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Los Angeles – Supermodel Gigi Hadid has been sued for copyright infringement for posting a photo of herself on Instagram. The lawsuit involves a photo that was taken by the paparazzi. The complaint states that Hadid used the photo without permission of the owner Xclusive-Lee, Inc.

Thus far Hadid is fighting the case. Her copyright attorney states that the claim is meritless and should be thrown out due to fair use. Thus they are planning a motion to dismiss.

Xclusive-Lee points out that Hadid, who has since deleted the photo in question, had prior knowledge that copying and posting photos of herself without permission of the photographer constitutes copyright infringement. This is because this is not the first time that Hadid copied and posted a photo of herself to her Instagram account. Although the previous case was settled before the discovery stage of the litigation, in this instance Xclusive-Lee might not be going away so easily.

In her defense, Hadid is claiming that use of the photo is fair use and thus not a violation of copyright law. Through analyzing the four prongs of the copyright fair use test, Hadid can make the claim that each element is in her favor.

The copyright fair use elements begin with the purpose and character of the use, and because the supermodel did not use the photo for commercial purposes, this element favors fair use. Next to consider is the nature of the copyrighted work. The photo was taken in public rather than a studio setting, which again weighs toward fair use. Third, the test estimates the amount and substantiality of the portion used of the work. For this element Hadid is claiming that the photo is of her and that she smiled for it which is a large portion of the work. Finally, the test evaluates the effect of the use on the market for the work. As for this element, Hadid is claiming that her Instagram posting did not deprive the company of revenue, much less a significant amount of revenue.

The case could have long standing repercussions in determining the extent that a person photographed in public can use a photo, specifically celebrities posting photos on social media.

The post Gigi Hadid Sued for Posting a Photo on Instagram appeared first on California Trademark Attorneys.

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Orange County – A book titled Oh, the Places You’ll Boldly Go!, a mashup of Star Trek and Dr. Seuss, created a copyright legal dispute which recently came to a conclusion. Dr. Seuss Enterprises filed a copyright and trademark infringement lawsuit but has now lost on summary judgment.

ComicMix, the creator of the book, prevailed on trademark claims related to the book a year ago. At that time, U.S. District Judge Janis Sammartino concluded that the book wasn’t explicitly misleading about any connection to the company that owns Dr. Seuss rights.

Now on summary judgment for copyright claims the judge decided that Oh, the Places You’ll Boldly Go! makes fair use of copyrights owned by Dr. Seuss Enterprises. The dispute centered around the use of computer code, a promotional poster, and viral videos. Dr. Seuss Enterprises focused on the Federal Circuit’s 2018 decision in Oracle America, Inc. v. Google, a case that references copyrighted Java API code. The debate in that case was whether Google infringes when it makes its own version of the Java API code intended to enable software programs to communicate. The connection between these cases comes from the similarities between what Google did with Java and the purpose and character of Oh, the Places You’ll Boldly Go!

The judge, however, identified critical differences between these two cases, deciding that the similarities were not enough to sway the court in the plaintiff’s favor. Although there are similarities, Oh, the Places You’ll Boldly Go! does not use illustrations or text from Oh, the Places You’ll Go! verbatim. Although it was acknowledged that ComicMix borrowed some aspects from Go! the content was adapted or transformed substantially, thus bringing it within a fair use defense.

The use of creative elements captures just one factor in the fair use analysis. Perhaps the most similar case to this situation appeared when photographer Annie Leibovitz took on Paramount Pictures due to a portrait used as a promotional poster containing similar artistic elements. In this instance, it was judged that Paramount Pictures had taken enough artistic components from the Leibovitz’s original photo to weigh against fair use.

The court in the Dr. Seuss case also addressed the market effect of the use of copyrights. Judge Sammartino asked Dr. Seuss Enterprises to provide evidence as to how Boldly will negatively impact the market for its iconic book. After evaluating the plaintiff’s case in this matter, it was decided that it isn’t likely that ComicMix will steal its predecessor’s position in the children’s book market. The judge noted that no evidence showed that Dr. Seuss will be missing any licensing opportunities or revenues as a result of the publication of Oh, the Places You’ll Boldly Go! The judge closed by stating that ComicMix took no more than what was necessary for their purposes and found the mash-up highly creative.

The post Star Trek and Dr. Seuss Mashup Ruled Copyright Fair Use appeared first on California Trademark Attorneys.

