Copyright & Trademark Matters

Insights and Developments in Copyright and Trademark Law

OSPs: Are You Sure You Are Safely Within the DMCA Safe Harbor?

Posted in Copyright, Copyright Infringement, Digital Millenium Copyright Act, Safe Harbor

Written by: Susan Neuberger Weller

The Digital Millennium Copyright Act (DMCA), signed into law October 28, 1998, added Section 512 to the US Copyright Act limiting the liability of online service providers for copyright infringement. Basically, the law exempts from liability online service providers on whose sites third-party users store, post, or otherwise place various types of infringing material if the provider had no knowledge of the infringing activity, if it expeditiously removed the infringing material once the infringement became known to it, and if the provider did not receive a direct financial benefit from the infringing activity.  In order to benefit from these “safe harbor provisions” of the DMCA, a service provider must meet all the requirements of the law. One of these requirements is that the service provider must designate an agent to receive notifications of claimed infringements. The contact information for the designated agent must be sent to the Copyright Office and must be posted on the service provider’s website in a location accessible to the public. The one page forms created for this purpose can be found on the Copyright Office website, but service providers may use their own form as long as it includes all of the required information.  Complying with this designation of agent requirement is not rocket science. However, failing to comply may set off unnecessary and expensive fireworks. Continue Reading

U.S. Supreme Court Allows Pom Wonderful to Pursue Lanham Act Claims against Coca-Cola

Posted in Lanham Act, Litigation, Section 43(a), Trademark

Written By: Susan Neuberger Weller

Further to our April 23 post on the Pom Wonderful-Coca-Cola U.S. Supreme Court case, the  Court on Thursday June 12 issued an unanimous decision (with Justice Breyer taking no part in the consideration or decision of the case) reversing the Ninth Circuit  and holding that competitors may bring Lanham Act claims, like those brought by Pom, challenging food and beverage labels regulated by the FDCA. Continue Reading

Hershey Is Not So Sweet on Maryland Senator’s HERSHEY Campaign Logo

Posted in Color, Copyright, Copyright Infringement, Fair Use, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

When you think of The Hershey Company, you think of delicious chocolate candy bars, chocolate kisses, and a fabulous amusement park in Hershey, Pennsylvania. The company’s brown candy bar wrappers with the HERSHEY’S trademark prominently displayed on the front have been in use since, at least, 1905, and the company owns numerous US trademark registrations for this version of this mark for candy and other products. However, Hershey is not so sweet on a Maryland State Senator Steve Hershey’s chocolate-colored campaign signs which, it claims, bear a striking resemblance to its famous trademark and trade dress, and has filed suit against the Senator for trademark infringement and related claims. A side-by-side comparison of the Hershey trademark and Senator Hershey’s chocolate-colored campaign signs are displayed in the Complaint and in connection with an article in The Baltimore Sun newspaper. Continue Reading

OOHRAH! A Few Good Trademarks: The U.S. Military’s Trademark Campaign

Posted in Trademark, Trademark Infringement, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

Recently, there was an interesting article in the The New York Times discussing the current state of military trademarks. Many people might think that federal and state government entities and agencies cannot, do not, or should not own exclusive rights in trademarks used in connection with commercialized products and services. However, unless there is a statutory prohibition against ownership of trademark rights in government insignia  (as there are for certain government seals ), government entities have just as much right to own trademarks as does any private citizen. Continue Reading

Counterfeit Certification Marks: How to Certify that the “Certified” is Certified

Posted in Certification Marks, Counterfeits, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

We have all seen or heard about them without, perhaps, knowing what they were or for what they stand: the GOOD HOUSEKEEPING seal of approval, UL certified, ENERGY STAR rated, GROWN IN IDAHO potatoes,  HARRIS TWEED, and many, many more. They are called certification marks and they fall within the province of trademark law. Certification marks are words, slogans and/or logos licensed by their owners to be used on products or in connection with the advertising of services offered by third parties which meet standards set by the certification mark owner. Their purpose is to inform the public that the products or services certified meet certain minimum quality standards established by the owner/certifier, to ensure a higher level of consumer protection and safety.

