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Entries in IP protection (6)

Tuesday
Dec172013

Trademark Disputes – Lessons Learned by Roubaix-ing Owners the Wrong Way

by Stephan Mihalovits 

Roubaix, like Champagne, is a locale in France – though the town is known more for being the end point of the Paris-Roubaix Cycling Race, than for grapes.

Specialized is a bike maker well-known among professional cyclists. They carry a line of Roubaix road bikes that run thousands, sometimes tens of thousands, of dollars.

Enter Dan Richter, a Canadian veteran who opened Café Roubaix Bicycle Studio in Cochrane, Alberta. Richter began his career by building custom bike wheels and other cycling products – Richter Bicycles moved to Cochrane in 2012 and became Café Roubaix.

It didn't take long for Specialized, understandably wanting to protect its brand, to send Richter a "cease and desist" letter regarding his use of Roubaix for his business this summer. Like most cease and desist letters, it threatened a lawsuit should Richter refuse to change the name of his brick and mortar store. The shop owner, not having the funds to fight the cycling giant, resigned himself to losing this particular battle.

 

Social Media: Specialized Bumps in the Road

 

It all looked like an easy cross to the Roubaix finish line for Specialized, until the Calgary Herald got wind of the story.

Cycling enthusiasts reading of Richter's uphill battle took up his cause, and carried the fight to social media. Many changed their twitter handles to include Roubaix in their names. Others protested with hate tweets. Specialized's Facebook page took hits regarding company boycotts and suggestions for establishing a legal defense fund for Richter.

That's when a U.S. company, Advanced Sports International (ASI), stepped in.

As it turns out Specialized was out of bounds in making its claim. ASI owns Fuji Bikes and holds the trademark for Roubaix in the United States. Steve Frothingham of ASI said Specialized lacked the authority to pursue a trademark case against the owner of the small bike shop.

ASI reached out to Richter, telling him he can continue to use the name under a license, which ASI is willing to grant. ASI noted it believes Richter did not intend for his customers to confuse the bike shop with the Roubaix line of bikes, and that consumers should be able to tell the difference.

 

Trademark Disputes & Lessons Learned

 

This tussle between various users of the same mark shows how important it is to read the lay of the land before engaging in a trademark dispute.

Whether it knew about ASI, or whether it knew but didn’t care, Specialized should have known its own rights were inferior to another company.  Companies should tread cautiously before seeking to enforce a mark that may stir a competitor with superior rights.

The second lesson is another example of how public relations must be considered in trademark disputes.

In an age when social media can deliver gossip instantly, companies should consider ways of resolving trademark disputes without creating potentially harmful PR. These could include phone calls instead of letters, or more conciliatory language.

Problems are seldom resolved when a lawyer writes a scorched-earth letter. More often, this approach bolsters the other side, and the dispute becomes intractable. With a firm message and reasonable language, trademark holders can better get a handle on their legal and public relations issues.

 

 

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
Nov272013

“She’s Crafty”: GoldieBlox, Beasties, Copyrights and Codicils

Civil Litigation AttorneyIP Litigation

 

by Nicholas Kanter & Robert A. Hull, Esq.
November 27, 2013

In 1986, New York hip hoppers the Beastie Boys released Licensed to Ill, the first rap LP to top the Billboard album chart, selling over 9 million copies in the U.S. One of the singles from the hit album was Girls. The song, in which the Beastie Boys sing about their affection for girls, is riddled with sexist lyrics, such as:

Girls - to do the dishes

Girls - to clean up my room

Girls - to do the laundry

Girls - and in the bathroom.

Seventeen years later, northern California toy company GoldieBlox Inc. is rewriting feminine roles, by selling toys meant to inspire young girls to construct, engineer and invent. The problem is they also rewrote the Beasties’ song Girls to market their products:

Girls to build the spaceship,

Girls to code the new app,

Girls to grow up knowing

That they can engineer that.

The rewritten song and accompanying video became a YouTube sensation, receiving over 8.5 million hits since being uploaded to YouTube on November 17, 2013.

In a lawsuit filed on November 21, 2013 in the Northern District of California, GoldieBlox claims the Beastie Boys threatened them with copyright infringement.

Rather than wait for the Beastie Boys to sue, GoldieBlox filed their complaint, seeking a declaratory judgment that their parody video does not infringe the rights of the Beastie Boys (and others that hold rights to the song), and constitutes fair use.

 

Fair Use: Is GoldieBlox's Version of Girls Defensible or Not?

 

GoldieBlox claims they created their song and video specifically to “make fun of the Beastie Boys song, and to “further the company’s goal to break down gender stereotypes and to encourage young girls to engage in activities that challenge their intellect, particularly in the fields of science, technology, engineering and math.” 

