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.      

Can Tom Brady trademark “Tom Terrific” despite use thereof by a Mets pitcher over 50 years ago?

            In May of this year, New England Patriots quarterback, Tom Brady, filed a set of applications with the United States Patent and Trademark Office (USPTO) to register “TOM TERRIFIC” as a trademark. In particular, TEB Capital Management, Inc., Brady’s management company, filed two applications, one in International Class 16 for “collectible trading cards; sports trading cards; posters; printed photographs” and one in International Class 25 for “t-shirts; shirts.” In response, the USPTO issued identical rejections to both applications based on what is known as “false connection” and “name of living individual.”

            The USPTO examining attorney’s first refusal, “false connection,” provides “the applied-for mark consists of or includes matter which falsely suggests a connection with Tom Seaver.” Moreover, the examiner states that “Tom Seaver is so well-known that consumers would presume a connection.” Tom Seaver is a former American baseball player who pitched in Major League Baseball from 1967 to 1988 for the New York Mets, Cincinnati Reds, Chicago White Sox, and Boston Red Sox. In this time, Tom Seaver apparently received the nickname “Tom Terrific.”

            A false connection exists when the applicant’s applied-for goods or services are of a type that the named person or institution sells or uses, and the named party is sufficiently famous such that it may be inferred that the purchasers of the goods or services would be misled into making a false connection of sponsorship, approval, support, or the like with the named party. In the present situation, the examiner provides that based on the evidence provided in the letter of protest, including news articles, encyclopedia excerpts, and columns, the nickname “Tom Terrific” refers to Tom Seaver.

            The examining attorney’s “false connection” decision is based on a letter of protest that was received by the USPTO in conjunction with Brady’s application. A letter of protest may be filed by a third party who wishes to bring to the attention of the USPTO evidence bearing on the registrability of a mark. Such procedure applies only to pending applications and is intended to aid in the examination process without causing undue delay. When a letter of protest is received by the USPTO, the Office of the Deputy Commissioner for Trademark Examination Policy first reviews the document to determine whether the submitted information should be given to the examining attorney assigned to the relevant application for consideration. In so doing, the Deputy Commissioner considers only the record in the application and the evidence submitted by the protestor.

            The “false connection” rejection differs from a classic likelihood of confusion rejection in two important regards. Primarily, a “false connection” refusal requires the potential for confusion to be based on association with a particular individual, either through use of that individual’s nickname or given name. Additionally, for a claim of false connection, a party need not allege proprietary rights in the name for purposes of standing.

            The USPTO examiner further rejected Brady’s application based on “name of living individual” in stating that “Tom Terrific” identifies Tom Seaver, because it was his nickname. More specifically, the USPTO examining attorney stated that registration was refused “because the applied-for mark consists of or comprises a name, portrait, or signature identifying a particular living individual whose written consent to register the mark is not of record.” An applied-for mark will identify an individual if the person bearing the name is so well known that the public would reasonably assume a connection or the person is publicly connected with the business in which the mark is used. Such a rejection applies to nicknames as well as legal names. In this way, the examiner contends “’TOM TERRIFIC’ points uniquely and unmistakably to Tom Seaver.”

            Even if Tom Brady remains unable to register “Tom Terrific” as a trademark with the USPTO, registration is not a requirement to trademark rights. An unregistered, or common law, trademark is a mark which is enforceable by virtue of its ability to signify or distinguish a product or service as belonging to a particular source. However, an unregistered trademark does not provide the trademark owner the same extent of protection as the owner of a federal or state registered mark. For example, as opposed to federally registered trademarks, common law trademarks are usually enforceable only within the geographic region or locale where the trademark owner is using it in business.

            Not only has the USPTO rejected the mark’s registration, the attempt has been widely panned in New York City, where Tom Seaver is widely remembered. In response to such criticism, representatives for Tom Brady insisted that the trademark application was an attempt to prevent third parties from capitalizing on the unprotected nickname, both to Tom Brady and Tom Seaver’s detriment. Indeed, Brady’s agent explicitly contends “there is no intention ever to impact Tom Seaver’s legacy.”

