Omid Khalifeh, Author at Omni Legal Group Blog

Can the California-based retailer, Patagonia, successfully assert trademark infringement against Anheuser-Busch for its use of “Patagonia” as applied to its new line of beer?

California-based retailer, Patagonia, recently filed a lawsuit against Anheuser-Busch InBev’s new “Patagonia” beer brand alleging it unlawfully obtained rights to that mark and further that the mark infringes its trademark rights. The lawsuit alleges Anheuser-Busch is deliberately attempting to take advantage of Patagonia’s tremendous goodwill cultivated in their brand.

Patagonia has been in business for more than forty years and has been involved in designing, developing, marketing, and retailing outdoor apparel, sportswear, and related products. Indeed, the clothier’s products now include a wide range of apparel products and equipment, including technical products designed for climbing, skiing and snowboarding, surfing, fly fishing, and trail running. Further, the complaint alleges, for many years, the brand has been famous in the United States and around the world for innovative apparel designs, quality products and environmental and corporate responsibility. Since at least 1973, the brand has been using the logo comprising PATAGNOIA and a multi-colored silhouette of the jagged peaks of the Mt. Fitz Roy skyline.

Seven years ago, according to the complaint, Anheuser-Busch unlawfully obtained a trademark for Patagonia as applied to “beer.” Later, the beer company filed what is known as a “Statement of Use” proving use of the trademark in commerce. Such evidence usually includes the mark as displayed on products, packaging, or other marketing tools. This filing is important because the United States Patent and Trademark Office will not publish a trademark until it is being actively used. Anheuser-Busch stated that the mark was being used as early as 2012 and its specimen of use comprised photographs of a beer bottle with a PATAGONIA label applied thereto. Patagonia complains that this specimen does not show the beer in a commercial context but rather, consists of a single bottle on a table in a white-walled room. The retailer further claims that Anheuser-Busch did not begin actually selling the beer until 2018.

The lawsuit further alleges that Patagonia owns numerous registrations for and including the standard-character PATAGONIA trademark and its classic logo and that these registrations are in full force and effect. Moreover, Patagonia claims it has annually spent enormous amounts of time, money, and effort advertising and promoting the products and services on which their trademarks are used. As a result, Patagonia products are sold all over the world and the brand has acquired enormous goodwill.

To the contrary, Anheuser-Busch only began using PATAGONIA as applied to beer in late 2018 and as such, has not accumulated any trademark rights. Anheuser-Busch’s logo, similar to Patagonia’s, features the term “PATAGONIA” appearing beneath the silhouette of a mountain. Instead, Patagonia argues, Anheuser-Busch’s use of this trademark and logo have caused consumer confusion in the marketplace. Additionally, this allegedly infringing use, Patagonia claims, is likely to cause dilution of Patagonia’s word trademark by diminishing its distinctiveness.

To make matters more obvious, Patagonia started a food business in 2012 called Patagonia Provisions, Inc. Under this company, Patagonia developed, marketed, and sole socially and environmentally responsible food items under its PATAGONIA PROVISIONS mark, including buffalo jerky, salmon, fruit and almond bars, and soup mixes. In 2016, the food division launched its own beer called Long Root, which used a perennial grain, called Kernza, instead of barley to formulate the beer. Kernza has long roots that store carbon in the ground and Long Root beer thereby services as a vehicle to introduce customers to carbon sequestration as a means of removing greenhouse gases from our atmosphere.

In its lawsuit, Patagonia seeks an order that Anheuser-Busch’s marks incorporating “PATAGONIA” be cancelled. In addition, the clothier requested that the court find the beer company’s use of the mark to infringe and dilute Patagonia’s prior trademark rights. Finally, Patagonia seeks damages as well as an injunction against Anheuser-Busch.

Can Gigi Hadid escape liability for copyright infringement arising out of her use of a photograph of herself taken by paparazzi?

On October 12, 2018, Gigi Hadid posted a photograph of herself on Instagram. The New York company, X-clusive Lee, Inc. (“X-clusive”), that allegedly owns the copyright to the photograph has since filed a copyright infringement lawsuit against the model seeking an injunction, statutory damages, any profits realized from the publication of the image, and attorney fees and costs. The lawsuit arises out of X-clusive’s allegation that Hadid uploaded this copyrighted photograph to her social media account without license or permission from X-clusive.

Gigi Hadid is perhaps best known for her modeling for the likes of Versace, Chanel, Eli Saab, Fendi, Marc Jacobs, Anna Sui, Miu Miu, Fenty, as well as, others. She has also starred in advertising campaigns for Guess, Versace, Topshop, Stuart Weitzman, and others. Currently, Hadid’s Instagram page has more than 47 million followers. At the time Gigi posted the photograph in question, her Instagram page had over 44 million followers. The disputed photograph received more than 1.6 million likes before it was taken down by Hadid.

The complaint was filed in federal district court in Brooklyn, New York. Therein, X-clusive cites at least 50 “unaccredited photographs” that Hadid had allegedly published to her Instagram account. These photographs include Gigi in public, at press events, or on the runway. The complaint further accuses Hadid of acting willfully, noting another lawsuit filed against the model in 2017 based on very similar facts. In that case, Hadid had published another copyrighted photograph of herself to her social media accounts without permission. However, that case settled out of court prior to the parties conducting discovery.

