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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.

Gobble-Worthy Intellectual Property

Each year, as grocery stores fill with Butterball turkeys, canned gravy, and other Thanksgiving implements, the average American will spend roughly $200 on this holiday’s expenses. These costs include not only food and liquor but also travel costs. Indeed, the day before Thanksgiving and the Sunday thereafter are often the busiest travel days of the year with an estimated nearly 3 million people taking to the skies. As a result, companies and inventors alike have taken to the intellectual property system to address America’s needs with regard to turkey day.

An early turkey related patent involved a “Toy Representing a Turkey Gobbler,” the toy being made principally from pine burrs. Since that invention, others have created A Process for De-Boning a Turkey (U.S. Patent No. 6,572,467), a Cooking Jacket (U.S. Patent No. 4,942,809), and a Method of Preparing Turkey Product (U.S. Patent No. 3,347,680). Another turkey-related patent was granted in 2005 for a method and apparatus for preparing a roast turkey analog from vegetarian substitutes, which comprises a turkey mold. These are all examples of utility patents, which provide the inventor or assignee the right to exclude others from commercially exploiting or otherwise making use of the patented invention without the patentee’s authorization.

Moreover, many inventors have filed design patents having a Thanksgiving spirit. For instance, U.S. Patent No. D397,955, which issued in 1998 to Schmidt, depicts a turkey decoration featuring a plump turkey with proud tailfeathers. Another, U.S. Patent No. D184,815 for a Combined Cornucopia and Candleholder, includes three distinct candleholders set on a cornucopia. As a final example, U.S. Patent No. D527,217 issued in 2005 for a Thanksgiving Embossed Insert for Baking Pan which appears as a standard rectangular baking pan with harvest-type décor and the phrase “Happy Thanksgiving!”

Design patents are granted to any person who has invented any new, original, and ornamental design for an article of manufacture. A design patent protects only the aesthetic appearance of the article and not any accompanying structural or utilitarian features. This means, for instance, the inventor of the Thanksgiving Embossed Insert for Baking Pan can prevent others from copying their particular design of a baking pan insert but not from using a baking pan insert in general. Design patents have a term of fourteen years which grants the aforementioned inventors of these various Thanksgiving designs fourteen consecutive Thanksgivings during which to monopolize their design.

Other examples of turkey day intellectual property include copyright registrations for songs and poems commonly associated with the holiday. Adam Sandler likely holds the copyright for “The Thanksgiving Song.” Similarly, “A Charlie Brown Thanksgiving” by Vince Guaraldi Trio and even “Five Little Turkeys” by The Learning Station are subject to copyright protection. Under copyright principles, these artists’ works are protected provided they constitute original works of authorship, which requires at least minimal creativity.

Finally, a number of individuals and companies hold trademarks for various Thanksgiving terms and phrases. As fans of the popular television show “Friends” will appreciate, “Thanksgiving Pants” is registered for pajama bottoms. Additionally, Macy’s West Stores, Inc. has held the mark “Macy’s Thanksgiving Day Parade” as applied to entertainment services, namely, organizing and conducting a parade, since 1998. There are also multiple registrations for various cities’ turkey trots, such as the “San Francisco Turkey Trot.”

Even the basic term “Thanksgiving” has a few registrations. For example, Multimedia Games, Inc. owns the word as applied to computer game software for gaming machines, namely, slot machines and video lottery terminals. Another registrant owns the term in connection with jerky, meat-based snack foods, and dried meat. It is important to note that a registered mark only allows the holder to prevent others from using that term or phrase in connection with similar goods or services in such a way that it is likely to cause the consuming public to be confused. To illustrate, if one were to use “Thanksgiving” on a coffee mug, this would not infringe the trademarks for gaming machines or jerky.

While these numerous examples of intellectual property can be viewed as attempts to extort America’s dedication to Thanksgiving, the alternate perspective is to feel grateful that so many creative minds have consistently been envisioning ways to make the holiday more convenient, efficient, or even enjoyable.

