Can an advertising agency’s copyright infringement claim regarding a Super Bowl commercial survive Pepsi’s motion for summary judgment?

 In 2016, Betty, a boutique advertising agency, filed a lawsuit in the Southern District of New York against Pepsi for copyright infringement, breach of contract, unjust enrichment, conversion, and unfair competition. Betty claimed that Pepsi’s 2016 Super Bowl halftime commercial was stolen from their idea. A few months ago, Pepsi filed a motion for summary judgment, which the court recently granted.

Starting in 2012, Pepsi has been the title sponsor of the Super Bowl halftime show and will continue to do so it until at least 2022. The halftime show is usually elaborate, featuring recurring themes and celebrity performances and appearances. In 2016 alone, as reported by the Nielsen Company, approximately 115.5 million people watched the Super Bowl halftime show. However, this number does not take into account those viewers that watch at bars and restaurants, or those who stream the game and show online. As such, the commercial leading into the Super Bowl halftime show is an extremely high-profile spot, to which Pepsi devotes considerable attention and concern.

In 2016, Pepsi sought and received proposals for this Super Bowl halftime commercial. Betty was one of fourteen agencies that proposed ideas. Betty submitted at least eight proposals to Pepsi, one of which was titled “All Kinds/Living Jukebox,” and followed the premise of various scenes that seamlessly transition through musical styles spanning different eras. Moreover, Betty proposed the viewer travels through the various rooms with a hero character, which was presented as potentially being a single powerful performer for all musical renditions. In submitting these proposals, Betty provided Pepsi’s team with its branded USB drives to keep for further review. Pepsi ultimately rejected Betty’s idea and went with a different agency, which produced a show that included singer, Janelle Monae, dancing through three different rooms, each of which represented a different musical era, including the 50s, the 80s, and the 90s. 

Once the Super Bowl aired, Betty filed its lawsuit against Pepsi claiming copyright infringement. Betty claimed that Pepsi’s pre-halftime show commercial was based on the idea that they pitched to Pepsi in October 2015. In its complaint, Betty claims to be the sole author of the “All Kinds/Living Jukebox” advertising storyline and that the same is subject to a federally registered copyright. Betty also claims it has been damaged by Pepsi’s unauthorized use of its storyline “by not receiving fair market value compensation” for its intellectual property and “by not receiving the public acclaim it rightfully deserves for its work.”

A few months ago, Pepsi moved for summary judgement, which basically means Pepsi desired for the court to make their judgement without proceeding to a full trial. In order to prevail on a motion for summary judgement, the moving party must show that there is no genuine dispute and that the movant is entitled to judgement as a matter of law, meaning a jury would not render a different verdict. If there exists any triable issue of fact, a motion for summary judgment should be denied.

In its motion, Pepsi argued that any similarities between Betty’s proposal and the final halftime show were merely broad concepts of a musician moving through different scenes and that such  broad concepts are unprotectable. In the United States, copyright law protects “original works of authorship fixed in a tangible medium” and applies to a variety of intellectual works, both published and unpublished. The parties do not dispute that Betty obtained a valid copyright for its written presentation of the “All Kinds/Living Jukebox” advertisement. Instead, this dispute centers around whether Pepsi copied Betty’s protected material. In this manner, Betty asks the court to infer Pepsi’s copying from Pepsi’s access to Betty’s pitch material and the alleged substantial similarity between the halftime commercial and said pitch.

Because there is no doubt that Pepsi had access to Betty’s proposal, for Betty’s claim to succeed, there needs to be substantial similarity between Betty’s protectable expression and the Pepsi commercial. After reviewing briefs of the parties and hearing oral arguments, the court granted Pepsi’s motion for summary judgement. In so doing, the court found that copyright does not protect ideas, but rather the expression of ideas. The court also noted that the Pepsi advertisement was different from Betty’s proposal in “overall concept, feel, settings, themes, characters, pace and sequence.” Betty’s proposal evoked a dark and moody concept and feel, while Pepsi’s commercial takes place in bright rooms featuring pop music of different eras, and a pop version of “The Joy of Pepsi.”

Betty also asserted that there is substantial similarity because the written materials it submitted to Pepsi propose a jukebox and the Pepsi halftime commercial opens on a jukebox. The court was not persuaded because Betty’s sole reference to a jukebox is the title of its proposal, “Living Jukebox.” The court held that the title is merely an idea, which cannot be protected as a copyright until or unless it is created into a fixed and tangible medium. In addition, a previous Pepsi advertisement, titled “Diner,” featured a jukebox, so no inference of copyright could be drawn.

Overall, the court found there to be “few, if any similarities, between Betty’s protected pitch materials and Pepsi’s halftime commercial,” and that to the extent any similarities exist, they arise from non-protected elements, such as ideas, scenes a faire, and Pepsi’s prior work. Most recently, Betty has filed a motion for reconsideration of the court’s summary judgment order, in response to which Pepsi has sought (and been granted) additional time to oppose.