In an unusual action, lawyers on behalf of Hadid filed a letter addressed to Judge Chen, the presiding judge in the case, requesting a “pre-motion conference on an anticipated motion to dismiss.” In this letter, Hadid’s lawyer sets forth numerous arguments as to why Hadid is not liable and this litigation is not sustainable. First, the letter cites to a recent Supreme Court case, Fourth Estate Pub. Benefit Corp. v. Wall-Street.com, LLC, 139 S. Ct. 881, 888 (2019), which sets forth that a copyright must be registered in order to bring an action for infringement thereof and that registration occurs when the Copyright Office registers the copyright, not when the application is filed. Since X-clusive’s copyright appears to remain a mere application and not yet a registration, X-clusive cannot maintain suit for infringement.

The letter also points out that X-clusive’s complaint does not name or point to any particular individual photographer who actually snapped the photograph in dispute. Further, the complaint does not explain the relationship, if any, between the photographer and X-clusive. Rather, the complaint merely states that X-clusive is the copyright holder for the photograph. In this way, the letter argues, the complaint fails to establish facts to allege that X-clusive had a right to bring this action.

Additionally, the letter sets forth Hadid’s fair use argument. In particular, Hadid’s attorney claims that the photograph was not disseminated for commercial purposes and Hadid has not deprived X-clusive of any significant revenue. Interestingly, the model’s attorney argues that Hadid herself contributed to the copyrightable elements of the photographs, that is, Hadid smiled and posed. Thus, the photographer did not attempt “to convey ideas, emotions, or in any way influence the subject’s post, expression or clothing” and therefore, cannot claim a copyright to the photograph. Overall, the correspondence seeks to establish that the paparazzi was taking advantage of Hadid by surveilling her, taking photographs of her every public movement, and selling them for profit. In this manner, the letter goes on, the plaintiff paparazzi seeks to make their living by exploiting Hadid’s image and selling it for profit.

Gigi Hadid is not the first celebrity to face a lawsuit over posting a copyrighted image of themselves to social media. As one example, in 2016, Khloe Kardashian published a photo of herself on Instagram, which was owned by Xposure Photos and exclusively licensed to the Daily Mail. Xposure, in that case, claimed Kardashian’s conduct was egregious because she or someone on her social media team scrubbed the image clean of copyright information prior to posting. Xposure eventually dismissed the case, presumably after a settlement had been reached.

In these cases, the defendant typically argues right of publicity. More specifically, individuals generally have a right to control the use of their own name, image, likeness, and identity. Additionally, individuals are entitled to prohibit others from using the same for commercial gain without permission. However, there is a well-established exception to this general right of publicity for newsworthy subjects or matters of public interest. New York law interprets these phrases quite broadly giving individuals wide discretion in using other people’s identity even for commercial gain when the use is newsworthy. Moreover, New York law specifically protects photographers from lawsuits against right of publicity lawsuits by their subjects. It remains to be seen whether the court will be persuaded by the arguments set forth in the letter filed by Hadid’s lawyers.

Can Peloton be held responsible for hundreds of millions in damages to music publishers based on its unlicensed inclusion of certain musical works in its exercise videos?

Ten publishing companies that represent songwriters behind hits by the likes of Lady Gaga, Drake, and Rihanna filed a lawsuit against Peloton, the fitness technology company, alleging copyright infringement. Specifically, the publishers complain that the fitness company has used over 1,000 of its copyrighted musical works without permission since 2017. In response, Peloton began removing classes from its repertoire that feature songs the publishers claim were being used without proper licenses.

Peloton is one of the world’s most successful fitness and technology companies. Since its inception in 2012, Peloton has more than 600,000 subscriber members and is reported to be valued in excess of $4 billion. In 2018, Peloton eclipsed cycling giant, SoulCycle, in sales. As a result, Peloton is preparing for its initial public offering (IPO) later this year. The company offers both hardware in the form of a bike or treadmill, as well as, a subscription service that allows consumers to replicate the experience of a high-end exercise studio in the convenience of one’s home. Users are enabled to participate in instructor-led video workouts, while competing against other class participants and viewing performance metrics. In addition to its initial cycling classes, the company has expanded its offering to include yoga, strength, and other exercise classes, all of which are available via live and streaming video. Each of Peloton’s over 13,000 workout videos features music from start to finish, thereby providing a tempo, as well as, an atmosphere for a treadmill run or stationary bike ride.

The lawsuit, filed in the United States District Court for the Southern District of New York, seeks up to $150 million in damages for Peloton’s alleged copyright infringement. Copyright Infringement involves the reproduction, distribution, performance, public display, or making of a derivative work of copyrighted work without the permission of the copyright owner. The United States Copyright Act grants copyright owners exclusive rights in their copyrighted works, including the right to reproduce, perform publicly and distribute and authorized others to do the same those copyrighted works. Pursuant to this, the publishing company plaintiffs had previously licensed the public performance, reproduction, synchronization and distribution of many musical works in their catalogs.