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Los Angeles – The U.S. Supreme Court recently made an important copyright decision in the case Fourth Estate Public Benefit Corporation v. Wall-Street.com. In the decision, the Supreme court made a unanimous decision that a copyright registration from the U.S. Copyright Office is now required before filing a copyright infringement lawsuit.

There has been a long time circuit court split on the issue. While some circuit courts required only that a copyright application be filed prior to filing a copyright lawsuit, others required a registration. The process from the filing of a copyright application to the registration of the work can take several months and sometimes more than a year to complete. Therefore, this decision will have a large impact on victims of copyright infringement that need prompt action from the courts.

Although the registration process can be expedited, the process still may not be quick enough for works that are vulnerable to pre-distribution infringement such as movies and music. Given the new situation, the U.S. Copyright Office should expect a significant increase in the number of copyright applications they receive. The real issue lays in the unpredictability of copyright infringement since you rarely have a warning when someone is going to infringe your copyright.

The Court’s opinion is that existing copyright law “permits only one sensible reading: that the Copyright Office’s act of granting registration and not the copyright claimant’s request for registration determines whether “registration…has been made.”

The Fourth Estate Public Benefit Corporation v. Wall-Street.com case was not the only decision the U.S. Supreme Court made on Monday. For the first time in more than 100 years, the Supreme Court made two copyright related decisions in one day. The second decision being made in the Rimini Street, Inc. v. Oracle USA, Inc. case that “full costs” of the Copyright Act does not permit the appellate court to grant litigation costs past those identified by Congress.

Many businesses use a cease and desist letter to deter copyright infringement. The letter generally displays the ability to take the claim to court if needed. That may now appear to be an empty threat for any unregistered works. As such, moving forward original content creators will benefit from routinely filing copyright applications to obtain a registration to protect their assets and avoid the time and damage it would take to obtain copyright registration after an infringement has already been discovered.

Businesses that would benefit from routinely submitting a copyright application include industries that create video games, music, movies, television shows, photography, fashion, design, and everybody that owns a website or regularly publishes material online.

The post U.S. Supreme Court Requires Copyright Registration to File Lawsuit appeared first on California Trademark Attorneys.

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San Diego – Performers have been suing video game creators lately for copying dance moves. Among them are rapper 2 Milly and Alfonso Ribeiro, the actor who played Carlton on the popular show “The Fresh Prince of Bel-Air”. In unison with the lawsuit, Ribeiro filed a copyright application for the Carlton Dance made popular on the TV show. The United States Copyright Office has now responded by denying the application.

Alfonso Ribeiro is claiming that Fortnite maker Epic Games committed copyright infringement by making his exact dance available in the video game. In preparation for the lawsuit, Ribeiro has submitted three applications to have the dance copyrighted, but two have now been rejected, and one is still pending consideration. According to his copyright lawyer, he is not the first person to apply to copyright a short dance. Russell Horning, also known as Backpack Kid, was able to register a short dance called the floss with the copyright office.

The United States Copyright Office says the Ribeiro dance is too short and simple to justify copyright protection. Ribeiro’s copyright attorney says they will ask the copyright office to re-consider the decision. Their argument for copyright registration is that while the individual dance moves may be simple, they have been arranged into a more complex choreographed performance.

The copyright office’s decision to refuse the application for short dance moves is akin to the fact that short phrases also cannot be copyrighted. To receive copyright protection, there must be a minimum amount of creativity. Short phrases such as titles are uncopyrightable because they contain an insufficient amount of authorship. The Copyright Office will not register individual words or brief combinations of words, even if the word or short phrase is novel, distinctive, or lends itself to a play on words.

The decision to deny the copyright application for the Carlton Dance will have a large impact on the case. If the decision stands, it will likely end the lawsuit. Along with damaging the Ribeiro case, the decision could also damage 2 Milly’s lawsuit against Epic Games. 2 Milly’s dance move in question is called the “Milly Rock”. It is a simple two-step dance in which the arms circle while the hips swing from side to side. Other video game creators, such as Forza Horizon developer Playground Games, have decided to remove familiar dances from their video games to avoid legal action from performers.

The post Fortnite Copyright Lawsuits Hurt by Copyright Office Denial appeared first on California Trademark Attorneys.

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Orange County – In Europe, McDonald’s has held the trademark for the term “BIG MAC” since 1998. However, the trademark was recently lost after the European Union Intellectual Property Office’s (EUIPO) decision to revoke the trademark in response to a cancellation filed by an Irish fast-food chain called Supermac’s.