Will the Supreme Court deem Oracle’s application programming interfaces (APIs) worthy of copyright protection?

The United States Supreme Court recently granted certiorari to hear Oracle America, Inc. v. Google LLC, a case to determine whether application programming interfaces (“APIs”) are protectable copyrightable expression. If APIs are deemed protectable, the case will turn on whether Google’s use of 37 packages of Oracle’s APIs in its Android operating system constitutes fair use under copyright law. After receiving two adverse rulings from the Federal Circuit Court of Appeal, Google’s request for Supreme Court review has been upheld.

            The dispute began in 2005 when Google attempted to license from Sun Microsystems certain components of Java that were not otherwise available through an open source license. Sun Microsystems had implemented the Java API for desktop computers but Google sought to use it for smartphones and tablets. Google sought compatibility of Java programs within its Android mobile operating system environment as part of its ongoing mobile platform development scheme. However, after unsuccessfully negotiating said license, Google wrote its own version of Java and copied the same names, organization, and functions as the Java APIs to save development time. A few years later, Oracle acquired Sun Microsystems, and Oracle proved even less inclined to license the remaining Java components to Google.

            Copyright protection applies to an original works of authorship fixed in any tangible medium of expression and includes literary works, musical works, dramatic works, as well as many more. Copyright protection does not subsist for an idea, procedure, process, system, method of operation, concept, principle, or discovery. Indeed, per the idea-expression dichotomy, only when an idea is expressed in a protectable form may it be granted a copyright. It is the expression, not the idea, which is protected in this way.

            Some commentators feel strongly that APIs should be treated differently than programs because they only specify what a program does and not how it does it. APIs are essentially components of code designed to help software applications and operating systems interact with each other. In this way, APIs facilitate interoperability and therefore, help interface one software program or platform to another. Thus, some have argued that restricting API use without an express license directly contravenes the intended purpose of APIs.

            On the other side of the aisle, as Oracle argues, the Copyright Act protects “literary works,” which necessarily includes non-literal components. Oracle also points out that Google has cited no case finding computer code, or the structure and organization of a computer program, to be devoid of copyright protection. Finally, it may be argued that the idea-expression dichotomy is inapplicable here, contrary to Google’s suggestion, because Oracle has not sought protection for the idea of organizing functions of a computer program but rather, the particular way of naming and organizing each of the Java API packages.

            Even if Oracle’s APIs are copyrightable, Google argues that its use of the same constitutes a fair use. The fair use defense was designed to fulfill the purpose of copyright, according to the Constitution, which is “to promote the progress of science and useful arts.” Fair use serves as a limited exception to a copyright holder’s exclusive rights and permits use of a copyrighted work if it is for purposes such as criticism, comment, news reporting, teaching, scholarship, research, or the like. In determining whether a particular use is fair, courts consider the purpose and character of the use, the nature of the copyrighted work, the amount and substantiality of the portion used, and the effect of the use on the potential market for or value of the copyrighted work. The Supreme Court must also determine whether, if copyright protection subsists in APIs, Google’s fairly used Oracle’s Java package.

Can Nirvana’s allegations of copyright and trademark infringement of the band’s signature happy face design survive Marc Jacobs’ motion to dismiss?

            In December 2018, Nirvana filed an infringement lawsuit against fashion retailer Marc Jacobs for a shirt known as the “Bootleg Grunge Tee,” as well as a similar sweatshirt and pair of socks, in its then recent line, “The Redux Grunge” collection. More particularly, Nirvana alleged copyright infringement, false designation of origin, trademark infringement, and unfair competition. In this way, Nirvana seeks to demonstrate that they are not associated with, nor do they endorse Marc Jacobs. Further, Nirvana does not want the Marc Jacobs design to confuse consumers into believing otherwise. Nirvana also included Saks Fifth Avenue and Neiman Marcus as co-defendants due to their carrying of the Bootleg Grunge Tee.

            Copyright, patent, and trademark laws exist in order to protect the creators of intellectual property as well as the consumers thereof. A trademarkis a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A trademark is aimed at protecting the consumer by allowing them to know the exact source of certain goods or services. Trademark infringement occurs when there exists the likelihood of confusing one product or service with another.

            Copyright, on the other hand, protects original works of authorship and is therefore aimed at protecting creators by allowing them to profit from their original works. To prove copyright infringement, the copyright holder must show that the copying party had access to the original work and that the two works are substantially similar.  Similarly, unfair competition takes place when there is an attempt to replace a product or service that already exists with the intention of deceiving the public. 

