NFL Tackles Professional Counterfeiters

In time for Sunday’s “Big Game,” NFL Properties LLC, New England Patriots LLC, and Philadelphia Eagles LLC have filed suit in federal court in Minneapolis seeking to obtain a restraining order forbidding professional counterfeiters from selling merchandise bearing protected trademarks. Such an order would permit law enforcement to seize any and all counterfeit goods. A trademark is any word, name, symbol, device, or any combination thereof, used or intended to be used to identify or distinguish the goods or services of the owner from those of others. The NFL not only owns the rights to the term “Super Bowl” but also to “Super Sunday” and other “Super” phrases. Similarly, Eagles running back LeGarrette Blount has trademarked “Blount Force Trauma” and Patriots tight end Rob Gronkowski has the rights to the word “Gronk.” Trademark infringement occurs when a likelihood of confusion exists, that is, when a consumer is likely to be confused or deceived as to the source of the goods or services provided by alleged infringers. Named defendants include primarily large-scale counterfeiting companies that do not hold a license to market and sell such products. The NFL does allow some 180 companies to officially use trademarks and logos on clothing and other products. One may obtain a license to use such marks and logos by simply submitting a 36 page application along with an agreement to pay royalties starting in the six figure per year range. Instead, many companies have avoided the issue entirely by using alternative phrases such as “Big Game” and “Birds” in place of official NFL marks, “Super Bowl” and “Philadelphia Eagles.” #omnilegalgroup #trademark #NFL #SuperBowl #Patriots #Eagles

Las Vegas Golden Knights Face Off With U.S. Army Over Trademark

The U.S. Department of Army recently filed a notice of opposition to bar the Las Vegas Golden Knights’ registration of their name in connection with entertainment services and professional ice hockey exhibitions. The Army argues a likelihood of confusion exists as the public may confuse the Army’s Golden Knights as endorsing, sponsoring, or otherwise controlling the quality and nature of the services offered by the NHL team. The Army stresses that its Parachute Team has performed in over 16,000 shows over the last 55 years and that during this time, it has been known as the “Golden Knights” and has employed a color scheme similar to that now used by the Las Vegas team. In contrast to the Army’s lengthy use of the term, the hockey team adopted the name only 14 months ago. Bill Foley, the principal owner of the Golden Knights, is a West Point graduate. Indeed, the team’s manager admitted that the color scheme of black, gold, yellow, and white was intentionally selected for its similarity to that used by the Army at West Point. Nonetheless, the team issued a public statement that they have not received any complaints from game attendees “expecting to see the parachute team and not a professional hockey team.” A panel of three Trademark Trial and Appeal Board administrative judges will evaluate the respective arguments and determine whether the Las Vegas Golden Knights will be granted registration. #omnilegalgroup #trademark #goldenknights

Spotify Sued By Wixen Music For Copyright Infringement

Los Angeles-based company, Wixen Music Publishing, recently sued Spotify for copyright infringement. Wixen handles copyright management and royalty compliance for artists such as Tom Petty, Neil Young, Missy Elliott, Stevie Nicks, the Doors, and Steely Dan. Seeking $1.6 billion in damages and a ruling preventing Spotify from playing these songs until properly negotiated with the rights holders, the publishing company alleges the music streaming giant provided tens of thousands of songs to its users without proper licenses or compensation. In particular, Spotify failed to obtain a license from Wixen that would permit it to reproduce and distribute the songs. U.S. copyright law provides two separate copyrights for every recorded song: one for the musical composition (the words and musical notation) and one for the actual sound recording. In some instances, Spotify took the easy route by obtaining only the sound recording copyrights in the songs but failed to obtain equivalent rights for the accompanying compositions. This case is not a first for Spotify as only last year, it settled multiple other lawsuits under very similar facts. Nonetheless, Spotify maintains it is not always able to determine the identity of the rights holders. Ultimately, Wixen’s complaint contends, Spotify has developed into a multibillion dollar company built “on the backs of songwriters and publishers” and these parties have been wrongfully denied their fair share in Spotify’s success. #omnilegalgroup #copyright #Spotify

Tattoo Artist Claims Copyright Infringement For Use of Tattoos in Video Games

Prominent tattoo artist, James Hayden, recently filed a lawsuit in federal district court against the creators of the video game series “NBA 2K” for reproducing his copyrighted tattoo works on the digital versions of famous basketball players without his permission. Specifically, the complaint alleges copyright infringement, unjust enrichment, and violation of the Visual Artists Rights Act against 2K Games Inc. Hayden further claims the defendants’ reproduction of his copyrighted works is so detailed that the “NBA 2K17” version includes a “MyPlayer” feature allowing users to move, scale, rotate, and place over 3,000 customizable tattoos. Thus, Hayden’s copyrighted tattoo works are reproduced each time the game is played.

Hayden’s client roster includes superstars such as LeBron James, Shaquille O’Neal, Danny Green, Tristan Thompson, and Kyrie Irving. The complaint provides by way of example several of the designs he has created for famous clients. For instance, many fans of LeBron James are clearly able to recognize his classic tattoos including “Gloria” and “Lion Design” appearing on his right shoulder and the stars on his left shoulder. Danny Green’s tattoo of a basketball player emerging from flames beneath the words “I Hold My Own” is another example. Further, Tristan Thompson’s replica of Michelangelo’s “The Creation of Adam” readable beneath the words “I Am My Brother’s Keeper” is yet another iconic work visible in the game.

There is minimal case law involving tattoos and copyright law. At a minimum, however, tattoos are protectable works of art under U.S. copyright law. As such, artists presumably own the copyright to any original work created by that artist. A tattoo artist thereby has the exclusive right to control the reproduction, distribution, and public display of its copyrighted work.