Nike: Just Patent It

In its increased focus on smart garments, Nike has filed two patents, one for self-cleaning footwear and another for a bodysuit that can accurately teach yoga to its wearer. These patents were filed in the midst of Nike releasing the first self-lacing shoe. Back in 2014, Nike obtained patents for self-lacing technology, similar to that seen in “Back to the Future,” and recently, the Oregon-based sportswear giant announced its Hyperadapt sneaker complete with electric adaptable reaction lacing capable of adjusting the laces, pressure, and fit to the contours of the user’s foot. That being said, it remains unclear whether Nike will make use of these two recent patent filings as it did with the Hyperadapt technology.

The first patent, related to “an article of footwear with soil-shedding performance,” claims a shoe designed for use in “conditions normally conducive to the accumulation of soil on the outsoles.” The filing describes the state of the prior art as featuring outsoles designed to provide traction on soft and slippery surfaces. Such outsoles often feature exaggerated tread patterns lugs, cleats, spikes, and/or rubber material to improve traction under wet conditions. A problem with these designs is the accumulation of soil and dirt in the interstitial space between cleats, lugs, or tread patterns, said accumulation ultimately weighing down the footwear and actually harming traction.

In order to solve these issues, Nike created its self-cleaning shoe that includes a sole capable of absorbing water from the terrain in one step and then expelling it in the next step, effectively squirting dirt and debris from the footwear with every other step. To accomplish this, the footwear comprises an “open-cell foam material.” Essentially acting like a sponge, due to  the compressive compliance and chemical nature of the open-cell foam, the outsole can expel water from the foam, thereby disrupting the cohesion of soil particles to each other and on the outsoles. The patent boasts that the article of footwear retains at least 20% less soil by weight as compared to an article of footwear not featuring the open-cell foam material. Largely, the shoe is designed for trail running and activities in rainy or muddy environments. However, the disclosure discusses applications in golf, baseball, American football, soccer, rugby, hiking, and even military use.

The other patent, entitled “apparel with ultrasonic position sensing and haptic feedback for activities,” teaches a garment having a plurality of ultrasonic positioning sensors and a plurality of haptic feedback devices configured to determine the position of the wearer’s body and provide feedback based thereon. This sensor-laden bodysuit has placed sensors at predetermined locations on the article, which correspond to locations of particular relevance to the activity being undertaken. The system then determines where the sensors should properly be placed and signals to the wearer to adjust a position, motion, or other aspect of their activity. This disclosure works ideally for form-fitting apparel, worn in connection with activities such as aerobic exercise, acrobatics, and yoga.

This smart garment connects with corresponding software, such as a smartphone application. The app can, in turn, show or otherwise instruct a user how to properly position his or her body. Additionally, the bodysuit itself features sensors that vibrate when misaligned and which can guide the user’s movement to a proper position. The sensors are capable of producing data over time, including instantaneous, real-time position sensing in addition to long-term information gathering such that a user can track his or her progress. Further, the bodysuit features a respiration sensor positioned so as to detect expansion and contraction of the fabric corresponding to the wearer’s breathing. The respiration sensors could then inform the suit as to the extent of strain or exertion experienced by the wearer.

Trick-or-IP

Similar to other holidays, Halloween brings with it a number of intellectual property concerns. This is unsurprising as Halloween propagates a large amount of creative energy and spans almost every area of intellectual property law.

When one thinks “Halloween” perhaps the first thing to come to mind is the classic jack-o’-lantern, featuring a carved face in an evacuated pumpkin, turnip, or other root vegetable. In 1889, a jack-a-lantern was patented for a device capable of providing amusement for children and which can also be used as a campaign torch for celebrations, torch-light processions, political meetings, and “other like occasions where an effective pyrotechnic display is desirable.” Indeed, U.S. Patent No. 396,252 issued to George Beidler for a lantern, constructed of sheet metal, papier-mache, glass or other material, in which eyes, nostrils, and a mouth are stamped or otherwise represented so as to allow a candlestick displaced therein to show through.