History of the Big Mac

The Big Mac is the invention of Jim Deligatti, who owned a McDonald’s franchise in Pittsburgh. The sandwich debuted in 1967, and despite its decidedly un-catchy original names, such as “Blue Ribbon Burger” and “Aristocrat,” it became popular on the strength of its special sauce. In 1968, Esther Glickstein Rose, a secretary at the McDonald’s headquarters, bestowed the name “Big Mac” on the above average-sized burger, and a legend was born. Over the next several decades, McDonald’s expanded internationally, bringing its burgers to Europe, among other places.

Supermac Challenges the Trademark

In 2017, Supermac filed a proceeding to cancel McDonald’s trademark on the phrase Big Mac. Throughout Ireland and Northern Ireland, the chain Supermac consists of more than 100 locations. The Big Mac trademark was originally registered under various classifications that outlined food preparation, edible sandwiches and services associated with operating or franchising restaurants.

The trademark attorneys for Supermac argued that the Big Mac trademark was not put to genuine use for a continuous period of five years. Although McDonald’s refuted by outlining the number of member states that used the term for advertising and on packaging, Supermac stated that this evidence solely supports genuine use for sandwiches but not for the other goods and services for which the Big Mac trademark registration was obtained. The EUIPO found that the evidence from McDonald’s did not qualify as genuine use for the goods and services at issue, and released their decision to cancel the trademark.

Burger King Changes its Menu

In response to this decision, Burger King Sweden couldn’t resist poking fun at its competitor and did so in the fashion of creating a new menu. Internet users shared photos of the menu board from a Burger King restaurant in Sweden. To the surprise of many of their customers, Burger King advertised an entire menu of sandwiches called “Not Big Macs,” using the name of the McDonald’s sandwich in several of its menu items. Product names in this line included, “Big Mac-ish but flame-grilled of course,” Like a Big Mac but actually big,” and “The burger Big Mac wished it was.”

This is not the first legal battle that McDonald’s has faced regarding trademarks. The company has struggled over the years to protect the “Mc” and “Mac” prefix. The company has lost battles internationally over trademark disputes, despite their best efforts to eliminate brand competition. In the hope of a better outcome and to protect the term Big Mac in Europe, McDonald’s has already announced it plans to appeal the cancellation decision from the EUIPO.

The post McDonalds Loses the BigMac Trademark in Europe appeared first on California Trademark Attorneys.

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Los Angeles – In January 2019, the Supreme Court agreed to hear a case regarding whether portions of the Lanham Act that prohibits “scandalous” or “immoral” trademarks from receiving trademark protection are constitutional.

The case, Iancu v. Brunetti¸ centers around the decision of the U.S. Trademark Office to deny trademark registration to FUCT, a clothing company founded in Los Angeles in 1990. The U.S. Court of Appeals for the Federal Circuit has already struck down portions of the law prohibiting registration for “scandalous” and “immoral” trademarks, but a decision by the Supreme Court will offer a final decision on the matter.

What is at Stake
Trademark protection allows a brand to prohibit competitors from taking advantage of the goodwill and reputation of the brand.

Not everything can be trademarked. For example, the Trademark Office may reject trademarks if they are deceptive, utilize the U.S. Flag, or use a geographic term to describe a wine or spirit that is not from that region.

Until the lower court’s decision, applications for trademarks containing “scandalous” or “immoral” words, phrases, or images were also prohibited from being registered. These trademarks included curse words, symbols or phrases for marijuana, or images depicting nudity.

“Scandalous” or “immoral” trademarks are those which the general public would find “shocking to the sense of truth, decency, or propriety; disgraceful; offensive; disreputable; . . . giving offense to the conscience or moral feelings; . . . or calling out for condemnation.”

The Trademark Office is meant to apply this test in a neutral manner. However, as the petitioner argued in his brief, the office denies trademarks based on the level of perceived offensiveness when it comes to determining what may, and may not, be protected. For example, French Connection UK enjoys protection on its trademark, “FCUK,” indicating that the decision whether or not to protect a trademark may be somewhat arbitrary.

Brands that do not receive protection are not prohibited from doing business. However, without a federal trademark registration, it is significantly more difficult for brands to prohibit competitors from taking advantage of the name recognition and customer goodwill.

If the Supreme Court upholds the lower court’s decision and permits “scandalous” or “immoral” trademarks to be registered, there is a question of what sorts of trademarks will start popping up as federally registered trademarks.