The publishers claim Peloton used more than 1,000 musical works, including songs by Drake, Rihanna, Kanye West, Lady Gaga, Tiesto, Benny Benassi, Avicii in addition to many others, over a period of years in the videos that it makes available to its hundreds of thousands of customers. Each of these works has been registered with the United States Copyright Office. Moreover, many of these musical works are featured in multiple workout videos. For example, the complaint states that Rihanna’s famous “Umbrella” is played in at least 55 separate workout videos since late 2017. Each of these uses would have required a separate synchronization license and Peloton obtained none.

The crux of this lawsuit is that the New York-based start-up failed to secure a synchronization license for a single one of the more than 1,000 songs. The right to license the synchronization of a musical work is derived from the copyright owner’s exclusive right of reproduction. Synchronization licenses, or sync licenses, permit the licensee to lawfully reproduce a protected work in connection with or in timed relation with a visual image, such as the videos that Peloton records, archives and makes available to its customers. In this way, use of the same musical composition in a different context or in a different audiovisual work would require a separate license, carrying an additional fee.

Based on the fact that Peloton has previously obtained licenses for other songs it features in its videos, the plaintiffs claim Peloton is a “textbook willful infringer.” Peloton is allegedly well aware of and fully understands copyright law requirements due to the existence of these other licenses. In this manner, the publishers claim “there is no doubt that Peloton’s infringement was and continues to be knowing and reckless.” Willful infringement involves instances when the named defendants knew or should have known of their wrongful conduct.

Copyright law allows a maximum statutory damages in the amount of $150,000 for each willful infringement. The publishing companies seek this maximum amount for each of the 1,000 works infringed. Alternatively, plaintiffs may be entitled to actual damages, including Peloton’s profits from its infringement of the copyrighted works. It remains to be seen if Peloton’s removal of the infringing videos will allay the publishing companies’ concerns. However, in a letter that went out to Peloton subscribers, Peloton claimed that prior to the filing of the lawsuit, “fruitful discussions” had been ongoing with these publishing companies. Nonetheless, Peloton goes on, the classes were removed “out of an abundance of caution.”

Will the NCAA succeed in its opposition proceeding against TM2A, Inc., which is attempting to register “March Mulligans” as a trademark?

This past week, the National Collegiate Athletic Association (NCAA) initiated an opposition proceeding against a Missouri-based company known as TM2A, Inc., which is attempting to register “MARCH MULLIGANS” as a trademark. The Missouri company, TM2A, Inc., which stands for “The March to April” invented a new twist on the traditional March Madness bracket challenge by allowing fans to correct erroneous game predictions during the competition. The purpose of “March Mulligans” is to maintain fans’ interest in the Tournament even after their brackets otherwise would have busted. The classic basketball bracket challenge involves a grid of all the teams in the tournament and selecting predicted winners in each of the 67 games. No one has ever successfully filled out a perfect bracket.

The NCAA is a non-profit organization that regulates the athletes of over 1200 North American institutions and conferences. The NCAA Division I Men’s Basketball Tournament, otherwise known and branded as March Madness, is a single-elimination tournament played each spring featuring the college basketball teams from the Division I level schools to determine the national championship. The NCA owns various registrations for “MARCH MADNESS”, eight of such registrations were cited in the NCAA’s Notice of Opposition. The first registration for “MARCH MADNESS” was filed in 1989 in International Class 041 for “entertainment services, namely, presentation of athletic and entertainment personalities in a panel forum.”

In March 2015, TM2A filed an intent-to-use trademark application to register “MARCH MULLIGANS” in connection with “entertainment services, namely, organizing, conducting and providing online electronic sweepstakes, games of chance and contests.” Three years later, the application was published for opposition, at which point the NCAA filed an opposition to the mark’s registration. The opposition claims that the applied-for mark, “MARCH MULLIGANS,” is confusingly similar to the NCAA’s “MARCH MADNESS” marks and that if the applied-for mark were to register, consumers are likely to be confused, mistaken, or deceived into believing there exists an association between NCAA’s prior marks and the non-traditional bracket challenge.

Upon acceptance by the examiner in the United States Patent and Trademark Office, an application for registration on the Principal Register is published for opposition in the Official Gazette. This initiates a period of 30 days within which any oppositions to registration of the mark must be filed. Once an opposition is filed, the case will proceed before the Trademark Trial and Appeal Board (TTAB), which follows the Federal Rules of Civil Procedures used in general civil actions. However, there is no formal trial before the TTAB. Instead, there is first a testimony period, during which the opposer submits evidence in support of opposition and the applicant responds with evidence supporting registration. The evidence may be in the form of depositions, admissions, answers to interrogatories and each party is provided the opportunity to rebut the other side’s proof. Upon conclusion of the testimony period, the parties file briefs and the TTAB will only hear oral arguments by the parties upon the request of either party.

Any party that believes that he or she would be damaged by the registration of a mark on the Principal Register may file an opposition. In particular, the opposer must demonstrate that it has standing and that there exists a statutory ground that negates the applicant’s entitlement to registration. Standing requires that the opposer have a direct and personal stake in the outcome of the proceeding. Also, the belief of damage must have a reasonable basis in fact and not be merely subjective. With respect to the second requirement, the opposer may assert any statutory ground that negates the applicant’s entitlement to registration, including likelihood of confusion, mere descriptiveness of the mark, dilution, functionality, genericness, disparagement, geographic descriptiveness, or that the applicant has no bona fide intent to use the mark.

