Surnames, Trademarks, and Rock-and-Roll

Using your surname as a trademark may not always be the best strategy. This is especially the case when you are the ex-wife of rock star legend, Alex Van Halen. On October 10, 2013, ELVH, Inc., the intellectual property holding company for the rock band, Van Halen, has sued Kelly Van Halen for trademark infringement because she is using the mark “KellyVanHalen” in connection with items such as chairs, children's blankets, bathing suits as well as building construction and interior design services. The lawsuit alleges that the mark, “KellyVanHalen” is “confusingly similar to Plaintiff's VAN HALEN Marks in sound, appearance and commercial impression”.

The question raised is whether a person has the right to use his or her surname in the conduct of business. The case law is clear that a person cannot use their surname if is likely to cause confusion with a prior used mark. In Miller Brewing Company v. Premier Beverages, Inc. 1981 TTAB LEXIS 51, 10-12 (Trademark Trial & App. Bd. Mar. 3, 1981), the Board provides the following summary regarding this issue:

A person obviously has a right to use one's own name in his or her daily life's experiences and encounters. Nonetheless, this right is not absolute. That is, although one may legally use his own name, the use thereof in connection with a business may be circumscribed if it encroaches upon the good-will acquired by another through prior use of the same or a similar mark and is likely to confuse or mislead the public as to the ownership of the business or of goods emanating therefrom. It has thus been held that:
 
". . . . where a person chooses to use his own name as a trademark, the name immediately becomes a separate and distinct element, devoid of any connection with its owner's personality, and registration thereof is therefore subject to the same rules and principles of law which apply to all nonsurname types of marks". [In re National Cycle Service Inc., 194 USPQ 97 (TTAB, 1976)].

The policy reasons for this position can be found in Ford Motor Company v. Ford, 174 USPQ 456 (CCPA, 1976), wherein the court stated that:

". . . . the interest in allowing an entrepreneur to use his own surname as a trademark on his goods must give way to the more compelling public and private interests involved in avoiding a likelihood of confusion or mistake as to source where use of the surname leads to such confusion or mistake".

Though the lawsuit between Van Halen and Kelly Van Halen may bring forth a lot of media attention, this case is pretty cut-and-dry; in regards to the trademark infringement cause of action, the case will be determined as to whether there it is a likelihood of confusion. In other words, in the mind of a consumer, is it likely that the source of products containing the  “KellyVanHalen” mark would be confused with those originating from the manufacturer of products under the Val Halen mark.

Everything is Bigger in Texas

A trademark battle royale has hit Austin, Texas and it doesn’t look like this legal fight will end anytime soon. Umami Burger, a West Coast hamburger chain with 15 locations nationwide with plans to open more 13 more restaurants this year have filed a lawsuit for trademark infringement against Umami Mia Pizzeria, a newly opened Italian restaurant and pizzeria in Austin, Texas. The burger joint is alleging that the mark, Umami Mia Pizzeria, used by the Austin, TX restaurant is likely to cause confusion with their “Umami Burger” mark, which is registered with the U.S. Patent & Trademark Office (USPTO). Additionally, Umami Burger requested the court to issue a preliminary injunction to prevent the Austin, TX restaurant from using the word “umami” and change their name immediately. 

On August 13, 2013, Judge Sam Sparks denied the injunction and allowed Umami Mia Pizzeria to continue using its mark while the case is being adjudicated. In support of his ruling, Judge sparks stated that not only is “umami” a common word that cannot be monopolized, the restaurants are located in different states and serve different types of cuisine.  

This is not the first time Umami Burger has ran into an issue regarding the descriptiveness and commonality of its mark. During the federal trademark registration process, the owner of Umami Burger was issued an office action because the examiner believed the mark was merely descriptive of the features, ingredients and purpose of applicant’s services. The examiner stated:

The word UMAMI is defined as: “a taste that is characteristic of monosodium glutamate and is associated with meats and other high-protein foods. It is sometimes considered to be a fifth basic taste along with sweet, sour, salty, and bitter.”  The word BURGER is defined as: “a sandwich consisting of a bun, a cooked beef patty, and often other ingredients such as cheese, onion slices, lettuce, or condiments.”  See attached dictionary definitions.  Applicant’s restaurant is a BURGER restaurant.  The primary food item found on the menu (see specimen of use) is BURGERS.  The word UMAMI describes a flavor of food.  In this case, it specifically describes a flavor found in applicant’s BURGERS.  As such, the proposed mark merely describes the identified goods and, thus, registration on the Principal Register is refused.