We can anticipate an increase in trademark applications for scandalous and immoral terms if the Supreme Court ultimately upholds the lower court’s decision, some of which are already in the queue at the Trademark Office.

A similar case was decided in 2017, when the Supreme Court struck down provisions banning “disparaging” terms from being trademarked in Matal v. Tam. In the month after this decision, only nine trademark applications for previously-barred trademarks were submitted to the Trademark Office, often with thoughtfulness by individuals or groups against whom these trademarks have been used, in order to prohibit hate groups from profiting from these terms.

It is likely that Iancu v. Brunetti will be heard in April 2019, and a final decision can be expected by June 2019.

The post Supreme Court Faces Decision on Trademark Protection of ‘Scandalous’ Brands appeared first on California Trademark Attorneys.

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San Diego – Historically speaking, the United States Supreme Court (SCOTUS) has heard relatively few intellectual property cases. However, in recent years this trend appears to be changing. In fact, the October 2018 term has five IP cases on the docket. The outcome of the cases could have huge ramifications for businesses and their ability to protect intellectual Property assets.

Mission Product Holdings Inc. v. Tempnology, LLC
This case concerns issues related to the effect of bankruptcy on intellectual property licenses and more specifically how bankruptcy effects a trademark license. The case will resolve a circuit split regarding ongoing trademark usage pursuant to a license agreement following the rejection of such agreement under 11 U.S.C. §§ 365(a) and (n).

Rimini Street Inc. v. Oracle USA Inc.
Justices will consider whether the Copyright Act’s allowance of “full costs” to a prevailing party is limited to taxable costs under 28 U.S.C. §§ 1920 and 1821, as the U.S. Courts of Appeals for the 8th and 11th Circuits have held, or whether the act also authorizes non-taxable costs, as the U.S. Court of Appeals for the 9th Circuit held.

Fourth Estate Public Benefit Corp. v. Wall-Street.com
This case involves when a Copyright Infringement lawsuit can be filed since separate federal courts have come to different conclusions on the question. The primary issues is whether a copyright infringement case can be brought immediately after filing a copyright application, or only after the copyright office acts on the application.

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc.
Arguments are being heard regarding the Leahy-Smith America Invents Act and what pre-sale type activities constitute “prior art” for purposes of determining the patentability of an invention.

Return Mail Inc. v. U.S. Postal Service
This case also involves the Leahy-Smith America Invents Act. The question at hand is whether the government can be considered a “person” in regard to petitioning for review proceedings under the law.

The Supreme Court increasingly taking intellectual property cases shows the importance of intellectual property to America and American businesses, and appears to be a legal trend that will continue.

The post U.S. Supreme Court Increases Review of Intellectual Property Cases appeared first on California Trademark Attorneys.

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Orange County – A photograph taken of Donald Trump at a wedding in Bedminster, New Jersey on June 11, 2017 went viral. The photograph documented the President crashing a wedding at one of his resorts and has become the source of contention for some of the guests of the wedding.

Jonathan Otto, the vice president of Deustche Bank, was a guest at the wedding and took the photo of President Trump on his iPhone. Another guest at the wedding, Sean Burke, received the photo from Otto, which he shared with other attendees. The photo eventually made its way to Instagram, where the media first discovered it. Thereafter the photo was showcased on CNN, TMZ, The Washington Post and the Daily Mail. A text from Otto to Burke followed these events that read, “Hey, TMZ & others are using my photo above without credit/compensation. You send to anyone? I want my cut.”

Otto proceeded to file a lawsuit for copyright infringement. Esquire magazine, which used the photo in an article titled, “President Trump is the Ultimate Wedding Crasher,” was recently held liable in court for copyright infringement. Hearst Communications, the parent company to Esquire, argued that the photo being used for the news was fair use.

Gregory Woods, the U.S. District Court Judge, disagreed. Judge woods made a statement that said the misuse of the copyrighted photo with a news article without adding in new meaning to the work was not fair use regardless of whether the photo was created for personal or commercial use. Woods also declared that it would not be ethical to allow media to steal personal images posted on social media and benefit from their use. If media companies were to publish content from personal sources, it would diminish the incentive for commercial photographers to generate content to illustrate articles. Judge Woods also posed the question, “why pay to create or license photographs if all personal images posted on social media are free grist for use by media companies, as Hearst argues here?” In the end, the judge determined that “Otto’s status as an amateur photographer with an iPhone does not limit his right to engage in sales of his work.”