In this lawsuit, Nirvana claims that a Marc Jacobs shirt unlawfully copied a design created by the late Kurt Cobain in 1991. The design in question is an iconic design associated with Nirvana, consisting of a yellow happy face against a black background with an “X” in the place of each eye, a squiggly upward facing smile, and a small tongue sticking out to the right. In Nirvana’s most common use of the design, they include “NIRVANA” printed in all capital letters also in yellow above the happy face design. The allegedly infringing Marc Jacobs shirt includes the same happy face with tongue design, but instead with an “M” and a “J” for eyes and the word “HEAVEN” appearing in yellow capital letters and a similar font to that of Nirvana’s design above the happy face. It is important to note that Nirvana has been using this happy face design to identify their music since 1992 and have used the design on all of its merchandise, including short sleeved shirts similar to the one distributed by Marc Jacobs.

            In the case’s most recent development, U.S. District Judge John A. Kronstadt heard and decided Marc Jacobs’ motion to dismiss. In its motion, Marc Jacobs primarily argues that Nirvana does not possess a monopoly on the smiley face design by itself but rather, that its copyright registration covers additional elements, including “NIRVANA” above the face and the words “flower sniffin kitty pettin baby kissin corporate rock whores” on the back of the t-shirt. Marc Jacobs further claims that to the extent Nirvana’s copyright covers the smiley face design, it is a different one than that found on the fashion designer’s t-shirts, sweatshirts, and socks. Moreover, by replacing the smiley face’s crosses for eyes with the letters “M” and “J,” and the word “NIRVANA” with “HEAVEN,” Marc Jacobs argues that the design is not an exact replica of Nirvana’s well-known design and therefore does not infringe the copyright.

            Marc Jacobs’ other primary argument in its motion to dismiss centered around how Nirvana’s complaint allegedly contains no explanation of how Kurt Cobain, as original author for Nirvana’s smiley face, transferred his ownership rights to Nirvana. Only the legal or beneficial owner of an exclusive right under a copyright is entitled to institute an action for infringement. Additionally, Marc Jacobs argues that the publication date on Nirvana’s copyright application is false and therefore, their registration is invalid. The presumption of copyright validity may be rebutted in this way if Marc Jacobs could sufficiently show that Nirvana knew the publication date was inaccurate and this inaccuracy would have caused the Copyright Office to refuse the registration.

            Motions to dismiss are granted when the complaint lacks a cognizable legal theory or sufficient facts to support one. If granted, the claims upon which it is based are dismissed from the case. If denied, the case proceeds forward, potentially to trial. Here, Marc Jacobs, Saks, and Neiman Marcus attempted to dismiss all claims against them. In denying the motion to dismiss, the judge found Marc Jacobs’ arguments unpersuasive. For one, the judge determined that Nirvana sufficiently alleged the similarities between Marc Jacobs’ t-shirt design and the copyrighted design by including various images of the two designs and listing multiple similar features. The court also found that Nirvana had sufficiently alleged ownership because the copyright registration lists Nirvana as its initial author. Finally, regarding Marc Jacobs’ assertion that the date of publication of the copyrighted design is inaccurate, the judge determined that Marc Jacobs failed to show that the date is indeed inaccurate and further that the plaintiffs knew of any such inaccuracy. Thus, Marc Jacobs’ motion to dismiss was denied, which causes the case to proceed.

Does T-Mobile have the right to stop other companies from using the color magenta?

Deutsche Telekom, T-Mobile’s parent company, sent a cease and desist letter to Lemonade, an insurance start-up company, demanding that they discontinue using the color magenta in their marketing materials. Deutsche Telekom is the registered owner of a trademark on a specific shade of the color magenta, RAL 4010. 

According to the Lanham Act, trademarks are defined as any word, name, symbol, or device, or any combination thereof” that is used to identify and distinguish one’s goods or services from those of other sources. The overarching purpose of trademarks is to protect consumer confusion between product and service offerings. Further, pursuant to the United States Supreme Court, colors can be protected by a trademark “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).” 

In this way, T-Mobile is not the only company to have trademarked a color. Indeed, numerous other companies have taken similar steps to protect their trade dress. For instance, Tiffany’s has trademarked their shade of “Tiffany box blue.” Similarly, Target has trademarked its iconic shade of red. As a further example, UPS has trademarked the brown that appears on its uniforms and trucks. 

Similar to trademarks for words and designs, an owner of a color trademark can sue another for trademark infringement if another uses that color or another “confusingly similar” shade. More particularly, the trademark owner must still prove that consumers are likely to be confused, mistaken, or deceived as to the affiliation, connection, or association of the other party using the similar shade or the approval by the trademark owner of that parties’ goods or services.  

T-Mobile received an injunction on Lemonade in Germany, which forced Lemonade to stop using the color magenta in relation to their company in Germany. Instead, temporarily, the insurance company has been using red. Moreover, in response to the injunction, Lemonade filed a motion with the European Intellectual Property Office (EUIPO) to invalidate T-Mobile’s trademark on magenta and also petitioned the German trademark office to remove Deutsche Telekom’s claim to any right on magenta as it relates to insurance. In this manner, Lemonade argues Lemonade and Deutsche Telekom are in two disparate markets, thereby decreasing like likelihood of customer confusion because a person is unlikely to confuse the two brands. T-Mobile maintains their color mark is associated with its brand “beyond the classic industry environment.”