The mark did eventually register after Umami Burger’s trademark attorney argued that the applied-for mark was not descriptive, but rather suggestive. A suggestive mark is one that requires imagination, thought, and perception to reach a conclusion as to the nature of the goods or services in connection with which it is used. Suggestive marks are allowed to be registered with the USPTO.

Even though the mark is federally registered, it is still a weak mark and may have some trouble holding up in court. Even though preliminary injunction was denied, this Texas-sized lawsuit is far from over. 

Robin Thicke Now Has a Big Headache

Things are getting blurry for the artists of this summer-hit sensation, “Blurred Lines”.  Within the last few weeks, members of Marvin Gaye’s family who have an interest in his estate along with Bridgeport Music, Inc. have allegedly notified Robin Thicke, Pharrell William, and Clifford Harris, Jr. that their hit song infringes upon the songs “Got To Give It Up” by Marvin Gaye and “Sexy Ways” by Funkadelic. Thicke states that he was notified that if he does not provide monetary compensation for copying these two songs, that the Gaye family and Bridgeport Music would initiate a lawsuit for copyright infringement.

In response to this threat of legal action, Thicke’s lawyers at King, Holmes, Paterno & Beruner, LLP—who are the same ones that represented Metallica against Napster—have filed their own preemptive suit in the United States District Court for the Central District of California in an effort to acquire declaratory relief. In the lawsuit they claim that:

The basis of the Gaye defendants' claims is that "Blurred Lines" and "Got To Give It Up" "feel" or "sound" the same. Being reminiscent of a "sound" is not copyright infringement. The intent in producing "Blurred Lines" was to evoke an era. In reality, the Gaye defendants are claiming ownership of an entire genre, as opposed to a specific work, and Bridgeport is claiming the same work.

…

Plaintiffs did not incorporate or otherwise use the composition "Got To Give It Up" in "Blurred Lines." Plaintiffs did not infringe any copyright in "Got To Give It Up.

Even the former leader of Funkadelic, George Clinton, has come out and tweeted that "No sample of #Funkadelic's 'Sexy Ways' in @robinthicke's 'Blurred Lines' - yet Armen Boladian thinks so? We support @robinthicke @Pharrell!"

If no sample of either song were incorporated into “Blurred Lines,” does the Gaye Family even have a case? Well that is difficult to predict at this moment.  In order for a Court to find a defendant liable for copyright infringement, the plaintiff must prove that (1) the defendant copied the plaintiff’s prior work, and (2) the copying went so far as to constitute improper appropriation. Copying can be proven by circumstantial evidence if the plaintiff proves that (1) defendant had access to the work, and (2) the defendant’s song is substantially similar to the prior work. To determine whether “Blurred Lines” is substantially similar to the prior works, the court will review the works through the eyes of an ordinary observer.

With that said, history has showed us that a case like this will not be resolve quickly and it will take time parse to through the claims and evidence presented by both sides. The only thing that is clear is that even though Robin Thicke has dominated the charts the entire summer, all this copyright talk is certainly giving him a big headache.

Bullying the Trademark Bully

Engaging in what is perceived as “trademark bullying” has caused nationwide attention. The media has reported countless stories about trademark owners engaging in tactics, such as sending cease-and-desist letters or engaging in litigation, that have been deemed frivolous and beyond the scope of their actual trademark rights. The U.S. Patent & Trademark Office defines trademark bullying as using litigation tactics that involve “an attempt to enforce trademark rights beyond a reasonable interpretation of the scope of the rights granted to the trademark owner.” Examples of trademark bullying in recent headlines include New York State’s Department of Economic Development (owner of the “I ♥ NY®” trademark) sending a cease-and-desist letter to a coffee shop for using the “I [coffee cup] N Y” logo and Chick-fil-A going after a Vermont folk artist for selling t-shirts that say “eat more kale”. 