Roughly one-hundred years after Mr. Beidler patented the jack-a-lantern, the first pumpkin carving kit was patented and aptly called the “carve-o-lantern kit.” This patent discloses not only different types of cutting tools for penetration of “the fleshy shell of a pumpkin” but also an instruction book which provides various patterns and decorative designs to be used on the pumpkin. Interestingly, the assignee of this invention, Pumpkin Masters, used its patent to sue more than fifty retailers and manufacturers for allegedly infringing its patented kit. Big name defendants included Williams-Sonoma Inc., Walt Disney Co., and Restoration Hardware. Most of these suits settled but Pumpkin Masters continued to maintain its position that it “changed the way America carves its gourds with unique scooping and cutting tools that allow for elaborate design.”

As most children would likely agree, there can be no Halloween without candy and there can be no candy without a means of carrying it. As such, U.S. Patent No. 6,629,810 issued in 2003 for a “Halloween treat carrier.” The carrier essentially features a container having a Halloween design and a glow-in-the-dark material.

Another pumpkin-y treat carrier, a “Halloween portable container,” appears to be a jack-o’-lantern on wheels capable of carrying treats collected during trick-or-treating. U.S. Patent No. 7,594,669 to Linda Acosta confirms the invention comprises a rolling container contemplated to be in the form of a pumpkin, witch, ghost, goblin, monster, vampire, werewolf, or any other Halloween related object, and having a cover, as well as, an arm or rod to assist in the maneuvering, driving, or controlling of the apparatus. This rolling trick-or-treat container solved the difficult task faced by many children of having to carry a heavy sack of confections, which generally does not have a lid to prevent spillage and unwanted spoilage of said confections.

Candy companies have not hesitated in capitalizing on Halloween by taking advantage of the intellectual property system in protecting their various confections. The popular candy corn, commonly associated with the holiday and the fall season, was trademarked in 1997. The Goelitz Confectionary Company, now known as the Jelly Belly Company, applied for and received registration for “The Original Gourmet Candy Corn.”

As another example, since 1906, The Hershey Company has held the trademark for “Hershey’s.” Additionally, Hershey owns trademark for the design of Hershey’s Kisses as well as the term “kisses.” Moreover, Hershey was initially denied registration for “kiss” due to the term constituting the generic word for that type of candy. The Hershey Company commissioned a survey of potential candy buyers, to whom the difference between a brand name and a generic name was explained and who were asked whether kisses (in addition to other names such as M&M’s and malted milk balls) were generic or brands. Due to the survey’s overwhelming results indicating that consumers understood “kiss” to emanate from Hershey, the Appeals Court sided with Hershey, allowing the company to trademark the word.

Finally, costumes have continued to generate a decent amount of litigation, most of which has been copyright-based. Indeed, in 1991, the Copyright Office used a Policy Decision on the Registrability of Costume Designs, providing that fanciful costumes were to be treated as useful articles and therefore, were generally not subject to copyright protection. This decision effectively defined costumes under the useful article doctrine, which provides that useful articles are those with an intrinsic utilitarian function that is not merely to portray the appearance of the article or convey information. As such, “useful articles” are not copyrightable. Costumes serve a dual utilitarian purpose as both clothing and also as masquerading.

Masks, on the other hand, are not useful articles and may qualify for copyright protection. That being said, masks, as with all other works, must still meet basic copyrightability requirements, such as the requirement that the mask be original. In one instance, the creator of the mask that was used for Michael Myers brought suit against the makers of the Halloween movie franchise for copyright infringement. The mask-maker ultimately lost because the Court determined the mask was merely a mold of actor William Shatner’s head, originally formed for a Captain Kirk mask, and therefore was not sufficiently original to warrant protection.