The NCAA claims it has offered and sold millions of dollars’ worth of goods and services in connection with its “MARCH MADNESS” mark and that it has also spent significant sums advertising and promoting its mark throughout the United States. As a result of such expenditures, the NCAA asserts that its mark represents extremely valuable goodwill. Moreover, the NCAA claims its registrations are all incontestable, which provides conclusive evidence of the validity of a registered trademark, the registrant’s ownership of the mark, and the registrant’s exclusive right to use the mark in commerce. Thus, the NCAA claims not only that consumers are likely to be confused if TM2A’s mark were to issue but also that the distinctive quality and reputation of its MARCH MADNESS mark will be diluted if TM2A’s MARCH MULLIGANS mark is used in commerce.

TM2A has yet to file a response to the NCAA’s trademark opposition and has until April 20, 2019 to do so, absent the filing of an extension. This is another instance of the NCAA using its vast resources to protect its intellectual property. Indeed, the NCAA has historically been aggressive in patrolling and enforcing its marks. For example, in 2017, the NCAA filed a trademark infringement action against a company that ran online sports-themed promotions and sweepstakes under the marks “April Madness” and “Final 3.” Another case involved a car dealership that had registered and was using the mark “Markdown Madness” in advertising.

Amazon Launches Project Zero To Stop Counterfeit Sales

Counterfeit sales at Amazon have increased so much that it stated it is much more damaging to a brand owner than to Amazon when a consumer receives a counterfeit product.

In February 2019, Amazon.com filed a Form 10-K annual Report with the U.S. Securities and Exchange Commission officially acknowledging to shareholders that the company’s online sales platforms risked being found liable for fraudulent or unlawful activities of sellers on those platforms. Amazon admitted they may not be able to prevent sellers trafficking counterfeit and pirated goods.

Amazon’s Form 10-K filing stated that the law relating to the liability of online service providers is currently unsettled. They stated their seller programs may render the company unable to stop sellers from collecting payments when buyers never receive products they ordered or when products buyers receive are materially different than described by sellers. It was noted this is the first time Amazon used the word “counterfeit” in an annual report. Although this may be their first acknowledgement of counterfeiting activities affecting their online retailers, it is old news for both small and large brand owners, i.e., Apple, Williams-Sonoma, Elevation Lab and Daimler AG. Apple claimed that 90% of Apple-branded products sold on Amazon are counterfeits. The Counterfeit Report noted that CEO Jeff Bezos himself is complicit in the sale of counterfeit items on Amazon’s e-commerce platform.

Amazon’s susceptibility to the counterfeit problem is affected by how the company’s e-commerce services are structured. Amazon is structured into three different e-commerce tiers: (1) The Amazon Retailer, where buyers employed by them negotiate wholesale prices for items, which are then sold by Amazon.com LLC; (2) Fulfilled by Amazon, where the sellers are third parties. The goods are stored in Amazon warehouses and shipped by Amazon employees; and (3) Amazon Marketplace, which is more like eBay, where Amazon is the platform, and storage and shipping is handled solely by the seller. Consumer trust is developed from the idea that when you buy from Amazon, you are receiving what you believe is a genuine product. Recent lawsuits from Daimler and Williams-Sonoma show that it is more damaging to a brand owner than to Amazon when a counterfeit product is received. Many people don’t even know they received a counterfeit.

China is the main culprit of counterfeit goods. In 2017, nearly 90% of all global counterfeit products seized by U.S. customs agents came from China and Hong Kong. If online retailers are going to continue to make their platforms available to China-based sellers, there should be some burden on them to show that the products are legitimate. In addition, trademark owners dealing with counterfeits should be filing lawsuits and forcing Internet stores to pay damages for counterfeits.

Unauthorized distribution is a problem for trademark owners. Numerous brand owners who sell luxury products have had to deal with unauthorized sales of their genuine products on Amazon. These products are only supposed to be sold through a network of authorized dealers; however, brand owners find it difficult to control downstream access due to the first sale doctrine, which allows for resale of genuine products in an unchanged state. If the products get out of their normal distribution channel and end up on Amazon, it can be problematic where a brand owner wants to protect pricing and provide consumers with a specialized sales force and warranties, which is not available online. Unauthorized sales could hurt a brand owner’s reputation with consumers if Amazon’s price is much lower, and it can hurt relationships with dealers who feel the price difference is unfair. It’s a little easier to combat unauthorized sales on Amazon when it’s not a manufacturer selling the products on Amazon because Amazon collects material from the seller. When the manufacturer provides the materials, Amazon receives a sublicense to them and makes it more difficult for brand owners from a copyright standpoint through takedown notices. Brand owners concerned about counterfeits or unauthorized sales could use watermarking techniques or covert markings which are difficult for counterfeiters to replicate. It is very important to keep records of copyrightable materials, i.e., product images or advertising materials that can be registered with the U.S. Copyright Office. A copyright action is much more straightforward when a second or third party has appropriated copyrighted material, but not easy to enforce without accurate records. Brand owners could file for copyright registration in the event a manufacturer or someone else embarks on unauthorized sales on Amazon.