Can Apple Music, Pandora, and Google all be found liable for infringement of a patented music streaming functionality?

            Post Media Systems, LLC, recently filed separate lawsuits against Apple Music, Pandora and Google for allegedly infringing four patents related to music streaming. These three lawsuits were filed in the United States District Court for the Northern District of Illinois. Interestingly, Post Media Systems admits to being a Texas corporation with a principal place of business in Texas. Nonetheless, Post Media Systems chose to file this lawsuit in Illinois, where the company seemingly has no connections. Such a filing tactic tends to suggest a strategy and namely, that the attorneys for Post Media Systems believe Illinois to be a more favorable venue for the plaintiff’s case.

            Post Media Systems is an obscure company. Indeed, a Google search for the company primarily, if not solely, produces results relating to the multiple lawsuits filed by the company and not any actual information about the company itself or its dealings, including the locations thereof. The company is perhaps best known for previously suing Spotify and iHeartMedia, alleging similar claims to those currently at issue. In 2016, the company named Spotify in a patent infringement suit, which was filed in Texas, but ultimately settled out of court.

            According to the complaint, as well as the United States Patent and Trademark Office (USPTO) Public Patent Application Information Retrieval (PAIR) system, Post Media Systems, LLC is the assignee and owner of all right, title and interest in and to each of the disputed patents. Such an interest includes the right to assert all causes of action and obtain any remedies for infringement of these patents. However, Post Media Systems is not the original owner of these four patents. Rather, these patents were invented by Alan Bartholomew, a software developer, who was the original owner of the patents. Bartholomew owns SoniClear, a digital recording and automated audio-transcription company. It was not until 2017 that these rights were assigned to Post Media Systems.

            While, in the United States, the inventor is presumed to be the initial owner of a patent or patent application, ownership can be transferred or assigned. Ownership is key to enforceability as patent ownership grants the owner the exclusive right to exclude others from making, using, or selling an invention for a specified time period (the term of the patent). Here, there was likely a patent assignment agreement, or similar contract, which transferred Bartholomew’s patent rights to Post Media Systems. This change in ownership was recorded with the USPTO, thereby providing Post Media Systems the right to file such lawsuits.

            The complaint describes Bartholomew’s upbringing in a Quaker home, where he studied music and performed with the cello and his eventual self-teaching in software development. Moreover, the complaint goes on to discuss his journey to developing the inventions taught by the four patents at issue. More particularly, the complaint explains that Bartholomew “worked in his spare time to find creative ways of combining his musical interests and software expertise.” Bartholomew sold audio and video recording software products through his company, SoniClear, but apparently seeks to retire with recovery from these three industry giants.

            The patents at issue, United States Patent Nos. 7,069,310, 7,472,175, 8,725,832, and 8,959,181 issued between 2006 and 2015, for a “System and Method for Creating and Posting Media Lists for Purposes of Subsequent Playback” (and similar titles). According to the complaint, each of these disputed patents involves “a specific functionality of computers and networks to post, share, and playback media, overcoming posting and interface issues specific to different computing systems and accounts on shared networks.” Post Media Systems claims that each of these defendants directly infringes these patents “by making, using, selling, importing and/or providing and causing to be used without authority within the United States, a system directed to a specific functionality of computers and networks to share media for playback.”

            Direct patent infringement occurs when the accused exercises one of the exclusive rights granted to the owner of a patent without authorization from said owner. More specifically, direct infringement takes place when a person, without authorization, makes, uses, offers to sell, or sells any patent invention within the United States or imports the same into the United States. As sought by Post Media Systems, the patent owner is entitled to recover monetary damages and even attorney’s fees, in exceptional cases. Despite the seemingly baseless nature of these claims, there remains a chance Post Media Systems will convince a jury otherwise and prevail.

Is a fashion designer entitled to post an image of his branded sneakers atop a Ferrari if that designer is the owner of said Ferrari?