In response, T-Mobile asserts that it does offer insurance on digital services, such as cybersecurity, and it sells other insurance policies to cover its devices. Lemonade also argues their shade of magenta differs from the one that Deutsche Telekom has trademarked and T-Mobile utilizes. In its social media campaign against T-Mobile, Lemonade even created a chart titled “some of the colors Deutsche Telekom thinks it owns,” where they have the trademarked shade of magenta side by side with the shade that they are using, as well as other colors that Deutsche Telekom has tried to prevent other companies from using. 

In an effort to defend themselves, Lemonade is using social media to gain attention for the case. Their instagram page has over 18 million views and their hashtag #freethepink is gaining attention. The social media campaign appears to be working, at least to some extent, as people have been expressing their unhappiness with the actions taken by Deutsche Telekom, stating that it is foolish to try to claim a monopoly on a color. In addition, people have stated that, by the standard set forth by T-Mobile, the telecom company should go after every entity that uses the color pink, including Victoria’s Secret and the breast cancer movement. While these are organizations in very different areas than Deutsche Telekom and utilize very different shades of pink, consumers are aiming to highlight their annoyance. 

Deutsche Telekom has not yet taken legal action against Lemonade in the United States. Instead, T-Mobile waited until Lemonade expanded to Germany prior to seeking any legal recourse. It remains to be seen whether Lemonade’s blatant disregard of the cease and desist letter from T-Mobile will spur further legal proceedings, including within the United States.

Are Skechers’ Skech-Air sneakers substantially similar to Nike’s patented VaporMax and Air Max 270?

On September 30, 2019, Nike filed a patent infringement lawsuit in the U.S District Court for the Central District of California against Skechers. Nike is claiming that Skechers is copying their patented designs for the Nike Air Max 270 and the Nike VaporMax. Nike is seeking damages in multiple areas, including those adequate to compensate for the alleged patent infringements, the total profit realized by Skechers, supplemental damages, and profits for any continuing post-verdict infringement until final judgement. Nike is also asking for treble damages, that is, increased damages up to three times the amount found or assessed. Finally, Nike seeks prejudgment and post-judgement interest on any damages or profits awarded, along with attorneys’ fees. 

A design patent protects the ornamental design of a product. While the product may be functional, design patents do not protect the functionality of the patent. Rather, to protect the functionality of a product, a utility patent is needed. To demonstrate design patent infringement, the plaintiff must prove that an ordinary observer would be unable to distinguish between the patented design and the accused product when they are side by side. This is referred to as the “ordinary observer” test. More specifically, this test, as most recently set forth by the Federal Circuit, provides that, “if, in the eye of an ordinary observer, giving such attention as a purchaser usually gives, two designs are substantially the same, if the resemblance is such as to deceive such an observer, inducing him to purchase one supposing it to be the other, the first one patented is infringed by the other.”

Notably, this has been modified to include the importance of prior art. Prior art includes any and all information that tends to show that a claimed invention was already known or would have been obvious at the time the patent application was filed. In the context of design patent infringement, the ordinary observer compares the patented design to the prior art. If the ordinary observer determines that the patented design is close to the prior art, smaller differences between the accused product and the patented design will be more important to the ordinary observer in determining whether infringement has occurred.

In the complaint, Nike asserts that Skechers previously admitted to taking inspiration from other sneaker companies and calling it “Skecherizing.” Nike believes that Skechers’ CEO, Robert Greenberg is to blame due to a Skechers corporate witness who previously testified that Mr. Greenberg “gives orders to knock-off competitors’ products.” There is a difference between inspiration and infringement. One can be inspired by a product and use that inspiration to either build upon what already exists, including ideas which are already patented. However, admiring a product so much that you simply recreate and distribute under your brand for your own profit constitutes infringement. As discussed above, Nike must prove that Skechers copied their patented designs by marketing and selling a design that is “substantially similar” to their patented. design. Further, to receive the treble damages it seeks, Nike also must prove that Skechers intentionally infringed its design.

This lawsuit is not the first between Nike and Skechers. In particular, Nike and its subsidiary, Converse, have filed previous lawsuits against Skechers for infringement. In the present complaint, Nike cites two pending lawsuits against Skechers. One is for the alleged infringement of the Converse high top design and the other is for the patented Nike Free and Flyknit designs. In the present complaint, Nike included side by side comparison photos for the two previusly pending lawsuits as well as the current dispute. Nike also mentioned a YouTube video review of the Skech-Air Atlas shoe, where the commentator describes the Skech-Air shoe as a “blatant Nike VaporMax knockoff” where they “remove all the things that make VaporMax good and replace them with BS.” 

