Film lawyer Gordon Firemark and music attorney Tamera Bennett co-host the Entertainment Law Update podcast. Episode 44 highlights include the “Happy Birthday” public domain litigation; Marvel comics copyright termination lawsuit; and Harper Lee’s resolution on ownership of “To Kill A Mockingbird.” Read more and listen here.
UPDATED 10/7/2013 – The USPTO is currently unable to process credit cards. If your filing deadline is today, you must use an alternative payment/filing method.
ORIGINAL POST – The U.S. Copyright Office shut down at 12:01 am October 1, 2013. According to their website, new Copyright Applications may be filed via the online eCo system. We will assume that applications will not be processed until the government reopens. Registration dates should not be impacted as the effective date of registration is the date the Copyright office receives the application, filing fee and deposit material. If at all possible, use the eCo system to upload your deposit to insure the date of receipt of the deposit.
The US Patent and Trademark Office has reserve funds to operate for approximately 4 weeks. At this time processing of documents should continue uninterrupted. As always, we recommend filings be made online via the TEAS or TEAS Plus systems.
The Coca-Cola Company dropped a trademark opposition proceeding in Australia against an Australian company selling and marketing tea beverages under the brand HONEST TEA.
According to the Australian Trademark Office records, Teavolution Pty, Ltd filed the trademark HONEST TEA in Australia in 2005 and received registration(s) in 2007. Honest Tea, Inc., a division of The Coca-Cola Company, pursued a cancellation of the mark with the Australian trademark office claiming Teavolution was not using the mark. Honest Tea, Inc. has a pending trademark application in Australia.
Do we realize how often brands adapt, modify, update their brand? With each tweak, a new trademark application has to be considered as a tweak may suddenly develop into a “material modification” of a registered trademark.
Several times a year I give a trademark presentation where I distribute cans of DIET COKE and ask the audience members to count how many trademarks are on the cans. Updating the presentation this week, I was surprised by how much the DIET COKE branding has changed, as well the brands for SIX FLAGS OVER TEXAS.
Here’s a look at the trademarks on a DIET COKE can in 2010:
And, here’s how much the branding has changed by 2013:
FYI, BALL is a registered trademark of the Ball Corporation for metal cans sold empty. HURRICANE HARBOR, SIX FLAGS OVER TEXAS, SIX FLAGS, and the SIX FLAG design are registered trademarks of Six Flags Theme Parks Inc.
A CRONUT is part donut and part croissant and Dominique Ansel, a baker in New York, claims trademark rights in the brand CRONUT for a variety of baked goods as well as prepared baking flours and mixes. A trademark application was filed with the US Patent and Trademark Office on May 19, 2013.
Other bakeries say it’s getting a little hot in the kitchen as the idea of a pastry that is half donut and half croissant is not new. A trademark, which serves as a brand identifier, does not protect the idea of combining a donut and croissant.
It looks like Ansel does have a trademark battle in front of him already. Trademark applications have also been filed by third parties for CRONUT HOLE and CRONUTS.
Ansel has fame on his side. Take a look at Jerry Seinfeld’s addiction to CRONUT brand pastries.
Ansel might consider updating his website to refer to a CRONUT pastry rather than saying things such as “how to buy your CRONUTs.” While I don’t think the term CRONUT is generic, Ansel still needs to take steps to protect the strength of his brand by using the name as a brand and not a descriptive term.
And, yum – I’m hungry – somebody send me a CRONUT pastry.
Click here for the July 2013 Entertainment Law Update Podcast. Be sure to subscribe to the podcast in the iTunes store and share a review.
EMI Entertainment World, Inc. v. Karen Records, Inc. – Who is the right plaintiff in a copyright dispute
EMI Entertainment World, Inc. learned the hard way that making sure you name the correct plaintiff in a lawsuit is pretty important to winning.
EMI sued Karen Records, Inc., Karen Publishing, Inc. and the owners of these entities for copyright infringement and won a $100,000 verdict.