            Ferrari recently transmitted a cease and desist letter to Philipp Plein, threatening to sue the German fashion design for posting images of his sneakers on the hood of his own personal Ferrari. On June 30, 2019, on his personal Instagram page, which currently has more than 1.8 million followers, Plein posted an image of a green pair of his branded sneakers atop the rear of his green Ferrari with the caption “50 shades of 🍏 🍏 🍏.” Again, on July 29, 2019, Plein posted another image, which included the same green sneakers atop the hood of (presumably) the same green Ferrari. In response to this series of images, Ferrari sent its letter.

            In the letter, Ferrari claims Plein is using Ferrari’s trademarks “for promotional purposes of your brand and products, unlawfully appropriating the goodwill attached to them.” A trademark owner reserves the exclusive right to use its mark in connection with the specific goods or services associated with the same in commerce. Infringement occurs when a second-in-time party uses a similar mark in a manner that is likely to confuse consumers into believing the junior party’s products or services are sourced by, affiliated with, or sponsored by the trademark owner. The concern is that the junior user will wrongfully benefit from the senior user’s goodwill.

            Ferrari also accuses Plein’s images of tarnishing the Ferrari brand. In particular, Ferrari states “Ferrari’s trademarks and model cars are associated in your pictures with a lifestyle totally inconsistent with Ferrari’s brand perception, in connection with performers making sexual innuendos and using Ferrari’s cars as props in a manner which is per se distasteful.” Plein’s Ferrari is featured in multiple other Instagram posts by Plein, many of which include scantily clad females draping their bodies over the car or otherwise interacting with the vehicle in a sexually-suggestive manner.

            Tarnishment is a type of trademark dilution which occurs when a famous mark is linked to products of poor or questionable quality, or is portrayed in an unwholesome or unsavory context. In this way, the reputation of the mark is harmed. Thus, it appears to be Ferrari’s concern that Plein’s marketing of his brand, including the green shoes, in a manner which includes sexual innuendo will harm Ferrari’s otherwise pristine brand. Notably, none of the complained-of photographs featuring Plein’s actual products appear to include such sexually explicit content.

            Philipp Plein is a German fashion designer. Starting in the late 1990’s, Plein’s first collections featured vintage military jackets which he embroidered with Swarovski skulls. Plein’s namesake casual fashion brand was born in 2004 and the luxury read to wear label was launched in 2008. Now, Plein’s collections range from all types of men, women, and junior clothing, shoes, and accessories. Indeed, Plein is the Founder and Chief Executive Officer of the Philipp Plein International Group which includes the Philipp Plein, Plein Sport, and Billionaire Couture brands. Moreover, Plein has worked with numerous notable celebrities including Mischa Barton, Lindsay Lohan, Snoop Dogg, Rita Ora, Naomi Campbell, Iggy Azalea, Grace Jones, Theophilus London, Fergie, Chris Brown, Jeremy Meeks, and Floyd Mayweather.

            In his series of posts, Plein further alleges the letter constitutes blackmail, based on the forty-eight hour window it provides for Plein to remove the images from all media. Plein states “FERRARI GAVE ME AN ULTIMATUM OF ‘48’ hours to remove a photo of my PERSONAL FERRARI FROM MY PERSONAL INSTAGRAM !!!!!!” Plein also claims “[t]his is a clear BLACKMAIL !!!!!” Plein’s frustration stems from the fact, as he claims, that he has purchased four new Ferraris in the past ten years and is therefore, a very loyal customer of the luxury car brand.

            Cease and desist letters are commonly preludes to litigation. The purpose of the letter is to educate the infringer about the trademark owner’s rights, put the infringer on notice of the infringing activities, and make specific demands, with an implied or explicit threat of legal action if the concerns contained therein are not addressed. While it is doubtful such a standard letter would constitute blackmail, Plein’s other points as to Ferrari’s treatment of loyal customers are well-founded.

            Finally, in one of his Instagram posts, Plein ponders “And if I don’t remove it you will do what ??? Take my car away …… hahahahaha.” To date, no lawsuit against Plein, or his company, has actually been filed by Ferrari.

Does the 2013 Katy Perry hit “Dark Horse” copy a 2008 Christian rap song?