Nike asserts that, as a business, they invest heavily in research and design which lead to “innovative footwear designs and technologies.” As such, they take their designs and ideas seriously and continually take steps to protect their intellectual property. Skechers, however, has a completely different view of its infringement litigation with Nike. According to a recent post by Skechers on Twitter, Nike has been notifying Skechers’ retail partners that Skechers is infringing on Nike’s patents. In response, Skechers asserts that Nike is bullying them and that this is Nike’s way of avoiding competing with Skechers. The court of public opinion apparently disagrees with Skechers. Numerous individuals have responded to Skechers’ Twitter with comments such as, “you even put AIR in the name,” “their creative department is an embarrassment,” and “Nike isn’t bullying you, they’re just standing up for themselves.”

Why is famous street-artist, Banksy, willing to protect his artwork through trademark but not copyright?

            Full Colour Black, a small greeting card company, has filed a claim to invalidate the trademark for Banksy’s artwork known as “flower thrower.” In addition, the greeting card company has been directly reproducing said artwork on greeting cards and other merchandise. The England-based street artist is fighting back against the card company in an attempt to protect his trademark.

            Banksy has been active since the 1990s as an anonymous street artist and political activist. Banksy is famously anonymous and made headlines last year for selling his Girl With Balloon painting for $1.4 million only for it to be shredded moments later. Banksy is using a shell company called Pest Control to handle the dispute. Through Pest Control, Banksy has trademarked his artwork as well as the word “Banksy.” The “flower thrower” work, officially “rage, flower thrower,” has been trademarked through Pest Control since 2014 and features a man with a bouquet of flowers in his hands in a stance appearing as though he is ready to throw said bouquet.

            Since Banksy registered his trademark for “flower thrower” five years ago, and he has not used the mark within this time period, such non-use is grounds for cancellation of the same in the European Union as well as the United Kingdom. As such, Full Colour Blank has come forward to invalidate Banksy’s registration for “flower thrower” in this manner. This system differs slightly from the United States, where, in order to register a trademark, one must prove that they are actively using their trademark on goods or services in commerce.  Banksy has publicly expressed his anger towards this situation, claiming the company is attempting to steal his name and artwork for their own profit.

            In response, Full Colour Black has stated that they are not trying to steal or profit off Banksy’s brand. They state that they are merely using his “flower bomber” painting for ornamental/decorative purposes and not to claim an association with Banksy or his brand. Moreover, they claim that obviously nobody would confuse their products for anything that relates to Banksy’s brand. Full Colour Black also defends such practice by stating “we legally photograph public graffiti and make it available to you – the public.” However, this claim does not address the fact that the company is doing so by selling, and therefore making a profit, on such allegedly “public” artwork. Instead, the card company accuses Banksy of “never mak[ing] anything available to his fans” that “cannot afford to buy one of his official canvases.”

            In response to the lawsuit, Banksy’s lawyers have advised him to open up a pop-up shop in order to protect his trademark by maintaining its registration. The store, set up in the south London town of Croydon, was called “Gross Domestic Product^TM” with a tagline of “Where art irritates life.” While not open about disclosing his identity, in an explanation of the store, Banksy openly discloses “This shop has come about as a result of legal action” and that he “has been advised the best way to prevent this is to sell his own range of branded merchandise.” This storefront was opened with the purpose of demonstrating proof of use of the “flower thrower” and other trademarks, thereby allowing Banksy to fight the claim against his intellectual property.

A trademarkis a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods of one party from those of others. A trademark is aimed at protecting the consumer by allowing them to know with certainty the source of certain products or services. Copyright, on the other hand, is aimed at protecting the creator and their creations. Both copyright and trademarks give monopolistic rights that allow their owners to profit from their own creations, and preventing others from profiting from creations that do not belong to them.

            Banksy, controversially, does not copyright his work and has been quoted saying “copyright is for losers.” Interestingly, then, it does not follow why Banksy would protect his work via trademark. In one sense, perhaps because trademark laws are aimed at protecting consumers by disallowing false associations of source for products and services, while copyright protects the authors of works from infringement, Banksy favors trademark.

            Some commentators have speculated that Banksy is against copyright not for moral or political reasons, but rather because in order to copyright his work, he would have to reveal his identity. However, this claim is wholly untrue. In the United States, one may register their copyright under a pseudonym and therefore need not reveal their true identity. Additionally, in the United Kingdom, there is no register of copyright works but instead, the copyright owner is granted protection automatically upon creation of an artistic work. Thus, the question remains why Banksy is willing to trademark, but not copyright his artwork. 

Can Jerry Seinfeld beat a copyright claim that ‘Comedians in Cars Getting Coffee’ was stolen from a director’s pitch for ‘Two Stupid Guys In A Stupid Car Driving To A Stupid Town’?