Though these tactics are occurring, consumers are now empowered more than ever before to fight back by utilizing the magic of social media. Aggressive cease-and-desist letters are being met by resistance on blogs, Facebook, and Twitter that can lead to a public shaming. Ferrero, the owner of Nutella, has went after the founder of World Nutella Day, but had to withdraw its complaint after word spread virally that “Nutella Thanks Its Biggest Fan, Founder of World Nutella Day, by Sending Her a Cease and Desist That’s nuts!” Magic Hat has met resistance on Facebook and received negative publicity for going after West Sixth Brewing Co. because they were using an alleged confusingly similar an orange label that includes the numeral 6 and a "dingbat" star. This phenomenon of social media resistance has caught the eye of intellectual property experts who at the Corporate Counsel’s 25th Annual General Counsel Conference, advised corporations to be cautious when enforcing their marks by implementing a case-by-case basis approach rather than a one-size-fits all approach to trademark enforcement.

Trademark enforcement is a very important part of protecting ones trademark portfolio. However, in the age of social media where any story can go viral, trademark owners must be aware and consider the consequences of being labeled a trademark bully in the court of public opinion.

Will Patent Reform Lead to a Crackdown of Patent Trolls?

Nowadays, it seems that patent infringement battles between two mega-corporations, such as Apple versus Samsung, are always making headline news. Unfortunately, the media is ignoring a more important issue, one that the business and legal world has known about for a while—the rise of patent trolls and their controversial litigation tactics.

Patent trolls, which are also known as patent monetization entities (“PMEs”), are companies that primarily generate revenue through licensing and enforcing patents in an unduly aggressive manner with no intention of actually producing anything from the patents they possess. According to a recent study published by the University of California’s Hastings College of the Law, 56 percent of all patent infringement lawsuits in the United States in 2012 were filed by patent monetization entities (“PMEs”). Even more shocking than the previous statistic is that these patent trolls cost U.S. innovators and companies more than $29 billion each year.

Reality, illustrated by the statistics above, has caused great frustration in the business world and many have spoken out against patent troll tactics. President Obama has even characterized the trolls’ actions as nothing less than extortion. In recent months the government has been dedicating time and resources to examining the threat of patent trolls and their effect on the US economy. The Department of Justice, Federal Trade Commission and the U.S. Patent & Trademark Office have all taken the initial steps to address this issue. Congress is also acting by considering the SHIELD Act, which requires patent trolls who file lawsuits and lose to pay all the legal fees and costs incurred by the other party.

However, not everyone agrees that patent trolls are the problem nor do they believe the SHIELD Act and/or other proposals to be the solution(s). One study commissioned by PricewaterhouseCoopers concludes that the success rate of patent trolls and practicing entities are practically the same—23% for patent trolls and 34% for practicing entities—and when the case actually goes to trial, both types of entities win at a rate of about 66%. As a result some say its not the patent trolls that are the problem but rather the patent system itself. Therefore, these same parties promote the idea that general reforms of the patent system will prove more effective rather than reforms targeted solely at patent trolls.

With patent reform fever spreading rapidly in Washington, DC, 2013 will prove to be an intriguing and influential year in the field of patent law, especially given the increased attention on and potential crackdown of patent trolls.

Abusing Fair Use: Is It Time to Clarify the Fair Use Doctrine in a Political Context?

It happens every year; a candidate for political office runs a campaign advertisement using copyrighted or trademarked material without the owner’s permission. From Governor Mitt Romney using a 30 second clip of an episode of NBC’s “Nightly News” program hosted by Tom Brokaw, to President Barack Obama using footage of MSNBC’s Andrea Mitchell commentary on the first presidential debate, the campaigns are constantly pushing the envelope. Recently, the AARP and Sesame Street have entered the scuffle requesting the campaigns to stop using their trademarks in campaign material.