            This week, a Los Angeles jury ruled that Katy Perry’s 2013 hit song “Dark Horse” featuring Juicy J infringes a 2008 Christian rap song. The dispute began in 2014, when Christian rapper, Marcus Gray, known to his audience as Flame, in addition to collaborators Lecrae and John Reilly, filed a lawsuit against Katy Perry, Juicy J, and other collaborators of “Dark Horse” alleging the hit infringed their rap song, “Joyful Noise.” The unanimous decision was handed down on July 29^th, after a week-long trial. The jury has yet to decide the amount of damages defendants owe the Christian artists for copyright infringement.

            “Dark Horse” was first released by Perry in 2013 on her fourth album, Prism. The song was produced by Dr. Luke, Max Martin, and Cirkut, who were also named as co-defendants in this lawsuit. At the time, the song was lauded for its strategic combination of techno, pop and trap music. Indeed, plaintiffs allege that “by any measure…[the] song is a mega-hit.” The song experienced weeks at the top of Billboard’s (as well as other) music charts. Millions of digital copies have been sold and downloaded throughout this country. In addition, at the time the complaint was filed, more than 400 million viewers worldwide had watched the official music video for “Dark Horse” on YouTube. Moreover, Katy Perry performed “Dark Horse” during her 2015 Super Bowl halftime show.

            “Joyful Noise,” on the other hand, experienced success in a niche market, due to its “devoutly religious message.” The song was created in 2007 and featured on Flame’s fourth album, Our World: Redeemed, which was nominated for a 2009 Grammy in the category of Best Rock or Rap Gospel Album and for a 2008 Stellar Award for Rap Album. Additionally, “Joyful Noise” was nominated by the Gospel Music Association for Rap/Hip-Hop Recorded Song of the year in 2009. Plaintiffs allege that by mid-2014, nearly 3 million viewers had watched music video versions of “Joyful Noise” on YouTube.

            In their complaint, the plaintiffs allege that Katy Perry and her collaborators never sought or obtained permission from plaintiffs to use the “Joyful Noise” song in creating and performing “Dark Horse.” Nonetheless, plaintiffs further contend, “Dark Horse” is substantially similar to their copyrighted song. In this way, plaintiffs have been irreparably harmed. Further, the Christian rapper argued that the religious message of his song was irreparably tarnished by its association with “Dark Horse.” More particularly, “witchcraft, paganism, black magic, and Illuminati imagery” is evoked by the music of Perry’s allegedly infringing song.

            Generally, copyright infringement occurs when a copyrighted work is reproduced, distributed, performed, publicly displayed, or made into a derivative work without the permission of the copyright owner. After ownership of a valid copyright is shown, to prove infringement, the plaintiff must demonstrate (1) access to the protected work and (2) substantial similarity between the disputed works.

            To determine substantial similarity, objective similarities between the works are compared after filtering out unprotectable elements of the copyright owner’s work. At trial, the Christian artist argued numerous similarities between the two disputed songs. As one example, both songs use derivative descending minor scales in a basic rhythm. As another example, both works use staccato downbeat rhythms on a high voiced synthesizer. However, as defendants argued, these are common elements of trap beats. Additionally, defendants argued that the songs are in different keys and have divergent beats per minute. Moreover, the melodies are not the same notes.

            Defendants’ access to “Joyful Noise” was also disputed during trial. Katy Perry and her co-defendants testified during trial that they had never heard of “Joyful Noise.” In rebuttal, plaintiffs theorized that they may have heard it at the Grammy Awards or seen it on YouTube or MySpace, where the song was played millions of times. Ultimately, the jury found access in addition to substantial similarity in finding Katy Perry and her co-defendants liable for copyright infringement.

            While the damages phase is to begin right away, still pending is a motion for judgment as a matter of law from Perry’s lawyers requesting the U.S. District Judge to rule that no reasonable jury could find copyright infringement based on the evidence presented at trial. If the motion is granted, the judge would overturn the verdict and instead, find in favor of Perry and her co-defendants.