To reassure the public that expects to purchase authentic products, an Amazon spokesperson stated they strictly prohibit the sale of counterfeit products and invest heavily through funds and company energy to ensure their policy against the sale of counterfeit products is followed. They are available 24/7 to act on reported violations. They have dedicated teams of software engineers, research scientists, program managers, and investigators to continuously operate and refine their anti-counterfeiting program. Over 99% of all Amazon page views by customers landed on pages that did not receive a notice of potential infringement. Additionally, customers are protected by their guarantee, whether purchased from Amazon or a third-party seller. If the product is not as advertised, customers receive a full refund of their order.

There still may be reason to question Amazon’s ability to effectively eliminate counterfeits. Amazon’s service representatives who handle the requests to take down counterfeit items usually are not legal professionals and follow a script on handling the claims. Noted are instances of identical takedown warnings sent to Amazon whereby one is accepted and one is denied when they were analyzed by different service team members. While Amazon’s statistic on the 99% of customer page views seems great, considering how large Amazon is with billions of page views yearly, that percentage could include a large number of infringing items not yet sent a notice. Regarding Amazon’s statement that customers can get a full refund on counterfeit purchases through its A-to-Z Guarantee program, in it’s 10-K filing, Amazon said that it “reimburse[s] buyers for payments up to certain limits.” That phrase doesn’t guarantee a full refund in all cases.

What do trademark lawyers do?

Trademark law involves the protection of brand names, logos, designs, and trade dress applied to goods and services. Trademark attorneys, like those at Omni Legal Group, provide legal advice on trademark matters and assist clients in all stages of the trademark process. Unlike patent attorneys, trademark attorneys need not have passed any specialized registration examination before the United States Patent and Trademark Office (USPTO). Rather, trademark attorneys need only be active members in good standing of the bar of the highest court of any State. Trademark lawyers’ jobs include both transactional and litigation aspects.

When a new trademark is contemplated for registration, one key function of a trademark lawyer is to determine that the proposed mark qualifies for protection and does not infringe another’s rights. In order to do so, the lawyer may perform a trademark search of the USPTO database and other available records for confusingly similar registered marks. Indeed, all information submitted to the USPTO at any point during the trademark application and/or registration process is public record so even if a mere application has been filed for a mark, the USPTO database will indicate the same. If the attorney finds a conflicting mark, the client will potentially be denied registration and may even be subject to a lawsuit by the registered owner of the existing mark. In this way, trademark lawyers assess the chances of success of an application. Thus, trademark attorneys’ role in advising on adoption and selection of a new trademark can save time and resources down the road.

After the trademark clearance has been performed, the trademark lawyer may also file and prosecute the trademark application. Initially, this entails preparing the application forms, including an online form through the Trademark Electronic Application System, the applicable fee, and, if the mark is already in use by the client, the specimen showing such commercial use. If the trademark has not previously been used by the client, the trademark attorney will file what is known as an intent-to-use, or Section 1(b), application, indicating the client has a bona fide intent to use the trademark in commerce. Prior to registration of the mark, it must be demonstrated that the mark is actually being used in commerce.

Not all trademark applications result in registrations. After the USPTO determines that the application meets the minimum filing requirements, a serial number will be assigned and the application forwarded to an examining attorney. The USPTO examining attorney reviews the application and checks its compliance with applicable rules and statutes, such as that mentioned before with regard to likelihood of confusion with an existing mark. If the examining attorney decides that a mark does not deserve registration, an Office Action is issued which explains any substantive, technical, or procedural reasons for refusal. Trademark attorneys are skilled at identifying such issues and responding accordingly, including submitting arguments against substantive refusals and correcting technical or procedural deficiencies.

Once a trademark has been registered, the owner of the mark may still face legal issues in relation thereto. On the one hand, a third party may come forward and claim superior rights to the registered trademark and may oppose registration or seek cancellation of the mark. In such a scenario, the trademark attorney may defend the registrant before the Trademark Trial and Appeal Board or in District Court in proving the mark’s validity and the client’s rights. On the other hand, a third party may begin infringing the trademark owner’s rights by utilizing a mark that is likely to cause consumers to believe there exists an association between the trademark owner and the third party. In this case, the trademark attorney may bring a lawsuit on behalf of the trademark owner to stop the third party’s infringement and ideally obtain monetary relief representing harm suffered by the client.

It is important to note that some trademark attorneys limit their practice strictly to prosecution while others are solely litigators. Here, at Omni Legal Group, our skilled attorneys handle the entire gambit of trademark issues from clearance to prosecution to litigation and have the experience to find the proper solution for your trademark needs.

Public Domain Day

As the clock struck midnight on New Year’s Eve, hundreds of thousands of works were released into the public domain. January 1, 2019, otherwise known as Public Domain Day, marked the release of scores of books, musical compositions, paintings, poems, photographs, and films originally published in 1923. As a result of Public Domain Day, anyone is now free to republish, recreate, or adapt any of these works for use in new works. This occasion marks not only the first time a public domain dump has occurred in 21 years but also, the beginning of a new annual tradition.

Copyright is a form of intellectual property law that protects original works of authorship, including literary, dramatic, musical, and artistic works, such as poetry, novels, paintings, movies, songs, and architecture. When one owns a copyright to a work, that individual or entity holds exclusive rights for its use and distribution for a limited time and subject to certain limitations and exceptions. Copyright protections date back to the original grant in the Constitution giving Congress the right to right to bestow exclusive rights to a creator for limited times. Indeed, Article I Section 8 Clause 8 provides Congress the power “[t]o promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.”