Even with these complaints, the campaigns continue to use the intellectual property without the permission of its owners. Campaigns sometimes hide behind the fair use doctrine, while other times they just ignore the request and outright refuse to comply. This strategy could be considered intentional and implemented by the campaigns to gain free press; even if the campaign decides to take the video down after it receives a cease and desist letter, the television and internet media will have already showed the unauthorized content multiple times free of charge to the campaign. Campaigns are certainly abusing the fair use doctrine.

What does this cat-and-mouse game say about our legal system’s ability to protect intellectual property owners and their rights? Is the ambiguity of the fair use doctrine actually doing more harm then good? Should the doctrine be clarified, at least, when applied in a political context? Regardless of what your answer would be to these questions, it is clear that campaigns raising an alleged “fair use defense” anytime they are caught using unauthorized content is certainly doing an injustice to our legal system by distorting the public’s perception of when the fair use doctrine actually applies.

Campaigns and their Involuntary Endorsers?: When Acquiring a Public Performance License isn’t Enough

The campaign season is in high gear and the candidates are organizing campaign rallies in towns all across America in an attempt to convince their constituents that they should be elected for political office.  To effectively do so, candidates have always used music as a medium to capture the essence and theme of their campaign.

Though music at campaign rallies is as American as apple pie, many campaigns are learning the hard way that in order to play a song, they may need to do more than just acquire a public performance license from ASCAP, BMI or SESAC.  The blanket licenses offered by these performing rights organizations (“PRO”) do shield campaigns from copyright claims, but musicians are now exercising their rights beyond those given to them under the U.S. Copyright Act.  Recently, campaigns are receiving cease and desist letters from musicians alleging a right of publicity claim under state law, a trademark infringement claim, or a false endorsement claim under the Lanham Act solely because the campaign played the song at an event.

Larry Iser, a lawyer who represented Jackson Browne against John McCain and David Byrne against Charlie Crist, argues that “[b]y using someone’s famous song, you are turning that artist into an involuntary endorser of that campaign and message.”  This false endorsement claim, in the context of background music performed at political rallies, has not been decided upon by a court of law as of yet—however, it certainly is a winning argument in the court of public opinion.  In most situations, after receiving a cease-and-desist letter, a campaign will simply stop playing the song.  But do they have to?  Under similar, but not identical facts, the Second Circuit ruled in Oliveira v. Frito-Lay, Inc., 251 F.3d 56 (2d Cir. 2001) that a musician cannot assert a false endorsement claim because a company used the musician’s performance of a song in their television commercial.  It stated that such a right is unprecedented and would be “profoundly disruptive to commerce.” Adopting its reasoning, the court in Henley v. DeVore, 733 F. Supp. 2d 1144 (C.D. Cal. 2010) agreed that a false endorsement claim under the Lanham Act cannot be maintained “based purely on the use of [a musician’s] songs” by a campaign in a campaign video.

Though these cases involved audiovisual works, which require a synchronization license, it is reasonable to assume that the courts’ reasoning would also apply to the public performance of music at a campaign rally.  Ben Sheffner, former Special Counsel on John McCain's presidential campaign, argues that recognition of a false endorsement claim for the public performance of music would “in fact harm copyright owners' ability to license their works.”  He claims that if a licensee, such as a bar, music venue or even campaign, secures a bona fide blanket license from a PRO, thus paying all known right holders a fee to publically perform the song, it would be illogical to allow musicians to go back and demand additional compensation under a claim of false endorsement.

Though a false endorsement claim for publicly performing a song does not have much legal support today, this may not be the case in the future.  Cycle after cycle, cease-and-desist letters have been effective in preventing political campaigns from publicly performing a musician’s song.  Even though this may be due to a campaign’s unwillingness to engage in a legal battle over these types of matters, campaigns may be doing themselves more harm than good.  By constantly submitting to the demands of musicians, they are effectively admitting that a false endorsement claim may be valid.  In fact, presidential candidate Mitt Romney has implicitly acknowledged this claim when he asked for Kid Rock’s permission to use his song “Born Free” even though he already secured a BMI license to publicly perform it.  The more frequently this acknowledgement occurs, listeners may actually begin to believe that songs publicly performed at campaign events are a form of endorsement by the musician of the campaign and its message; therefore, giving credence to a false endorsement claim under the Lanham Act.