Copyright & Trademark Matters

Insights and Developments in Copyright and Trademark Law

The Latest Keyword Advertising Battle: The 10th Circuit Finds No Infringement Based on Use of Another’s Trademark to Generate Sponsored Advertisements

Posted in Google Adwords, Keyword advertising, Trademark Infringement

Written by: Jamison Arterton

Over the past few years, numerous trademark infringement suits have been filed over keyword advertising.  Last month, the 10th Circuit weighed in on this subject, issuing a decision with broad implications.  In 1-800 Contacts, Inc. v. Lens.com, Inc. , the 10th Circuit held that the use of another’s trademark to generate sponsored advertisements does not constitute trademark infringement.

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The (Best) Method to the Madness Behind Choosing a Company Name or Mark

Posted in Arbitrary marks, Descriptive marks, Fanciful marks, Genericide, Suggestive marks, Trademark

Written by: Susan Neuberger Weller

The Wall Street Journal ran a print article on July 18, 2013 titled “What’s Behind Those Quirky Startup Names?” in which the author Lindsey Gellman discussed the derivation behind unique startup names such as Mibblio, Kaggle, Shodogg, and Zaarly. One of the reasons for these types of names and spellings, she says, is the need for short, recognizable .com web addresses in a space where more mainstream domain names are no longer available. She also quite correctly notes that choosing a new company name “that’s a made-up word also helps entrepreneurs steer clear of trademark entanglements.” This is not only true when choosing a new company name, but is also true when choosing new trademarks and service marks. Why is that?

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An Ivy League Brand: Trademark Infringement in Academia

Posted in Litigation, Trademark

Written by Jamison Arterton

As any recent college graduate knows, upon graduation you join an alumni network that carries with it a certain perception.   While your GPA, field of study and extracurricular are key in obtaining that all-important first job, your tuition payments during your college stint have also bought you access to a brand.

Trademarks in academia are big business.  Academic institutions live and breathe by their brand reputation, particularly in the Ivy League.  Not surprisingly, these institutions are ever-ready to vigorously defend their trademark rights, particularly where a programmatic relationship is implied by such infringement. As the New York Times recently reported, Yale University took on Yale Academy, a small preparation school for college entrance exams with locations in suburban shopping malls in New Jersey, Pennsylvania and Delaware.  Yale Academy claimed that it chose its name by combining the names of its owners, Mr. Yang and Ms. Lee.  Notably, Yale Academy’s logo also contained the same blue and white color scheme as that of the famous university.  Needless to say, Yale University was not pleased about the coincidence and filed suit in Federal District Court in New Jersey in May.  The case recently settled and Yale Academy agreed to change its name to Y2 Academy in August, although it appears to have already begun the process of rebranding.  Yale Academy recently altered its name on its website and noted that “[d]ue to business expansion and Trade Mark registration, Yale Academy will be replaced by Y2 Academy from Sep. 1, 2013. But all academic systems, teaching staff, and ownership remain unchanged. Y2 stands for the 2nd generation of Yale Academy.”

Yale University is not the only Ivy League institution to take potential trademark infringement seriously – even where small-time institutions are involved.  Harvard University has previously successfully challenged academic institutions in Korea and India carrying the Harvard name.

As noted in the recent New York Times article, while the Yales, Harvards and Browns of the world may have an easier time defending their trademark rights, academic institutions that share their name with the name of their location (e.g., Princeton University, Columbia University, Stanford University, etc.) have a more limited ability to protect their trademark rights.  While universities, such as Princeton University, have successfully protected their trademark rights in the past, such settlements often require the Ivy League institution to compromise.  For example, Princeton University previously entered into a settlement agreement with Princeton Review after challenging the test prep provider’s use of the Princeton name.

The bottom line is that, even in the Ivy League, a weaker trademark that contains a geographic or descriptive term limits a trademark holder’s ability to protect their mark and prevent its use by others.

