Trending Trademarks

"Rime" Graffiti Case Against Moschino Survives Dismissal

Posted by Nicholas O'Donnell on March 22, 2016 at 11:45 AM

Last year street artist Joseph Tierney, better known as “Rime,” sued designer Moschino S.p.A. and its creative director, Jeremy Scott, for a variety of copyright and trademark claims based on the alleged use of Rime’s works in certain fashion lines. The presiding court has denied Moschino’s efforts to have the claim dismissed in a decision that provides an important, if implicit, endorsement of the rights of street artists under the Copyright Act, and of a novel theory under the DMCA. While some reports stated that the case was now going to trial, it is not there quite yet. It will now presumably head into discovery for the exchange of facts and information to see if there is in fact a need for a trial later. 

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Topics: Rime, Copyright, Moschino, Lanham Act

The Right of Publicity: How Much Control Do NFL Players Have Over Their Names?

Posted by Michael Palmisciano on March 8, 2016 at 2:22 PM

How much control should athletes have over their names? Not an unlimited amount, according to one recent court ruling.

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Topics: the Lanham Act, Copyright, Right of Publicity

Federal Circuit Rules ITC Cannot Stop Infringing Digital Files From Entering U.S.

Posted by Mitchell Stein on November 10, 2015 at 2:28 PM

In a decision that will have considerable interest for the entertainment, tech and 3D printing industries, the Federal Circuit, in a split decision in Clearcorrect Operating, LLC v. International Trade Commission, 2014-1527, today overruled an earlier ruling of the International Trade Commission, in which the Commission blocked the importation of digital files that would permit operators of U.S. 3D printing facilities to manufacture dental braces that infringed the patents on the well known “Invisalign” brand of clear braces.  The Federal Circuit concluded that the ITC’s power to block “articles” that infringed U.S. intellectual property rights was limited only to material things, and did not include digital transmissions.  The ITC decision gained attention because it signaled a potential new governmental interest in regulating internet traffic, perhaps even a way to provide additional intellectual property remedies for the entertainment and music industries.  This new avenue of enforcement, however, appears to be closed for now.

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Topics: ITC, Invisalign, International Trade Commission, Clearcorrect Operating, 3D Printing

Federal Circuit Rules ITC Cannot Stop Infringing Digital Files From Entering U.S.

Posted by Mitchell Stein on November 10, 2015 at 7:58 AM

In a decision that will have considerable interest for the entertainment, tech and 3D printing industries, the Federal Circuit, in a split decision in Clearcorrect Operating, LLC v. International Trade Commission, 2014-1527, today overruled an earlier ruling of the International Trade Commission, in which the Commission blocked the importation of digital files that would permit operators of U.S. 3D printing facilities to manufacture dental braces that infringed the patents on the well known “Invisalign” brand of clear braces. The Federal Circuit concluded that the ITC’s power to block “articles” that infringed U.S. intellectual property rights was limited only to material things, and did not include digital transmissions. The ITC decision gained attention because it signaled a potential new governmental interest in regulating internet traffic, perhaps even a way to provide additional intellectual property remedies for the entertainment and music industries. This new avenue of enforcement, however, appears to be closed for now.

The issue for the Federal Circuit was one of statutory construction. The legislation creating and empowering the ITC permits it to block infringing “articles.” The Federal Circuit interpreted the term “articles” to apply only to material things, and not digital transmissions. The court found this definition to be clearly expressed both with respect to the literal text, as well as the context in which the term “articles” was used within the statute. Because the digital files at issue were not articles, the ITC lacked jurisdiction to prevent their importation.

While it is too early to tell whether the Federal Circuit’s decision will be appealed to the U.S. Supreme Court, it would be a long shot to expect the Supreme Court to reverse a ruling on statutory interpretation here, where Congressional intent appears to be clearly expressed within the four corners of the statute.

As 3D printing becomes more prevalent and spreads to a wider range of industries, the need to fix this gaping hole in the U.S. border with continue to grow unless and until Congress takes action, either by amending the statute or passing additional legislation. Having an effective border strategy for dealing with transmission of infringing files is particularly important in situations where, as here, the manufacturing facilities to produce infringing products – 3D printers and the materials needed to make the infringing goods – can be moved with relative ease from location to location in order to avoid detection. The growth of 3D printing poses a threat that infringement and counterfeiting will be accomplished faster and more easily. A nimble and thoughtful response at all levels of government to adequately protect intellectual property owner’s rights under this changing landscape will be required.