American Airlines Detours From Copyright Office After Experiencing Turbulence in Attempted Registration of Its Logo

The Fort Worth-based airlines, American Airlines, recently took a detour in its attempt to obtain copyright registration for its new logo by filing a lawsuit against the Copyright Office in federal court in the Northern District of Texas. American, believing the Copyright Office’s determination to be wrong, has requested the federal judge overrule the department’s decision. The airline goes on to assert that the agency routinely accepts registration for logos that are no more, and in many cases less, creative than that of American.

In June of 2016, American first filed for copyright registration of its new logo. A few months later, in October of 2016, the Copyright Office rejected the application claiming the logo “lacks the authorship necessary to support a copyright claim.” After this initial rejection, American sought reconsideration, which was against denied. Yet again, the air carrier sought reconsideration, which was finally rejected in 2018.

Due to a major rebranding that was concurrent with American Airlines’’ merger with U.S. Airways, the former sought to revamp its iconic double “A” logo and introduce a more modern image. The previous “AA” logo had been in use for more than 40 years, beginning in 1968. The new logo, first introduced in 2013, features an eagle with its head bisecting a diagonal design encompassing the eagle’s wings and which also looks like the vertical rudder of a jet aircraft. The color blue appears above the eagle’s somewhat abstract head while red appears below, thereby maintaining the classic “American” color scheme. When initially introduced, the logo’s designer, Futurebrand, was awarded a Clio, which is a top advertising award, for its work.

The Copyright Office vehemently disagrees with American’s position, finding that the logo does not even comprise the minimal level of creativity necessary for copyright registration. At one point, the office even stated, “while the bar for creativity is low, it does exist and the work cannot glide over even its low heights.” The agency describes American’s logo as “a trapezoid with two curved corners overlaid in the middle by a triangle with a curved right point, justified to the left edge of the trapezoid. The top of the trapezoid is blue, the bottom of the trapezoid is red, and the triangle is white. All of these elements have some shading. The trapezoid is reminiscent of an airplane’s tail, while the triangle could be described as an abstraction of a bird’s head.”

Copyright protection subsists in original works of authorship. Thus, to be protectable as a copyright, each work must at least satisfy the originality requirement, which necessitates the work have independent creation and sufficient creativity. Independent creation merely means he work was independent created by the alleged author and was not copied from someone or somewhere else. Sufficient creativity, on the other hand, requires that there must be “more than a modicum of creativity.” That is, the work must possess more than a de minimis quantum of creativity. This very low threshold was discussed and solidified in Feist Publications, Inc. v. Rural Telephone Service Company, 499 U.S. 340 (1991). In that case, the Supreme Court found that the white pages in a telephone directory do not embody the requisite modicum of creativity because they simple listed names, addresses, and numbers in alphabetical order. By contrast, the Court held, the yellow pages in a telephone directly may potentially meet the threshold level because they embody some level of creativity in the selection, coordination, and arrangement.

Notably, American Airlines’ logo is already registered as a trademark. In fact, American owns multiple registrations and applications incorporating the logo as a trademark. It is understandable why the company would seek copyright protection in addition to its trademark registrations though. Namely, copyright registration offers a broader range of protections as it allows the owner to protect against any unlicensed use that is outside of fair use. Dissimilarly, trademarks refer to phrases, symbols, or designs of one party that distinguish that party from others in the relevant marketplace and trademark registration only allows the owner to prevent the mark from being used by others in commercial settings. Moreover, trademarks are designed to prevent confusion in the relevant marketplace, not merely copying, which severely limits what uses of a trademarked logo may be considered infringing.

Representatives from the Copyright Office have not released any public statement nor have they responded to the lawsuit. American Airlines has publicly remarked that it is not taking its decision to bring suit against the agency lightly. Indeed, in its complaint, American acknowledges that in most cases, the Copyright Office’s decisions are “consistent and well-reasoned,” but that the present decision is “arbitrary, capricious…and an abuse of discretion.” If Supreme Court precedent in Feist Publications, Inc. is followed, American is expected to be successful in this litigation.