Hells Angels and Toys “R” Us Settle “Death Head” Trademark Litigation

Posted in 15 U.S.C. 1051(b), Dilution, Fraud, Intent-To-Use Applications, Trademark, Trademark Infringement, Trademark Prosecution

Written by: Susan Neuberger Weller

When I think of the Hells Angels, what immediately comes to mind are  a notorious gang of men in leather on Harley-Davidson motorcycles, the 1960’s counterculture, and news reports of illicit activity. When I think of Toys “R” Us, what immediately comes to mind are Barbie® dolls, Candyland® board games, Fisher-Price® baby toys, and Lego® blocks. What doesn’t come to mind is Hells Angels suing Toys “R” Us for trademark infringement claiming that the toy retailer is selling toys bearing the Hells Angels federally registered “Death Head” logo without authorization. You can’t make this stuff up.

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RG3 and Common Law Trademark Rights: What You Don’t Know Can Hurt You

Posted in Common Law Marks, Trademark, Trademark Infringement, Trademark Prosecution, Trademark Searching, Trademark Trial and Appeal Board

Written by: Susan Neuberger Weller

 Following in the footsteps of many sports and entertainment celebrities, the Washington Redskins’ quarterback Robert Griffin III, through his company Thr3escompany LLC, filed a number of US trademark and service mark applications for various marks including his full name as well as his nickname RGIII, sometimes used as RG3. The applications seek registration for use of the marks on clothing and/or for various types of promotional and sponsorship services. The intent to use applications for the marks RG3 and RGIII sailed through prosecution and were published for opposition on Christmas Day last December. Alas, the holiday cheer did not last long once a motorcycle and ATV suspension service company in California called Research Group 3, Inc. opposed the RG3 application. Although the motorcycle company owns no federal trademark registrations of any kind, and did not file its application for the RG3 mark until after the publication of Mr. Griffin’s RG3 application, it claims prior, unregistered, common-law rights in the mark RG3 on clothing and likely confusion if a registration is granted to Mr. Griffin’s company. How can it do that?

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DOES A VALID COPYRIGHT EXIST IN THE SONG “HAPPY BIRTHDAY TO YOU”?

Posted in Copyright, Copyright Infringement, Music, Public Domain

Written by: Joseph M. DiCioccio

Ownership of a copyright in one of the most popular songs in the English language has recently been challenged in several lawsuits around the country.  At the heart of the dispute is whether the music publisher Warner Chappell legitimately owns a copyright in, and thus has the right to license (and enforce) the rights to, the ubiquitous song “Happy Birthday to You.”  Since it acquired a company in 1998 that claimed to own the rights in this song, some have estimated that Warner makes as much as $2M per year licensing the rights to use this song in various movies and television shows.  Two recently filed lawsuits are challenging this ownership claim and seek a ruling that the rights to the song have passed into the public domain.

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Trademark Protection in the European Community Expanded to 28 Countries

Posted in Trademark, Trademark Prosecution

Written by: Susan Neuberger Weller

It took eight years of negotiations, but Croatia will  finally join the  European Community effective  July 1, 2013. This is good news for those who  own or seek trademark and design protection through the European Community system since protection will now be expanded to cover  28 Member States. These member states will now include: Austria, Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia, Spain, Sweden, and the United Kingdom.

Copyright Infringement Damages Upheld in File Sharing Case

Posted in Copyright, Copyright Infringement, Damages, Litigation, Music, Statutory Damages

Written by: Susan Neuberger Weller

 The Tenebaum copyright infringement file sharing case, about which we first reported in an earlier blog, reached another milestone this week when the First Circuit upheld the jury’s $675, 000 damages award. Tenenbaum had been found liable for illegally downloading 30 songs and a jury awarded statutory damages of $22, 500 for each song infringed. The award was appealed on grounds that it was so large that it violated Tenenbaum’s constitutional right to due process of law.