The first copyright act in 1790 provide a 14-year copyright term with the option to apply for an automatically granted 14-year renewal. This original version of the copyright act attempted to strike a balance between providing an incentive to authors, artists, and scientists to create original works but also to limit their monopoly in order to stimulate advancement of science and the useful arts. In 1909, the term, as well as, the automatically granted renewal doubled to 28 years. Additionally, the 1909 act broadened the scope of categories to include all works of authorship. Again, in 1976, the law was changed to harmonize with the Berne Convention. The Berne Convention provides the basis of mutual recognition of copyright between sovereign nations. In this amendment, the period was again extended, this time to the life of the author plus 50 years.

Finally, in 1998, Congress passed the Sonny Bono Copyright Term Extension Act, adding 20 years to the terms of older works. The Act was named after the entertainer and Representative from California’s 44^th Congressional District who had died unexpectedly in a skiing accident earlier that year. Sonny Bono’s colleagues in Congress dedicated the copyright extension legislation, of which Bono was a major proponent, to his memory.

The Sonny Bono-named act fixed a period of 95 years for anything placed under copyright protection from 1923 to 1977. After 1977, the expiration measure is not fixed but rather, is based on when an author perishes. In effect, by the time the act was passed, previously-copyrighted works from 1922 and before were already released into the public domain but works from 1923 and beyond would be subject to copyright protection until this year. In other words, the advancement date of the public domain for works covered by the older fixed term copyright rules was effectively frozen. However, the Act did not revive copyrights that had already expired.

Proponents of the copyright term extension argued that the life expectancy of humans had risen dramatically since Congress passed the original copyright act in 1790. Further, proponents also claimed that extending the copyright term would align U.S. law with Europe’s under the Berne Convention. Individuals and entities such as Disney, the Gershwin family trust, and the grandchildren of Oscar Hammerstein were amongst those who pushed for the extended copyright term.

Those opposed to the Sonny Bono Act claimed that the legislation was only aimed at corporate welfare and that most works bring a majority of the overall profits during the first few years after publication. Interestingly, many of the proponents of the act were those whose works were still generating significant revenues in the 1990s. Thus, the argument follows that extending the copyright term resulted in a windfall to the companies and families that owned these copyrights. Opponents also argued that patent terms have not been extended in parallel and that patents adequately reward investment in the field with a 20-year term.

Assuming Congress does not interfere again, more works will continue to fall into the public domain each January from now on. In January 2021, The Great Gatsby will fall into the public domain. This will be followed by the release of Ernest Hemingway’s The Sun Also Rises in January 2022. Then, in January 2024, Steamboat Willie’s copyright will expire and with it, the original incarnation of the film’s star, Mickey Mouse. While Disney will no longer have an exclusive copyright over the original depiction of Mickey, the company still retains its copyrights for later incarnations of the character and of course, all of its Mickey-related trademarks. Moreover, between 2031 to 2035, the copyrights to Superman, Batman, Snow White, and early Looney Tunes characters will all fall into the public domain.

All I Want For Christmas Is IP

As the countdown to Christmas begins, intellectual property, identical to other industries, gears up for various holiday-related inventions, trademarks, and artistic works. While one cannot technically have a monopoly on Christmas, Hanukkah, or any other holiday, many have tried to obtain the broadest possible intellectual property rights relating to the same.

There are four federally registered trademarks for “Merry Christmas.” One is for cigar and cigarette boxes. Another was registered by a winery for fruit wine, grape wine, and natural sparkling wines. Additionally, one design trademark incorporates the greeting “Merry Christmas” for Christmas tree ornaments and decorations. The applicant for this design mark was required to disclaim the terms “Merry” and Christmas,” effectively rendering their mark protectable only to the extent that the terms are incorporated into that particular design. A trademark disclaimer is a statement the applicant of the trademark makes to the United States Patent and Trademark Office indicating that the applicant does not claim exclusive rights to those terms, because those terms are not registrable in the particular context. Trademark disclaimers often arise in the context of terms that are descriptive of the goods and services to which the mark relates.

Some more playful “Merry Christmas” trademarks include variations in spelling and placement of the phrase among other terms. For example, in 2017, one individual registered “Make American Merry Christmas Again” for clothing. Another classic saying is “Merry Christmas Ya Filthy Animal,” which is registered for Christmas tree ornaments and decorations. In a religiously sensitive registration, “Merry Christmas – If Applicable !” is registered for a website featuring personal greetings about Christmas. Translations of the greeting have also been trademarked. “Feliz Navidad” was registered by a coffee roasting company for whole and ground coffee beans and coffee drinks. Also, the French translation, “Joyeux Noel” is registered for scented candles.

