San Fernando Valley Los Angeles Attorneys
Navigation Two
Phone Number
Monday
Jun032013

Oprah Winfrey’s Fair Use Defense Rejected

Business LitigationIP Litigation Attorney

by Nicholas Kanter
818-907-3289

 

On Friday, the Second Circuit ruled that the owner of a motivation services business (Simone Kelly-Brown) can continue with her trademark infringement lawsuit against media mogul Oprah Winfrey.

Kelly-Brown owns a trademark registration for “Own Your Power.”  She uses the trademark in connection with her motivational services business. After Kelly-Brown applied to register her trademark, Oprah (along with her production company, publisher and others) produced a magazine, event and website using the phrase “Own Your Power.”

Kelly-Brown sued Oprah and others claiming the unauthorized use of her trademark constituted infringement, false designation of origin and other Lanham Act claims. The District Court dismissed Kelly-Brown’s claims, finding Oprah’s use of the mark was fair use. Kelly-Brown appealed, and the Second Circuit reversed, finding Oprah did not show that her use of “Own Your Power” was fair use.

 

Fair Use: What it Takes

 

The Court found the defendant must show the following to prove fair use: “that the use was made (1) other than as a mark, (2) in a descriptive sense, and (3) in good faith.”  The Court ruled Oprah did not satisfy any of these three elements. Here’s why:

Use as a Mark: To determine if Oprah used the words as a trademark, the court asked whether she used “Own Your Power” as a symbol to attract public attention. The Court found Oprah used the phrase prominently in several unique instances, including: the cover of the October 2010 issue of OWN; in connection with an Own Your Power event; promotion of the Own Your Power event, among other uses.

In a Descriptive Sense: In analyzing the use of the phrase on the magazine cover, the Court found that the phrase did not describe the contents of the magazine, as opposed to other phrases on the cover (e.g., How to Tap Into Your Strength, Focus Your Energy, etc.)  which were displayed on the cover in smaller print and did describe the contents of articles in the magazine.

Good Faith: Finally, the Court found Kelly-Brown alleged facts to suggest Oprah had knowledge of her “Own Your Power” trademark and chose to use it anyway. Specifically, Kelly-Brown alleged that Oprah (through her production company Harpo) obtained an assignment of rights from the prior owner of the registered “OWN ONYX WOMAN NETWORK” trademark during the creation of Oprah’s “OWN” network “to avoid an infringement action from the mark’s original owner.”  

Kelly-Brown further alleged that this transaction suggests that Oprah conducted a trademark search for the word “Own,” and that such search would have discovered Kelly-Brown’s “Own Your Power” mark. Thus, the Court concluded Oprah could have had knowledge of Kelly-Brown’s mark, and thus her use was not in good faith.

Because the Second Circuit found Oprah could not satisfy the elements of a fair use defense, the Court ruled that Kelly-Brown can continue with her trademark infringement claim.

Nicholas Kanter is a Trademark Dispute and Litigation Attorney at our Firm. Contact him via email, for more information regarding intellectual property and trademark enforcement: nkanter@lewitthackman.com.

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.
Wednesday
May152013

A Living Trust – One of Many Tools for Protecting Your Estate

Trusts & Estate Planning Attorney

by Kira S. Masteller
818.907.3244

 

A living trust is not the only vehicle that individuals need to consider when completing an estate plan. There are several other types of trusts and tools, some of which are equally as important as a living trust, necessary to accomplish and complete planning goals.

A well rounded estate plan must also consider potential income tax problems, estate and generation skipping transfer tax consequences, as well as planning trusts for minor children or protecting a child’s inheritance from his or her spouse or creditors.

In the first of a six part series on Gift Tax and Estate Planning blogs, I'll explore how Living Trusts can help protect and secure you and your family members for the future.

 

What is a Living Trust?

 

A living trust is a way of holding title to your assets so they will not be subject to Court Conservatorship or Probate Proceedings during your life or upon your death.

The trust governs what happens to your assets if you are incapacitated during your lifetime, as well as providing for the distribution of your assets when you die. You can change your living trust while you are living and you keep control of the assets you place in the trust.

