Trending Trademarks

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

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

Supreme Court Grants Preclusive Effect to Trademark Trial and Appeal Board Rulings in Limited Circumstances

Posted by Lawrence Robins on March 24, 2015 at 12:10 PM

Today the Supreme Court announced its decision in B&B Hardware, Inc. v. Hargis Industries, Inc. B&B Hardware (B&B) sells a fastener product in the aerospace industry under the trademark “Sealtight,” which it registered in 1993. Hargis Industries (Hargis) sells self-drilling screws under the mark “Sealtite” in the construction industry. After Hargis applied to register its mark in 1996, B&B opposed the application successfully and also sued Hargis for infringement. In that action B&B argued unsuccessfully that Hargis was precluded from litigating the likelihood of confusion issue due to the prior TTAB ruling. The Eighth Circuit affirmed the District Court’s holding.

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Topics: Infringement, Trademark, Litigation, TTAB Proceedings

Strong Like Bull(y): Is Red Bull Overreaching, Or Just Trying To Protect Its Mark?

Posted by Natalie Lederman on February 11, 2015 at 5:35 AM

Recently, the maker of Red Bull energy drinks filed a notice of opposition against Old Ox Brewery’s trademark registration application, arguing that registration should be denied due to likelihood of confusion. The opposition reasons that oxen and bulls “both fall within the same class of ‘bovine’ animals and are virtually indistinguishable to most consumers.

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Topics: Infringement, Trademark, Food & Beverage, Registrations, Consumer Products

Fabric So Rich Even Xerox® Can’t Copy It

Posted by Lawrence Robins on February 4, 2015 at 10:04 AM

Knock-off designs remain the bane of the designer’s existence and U.S. law still provides little in the way of intellectual property protection. While many fabric designs meet the threshold of creativity necessary for protection, clothing designs themselves are functional and not subject to copyright or design protection. Thus, a new design that debuts on a Paris runway in January is likely to appear in knock-off form in a discount retail outlet only a short time later.

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Topics: Infringement, Copyright, Fashion

#Registered - U.S.

Posted by Natalie Lederman on February 2, 2015 at 9:00 AM

As a follow-up to our January post, “#Hashingitout: Is It Worth Registering A Hashtag?” I was interviewed by LexisNexis about the registration of hashtags. The interview was published in an article, “#Registered - U.S.,” in Lexis PSL IP & IT.

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Topics: technology, Infringement, Internet, Trademark, Food & Beverage, Registrations, Multimedia, Consumer Products

Is it or isn’t it? An app to discern whether your bag’s the real thing.

Posted by Natalie Lederman on December 4, 2014 at 7:02 AM

Recently, Japanese IT company NEC Corp. announced that it is developing an app with image recognition technology that allows its users to determine, in real time, whether or not that long sought-after Hermès Birkin bag is a knock-off or not. Once a target of aggressive piracy itself, NEC created the app in response to the increasing importance of managing the mass production and distribution of products internationally.

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Topics: technology, Infringement, Trademark, Fashion, Consumer Products

Perfect Your Foreign Trademark Rights Early or Risk Losing Them Forever

Posted by Lawrence Robins on July 22, 2014 at 10:08 AM

On July 18th a U.K. judge ruled that Twentieth Century Fox Films must change the name of its television show, “Glee”, because it infringes the name of a chain of British comedy clubs named “The Glee Club.” The judge ruled in favor of the clubs on the theory of “wrong way round” confusion, which is known as “reverse confusion” in U.S. jurisprudence. Traditionally, courts address likelihood of confusion in trademark cases by determining whether customers mistake the junior user’s products as coming from the same source as those of the senior user. Reverse confusion, on the other hand, arises when the junior user so saturates the market with advertising and other promotion of its mark that the consuming public comes to believe that the senior user’s products come from the same source as those of the junior user. Fox’s promotion and broadcast of “Glee” in the UK market was apparently so overwhelming that the judge believed that consumers were likely to believe that the comedy clubs were also Fox businesses.

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Topics: Infringement, Litigation, Registrations, Multimedia

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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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