Apparently less popular are trademark registrations for “Happy Hanukkah” and “Happy New Year.” There is only one registration relating to Hanukkah for a design incorporating the words “Happy Hanukkah” and “Shalom” for chocolate candy bars. In this one, similar to the “Merry Christmas” design mark registration for Christmas tree ornaments and decorations, the applicant was required to disclaim the term “Hanukkah” as well as the representation of a menorah in the mark. Moreover, while numerous people have attempted to register “Happy New Year,” especially immediately preceding Y2K, there exists only one active registration for the sentiment. This registration, filed in 2013, is owned by Mattel, Inc. and is for dolls, doll clothing, and doll accessories. Similarly, there is only one registration for “Auld Lang Syne” for distilled spirits.

It is important to note that just because these individuals and companies have acquired federal trademark registrations, this does not limit anyone’s ability to use the greeting in order to wish someone a happy holiday. This is due to the fact that the public, of course, does not associate the phrase with an individual brand or business but rather, the common sentiment during Christmas.

In the copyright realm, there are many characters and songs relating to Christmas and the holiday season that are subject to protectable rights. However, holiday favorites such as “Jingle Bells,” “Deck the Halls,” and “Silent Night” are in the public domain. When a work of art, which includes musical works of art, are in the public domain, this means no exclusive intellectual property rights apply. More specifically, the copyright rights have either expired, been forfeited, expressly waived, or are simply inapplicable.

Meanwhile, many holiday musical works are not in the public domain and thus, are subject to copyright protection. Examples include “Santa Clause is Coming to Town,” “We Wish You a Merry Christmas,” and “Frosty the Snowman.” Another example is “Have Yourself a Merry Little Christmas,” which was composed by Hugh Martin and first sung by Judy Garland in the MGM movie “Meet me in St. Louis.” Furthermore, “White Christmas,” which was originally written by composer Irving Berlin sometime between 1940 and 1942, is not in the public domain. Interestingly, the composer struggled to write the song and almost did not release it until Bing Crosby convinced him it was a worthwhile song. “White Christmas” then became the main song of the classic Christmas movie by the same title, starring Bing Crosby, Danny Kaye, and Rosemary Clooney. Ultimately, according to Guinness World Records, the song has gone on to be the biggest-selling single in history, with over 50 million copies sold.

Finally, many inventors have patented various useful inventions to aid in people’s holiday woes. For those who cut down and bring into their home an evergreen tree, there always exists the concern that trees are flammable and this risk is increased by the addition of electronics on the branches. Indeed, according to the National Fire Protection Association, firefighters respond to approximately 210 Christmas tree fires each year. To mitigate this concern, James Hopkins of Annapolis, Maryland invented the self-extinguishing Christmas tree, described in Patent No. 7,963,343, which provides for an air-pressurized reservoir containing fire-retardant agent and a mechanism for automatically discharging said agent. Also along these lines is a “guardian angel Christmas tree topper,” which provides smoke detection as well as an audible alarm that sounds upon detection of a predetermined amount of smoke and heat. In a less utilitarian sense, to “enhance the appearance” of a Christmas tree, U.S. Patent No. 2,522,906 exists for a Christmas tree vibrator that can “transmit a highly pleasing two-dimensional vibration thereto without interference with the decorations.”

While these innovators may have tried to capitalize on the holiday season and many people’s affections therefor, Christmas, Hanukkah, or any other holiday simply cannot be wholly monopolized. Indeed, as everyone’s favorite Christmas nemesis famously stated, “Maybe Christmas doesn’t come from a store. Maybe Christmas…means a little bit more!”

Facebook Patents Method of Predicting User’s Future Geographical Location

The United States Patent and Trademark Office (USPTO) recently published a patent application, owned by Facebook, which could predict the future geographical locations of users. Titled “Offline Trajectories,” the application gathers a user’s previous location data as well as that of others in order to make predictions as to where the user may be traveling next. For example, if the user typically goes to the gym after work and the application determines that the user is currently at their office, it could then infer that the user is likely to go to the gym at a certain time.

More particularly, the patent application discloses a method of determining a current location of a user based on location data and then calculating the probability that the user will transition to each of a number of “candidate geographic locations” within a predetermined time window. This probability is calculated based on previously logged location data associated with not only that user but other users who were at the current location. In other words, the application determines how long individuals usually remain at a given location to predict how long a particular user is likely to remain there. To accomplish this, the computer model implements machine learning and metadata.

The application may also calculate an offline probability representing a likelihood that the user will not have wireless connectivity at one of the candidate locations. Again, the application may do this by comparing data of other users who were previously at a candidate location in addition to the user’s known mobile carrier to determine the probability that the user will lack wireless connectivity. In turn, data may be provided to the user’s device so as to account for this offline probability. As an example, the data provided to the device may be a number of newsfeed items, such as Facebook friends status updates or photo albums, corresponding to the amount of time until the device has wireless connectivity restored. Stated another way, the application would preload Facebook content to keep the user occupied during the time in which connectivity is lacking.

Interestingly, Facebook’s patent application for “Offline Trajectories” received a notice of allowance without any office actions. This is a notable occurrence given the fact that it is highly unusual for a patent application to not be rejected and receive at least one office action from the patent examiner. In fact, typically, inventors receive multiple office actions. In a study tracking over 2 million utility patent applications filed from 1996 to 2013, it was revealed that only about 11% of patent applications issued to allowance without the patent examiner issuing at least one office action requiring any amendment. Overall, during this time, only 55.8% of applications emerged as patents without the use of continuation procedures, which include prosecution procedures that take place after an applicant has received the maximum allotted office actions. This is why it is imperative that inventors engage in a cost-benefit analysis balancing the cost of patent prosecution and the potential benefit if the patent ultimately issues prior to filing an application.