Too bad EMI did not listen to Karen’s attorney and verify who actually owned the copyright in the songs/sound recordings that were infringed by Karen. Because EMI refused to join in the lawsuit one or more of EMI’s subsidiaries as the proper party and owner of the copyrights, the case was dismissed by the judge for lack of jurisdiction. EMI did not have standing to file the suit on behalf of the EMI subsidiaries. EMI was notified of this potential deficiency in the lawsuit and refused to fix the problem.
Copyright litigation practice tip - Name the actual copyright owners as the parties to the lawsuit. EMI won, but actually lost.
Here’s a link to the Opinion.
The Sister Sledge hit “We Are Family” is beginning to sound more like “We Are Dysfunctional Family.”
Ex-member Kathy Sledge has been touring Australia under the name “Sister Sledge featuring Kathy Sledge.” Three of the original Sister Sledge members are also performing together and toured in Europe.
Are consumers confused? The lawsuit, filed by Sister Sledge, LLC against Kathy Sledge and numerous other defendants, includes fan generated online comments with fans wondering why the whole group isn’t touring together and why Kathy Sledge is touring with back up singers and not her “sisters.”
Kathy Sledge left the group twenty-five years ago. The lawsuit alleges she has repeatedly booked tour dates claiming she is the only remaining member of the group.
The US trademark registration for Sister Sledge is owned by Sister Sledge, LLC.
After 30 years as the bass player for the all girls band The Go-Go’s, Kathy Valentine is suing her former band mates for cutting her out of her twenty percent share of earnings.
The Go-Go’s jumped to fame in the early 80′s and continue to make money from merchandise, touring and record sales. The five band members – Belinda Carlisle, Jane Wiedlin, Charlotte Caffey, Gina Schock and Kathy Valentine – are equal owners in Ladyhead, LLC (receives all revenues for the The Go-Go’s excluding touring and owns The Go-Go’s trademark) and Smith-Pocket Industries, LLC (the touring arm of The Go-Go’s).
The four remaining band members notified Valentine earlier this year that she was out of the group. The lawsuit alleges the four remaining members formed a new entity, GoGoCo Corp., to license all of the rights associated with the name and good will of The Go-Go’s as well as touring. If that is the case, Valentine’s twenty percent share of revenues would be substantially diluted as GoGoCo Corp. would be calling the shots on when and how much money would flow to LadyHead, LLC and Smith-Pocket Industries, LLC.
It sounds like the group did things the right way years ago be forming the two initial entities where each band member was an equal owner. I suspect the operating agreements for those entities address what happens when a band member quits on their own or is forced out. But, maybe they don’t or the language is not beneficial to Valentine, as the lawsuit never specifically discusses those sections of the LLC operating agreement. Instead, the plaintiff’s complaint focuses on breach of fiduciary duty and breach of contract in not continuing to pay Valentine her one-fifth.
Sounds like the perfect case for mediation. The parties have all aired their laundry over the years and need a neutral party to help them work through a potential mine-field of separation issues.
The US Copyright Office has a wealth of information available at their website on the copyright registration process.
What is a copyright? Copyright is an original work of authorship fixed in a tangible medium of expression — such as a song, book, or sound recording.
What is the difference between a trademark and a copyright? A trademark is a word, phrase, symbol or design, or a combination of words, phrases, symbols or designs, that identifies and distinguishes the source of the goods of one party from those of others. Examples of well-known trademarks include NIKE, CHANEL and ZYRTEC. Click here to read more about trademark basics.
What is a “Poor Man’s Copyright?” The practice of mailing a copy of your own work to yourself is sometimes called a “Poor Man’s Copyright.” There is no provision in the copyright law regarding any such type of protection, and it is not a substitute for registration. In the event of an infringement lawsuit it may not even be admissible to prove creation and ownership of the work.
Do I need a lawyer to file a copyright application? NO. Anyone may complete and submit an application to the Copyright Office.
Where do I file a copyright application? Copyright applications may be filed through the U.S. Copyright Office. More information is available at: http://www.copyright.gov.
Which copyright form should I use? The Copyright Office has transitioned to an online filing system to replace the old TX, SR, PA paper forms. To use the eCO Online Filing system click here.
What does it cost to file a copyright application? The current filing fees charged by the Copyright Office are $65 per hard copy application or $35 per eCO Online Filing application.