It is true that there are instances where a photographer has no interest in entering a market or generating content from a photo. It is also possible for someone to allow fair use of a photo by posting it online. However, as indicated by the communication from Otto, neither is the case in this situation. The judge determined that Otto did not waive his copyright claim when he shared the photo with his friend. The issues of the damages that Hearst Communications will have to pay has yet to be decided.

The post Donald Trump, Wedding Crasher, Becomes Copyright Infringement Case appeared first on California Trademark Attorneys.

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Los Angeles – The popular denim company, Levi Strauss, has recently sued Yves Saint Laurent on the grounds of trademark infringement regarding the tabs included on jean pockets.

One of the most classic features on Levi jeans is also one of the smallest features on their pants. Levi’s have been commonly known to have the company name printed onto a red, white, or blue tab. This tab is typically attached into the right seam of the back pocket. The question is, however, does the use of a similar tab from Yves Saint Laurent warrant trademark infringement. To make a case, Levi Strauss must be able to prove that the similarities between the two could cause confusion among consumers relating to the source of the jeans. Alternatively, the company could be successful in the trademark lawsuit if it shows that consumers might assume a relationship between Yves Saint Laurent and Levi Strauss.

The claims related to this case go so far as to say that Yves Saint Laurent is profiting from the jeans that have the tabs added to them and are also “causing incalculable and irreparable damage to Levi’s goodwill and diluting the capacity of its tab trademark to differentiate Levi’s products from others.” Levi Strauss is alleging that this relationship is not only hurting the Levi brand but also is tarnishing the competitive advantage the company has obtained over its competitors due to the use of the tab. The complaint also alleges that the infringement is willful and is meant to profit from the Levi Strauss’ goodwil.

Currently, executives at Levi Strauss are requesting an injunction to prevent Yves Saint Laurent sales and triple damages due to the accused willful nature of the infringement. Critics regard the allegation of infringement as unreasonable when considering that the only commonality is that both tags are in fact tags. It may be questionable whether Levi Strauss’ tag is distinctive enough to qualify for trademark protection. A fundamental question is whether consumers see the tag itself a source identifier and whether consumers associate that source with just one company.

The allegations against the legitimacy of the lawsuit will not deter Levi Strauss from defending its tabs. Though it may seem like a small detail, Levi jeans have generated billions of dollars in revenue, therefore asserting ownership of the tabs is likely seen as an investment in long-term profitability for the organization.

The post Levi Strauss Fights for Trademark on Pocket Tab appeared first on California Trademark Attorneys.

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San Diego – President Donald Trump recently published a Tweet to his Twitter account that has landed him in some hot water. The Tweet was comprised of a frozen cinematic depiction of the President with the phrase “Sanctions are Coming” in a font that brings to mind the blockbuster HBO series Game of Thrones.

HBO’s Game of Thrones series is well known for its trademark phrase: “Winter is Coming.” The phrase is known as the prediction of an army that is to sweep and conquer the land. “Winter is Coming” has been used in countless forms on social media over the years, however, HBO has indicated that they would prefer that it is not used by anyone to “promote their own agendas.” HBO responded on Twitter to President Trump’s Tweet with: “How do you say trademark misuse in Dothraki?” followed by “Keep us out of it.”

In the Tweet from the President, “Winter is Coming” was changed to “Sanctions are Coming,” talking about the Sanctions that the President has reaffirmed to be imposed on Iran. Iranian Major-General Soleimani responded to President Donald Trumps Tweet with a similar image on Instagram, that said, “I will stand against you” followed by the caption: “Quds force will stand against you. You start this war, but we will finish it.”

President Trumps promised sanctions will affect hundreds of Iranian entities in the oil, banking, shipping, shipbuilding, and insurance industries. HBO spokesman Quentin Schaffer released a statement saying: “We were not aware of this messaging and would prefer that our trademark not be misappropriated for political purposes.”

Two cast members of the blockbuster series also shared their reactions to the Presidents Tweet. Sansa Stark portrayed by Sophie Turner replied merely with “Ew,” while Arya Stark played by Maisie Williams replied, “Not today.”

HBO and President Trump have a history of animosity. Several years ago, then Mr. (not President) Trump called for viewers to cancel their HBO subscriptions due to Bill Maher’s late-night talk show being on HBO. Since Trump began running for President a handful of musical artists, including Aerosmith, Elton John, and R.E.M have asked that he stop using their music at his political rallies.

The post HBO Has Trademark Issue with Trump appeared first on California Trademark Attorneys.

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