General Motors Patents Pedestrian Airbag

General Motors received a patent last month for an exterior airbag. The invention is aimed at providing protection to pedestrians. The airbag is mounted to the “fender region” and before the side door “to provide protection to a pedestrian from impacting the frontal area of a vehicle structure.” In particular, when an impact is detected, the airbag expels from the fender flap to cushion the windshield wipers and “other sharp pieces” on the front of the vehicle. While the most recent, GM is not the first to introduce pedestrian protection airbags. In 2012, Volvo showcased its V40 five-door hatchback featuring a pedestrian airbag spanning the windshield in a similar fashion. This past August, Mercedes-Benz received a patent for a similar A-pillar airbag. The development of this technology is unsurprising in light of the fact that pedestrian deaths account for roughly one-in-seven U.S. traffic deaths.

‘Tis the Season to Patent Christmas Decorations

As Americans are expected to spend nearly $6 billion on Christmas decorations this year, inventors flock to the patent office to carve out market exclusivity for their own renditions of the same. Indeed, the first patented artificial Christmas tree was issued in 1911 claiming a trunk upon which twisted wires are attached and arranged to simulate natural tree branches. In 1927, another tree patent was issued that depicts an artificial tree resembling those sold today. There also exists a number of patents relating to live trees. One entitled “Trunk Mounted Christmas Tree Water Level Measuring and Alarm Device” indicates to users when the tree is in need of water and includes an alarm that sounds when the water falls below the “low water” level. A recent patent issued in 2016 for a Christmas tree stand capable of accepting a range of sizes and shapes, which holds water and also stabilizes the tree. Moreover, one inventor patented a tinsel gun in 1970 claiming “devices for dispensing tinsel and the like adaptable for decorating Christmas trees.” While not many mistletoe-related patents have been filed, there is one for a “mistletoe supporting headband” which consists of a strip of material fastened to the head of the wearer and includes a “fork member” that allows the mistletoe to attach. Lastly, for atop the Christmas tree, a light-up star was patented in 1936 on an ornament comprising “a plurality of substantially conical sections joined together at their lower extremities to form a unitary body” and which also contains an electric light bulb within its body. #omnilegalgroup #patents #Christmas

Disney Tries to Knock Out Knock-Off Characters

In a two year-long battle with Disney, Marvel, and Lucas Film, Characters for Hire recently filed a motion for summary judgment asking the district court to find in its favor. The internet based entertainment-for-hire company was sued by Disney back in 2016 for allegedly infringing its iconic character trademarks. More specifically, Disney claims Characters for Hire is a “knock-off business…built upon the infringement of Disney’s highly valuable intellectual property rights.” The party entertainment company uses characters such as Mickey Mouse, Snow White, Iron Man, Captain America, Luke Skywalker, and Chewbacca in its appearances at themed events. Characters for Hire particularly disclaims any authorization by Disney of its promotion and sale of its characters. Rather, the company claims a reference to characters such as Frozen’s Elsa is “merely descriptive” of the services the consumer receives, that is, an actor hired to dress and behave like a famous animated character. Interestingly, back in 2003, Disney utilized a similar argument when it was sued by Caterpillar for using its distinct logo on construction equipment in “George of the Jungle 2.” Indeed, Disney contended its use was not intended to create a likelihood of confusion that the construction equipment company either endorsed or sponsored the film. Trademark tarnishment occurs when an infringing mark portrays the protected trademark in a negative way or is placed upon low quality goods. Disney argues Characters for Hire is thereby tricking the public into believing its characters are authorized by Disney and will be Disney-quality. Thus, tarnishment of a trademark threatens to diminish the commercial value of the mark as consumers associate the inferior quality of the infringer’s products with the trademark owner’s unrelated goods. #omnilegalgroup #trademark #Disney #Marvel #LucasFilm

Omni Legal Group would like to welcome Lara Petersen to its practice

After being sworn in to the California Bar earlier this week, Ms. Petersen will join the firm full-time as an Associate Attorney. Ms. Petersen earned her Juris Doctorate from Chapman University Dale E. Fowler School of Law, where she served as a Student Ambassador, Associate Editor of the Nexus Journal of Law and Policy, and two-term President of the Intellectual Property Law Society. While at Chapman, she was awarded a full-tuition merit scholarship and the CALI Excellence for the Future Awards in Patent Law & Practice, Pre-Trial Intellectual Property Litigation, Information Privacy Law, Legal Analysis Workshop, Torts, and Selected Topics in American Law. She received her Bachelor of Science in Neuroscience and Psychology and Bachelor of Science in Health Science in Physiology from The University of Arizona. In her spare time, Ms. Petersen enjoys staying active, going to the movies, and riding her beach cruiser along Venice Beach.

Did you know?

A company called NKOR is currently in the process of raising capital and developing a new application of blockchain technology and intellectual property. Blockchain technology allows registration of information in a secure, transparent, and efficient environment. Participants can transact data directly between one another without the need for intermediaries. The system first authenticates the uploaded data, which is then linked to a particular transaction and timestamped. The system also tracks any sharing of the data by other entities, providing a system for artists and inventors alike to share their works and immediately detect any infringing use. Copyright infringement is prominent as China has the highest online piracy rate of 91%, followed by Columbia with 90% and Russia with 80%. Moreover, 67% of digital piracy sites are hosted in North America and Western Europe and more than 75% of computers have at least one illegally downloaded application. This technology would decrease incidents of copyright infringement because artists and inventors can directly monitor the sharing of their works. Blockchain technology is being applied to many different industries as a means of effectively and safely conducting business. Indeed, the Blockchain Sharing Alliance is aimed at creating a blockchain patent sharing pool, which would both provide a system of licensing and trading certain patented blockchain technologies and also allowing the blockchain community to build and innovate with the IP assets.