Based on the underlying purpose of the song and its intended effect, GoldieBlox asserts their song is protected by the Fair Use Doctrine.  

Under the Fair Use Doctrine, certain uses of another's copyright-protected work may not be considered infringement if the protected work is used for purposes of “criticism, comment, news reporting, teaching…scholarship, or research”  ( 17 U.S.C. §107). Whether a particular use qualifies as “fair use” is determined by considering four “fair use” factors, which include:

  1. The purpose and character of use – how transformative is the new material? Does the new material add new information or understanding?

  2. The nature of copyrighted work – what is the value of the work vis-à-vis the core of the copyright’s protective purposes.

  3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole – this factor looks at whether the quantity of the original work used is reasonable in relation to the purpose of the copying.

  4. The effect of the use upon the potential market for or value of the copyrighted work – does the new material deprive the copyright owner of income in some way?

While GoldieBlox’s song by itself seemingly qualifies as Fair Use, the crux of the lawsuit (assuming it does not settle) will likely center on whether GoldieBlox’s use of the song to advertise and sell its retail goods causes the song to lose Fair Use protection.

 

A Brass Monkey in the Machine?

 

Complicating the matter further is the fact that one of the members of the Beastie Boys, Adam “MCA” Yauch, died last year leaving a will which provided that in no event may “any music or any artistic property created by me be used for advertising purposes.”  Another fly in the ointment was the fact that apparently, MCA hand wrote these words on his prepared will near language which prohibited MCA’s image or name from being used for advertising purposes.

It is not clear whether the added language was part of the original will or was added later. If added later, such an amendment (typically called “codicils”) must be executed with the same formalities required of the will. Those formalities include executing the codicil in the presence of witnesses, etc.

Thus, if the handwritten language was added by MCA after the execution of the will, but for example without the presence of witnesses, it could be successfully challenged. However, there seems to be no mention in the press of a specific challenge to such language. Therefore, the language was likely present at the execution of his will.

Presuming this language was valid, in order for it to be enforceable in this case, obviously MCA must own an interest in the song (i.e., the interest must be part of his “estate”).

But, if MCA owned an interest but had previously transferred this interest into, for example, a living trust, the trust would be the owner, not MCA’s “estate”). If there was no commercial prohibition language in the trust, then the will language would not apply to prohibit commercial exploitation of the trust’s interest.

Also, this will restriction would apply only to the beneficiaries of Yauch’s estate. Absent an agreement to the contrary, joint owners of a copyrighted work have an equal right to license the copyright, provided that the other joint owners get their shares of the proceeds.

Thus, if there was not such an agreement between MCA and the other Beastie Boys preventing commercial exploitation of this song, the others could independently license the song to GoldieBlox, despite the prohibition by MCA, with MCA’s estate receiving its share of the proceeds. The prohibition by MCA would likely apply to the beneficiaries of his song interest, but would not be enforceable against the other joint owners.

From the published news reports, it appears as though the others do not wish to permit GoldieBlox to use the song in this manner.  So, MCA’s wishes may indeed be carried out.

However, if the will restriction is not enforceable, MCA’s heirs may be able to license the work commercially, despite objections from the other Beastie Boys.

Ultimately, it will come down to whether the GoldieBlox version is considered a “fair use” of the song. If so, MCA could not have prevented this commercial use while he was living and cannot prevent it after his death.

 

Nicholas Kanter is a Business and IP 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.
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
Apr112013

Why Register a Domain Name? Intellectual Property Protection to Start

Business LitigationSan Fernando Valley Business Litigation Lawyer

by Nicholas Kanter
818.907.3289

Business Litigation Google+ 

 

A political organization recently learned the hard way that possession, including possession of intellectual property, is nine-tenths of the law.

In January, after helping President Obama win reelection, Obama for America announced it was switching focus to a grass-roots organization and changing its name to Organizing for Action. The announcement was made before OFA registered the domain, www.organizingforaction.net.

On the day of the announcement, an individual named Derek Bovard registered www.organizingforaction.net.  Initially, Mr. Bovard reportedly set the domain to redirect to the National Rifle Association’s website. Currently, the OFA website redirects to Dr. Benjamin Carson’s speech at the National Prayer Breakfast.

OFA filed a complaint with the National Arbitration Forum [the complaint was filed in accordance with Internet Corporation for Assigned Names and Numbers’ (ICANN’s) Uniform Domain Name Dispute Resolution Policy] seeking an order transferring the domain name from Mr. Bovard to OFA.  In support of its complaint, OFA alleged:

  1. It owned trademark rights in the name Organizing for Action;

  2. Mr. Bovard’s www.organizingforaction.net is confusingly similar to OFA’s trademark;

  3. Mr. Bovard has no legitimate right or interest in the trademark; and

  4. Mr. Bovard registered the domain name in bad faith.

The arbitration panel found in favor of Mr. Bovard, concluding that OFA did not prove that it established trademark rights in its name prior to Mr. Bovard’s registration of the domain.