            In May 2018, author and director, Christian Charles filed a lawsuit against comedian, Jerry Seinfeld, claiming that Seinfeld’s successful show “Comedians in Cars Getting Coffee” was originally his idea, which Seinfeld stole. Most recently, Seinfeld filed a motion to dismiss, which was granted last month. 

            Charles and Seinfeld had previously worked together on several projects, although none of them ended in lawsuits. Indeed, the pair had an eighteen year long working relationship. As one example, as alleged in Charles’ complaint, Charles co-created and directed “Comedian,” a documentary film about the comedian. A producer, Gary Streiner, researched extensively camera equipment as well as the logistics of uninterrupted filming in a moving vehicle. Initially, the show was to be called “Two Stupid Guys In A Stupid Car Driving To A Stupid Town” or alternatively, “’67 Bug.” In 2002, Charles pitched the talk show idea to Seinfeld, who allegedly rejected the notion, claiming he had no interest in another television show.

            In 2011, Seinfeld allegedly approached Charles with an idea about a talk show featuring comedians driving to a coffee place and having a conversation. Seinfeld sought Charles’ assistance in developing the show. Charles claims he reminded Seinfeld that this concept was the same which was pitched to him nearly a decade earlier, in 2002. Charles then created a new treatment based on the idea described by Seinfeld, which Seinfeld approved. Charles worked to shoot and create the pilot episode, which Seinfeld “excitedly supported.”

            After successfully pitching the pilot to Sony, Charles began preparing and location scouting for a follow-up episode featuring Alec Baldwin. Charles’ representatives engaged in discussions to finalized terms with Seinfeld and Sony. In particular, Charles requested credit for his creative contribution, Seinfeld’s response responded that he alone deserved credit for the show and that Charles was merely a work-for hire. After a number of phone calls, all of which allegedly resulted in Seinfeld “yelling,” Charles was provided no further information as to next steps for the project and was ultimately shut out of production.

            Traditionally, copyright law protects a work of authorship from the moment it is created in a fixed form. Under this regime, only the author of the work can rightfully claim copyright. However, an exception exists for “works made for hire.” If a work is made for hire, an employer is considered the author even if an employee actually created the work. A work is made for hire when the work is prepared by an employee within the scope of his or her employment or when the work is specially ordered to commissioned. Under either option, the parties must expressly agree in writing that the work is a work made for hire.

            Charles claims that he maintained the belief that Seinfeld would eventually acknowledge Charles alleged ownership rights and bring him back to the show, a belief that he finally got rid of about six years later in 2016, which is when he registered his treatment of the show with the Copyright office. Charles then contacted Seinfeld in 2017, when the Netflix deal with “Comedians in Cars Getting Coffee” began. In February of 2018, Charles filed the lawsuit against Seinfeld, where he claims copyright infringement of the treatment, script, and pilot, as well as claims for joint authorship, injunctive relief, and multiple state law causes of action.

            In response to Charles’ lawsuit, the defendants filed a motion to dismiss arguing that Charles’ copyright claims are time-barred. Civil actions for infringement under the Copyright Act have a three-year statute of limitations. A statute of limitations is the maximum time after an event within which legal proceedings may be initiated. Because Charles’ claims accrued at least as of 2011, the court dismissed Charles’ complaint. In dismissing Charles’ federal claims, the District Judge did so with prejudice, which means Charles is barred from bringing an action on the same claim. As to the state law claims, however, the District Judge dismissed them without prejudice, meaning Charles remains free to bring such claims in state court.

Does Ed Sheeran’s 2014 hit “Thinking Out Loud” infringe Marvin Gaye’s “Let’s Get It On”?

            Since 2016, singer and songwriter, Ed Sheeran, has been facing a one hundred million dollar lawsuit against fellow songwriter, the late Ed Townsend Jr., through his heirs. In particular, the heirs claim that Ed Sheeran’s song “Thinking Out Loud” plagiarizes his song “Let’s Get it on,” co-written and performed by Marvin Gaye. According to the lawsuit, Ed Sheeran and Marvin Gaye’s songs have the “same melody, rhythms, harmonies, drums, bassline, backing chorus, tempo, and syncopation.”

            “Let’s Get It On” was written in 1973 and a copyright application was filed that same year with the United States Copyright Office. The application identifies Townsend as the sole author of “Let’s Get It On.” Townsend’s heirs claim the song is one of the most famous songs in R&B and soul music history and has been ranked as the 20^th greatest breakbeat of all time. Plaintiffs claim the melody, harmony, rhythm, drums, and bassline are all qualitatively important to the musical work and their combination “is the driving force of this composition.”

            Ed Sheeran and non-party Amy Wadge co-authored the musical composition for “Thinking Out loud” in 2014 and recorded the first commercially released version that same year. The song has hit the number one position on national charts in eleven countries since 2014 and has been certified platinum numerous times by the Recording Industry Association of America. Further, Sheeran was nominated for a Grammy Award for Best Record, Best Performance, and Song of the Year in 2016 for “Thinking Out Loud.”