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Topics: Infringement, Litigation

NANOTAINER vs. MICROTAINER: Theranos Battles BD Over Trademarks, but FDA Draws First Blood

Posted by Mitchell Stein on November 9, 2015 at 3:26 PM

Medical equipment manufacturer Becton, Dickinson and Company (“BD”), has been making its MICROTAINER blood collection containers since 1945. According to The New York Times, the MICROTAINER containers are a $25 million a year business for BD. It was not surprising, therefore, that BD called its trademark lawyers when Silicon Valley start-up darling Theranos, a company now valued at around $9 billion, applied on an intent-to-use basis to register the name NANOTAINER in connection with blood collection containers. Theranos and its products have gained wide attention based on claims that Theranos could perform numerous medical tests quickly and inexpensively using a tiny sample of blood from a finger prick, rather than tubes of blood drawn from the arm.

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Topics: Becton Dickinson And Company, FDA, NANOTAINER, BD, MICROTAINER

NANOTAINER vs. MICROTAINER: Theranos Battles BD Over Trademarks, but FDA Draws First Blood

Posted by Mitchell Stein on November 9, 2015 at 7:15 AM

Medical equipment manufacturer Becton, Dickinson and Company (“BD”), has been making its MICROTAINER blood collection containers since 1945. According to The New York Times, the MICROTAINER containers are a $25 million a year business for BD. It was not surprising, therefore, that BD called its trademark lawyers when Silicon Valley start-up darling Theranos, a company now valued at around $9 billion, applied on an intent-to-use basis to register the name NANOTAINER in connection with blood collection containers. Theranos and its products have gained wide attention based on claims that Theranos could perform numerous medical tests quickly and inexpensively using a tiny sample of blood from a finger prick, rather than tubes of blood drawn from the arm.

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Topics: Trademark, Litigation

With Victory Over MTM, Amazon Can Still Use Brand Name Searches

Posted by Valerie Sussman on October 28, 2015 at 10:02 AM

When shopping for watches on Amazon.com, you might be surprised to find that a search for the luxury military-style watch “mtm special ops” brings you to a list of watches designed by competitors of Multi Time Machine, Inc. (MTM). According to the 9th Circuit Court of Appeals, this practice does not infringe on MTM’s trademark rights.

The 9th Circuit appellate panel reversed its own decision In Multi Time Machine, Inc. v. Amazon.com, Inc.; Amazon Services, LLC, published last Wednesday. In issuing summary judgment in favor of Amazon, the court held that no reasonable trier of fact could conclude that a likelihood of confusion existed based on the layout of Amazon’s search results page.

From the watchmaker’s perspective, Amazon’s search results created “initial interest confusion” that generated awareness of competitors’ products. Initial interest confusion may damage sales by taking advantage of a trademark’s good will and thus could create a cause of action for trademark infringement. MTM asserted that such confusion was even more likely because Amazon’s search results page did not include a message such as “no search results found” to suggest (accurately) that it does not sell MTM watches.

The court concluded that there was no likelihood of initial interest confusion because the non-MTM watches were “clearly labeled by Amazon” such that a “reasonably prudent customer accustomed to online shopping” would not be deceived. The court reasoned that the buyer could see clear images of the watches next to the boldly-lettered brand name (which Amazon opportunely included two times next to each product – for example, “Luminox Men’s 8401 Black Ops Watch by Luminox”). Even a couple of books appeared in the search results for “mtm special ops,” which as noted by the court, made it even less likely that a reasonably prudent online shopper would be confused.

Because the decision does not forbid online retailers from using proprietary product names as keyword terms, it seems likely that Amazon and other online marketplaces will continue to capitalize on brand name searches. Still, consumers seeking to purchase an authentic MTM watch should be advised that they will not find it on Amazon.

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Topics: Internet, Trademark, Litigation, Decisions, Consumer Products

PETA Thinks Monkeys Can Own Copyrights

Posted by Lawrence Robins on September 24, 2015 at 6:11 AM

Last August we wrote about a dispute between photographer David Slater and the Wikemedia Foundation over what is known as “The Monkey Selfie.” Because we’re brave, the photo appears again in this post. At that time, the Copyright Office released a public draft of the Third Compendium of U.S. Copyright Practices, in which it took the explicit position that photographs taken by monkeys are not copyrightable subject matter because they are not “the fruits of intellectual labor that are founded by the creative powers of the mind.”