Do I need to register my work to have copyright protection? The short answer is No. Copyright protection arises at the moment of creation — when you fix an original work in a tangible expression. Follow through with a copyright application to gain additional protections. Many choose to register their works because they wish to have the facts of their copyright on the public record and have a certificate of registration. Registered works may be eligible for statutory damages and attorney’s fees in successful litigation. Finally, if registration occurs within 5 years of publication, it is considered prima facie evidence in a court of law.
Creative Commons is all the protection I need, right? Creative Commons Licenses do not give you copyright protection. The licenses available from Creative Commons are simply that … licenses to help you define the rights and obligations by which other people can use your works. Creative Commons is simply one option available to you for licensing your works to third parties.
In Part 4 of Trademark Basis we explore what happens after you secure a trademark registration. Feel free to review Part 1 “Selecting a Trademark,” Part 2 From Selection to Application,” and Part 3, “Intent to Use.”
Q: When should I use the ™ symbol or the ® symbol?
A: After federal registration the mark should be identified with the ® symbol. Do not use the ® prior to issuance of the Federal Registration.
While the federal application is pending ( from one to two years), the trademark should be identified with the TM symbol. Use the mark with the TM on the actual product to which the mark applies, if possible, and on product labeling and packaging, and also in brochures, catalogs, advertisements, letterhead, business cards, and signage, as appropriate.
When using a word mark, or the word portion of a combination mark (word plus design), in a sentence, distinguish it from surrounding text by using all capitals and quotes.
Q: When does my trademark registration expire?
A: A trademark registration is valid for 10 years after the date of registration, provided that a section 8 (and possibly section 15) affidavit is filed with the USPTO in between the 5th and 6th years after registration, further validating that the mark is in use at this time. Failure to file the section 8 affidavit between the 5th and 6th years of registration will result in cancellation of the trademark application before the 10 year expiration period. Between the 9th and 10th year after registration, a renewal application is required to maintain the mark. Thereafter, the renewal must be filed every 10 years.
Q: I forgot to file my section 8 & 15 affidavit or section 8 & 9 renewal within the 1 year window before expiration. Can I still reinstate my trademark?
A: There is a six month grace period after the 6th year of registration or after the 10th year of registration to file these documents with the USPTO, for an additional fee. Once outside the grace period, a new trademark application is required.
Q: My trademark is still in use, but I have sold it to another company or changed my company name. Do I need to do anything with the trademark office?
A: Yes, you may need to file an assignment or change of ownership name document with the USPTO. Visit the assignments section of the USPTO website for additional information.
If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.
In part three of Trademark Basics we explore “intent to use” trademark applications, interstate commerce, and common law rights in trademarks. You may be interested in Part 1 on “Selecting A Trademark,” Part 2 “From Selection to Application,” and Part 4 “Post Registration.”
Q: What is “intent to use”?
A: If you have not yet used the trademark, but plan to do so in the future, you may file an application with the United States Patent and Trademark Office (USPTO) based on a good faith or bona fide intention to use the trademark in interstate commerce. You do not have to use the trademark before you file your federal trademark application. Later on in the application process, you will need to file proof of using your trademark in interstate commerce. A total of five extensions, each lasting six months in duration, may be granted by the USPTO before proof of use in interstate commerce is required. Each extension incurs additional filing fees.
Q: What is “use in interstate commerce” for services?
A: In general, the trademark must be used or displayed in the sale or advertising of the services and the services must be rendered in interstate commerce.
Q: What is “use in interstate commerce” for goods?
A: In general, the trademark must appear on the goods, the container for the goods, or displays associated with the goods, and the goods must be sold or transported in interstate commerce.
Q: I understand there are five possible extensions, each lasting six months, before I must submit a Statement of Use to the USPTO, demonstrating use of my trademark in interstate commerce. I have used all five extensions, and my business will not be open before the final extension expires. What can I do?
A: You may wish to consider filing a new trademark application as soon as your last extension expires. This starts the process over, including a new filing fee to the USPTO. We encourage clients to think over their business plan carefully before filing a trademark application.
Q: Does filing a federal or state application guarantee a registration?