            Under copyright law, any given piece of recorded music comprises two sets of rights. The first set protects the musical work, that is, the underlying musical composition, which is “the arrangement and combination of musical notes, chords, rhythms, harmonies, and lyrics.” The other right is to the sound recording, or master, which protects the actual recording of the musical composition.

            To prove copyright infringement of a musical work, the accused party must either infringe, that is, be substantially similar to, the musical composition or the sound recording. In a motion for summary judgment, Plaintiffs argued Sheeran infringed the sound recording performed by Marvin Gaye. Sheeran argued the scope of Plaintiffs’ copyright is defined solely by the musical composition deposit copy that was provided to the Copyright Office upon registration. In arguing this way, the plaintiffs’ goal was to define the copyright’s scope based on the sound recording because hearing the percussion and bass increases the perception of similarity between the works. However, the court ultimately agreed the copyright’s scope was defined by the deposit copy.

            In July, the New York District Judge vacated the September trial date to wait for the results in a similar copyright infringement case involving Led Zeppelin’s “Stairway to Heaven.” Led Zeppelin’s ongoing case involves alleged similarities between their famous hit and a 1968 instrumental composition by the band Spirit. The judge joked that the parties should “take the summer off” and noted that if the Led Zeppelin case goes to the Supreme Court, Ed Sheeran’s case may have to wait until 2020.

            Meanwhile, another company, Structured Asset Sales, previously sought to intervene in this lawsuit and become an additional co-plaintiff. Structured Asset Sales was founded by investment banker David Pullman and securitizes future royalties to musical intellectual property and then sells those asset-backed securities to other investors. For instance, David Bowie, The Isley Brothers, and James Brown, among numerous other musicians, decided to sell off future income in exchange for money upfront.

            Intervention is appropriate when a non-party claims an interest in the property or transaction that is the subject of the lawsuit and will be harmed by disposition of the action. In this way, Structured Asset Sales assets it entered into a contract with one of Ed Townsend’s children’s, Clef Michael Townsend, and therefore alleges owning a piece of “Let’s Get It On.” The District Judge nevertheless rejected the motion for intervention because it was “clearly untimely.” In so deciding, the judge pointed out that the case had been widely publicized and had been pending for nearly two years. Structured Asset Sales appealed the decision to the Second Circuit Court of Appeals and simultaneously filed a new lawsuit alleging similar claims.

Can Ariana Grande recover from Forever 21 for the retailer’s use of her name, image, likeness, and music in their campaigns following failed collaboration negotiations?

            Pop singer Ariana Grande is suing fashion retailer Forever 21 and the beauty company started by the daughters of Forever 21’s founder, Riley Rose, for their alleged unauthorized use of Grande’s name, image, likeness, and music in their recent campaigns. Grande claims that their marketing campaign violates the common law rights of publicity and her copyright and trademark rights under the Copyright Act and the Trademark Act, respectively. Ariana Grande is suing for ten million dollars for actual damages, disgorgement of Forever 21’s ill-gotten profits, and punitive damages in order to prevent Forever 21 and Riley Rose from violating Grande’s personal and intellectual property rights.

            This lawsuit follows a failed collaboration between Ariana Grande and the fashion retailer, where Grande ultimately denied the collaboration because Forever 21 refused to pay what she demanded based on her social media reach and stature. These negotiations took place around December 2018 and January 2019. The endorsement deal sought with Ariana Grande centered around social media marketing, including Twitter and Instagram posts and stories. According to Grande’s complaint against Forever 21, Forever 21 sought Grande’s endorsement of its clothing and products, hoping to benefit from her celebrity and influence. However, Forever 21 was unwilling to pay “the fair market value for a celebrity of Ms. Grande’s stature.”

            Following the failed collaboration, intent on pushing forward and avoiding irrelevance, Forever 21 and Riley Rose released a look-alike marketing campaign in January and February 2019. Grande claims such campaign constitutes a blatant and willful violation of her rights of publicity, as well as, her copyrights and trademarks. In particular, the campaign capitalized on the success of Grande’s album “Thank U, Next” by publishing at least thirty images and videos which Grande claims misappropriate her name, image, likeness, and music “in order to create the false perception of her endorsement.”

            As part of this campaign, Forever 21 hired a “look-alike model” posed in “clothing and accessories that resemble clothing worn in Ms. Grande’s music videos and that the public immediately associates with Ms. Grande.” Not only did the model appear similar to Grande, she also wore a hairstyle similar to the one Grande wore in the “7 Rings” music video and dressed in a top designed to look like that worn by Grande in numerous well-known photographs. To make matters more apparent, Forever 21 had previously posted some of these well-known photographs to its Instagram feed. Even more obviously, some of the posts included lyrics from some of Grande’s songs, such as “Gee thanks, just bought it!”