Estate for Federal Estate Tax purposes includes:

A living trust also includes estate tax planning provisions so that your family will not pay estate tax unnecessarily.

Estate taxes are presently at a 40 percent rate (of the value of all of your assets when you die). Your assets include your:

  • Real Estate
  • Personal Property
  • Business Interests  (Partnerships, LLCs, Corporations, Joint Ventures)
  • Money
  • Promissory Notes
  • Deeds of Trust
  • Investment Accounts
  • Retirement Plans (such as IRAs and 401(k) plans)
  • Life Insurance
  • Annuities

If the total value of these assets exceeds $5,250,000 (Federal Estate Tax Exemption in 2013), there will be an estate tax when you die on the amount in excess of the exemption at the rate of 40 percent.

While leaving your assets to your spouse avoids the estate tax at your death, it compounds the estate tax at his or her death. Therefore, it is not always the best strategy to leave all your assets directly to your spouse in joint tenancy or payable upon death accounts.

Instead, there are ways of allowing your spouse to have control over the assets, while still avoiding death taxes on those assets upon his or her death.  A living trust will generally provide estate tax planning provisions for a married couple by allocating the deceased spouse’s estate tax exemption to an Exemption Trust upon his or her death, so that his or her estate tax exemption will be fully utilized, thereby reducing the value of the surviving spouse’s estate upon his or her death.

Though a living trust is a very important and basic estate and tax planning tool, it is not the only one.  My next blog in this series will discuss Life Insurance, and how you can use that vehicle in conjunction with an irrevocable trust.

 

Kira S. Masteller is a Gift Tax & Estate Planning Attorney in our Trusts and Estate Planning Practice Group. Contact her for more information via email: kmasteller@lewitthackman.com.

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.

Monday
May132013

A Comment on Trademarking Celebratory Gestures

Business LitigationSan Fernando Valley Business Litigation Lawyer

by Nicholas Kanter
818.907.3289

Business Litigation Google+ 

 

On America's Got Talent, Sharon Osbourne’s signature gesture to the audience was a heart symbol shaped by her hands. Now, a counterpart from the UK is attempting to register a similar hand symbol as a trademark.

Although not well-known in the US, Gareth Bale is one of the top soccer players in the English Premier League with the team Tottenham Hotspur. (One of the top players for the US Soccer team, Clint Dempsey, also plays for Tottenham).

IP Litigation©Andy HopperThis year Bale earned the Professional Footballers’ Association Player of the Year award due in part to scoring 20 goals (so far) in the 2012 – 2013 season. After scoring each goal, Bale celebrates by making a heart-shaped hand gesture.

Seeking to profit from the gesture, Bale applied to register the symbol for precious metals, jewelry, leather goods, bags, clothing, footwear and other goods in the UK. A drawing of the applied-for symbol is shown below (“11” is Bale’s number).

Bale is certainly not alone in making a unique gesture/celebration after scoring for his team. In the US, for example, Aaron Rogers of the Green Bay Packers celebrates touchdowns by making a motion as if he is putting an invisible championship belt on around his waist.

However, Bale’s attempt to secure rights in his gesture through a trademark registration will likely cause other athletes and media celebrities who use hand gestures when introduced on television shows (e.g., Blake Shelton with his finger pointing on The Voice) to do the same.

Finally, because trademark rights are acquired based on using the mark on or with a particular good and/or service as a source identifier – athletes and celebrities looking to trademark particular hand gestures will first have to use the image created by the gesture to identify the source of a particular good, e.g., jewelry, clothing etc., as Bale intends to do with precious metals, footwear and bags – in order to exploit and acquire protectable rights in the symbol. 

Thus, simply making a hand gesture after scoring a goal or when introduced on a television show alone will not likely create any protectable trademark rights.

 

Nicholas Kanter is a Trademark Litigation Attorney at our Firm. Contact him via email: nkanter@lewitthackman.com 

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.
Thursday
May092013

Keith and Robyn Zimmet Honored for Dedicated Community Service

Keith Todd Zimmet, Managing Shareholder

 

by Lewitt Hackman
818.990.2120

Recognizing 15 years of continued volunteer service, Viewpoint School in Calabasas, California gave special recognition to our Firm's Managing Shareholder, Keith T. Zimmet, and his wife Robyn, on Saturday, May 4, 2013.