A: No. Filing a trademark application does not guarantee that either the USPTO or the applicable state will grant you a registration.
Q: Do I have to secure a state or federal trademark registration to own a trademark?
A: No. A person/entity acquires rights in a trademark by being the first to use the trademark in the marketplace for specific goods or services. Rights in a trademark are obtained only through commercial use of the trademark. Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.
If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.
Q: How does the trademark application process work?
A: Develop a list of possible names and discuss this list with your trademark lawyer.
Your trademark attorney will conduct a trademark search or “knockout” to exclude any existing marks that are identical or confusingly similar and to assist in determination if the proposed mark may be generic or descriptive.
Determine the scope of your goods and services.
Prepare and submit an application. It may take seven to nine months before the USPTO will respond to your application.
If there are any procedural or substantive changes requested/a refusal issued by the trademark examiner (an Office Action), you will then have six months to respond.
If the refusal is overcome, or if no refusal issued, the mark will move to publication.
If the mark is published and no oppositions are filed, the mark will be registered if it was filed as a “Use” application. If it is an “Intent To Use” application, a Notice of Allowance will issue and the mark must be used in interstate commerce within a certain allotted window of time.
Q: What is required to file a federal trademark application? A: You must be using your trademark or service mark in interstate commerce (that is outside the borders of a single state) or have an intention to use the mark in interstate commerce before you can apply for a federal trademark with the United States Patent and Trademark Office.
Q: How do I file a state trademark application?A: You must be using your trademark or service mark within the state in order to file an application. The Secretary of State or Corporations Section of most state governments handle their state’s trademark registry.
Q: Does filing a federal or state application guarantee a registration?A: No. Filing an application does not guarantee that either the United States Patent and Trademark Office (USPTO) or the applicable state will grant you a registration.
Q: Do I have to secure a state or federal trademark registration to own a trademark? A: No. Rights in a trademark are obtained only through commercial use of the mark. Coining a phrase or designing a logo is not enough to secure trademark rights. You must use the phrase or logo on or in connection with your product or service.
Q: Do I need a lawyer to file a trademark application? A: There is no requirement that you use an attorney to file your trademark application.
Q: Why should I use a lawyer to file a trademark application? A: A trademark lawyer can advise you on legal issues regarding existing trademark applications, registrations and/or common law trademark rights that may help you save money in the long run.
If you are ready to learn more about trademark attorney Tamera Bennett’s 5 Steps to Filing a Trademark Application, click here.
The three remaining original band members of the Stone Temple Pilots sued expelled member Scott Weiland in May 2013 claiming breach of their written partnership agreement, breach of fiduciary duty and trademark infringement.
Weiland was voted out of the group in February 2013. The four group members operated under a written band partnership that allows a partner to be ousted for numerous reasons, including not making the band a top priority. The complaint provides a look at the various ways in which Weiland was not putting the band first and how he was subsequently “sabotaging” the band’s tour and new album release.
Weiland subsequently contersued the band accusing the members of conspiracy to oust him and demanding the band/partnership be dissolved.
There are four federal trademark registrations for STONE TEMPLE PILOTS owned in the name of the Stone Temple Pilots partnership and listing the four original partners, including Weiland, as the partners. Might we see some issues at the USPTO regarding those registrations and who is the proper party to maintain ownership?
More to come as this case progresses. We always love a good band name dispute.
Texas A&M University football star and Heisman Trophy winner Johnny Manziel is a couple of quarters into legal battles over the trademark “Johnny Football.” Part 1 of this post focuses on the battle at the court-house against defendant Eric Vaughan for selling unauthorized “Johnny Football” t-shirts.
This post focuses on the initially refusal from the US Patent and Trademark Office for the mark JOHNNY FOOTBALL. Johnny Manziel and his entity JMAN2 Enterprises, LLC filed an application on February 2, 2013 as joint owners of a trademark application for JOHNNY FOOTBALL for clothing items as well as motivational speaking.
On May 22, 2013 the application was initially refused on several grounds. We’ll focus on the two big ones: 1) the mark is not functioning as a trademark; and 2) likelihood of consumer confusion with trademark applications for JUANITO FUTBAL and JOHNNY BASKETBALL and JOHNNY BASEBALL.