While Facebook has not revealed why this data would be useful to their company, it seems, in all likelihood, the social networking company will use this data to display targeted advertisements specific to a user’s predicted destination. That being said, as with any patent application, there is an equal likelihood that the invention may never come to fruition. Indeed, a Facebook spokesperson confirmed that the company often seeks patents for technology that is never implemented and that its patent applications “should not be taken as an indication of future plans.”

Levi Strauss Sues YSL for Infringement of Tab Device Trademark

This month, Levi Strauss filed suit against Yves Saint Laurent America, Inc. in the United States District Court for the Northern District of California, where the Levi Strauss corporate headquarters is located. The complaint included three causes of action: trademark infringement, unfair competition, and trademark dilution. Each of these claims stem from Yves Saint Laurent’s use of a tab on its jean pocket, which Levi’s claims is highly similar to its registered trademarks. Levi’s has alleged that YSL is profiting from the sale of the allegedly infringing jeans and thereby has caused incalculable and irreparable damage to Levi’s goodwill and diluted its tab device trademark. Moreover, Levi’s has claimed that YSL has done so willfully, wantonly, maliciously, and with conscious indifference to Levi’s rights.

Levi Strauss has been operating since the 1850s and manufactures, markets, and sells a variety of apparel, all of which feature various Levi’s trademarks. Particularly at issue in this case is Levi’s famous tab device trademark consisting of a textile marker or other material sewn into one of the regular structural seams of the garment. The denim giant utilizes this tab device trademark on its jeans, pants, jackets, shirts, and other clothing products. This tab was first displayed on a pair of pants in 1936 when the then National Sales Manager proposed placing a folded cloth ribbon in the structural seams of the rear pocket in order to provide “sight identification” of Levi’s products. In other words, Levi’s intended this “little red, or white, or blue tab” to serve as an indicator of source, that is, as a trademark of Levi Strauss.

Levi’s aforementioned tab device trademark has become inconstestable in a number of filing classes. More specifically, Levi Strauss holds the rights to use its tab device mark for men’s, women’s and children’s jeans, jackets, trousers, shirts, t-shirts, blouses, pants, shorts, and overalls. A trademark becomes inconstestable when it has been in use in commerce continuously for five consecutive years subsequent to the date of registration and still remains in use. Incontestable trademarks, while not wholly immune from challenge, are much more difficult to invalidate.

The complaint centers around Yves Saint Laurent’s manufacturing, promotion, and sale of garments, namely, pants, bearing pocket tab devices which Levi’s claims are “highly similar” to its trademark. One notable difference between Levi’s tab device trademark and YSL’s jean pocket tabs is the placement thereof. Levi’s iconic tab has traditionally been sewn on the side of the right back pocket located toward the middle of the pants. By contrast, Yves Saint Lauren has placed its tabs on the outer side of the right back pocket.

Ultimately, trademark infringement will be found if there exists a likelihood of confusion between YSL’s jean pocket tabs and Levi Strauss’ tab device trademark. A likelihood of confusion exists when the use of a mark so resembles a registered mark such that a potential consumer would be confused, mistaken, or deceived as to the source of the goods and/or services of the trademark owner and alleged infringer. This determination is made on a case-by-case basis with regard to a number of factors, including the similarity of the marks, similarity of the goods and/or services connected to the marks, and the marketing channels under which the goods and/or services travel. Essentially, Levi Strauss has the burden of demonstrating that potential purchasers of its products are likely to be confused into believing there is an association between YSL’s tabbed jeans and Levi’s genuine apparel.

Dissimilarly, trademark dilution does not require a likelihood of confusion but rather, necessitates the use of a famous mark by a third party such that the distinctive quality of the famous mark is diluted. Put another way, dilution exists when another’s use of a registered trademark lessens the uniqueness or source-identifying ability of the registered mark. Moreover, dilution can occur via blurring, in which the connection in consumers’ minds between the registered mark and the accompanying goods and/or services is weakened, or tarnishment, in which the alleged infringer’s use is unsavory or unwholesome or is in connection with inferior products.

For relief, Levi’s prays for not only a judgment declaring YSL in violation of its trademark rights but also injunctive relief. Indeed, a permanent injunction would require Yves Saint Lauren to cease manufacturing, advertising, promoting, or selling any goods bearing Levi’s trademark. Further, Levi Strauss also requested the court require YSL to deliver any unsold infringing products to Levi’s, including any pants or other clothing, packaging, labeling, advertising and promotional material, and all plates, patterns, molds, matrices, and other material used for producing the allegedly infringing goods. Finally, Levi’s requests the court award it damages, including its lost profits, YSL’s profits, and costs incurred during the litigation.

Over time, some critics have referred to Levi Strauss as a “trademark bully” due to it bringing numerous lawsuits against alleged infringers of its “tab device” trademark. On the one hand, it seems dubious that the denim legend could claim a monopoly on all jean pocket tabs. On the other hand, with millions of dollars in revenue potentially at stake, Levi’s staunch intellectual property position is hardly surprising.