utilize sophisticated computer programs that scour the web 24/7 for unauthorized copies of protected images, so it’s not a matter of “if” an infringing image will be detected, it’s a matter of “when”.

How to avoid paying a toll to the trolls

The simple solution is to create your own images and avoid downloading and using any images from the web. There are a number of graphics software available for download, either paid or free, that can accomplish this task if you have some design skills. Alternatively, you could pay for downloaded images from a site such as Getty Images or Adobe Stock, or reputable free sites such as Pixabay, Unsplash or Dreamstime. When going with one of these options, particularly with the free downloads, make sure to check the “License Information” page of the website to make sure that the license for the image you are downloading covers your particular use. Also, if the download requests or requires credit be given (see image above), make sure to add the appropriate credits to or near the image.

What if I receive a letter from a troll?

If you have already received a letter from a copyright troll demanding payment for an alleged copyright infringement, you should contact an attorney experienced in handling copyright matters immediately. Depending on your particular circumstances, there may be legitimate defenses to the allegations. Even if you are in the wrong, often times a skilled attorney can negotiate a lower settlement payment and potentially save you thousands, if not tens-of-thousands of dollars.

The attorneys at Martin IP Law Group are experienced in representing clients in copyright matters including allegations of infringement for all types of creative works, including images used on websites, social media and blogs. Contact us today for advice on how to avoid paying tolls to trolls, or negotiating a reduction in the toll so you can go about your business.