Just Dunkin’

Dunkin’ Donuts recently announced its intention to drop “donuts” from its name. “Dunkin’” will continue to be featured in the familiar rounded font with an orange-and-pink color scheme. The name change was tested at a handful of Massachusetts restaurants late last year and apparently was successful. As such, commencing in January of 2019, the name change will officially take effect as part of a major rebrand of the company with the new name appearing on napkins, boxes, and signs at United States stores. The name change will eventually be adopted by the company’s international locations so that the company’s more than 12,500 stores globally will reflect this alteration.

Doughnuts will continue to be sold by “Dunkin’” but it will increase its emphasis on coffee and other drinks, such as nitro-infused cold brew. Indeed, the CEO stated that “there is no Dunkin’ without donuts!” This shift toward drinks has been occurring for a while now, as evidenced by the company’s cut of 10% of its menu earlier this year. Drinks currently comprise 60% of its sales. Moreover, the new name is consistent with the tagline used by Dunkin’ Donuts since 2006: “America Runs on Dunkin’.”

Over the last 68 years, Dunkin’ Donuts has become a very well-known brand. In fact, the company’s spelling of the word “doughnut” as “donut” arguably popularized the spelling as part of the American lexicon. The Merriam Webster dictionary even added the term “donut” as a less common spelling of “doughnut.” As a result of this popularization, the word has likely suffered genericide. A trademark becomes genericized when the term or phrase no longer becomes associated exclusively with the brand. Instead, the term becomes associated with the product or service itself.

Generic terms cannot operate as trademarks, whether commonly understood as the name of a product or service or otherwise becoming known in such manner due to prolific use thereof. Trademarks are aimed at distinguishing the goods or services of one enterprise from those of other enterprises. Thus, consumers are unable to distinguish between different parties’ goods and services when generic terms are used. Such terms therefore cannot properly indicate source. As an example, the term “escalator,” while originally a registered mark of the Otis Elevator Company, is now known as the name of a moving staircase. As another example, the word “zipper” was originally owned by B.F. Goodrich for use in rubber boots but has since taken on a generic meaning. Here, the term “donuts” has become so accepted and used in our lexicon that the term is now generic.

In contrast to generic terms, descriptive trademarks are words that identify the characteristics of a product or service to which the mark pertains and can serve as source identifiers. Descriptive terms may acquire distinctiveness because, over time, the consuming public may come to understand the terms as associated with specific goods or services. Acquired distinctiveness, or secondary meaning, indicates that although the mark on its face describes the relevant goods or service, consumers have come to recognize the mark as having a source indicating function. Secondary meaning is often achieved through long term use or large amounts of marketing and advertising.

While not overtly admitted, it seems Dunkin’ Donuts has sensed the genericide of the word “donuts” for some time now. This is evidenced by the fact that trademark applications and registrations filed by the company have often required the disclaimer of the term “donuts” for certain classes of goods and services. A disclaimer in a trademark application or registration is a statement made of record to indicate that the owner does not claim any exclusive rights to the disclaimed portion of the mark. Disclaimed words are usually those considered to be generic, descriptive, or informational. For example, Sprinkles Cupcakes owns registration of the identical phrase for a variety of goods and services and all with the term “CUPCAKES” disclaimed. Interestingly, the original registration for “DUNKIN’ DONUTS” circa 1963 did not require disclaimer of the term “donuts.” However, later iterations of “DUNKIN’ DONUTS,” including design marks, have necessitated such disclaimer for certain classes.

Due to the likely genericide of the term “donuts,” Dunkin’ Donuts’ decision to drop the term serves not only to modernize its brand but also to strengthen it. What remains unclear is whether the consuming public will accept this change and start referring to the multinational quick service restaurant chain as “Dunkin’” or if this official change will literally be “in name only.”