This makes sense as trademark rights are based on use, and OFA apparently did not use the Organizing for Action name before Mr. Bovard’s domain was registered. In fact, Mr. Bovard argued that he registered the domain at 5:46 a.m. on January 18, 2013, approximately nine hours before OFA legally become a group. Accordingly, the panel denied OFA’s request to transfer the domain name.

What should OFA have done differently? Clearly, before announcing the name change, OFA should have registered the domain. Unfortunately, OFA learned that conceptualizing a name is not the same as securing property rights in the name.

 

Nicholas Kanter is a Shareholder in our Business Litigation Practice Group. You may reach 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.
Wednesday
Mar132013

Five Tips for Developing and Protecting Your Trademarks

Business Litigation & Trademark Enforcement

 

by Nicholas Kanter & Tal Grinblat
March 13, 2013

 

A trademark is a word, phrase, design, logo, sound or color used to identify the source of a party’s goods or services. For many companies, their trademark can be their most valuable asset because of the association consumers have with the products or services bearing the particular mark.

For example, when a person sees a computer bearing Apple’s iconic logo, that person associates the image with a company known for manufacturing high quality computers, phones and tablets with certain user-friendly functions and qualities for which Apple is known.  This association is the result of Apple’s extensive advertising, promotion and sales of its Apple-branded products.

Before adopting a trademark and developing goodwill in the mark, it is important to research whether there are any significant obstacles that may prevent using the mark in the future. If after conducting the search you determine to move forward, it is equally important to protect your mark to prevent others from using or adopting your mark without permission.

 

How to Develop and Protect Your Trademark

 

1. Perform a Trademark Search:

In the U.S., trademark rights are acquired based on use. With certain exceptions, the first person to adopt and use a particular trademark generally obtains superior rights to use that mark over all other junior users.

Before adopting a mark, it is a good idea to order a comprehensive trademark search report. A search report will tell you about others that may already be using your desired trademark (or similar trademark). Knowing who else may be using your desired mark can help you assess the risks of moving forward with the mark, or prompt you to come up with another trademark.

 

2. Register Your Trademark:

If the trademark search report does not reveal any significant obstacles to the use of your desired trademark, you should apply to register your mark with the United States Patent and Trademark Office (USPTO). Although trademark rights are based on use, a federal registration on the Principal Register of the USPTO has many significant benefits, including a legal presumption that you own the registered mark and your exclusive right to use the registered mark for the goods/services for which your mark is registered nationwide.

If you sell or plan to sell products or services under your trademark outside the U.S., you can protect your mark by registering it with the appropriate trademark agency in each applicable country. This can be done by filing a trademark application in each desired country, or by filing a single application via the Madrid Protocol, and then seeking to extend the protection granted to the other countries selected. 

 

3. Use and Promote Your Trademark:

The primary purpose of a trademark is to identify the source of the goods/services you’re selling. Therefore, it is important to use and promote your trademark so that the public associates the mark with you, and the goods/services you sell.

Non-use can lead to the cancellation of your registration.  Moreover, the strength of your mark, and your right to exclude others from using your mark, will increase with greater public recognition.

 

4. Make All Required and Optional Post Registration Filings:

To maintain the trademark registration, you must make certain required filings. In the U.S., the owner of a registration must file a “Declaration of Continued Use” between the 5th and 6th year of the registration. At the same time, the registrant can file a “Declaration of Incontestability” to make the trademark registration “Incontestable.”  In addition, a trademark registration must be renewed every 10 years by filing a renewal application between the 9th and 10th years of registration.  

    

5. Police and Enforce Your Rights in Your Trademark:

As the owner of a trademark, you have the obligation to police your mark to prevent unauthorized third parties from using it. Failure to do so can lead to losing the exclusive right to use your mark.

If someone else is using your mark without authorization, you can send a “cease and desist” demanding that the person cease using your mark. If the unauthorized user applied to register your mark, you can oppose the registration of the mark by filing an “Opposition” with the Trademark Trial and Appeal Board. Finally, you can file a lawsuit for trademark infringement if the unauthorized user refuses to stop using your mark.

 

Nicholas Kanter is a Business Litigation Attorney experienced in intellectual property enforcement and defense litigation. Contact him via email: nkanter@lewitthackman.com for more information regarding intellectual property enforcement.

Tal Grinblat is a Trademark Attorney and Certified Specialist in Franchise and Distribution Law (California State Bar Board of Legal Specialization). Email: tgrinblat@lewitthackman.com for further details on establishing trademarks and franchises, and protecting trade secrets.

 

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.
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