Only a few individuals have received the Lifetime Achievement Award in the School's 50 year history, which:

"Honors and recognizes an individual who has performed extraordinary service for Viewpoint School and its community over an extended period of time."

Held at the Four Seasons Hotel in Westlake Village, the event was attended by nearly 500 people, with headliner comedian Alonzo Bodden providing the entertainment. Jeff Sutphen of Nickelodeon was Master of Ceremonies.

The Mayor of Calabasas, Fred Gaines, presented Keith and Robyn with a Commendation from the City.

 

Keith T. Zimmet is the Managing Shareholder of our Firm, Chair of the Commercial Finance Practice Group, and member of both the Real Estate and Corporate Practice Groups. Contact him via email: kzimmet@lewitthackman.com.

 

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.
Tuesday
May072013

California LLCs Singing a New Song – The Laws They Are a-Changin’

 

by Robert A. Hull

One of the most sweeping changes to the California law governing limited liability companies is set to go into effect January 1, 2014, when California’s Revised Uniform Limited Liability Company Act (“RULLCA”) will displace the provisions of the Beverly-Killea Limited Liability Company Act (the “Beverly Act”), which presently governs California LLCs. RULLCA is based on revisions to the Uniform Limited Liability Company Act (the “Revised Uniform Act”), which was adopted by the National Conference of Commissions on Uniform State Laws. RULLCA contains some modifications to the Revised Uniform Act to include some existing California law.

RULLCA applies to LLCs (both domestic and registered foreign LLCs) in California starting January 1, 2014. It applies to all actions of members/managers commencing on that date, though the Beverly Act still applies to such actions prior to that date.

Presently-existing LLCs will not have to file any additional documents in order to comply with RULLCA. RULLCA, in its present form, does not address Series LLCs.

LLC members and managers should have an understanding of RULLCA’s impact.

 

Some notable provisions of RULLCA:

 

  • The Operating Agreement will prevail over provisions of the Articles of Organization as to members, dissociated members, transferees and managers (though the Articles prevail as to other persons to the extent those persons reasonably rely on the Articles).

  • RULLCA’s provisions regarding non-liquidating distributions generally conform to the provisions of the Uniform Limited Partnership Act of 2008 and largely follow the Beverly Act, with certain exceptions. For example, if the Operating Agreement does not otherwise provide, such distributions under RULLCA are made based on the value of the LLC contributions of the LLC members while the Beverly Act looks to the members’ capital contributions and the allocation of profits.

  •  New language is added concerning which provisions can be overridden by the Operating Agreement, and which provisions cannot be. Provisions an Operating Agreement cannot vary are set forth in Sections 17701.10(c) and (d) of RULLCA.

  • RULLCA limits how Operating Agreements may change the fiduciary duties of members or managers. In addition, RULLCA establishes limits for LLCs regarding the indemnification of members and managers from liability for money damages arising from breaches of certain duties.

  • Most of the Beverly Act’s liability protection from the claims of third parties from LLC activities remains intact.

  • RULLCA provides specific provisions on notices, quorums, actions and consents, in the event these are not addressed by the Operating Agreement.

  • Expect more explicitly defined consequences to an LLC member who chooses to dissociate from the LLC.

All members and managers of LLCs will want to consult counsel to determine whether amendment of their present Operating Agreement is advisable to avoid unexpected or unwanted consequences.

Disclaimer:
This Blog/Web Site is made available by the lawyer or law firm publisher for educational purposes only, to provide general information and a general understanding of the law, not to provide specific legal advice. By using this blog site you understand there is no attorney client relationship between you and the Blog/Web Site publisher. The Blog/Web Site should not be used as a substitute for obtaining legal advice from a licensed professional attorney in your state.
LEWITT HACKMAN | 16633 Ventura Boulevard, Eleventh Floor, Encino, California 91436-1865 | 818.990.2120