1) The mark is not functioning as a trademark — The only sample submitted to the Trademark Office of how the trademark is being used on clothing was the t-shirt image above. The trademark examiner argues the large, over-sized placement of the words JOHNNY FOOTBALL is “merely a decorative or ornamental feature of applicant’s clothing; and does not function as a trademark to indicate the source of applicant’s clothing and to identify and distinguish applicant’s clothing from others.” I would have to say I agree with the examining attorney. Amazingly enough to most folks, the smaller the mark, the more likely it functions as a brand identifier. As an example, even if you purchase a shirt with the word NIKE across the front, it also has the trademark NIKE in the inside neck of the shirt as well as a hang-tag on the shirt.
2) There is a likelihood of consumer confusion with trademark applications for JUANITO FUTBAL, JOHNNY BASKETBALL and JOHNNY BASEBALL – Trademark applications are pending for JUANITO FUTBAL, JOHNNY BASKETBALL and JOHNNY BASEBALL.
The Spanish to English translation of JUANITO FUTBAL is, you guessed it, JOHNNY FOOTBALL. When the translation is similar or identical, the foreign language registration can be barrier to registration because of the concern a consumer would believe the two products are from the same source. Also notice the use of the trademark on the product packaging. It is placed on the plastic surrounding the shirt as well as on box for shipping. This is the appropriate use of a trademark on clothing.
Already, LLC in Euless, Texas applied for trademark registrations for JOHNNY BASKETBALL and JOHNNY BASEBALL. Those applications are pending and baring any third-party opposition to their registration, should be approved in the next few months. Already, LLC is in the athletic apparel business and I’ve blogged about their case with NIKE here. They also have pending applications for JOHNNY HOCKEY, JOHNNY GOLF and several other JOHNNY marks. I do not believe there was any intentional connection to Johnny Manziel.
Manziel may need a “Hail Mary” to overcome these initial refusals at the US Patent and Trademark Office.
JMAN2 Enterprises, LLC, the entity owned by Johnny Manziel settled the trademark lawsuit with defendant Eric Vaughan.
Texas A&M University football star and Heisman Trophy winner Johnny Manziel is a couple of quarters into legal battles over the trademark “Johnny Football.” The battles are happening at the court-house against defendant Eric Vaughan for selling unauthorized “Johnny Football” t-shirts and at the US Patent and Trademark Office to secure a trademark registration.
The phrase “Johnny Football” has not only become synonymous with Manziel, arguable Texas A&M University used Manziel’s name and likeness as a brand identifier/trademark for clothing. Manziel, an amateur athlete, cannot profit from his own name and likeness. That’s where Texas A&M comes into the picture as Manziel’s licensee.
Interestingly enough, the plaintiff in the lawsuit against Eric Vaughan, is an entity owned be Manziel. Texas A&M is not a party to the lawsuit. The plaintiff alleges Vaughan sold t-shirts infringing the trademark “Johnny Football” and did not stop selling the shirts even after receiving cease and desist letters.
The suit raises some interesting NCAA Student Athlete Name and Likeness questions that I will ponder, but which I am unable to answer:
- If Manziel is successful in his lawsuit, could his recovery of damages violate his NCAA amateur status? Maybe not according to NCAA Bylaws the recovery is not tied to Manziel’s athletic performance. (See NCAA Bylaw 12).
- But, it might be an issue with NCAA Bylaw 12.4.4 which prohibits a student athlete from using his name and likeness from promoting the student athletes’ own personal business.
- And, should the recovery actually go to Texas A&M in accordance with NCAA Bylaw 22.214.171.124.e which requires all money from the use of the student athletes’ name and likeness go directly to the member institution, member conference or the charitable, educational or nonprofit agency? While news reports say the NCAA has approved Manziel retaining any recovery, I have been unable to confirm this statement with the NCAA.
- Because Manziel had to sign NCAA Form 08-3a which assigns his name and likeness rights to the NCAA, I’m wondering if Manziel, or his entity, are the proper party for this lawsuit? This also ties into NCAA Bylaw 126.96.36.199.e.