 The court analyzed the function and purpose for statutory damages under the Copyright Act, which are to provide “reparation for injury” and  “to discourage wrongful conduct.” The court rejected Tenebaum’s argument that the amount of the award violated due process because it was not tied to the actual injury that he caused, stating that such an argument disregarded the intended deterrent effect of statutory damages. Moreover, the award of $22, 500 per song was only 15% of the maximum award possible for willful copyright infringement and even less than the maximum award for non-willful violations. Accordingly, the court held that the jury’s award did not violate the Constitutional right to due process and the judgment was affirmed.

Unless this decision is appealed to the US Supreme Court, this dispute is concluded. It is unlikely the Court would review any such appeal since review of similar cases have previously been declined.

Contributory Infringement and Copyrights:

Posted in Contributory Infringement, Copyright, Copyright Infringement, Litigation, Vicarious Infringement

If It Involves Your Customer, It Could be Your Problem Too

Written by: Susan Neuberger Weller

Right on the heels of our blog on trademarks and contributory infringement, comes a case in which the court refused to dismiss a claim against Amazon for sales by third parties of allegedly infringing photographs on its site. The case, Masck v. Sports Illustrated, et al., involves multiple claims against multiple parties for copyright infringement based upon the unlawful reproduction of a famous photograph of Desmond Howard taken on November 23, 1991 during a football game between the University of Michigan Wolverines and the Ohio State Buckeyes. Howard, after running back a punt for a Michigan touchdown, struck what is now known as “the Heisman pose” just before crossing into the end zone. Plaintiff Masck took a photograph of Howard in this pose and sent it to Sports Illustrated, which paid Masck for use of the photograph in a 1991 SI article about Howard, for which he was properly credited. The negative for the photograph was never returned to Masck.

Since that time, Masck became aware of many unauthorized uses of the photograph by various third parties, and eventually brought suit for copyright infringement and other claims. Included among those claims were claims for vicarious and contributory copyright infringement against Amazon for allowing third-party sales of infringing photographs on its site. Amazon moved to dismiss the claims on grounds that it had neither the ability to supervise the sale of infringing photos on its site nor an obvious direct financial interest in the sale, emphasizing that as an “e-commerce platform provider” through which thousands of sellers posted thousands of items for sale, it had no “practical ability” to assess which of those items may or may not be infringing.

As with trademarks, a claim for vicarious copyright infringement requires that the alleged infringer have the “right and ability to supervise the infringing conduct” and has “an obvious and direct financial interest in the infringement.” If these facts are demonstrated, liability may exist even in the absence of actual knowledge of the infringement. On the facts alleged in this case, the court dismissed the vicarious infringement claim for Plaintiff’s failure to demonstrate that Amazon had the ability to supervise the infringing conduct.

However, the court refused to dismiss the contributory infringement claim against Amazon. Contributory infringement occurs when one “with knowledge of the infringing activity, induces, causes or materially contributes to the infringing conduct of another.” Since the photographer Masck had specifically requested that Amazon take down the infringing merchandise, the court found that Amazon had knowledge of the infringing activity and yet continued to sell or allow the sale of the merchandise nonetheless. The court stated that selling the infringing merchandise is a material contribution to the direct copyright infringement so that the claim would not be dismissed.

The lesson here is never to ignore an allegation that you are in some way involved, directly or indirectly, with conduct considered to be an infringement of another’s intellectual property rights. Such a claim should be vetted by competent counsel so appropriate steps can be taken, if necessary, to address the issue promptly and thoroughly. Moreover, ignorance is not always bliss where a direct financial interest in activities subject to your supervision and control are present. We will keep you posted on further developments in this case.

Counterfeits, Trademark Infringement, and Contributory Liability: Your Vendors are Your Problem

Posted in Contributory Infringement, Counterfeits, Trademark, Trademark Infringement

Written by: Susan Neuberger Weller

 Counterfeit goods seem to be everywhere, and efforts to police their ubiquitous existence often seem futile. However, a recent decision involving counterfeit Coach products should inspire those who host vendors of counterfeit products to rethink their business strategy.

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