            While there is an obvious resemblance, and it can be assumed that Forever 21 posted the images realizing the resemblance, Ariana Grande does not hold a monopoly on the style of her “7 Rings” music video nor on her personal style. However, Grande bases her first claim for relief in California Civil Code § 3344, which prohibits knowing use of another’s name, voice, signature, photograph, or likeness, in any manner, for commercial purposes without such person’s consent. This appears to be precisely what Forever 21 has done in misappropriating Grande’s likeness in this manner. Ariana Grande also claims the defendants have violated her common law right of publicity, that is, her right to publicize her name and likeness, including for endorsement deals. In addition, Grande claims trademark infringement for defendants’ use of “ARIANA GRANDE” and “ARIANA GRANDE THANK U, NEXT,” and copyright infringement for their use of her images, lyrics, and audiovisual clips from her copyrighted songs.

            In response to this campaign, Ariana Grande filed the present lawsuit. Moreover, Grande claims the campaign is Forever 21’s attempt to remain relevant, especially amid claims that Forever 21 might potentially be filing for bankruptcy. Forever 21 released a statement saying “Forever 21 does not comment on pending litigation as per company policy.” However, Forever 21 did state “while we dispute the allegations, we are huge supporters of Ariana Grande and expressed their hopefulness “that we will find a mutually agreeable resolution and can continue to work together in the future.”

Sour Patch Trademark Battle Gets Sour as Stoney Patch Creators Refuse to Reveal Their Identity

In July of 2019, Mondelez Canada Inc. (MCI), the company known for the sour gummy candy, Sour Patch Kids, filed a trademark lawsuit against the brand “Stoney Patch,” for selling THC-infused gummies by the same name. In the complaint, MCI claims trademark and trade dress infringement, trademark dilution, and unfair competition.

Trademarks offer protection for logos, symbols, phrases, words and designs and trade dress offers protection for other elements used to promote a product or service. In this way, trademarks serve the function of designating the source of a particular product or service. Trademark infringement occurs when there exists the likelihood of confusing one product or service with another. Similarly, unfair competition is attempting to replace a product or service that already exists with the intention of deceiving the public. Moreover, trademark dilution occurs when someone uses a famous mark in a manner that decreases or harms the mark’s uniqueness.

Considering the similarities in marketing and packaging, the Sour Patch brand could become tarnished due to the fact that they are a children’s candy that might now be associated with a cannabis product. In particular, such an association might harm the reputation and brand image of Sour Patch Kids. On the other hand, the creators of Stoney Patch might attempt to argue parody, which occurs when the subsequent mark uses only so much of the original, famous mark as necessary to bring to the mind the original mark. However, there is not a strong case for parody because of the high likelihood of confusion and tarnishment of the Sour Patch brand. Indeed, tarnishment is a strong argument in this case because of the dramatic difference in the target audience. Sour Patch is obviously a gummy candy brand for children while Stoney Patch is THC-infused. 

This lawsuit highlights a growing trend whereby cannabis companies will package and market their items in a way that is similar to commercially sold candy and foods. This can be dangerous because it is marketed and presented in a way that is appealing to children and confusing for them. Ethics aside, this action is illegal under California’s Medicinal and Adult-Use Cannabis Regulation and Safety Act (MAUCRSA) which states that “packages and labels shall not be made to be attractive to children” and they cannot “be designed to be appealing to children or easily confused with commercially sold candy or foods that do not contain cannabis.” This makes this case much more than trademark infringement, but a public health issue that is not currently being addressed.

The creators behind Stoney Patch have remained a mystery. For over six months, MCI has sent demand letters to third party sellers of Stoney Patch asking them to identify their source. They have also reached out to state regulatory and law enforcement agencies, along with hiring an investigator, but they still had not identified the creators behind the brand. The only information they were able to retrieve included two Instagram accounts and one email address associated with the product. However, Facebook and Google refused to provide user information without a subpoena and court order.

Due to the lack of cooperation from these third-party companies, MCI filed an ex parte application to expedite discovery to determine the identity and location of the defendants. Therein, MCI asserts its extensive efforts to determine the true source of “Stoney Patch.” Since MCI made considerable efforts to identify those behind Stoney Patch and they appeared to have a plausible case, their application to expedite discovery was granted. In addition, the court found there was little risk of prejudice to Facebook and Google because the information sought was narrow in scope.

This case touches upon several interesting categories, ranging from trademark infringement to public health. One of the most interesting aspects of this case is the question of how to maintain a lawsuit against wrongdoers who, as far as can be determined without court intervention, are completely anonymous. This further raises privacy concerns and the dichotomy between the right to privacy and the protection of public health. Moreover, in this particular case, this begs the question of whether the third-party sellers can be held liable if they refuse to reveal their Stoney Patch source. Thus, this case will highlight broader issues relating to intellectual property, privacy, and cannabis law, all of which continue to grow in importance as online distribution of 21+ products grows in popularity.