You can download the NCAA bylaws for free from this link.
Here’s a link to the complaint/lawsuit against Eric Vaughan.
Part 2 of this post will focus on the hurdles facing the JOHNNY FOOTBALL trademark application at the USPTO. Juanito Futbal and Johnny Basketball might raise a likelihood of consumer confusion.
Under New York state law a decision issued last week holds pre-1972 sound recordings are not subject to the DMCA safe harbor provisions and Grooveshark is liable for state law copyright infringement of UMG owned pre-1972 sound recordings. UMG Recordings, Inc. v. Escape Media Group, Inc. Opinion linked here.
The year the sound recording was released is key to UMG’s argument. Prior to February 15, 1972 sound recordings were protected by state law copyright schemes. All sound recordings released after February 15, 1972 are protected by Federal Copyright Law.
Grooveshark continues to hide under the protection of the DMCA (Digital Millennium Copyright Act) Safe Harbor provision claiming it didn’t know that content uploaded by third parties was infringing and had been uploaded without permission. I believe the judges’ decision was correct. If the pre-72 sound recording owners do not receive any of the protections of the Federal Copyright Act such as the ability to recover attorneys’ fees or sue for statutory damages, then why should an infringer receive defensive benefits from the Copyright Act?
Because this decision was issued by the New York State Appellate Court, that court had no obligation to follow a footnote in Capitol Records, Inc. v. Mp3 Tunes, LLC, 821 F.Supp.2d 627 (S.D.N.Y. 2011) in which the court states in dicta:
This Court agrees with [Mp3 Tunes, LLC] the plain meaning of the statutory language makes the DMCA safe harbors applicable to both state and federal copyright claims. Thus, the DMCA applies to sound recordings fixed prior to February 15, 1972.
UMG made a great tactical decision in keeping their pre- and post-72 sound recordings separated in their legal filings. A state court was the appropriate venue to decide if the DMCA applies to sound recordings that are not otherwise protected by the U.S. Copyright Act.
This week starts Michael Jordan’s trademark trial against Chinese sportswear company Qiaodan Sports Co. Qiaodan translates in Mandarin to mean Jordan.
Qiaodan Sports sells basketball shoes and jerseys with Qiaodan and #23. If Jordon wins this case, he will use his proceeds to promote basketball in China.
While in LA I marveled at all the hair salons for blow drying hair. Who knew these salons were all over Texas. And, as much as we Texas gals like our hair fixed, it does seem like a natural fit.
Houston, Texas-based Blow Dry Bar, LLC seeks a declaratory judgment of non-infringement against Dallas, Texas-based DryBar Holdings, LLC’s trademark and trade dress. DryBar sent several cease and desist letters to Blow Dry Bar after Blow Dry Bar launched their first location and announced the opening of their second store. DryBar’s founder Alli Webb has been credited by many as creating the “blow dry salon” trend.
The term “blow dry bar” is descriptive at best and is quickly becoming generic for a hair salon that provides “blow drying.” A consumer sees blow dry bar and immediately knows the service available. Perhaps salons should start thinking less descriptive in order to develop a strong and defendable brand. The case, filed in 2012, is still active with a hearing on a Motion for Summary Judgment scheduled on April 25, 2013.
Blow Dry Bar, LLC v. Drybar Holdings LLC, 4:12-cv-02425 (S.D. Tex – Houston, filed Aug. 8, 2012).
Plano, Texas-based retailer, JC Penney Corporation, Inc., asked a judge in Texas federal court to find JCP’s use of the name Aspen to describe a pair of winter boots is not infringing of Aspen Licensing International, Inc’s “Aspen” trademark for footwear.
By filing a declaratory judgment action, JCP kept the case in the Eastern District of Texas requiring Aspen Licensing, a Florida entity, to come to JCP’s home court. According to court documents, Aspen sent several demand letters to JCP and made phone calls threatening litigation if JCP did not make a monetary settlement.
J. C. Penney Corporation, Inc. v. Aspen Licensing International Inc., 4:13-cv-00066-RAS-DDB (E.D. Tex. filed Feb. 8, 2013).