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Topics: technology, Infringement, Internet, Copyright

Shufflin’ Ain't Hustlin’ When It Comes to Copyright Law

Posted by Lawrence Robins on September 17, 2015 at 4:09 AM

Back in March we wrote about Taylor Swift’s efforts to register as trademarks certain lyrics and phrases related to her 1989 album and world tour. Those applications remain pending in the U.S. Patent and Trademark Office. In the meantime, dance rap duo LMFAO just obtained summary judgment in its favor on a copyright infringement claim brought by rapper Rick Ross over merchandise bearing the phrase “Everyday I’m Shufflin’.” Ross claimed that the phrase used on merchandise infringed the copyright in the musical composition “Hustlin,’” which consists of a repeated refrain of the phrase “everyday I’m hustlin’” and the words “hustle” and “hustlin’.” Ross’ claim boiled down to this: the copyright in the musical composition as a whole also covers the oft-repeated phrase. Or to put I more simply, Ross claimed copyright in the phrase “Everyday I’m Hustlin’.” As a longtime copyright lawyer, I was LMFAO when I learned that the case got as far as it did. The case is William L. Roberts, II, et al. v. Stefan Kendal Gordy, et al.

It is basic, black letter copyright law that words and short phrases are not copyrightable subject matter and the court ruled accordingly. Furthermore, as discussed in detail in the court’s opinion, there have been more than a few prior cases that applied this rule to song lyrics, raising the question of why the Ross team thought this case was different. Ms. Swift obviously understood the different treatment accorded short phrases or slogans under trademark and copyright law and, accordingly, sought protection for her phrases as trademarks. Mr. Ross relied on copyright instead with predictable results.

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Topics: Infringement, Trademark, Copyright, Litigation, Decisions, Multimedia

Is that a “Tiffany?”: Consumers get little credit in recent court decision

Posted by Valerie Sussman on September 16, 2015 at 5:46 AM

After a court battle spanning more than two years, the US District Court for the Southern District of New York recently confirmed that to sell a ring of a style described as “Tiffany,” its maker must be Tiffany & Co. At issue was the word “Tiffany” posted in Costco’s display cases next to a series of diamond rings sold by the discount superstore. Was “Tiffany” a generic word for a six-pronged ring setting as Costco argued, or did it confuse consumers into thinking the rings were authentic Tiffany products?

A trademark becomes generic and loses legal protection when the meaning of the mark becomes associated with an entire market of products rather than the brand name. Famous genericized marks include Escalator and Thermos. In this case, despite Costco’s introduction of dictionary entries showing that “Tiffany” has become a generic descriptor of a ring setting, the court held that Costco presented inadequate evidence to show that any generic use of the word “Tiffany” undermined the strength of the Tiffany trademark. Therefore, the use of the word “Tiffany” in the display cases next to six-pronged rings infringed upon Tiffany’s rock-solid trademark rights.

In addition to trademark infringement, the court held that Costco violated the Lanham Act by selling “counterfeit” Tiffany jewelry. For a mark to be counterfeit, the Lanham Act requires that the mark is “spurious” and “identical with, or substantially indistinguishable form, a registered mark.” In addition, the use of the mark must be likely to confuse or deceive the consumer. Costco opined that the appearance and packaging of the rings were simply not confusing. The “Tiffany” trademark was not anywhere on the rings themselves, and the rings were not accompanied by false Tiffany paperwork. Plus, absent was Tiffany’s signature blue packaging and satiny white ribbon. (Coincidentally, that particular color of blue packaging is also trademarked by Tiffany, known for vigorously protecting its trademark rights).

Nevertheless, the court found that the word “Tiffany” on signs in Costco’s display cases exactly where the brand name would typically be located on other Costco products was enough to confuse consumers about the source of the rings. To justify this result, the court cited testimony from six consumers who were dismayed to learn that their rings were not made by Tiffany (including a particularly tearful consumer whose diamond fell out of her Costco ring). This evidence of likely confusion, combined with evidence of Costco’s lack of good faith in the form of damaging emails and photographs suggesting that Costco tried to copy some stylistic elements of Tiffany products, led to Tiffany’s victory on the counterfeiting claim.

The upshot is, if you are about to propose to that special someone, bear in mind that the only place you will be able to get your fiancé a “Tiffany” ring is at Tiffany & Co.

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Topics: Infringement, Trademark, Fashion, Consumer Products

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Trending Trademarks provides comments and analysis on trademark issues affecting the fashion, high-tech, multimedia and consumer products industries.

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