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Pom Wonderful and Coke in a Juicy Battle at the U.S. Supreme Court

Posted in Section 43(a), Trademark

Written by: Susan Neuberger Weller

On Monday April 21, Pom Wonderful LLC, the maker of a line of POM WONDERFUL® pomegranate juice products, www.pomwonderful.com, and The Coca-Cola Company, which sells MINUTE MAID® juice products, www.minutemaid.com, battled it out before the U.S. Supreme Court on the issue of whether a private party can bring a claim under  Section 43(a) of the Lanham Act challenging a product label that is regulated under the Food, Drug, and Cosmetic Act. US Supreme Court Case  No. 12-761. In the proceedings below, the Ninth Circuit unanimously affirmed the district court’s grant of partial summary judgment to Coca-Cola ruling that Pom’s Lanham Act claim was barred by FDA regulations to the extent it challenged Coca-Cola’s’s label on its MINUTE MAID® Pomegranate Blueberry Flavored Blend of 5 Juices beverage product.

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Houston, We Have a Problem: City Petitions the US Supreme Court to Register Its Official Seal as a Trademark

Posted in Color, Emoticon, Legislation, Product Configuration, Section 2(b), Trademark, Trademark Prosecution, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

The City of Houston, Texas has filed a Petition For Writ Of Certiorari with the Supreme Court of the United States asking the Court to interpret Section 2(b) of the Lanham Act to determine whether it prohibits a government entity from federally registering its own flag or coat of arms or other insignia as a mark with the US Patent and Trademark Office.  The City of Houston v. Acting Director, U. S. Patent and Trademark Office, 13-784 (S.Ct. December 30, 2013). As was noted in our previous post on emoticons, US trademark law prohibits the registration of marks which fall into many different categories, including any mark which “consists of or comprises the flag or coat of arms or other insignia of the United States, or of any State or municipality, or of any foreign nation, or any simulation thereof.”  The original Examining Attorney for Houston’s application for registration, and the US Trademark Trial and Appeal Board and the US Court of Appeals for the Federal Circuit in subsequent appeals, all agreed that the “plain meaning” of the statutory language prohibited such registration. Does this make sense?

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Can an Emoticon be Protected as a Trademark?

Posted in 15 U.S.C. 1051(b), Emoticon, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

Gap Inc. and Diane Von Furstenberg’s company DVF Studio have asked the federal court in the Southern District of New York to rule on whether the heart emoticon <3 can be protected as a trademark. Their declaratory judgment complaint filed against VeryMeri Creative Media Inc., 13 civ 8943 (December 17, 2013),  contends that VeryMeri cannot claim intellectual property rights in its stylized heart logo, which consists of or incorporates the <3 emoticon, since that logo/emoticon is “widely used in connection with apparel and related products,” since the stylized heart logo “is nothing more than a commonly used and well-known ‘emoticon’ or metacommunicative pictorial representation of a heart design,” and because “no one entity can be said to have the exclusive right over all forms of this [emoticon heart] design.” Continue Reading

Sarah Palin and North Jersey Media Group Battle Over “Fair Use” of Famous 9/11 Photo

Posted in Copyright, Fair Use

Written by: Susan Neuberger Weller

The iconic “Raising the Flag at Ground Zero” photo of firemen raising an American flag on September 11, 2001, which appeared on the cover of The Record newspaper and other newspapers on September 12, is at the heart of a lawsuit filed in Federal District Court in New York. The Complaint, filed by the owner of the copyright in the photograph, claims copyright infringement and false designation of origin for the unauthorized reproduction of portions of the photograph on the website for Sarah Palin’s federally registered political action committee, www.sarahpac.com,  and on her Facebook page, www.facebook.com/sarahpalin. Continue Reading

Willful Infringement of Copyright in Haitian Earthquake Photographs Cost AFP and Getty $1.2 Million

Posted in Copyright, Copyright Infringement, Damages, Digital Millenium Copyright Act, Safe Harbor, Statutory Damages

Written by: Susan Neuberger Weller

A federal jury in New York has found Agence France-Presse and Getty Images Inc. willful in their infringement of Daniel Morel’s copyrights in eight photographs of the 2010 Haiti earthquake, and ordered them to pay damages of $1.2 million. The court had already found AFP  liable for direct copyright infringement on summary judgment, but sent to the jury for disposition the issue of whether Getty’s affirmative defenses vitiated any liability for infringement. The jury was also asked to decide whether any infringement by either Defendant was willful. In addition, the jury awarded Morel $20,000 after finding that the two Defendants also violated the Digital Millennium Copyright Act.

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