Foley Hoag’s Trademark, Copyright & Unfair Competition practice group handles the full spectrum of trademark matters. They advise their clients on the availability of marks and names, prepare and prosecute domestic and foreign applications for marks, and monitor and maintain thousands of registrations worldwide.
I am in Porto, Portugal for the spring conference of the Pharmaceutical Trade Marks Group, and I have enjoyed learning a bit about port wine – and the associated geographical indication – while I am here. Port, of course, is a sweet, heavy wine popular as an after-dinner drink, though it comes in various varieties, including a white version handy for mixing cocktails. The essential quality of port arises from the process by which it is made, a technique that purportedly originated when the British, in a trade war with France in the 17th century, began importing wine from Portugal and needed a way to preserve it better for shipment. The grapes are harvested, crushed (in many cases still by foot in large tanks), and allowed to ferment only to a certain degree. Fermentation is halted abruptly by the addition of strong alcohol at a point when the grapes still retain a good deal of their sugar, resulting in the sweet, fortified wine known as port.
What we know as “port” in the United States, however, may often not be the real thing. True port is produced only from grapes grown in the Douro River valley, a couple of hours inland from Porto and one of the oldest demarcated wine regions in the world (dating from 1756). The wine is typically shipped down the river in barrels (in the old days by boat, now by truck) to the port wine “lodges” in Porto, for blending, aging, and bottling. Use of the denomination “port” is controlled by a Portuguese government agency, the Instituto dos Vinhos do Douro e Porto (Institute of Wines of the Douro and Porto), or IVDP. In order to earn the right to call their wines “port,” and to use the distinctive “seal of guarantee,” producers must prove to the IVDP that they use grapes from the right area and follow the correct processes, and must send sample bottles each year for tasting and approval.
In other words, “port” is a geographical indication (“GI”), a sign or symbol used to indicate that a product originates from a particular area and has certain qualities attributable to that origin. Unlike many countries, however, the US does not have a separate system of protection for geographical indications, and the organizations that control GIs must seek to do so through standard trademark law. The USPTO will register GIs as certification marks (marks that the owner does not use but rather certifies others to use), so long as the owner controls use of the mark and the mark is not understood as a generic term for a type of good. For example, TEQUILA was recently registered as a certification mark for Mexican distilled agave spirits, ROQUFORT is registered as a certification mark for cheese, and COGNAC has been recognized by the USPTO as a valid unregistered, common-law certification mark for brandy from the Cognac region of France. By contrast, however, the USPTO has held that “fontina” is a generic term for a type of cheese, and required disclaimer of that term from the design mark formerly registered by the Italian organization of fontina producers from Valle D’Aosta.
The IVDP has not sought to register PORT as a certification mark in the U.S., and it might have a difficult time obtaining a registration if it did. The term “port wine” is used descriptively in the goods identifications of many US registrations, some of which (such as PLANALTO) appear to be produced by companies from the right part of Portugal, and some of which (such as PISTE-OFF) clearly do not. So, if you want the genuine article – which I can highly recommend after a day tour of vineyards in the Douro valley and the PTMG dinner at Taylor’s 17th-century port lodge in Porto – shop carefully, lest you wind up drinking something from the IVDP’s fraud gallery!
Here’s a tip for copyright owners. Your infringement complaint is not a good place to make political distinctions between the purpose of your work and that of the defendant’s. See that buzz saw you are walking into? It’s called “fair use.”
That’s what happened to Abiodun Oyewole, founding member of The Last Poets (considered by some to be the first American hip-hop group). In 1968, Oyewole composed “When the Revolution Comes,” an infectious percussive poem predicting and urging a revolution against the cultural institutions of enslavement that would finally end the “Party and Bullshit.”
In 2016, Oyewole filed a copyright infringement suit against two other musicians. The defendants included the estate of rap artist The Notorious B.I.G., whose 1993 track “Party and Bullshit” was an apolitical ode to his “bad boy” lifestyle. The second defendant was British singer Rita Ora, whose 2012 hit “How do we (Party)” is a shallow pop anthem to unexamined hedonism. The three songs were not alleged to have had anything in common other than the use of the repeated hook: “Party and Bullshit.” A comparison of the way the phrases were used is below:
The Last Poets
When the revolution comes, afros gone be trying to straighten their heads and straightened heads gone be tryin’ to wear afros. When the revolution comes. When the revolution comes. When the revolution comes. But until then you know and I know n*****s will party and bullshit and party and bullshit and party and bullshit and party and bullshit and party … Some might even die before the revolution comes.
I was a terror since the public school era; Bathroom passes, cuttin’ classes, squeezing asses; Smoking blunts was a daily routine; Since thirteen, a chubby n***a on the scene. Honeys want to chat; But all we wanna know is: Where the party at? And can I bring my gat? … Dumbing out, just me and my crew; Cause all we want to do is … Party and bullshit, and Party and bullshit, and Party and bullshit, and Party and bullshit . . .
Cause when the sun sets baby; On the avenue, I get that drunk sex feeling; Yeah, when I’m with you; So put your arms around me, baby; We’re tearing up the town; Cause that’s just how we do… I wanna party and bullshit And party and bullshit And party and bullshit And party, and party …
Trying to prove infringement (and substantial similarity) from the copying of a mere three-word short phrase is already enough of an uphill battle from a copyright infringement perspective. But Oyewole made it steeper for himself by also including in his complaint some political criticism. Oyewole alleged that the defendants’ copying was “excessively egregious” because, whereas his song used the phrase ‘party and bullshit’ “with the sole purpose of challenging and encourag[ing] people to NOT party,” the defendants’ “intent was to use said lyrics in contravention of the original purpose.” If you are a copyright plaintiff looking to serve up to your opponents a fair use defense on a platinum platter, this is a pretty good way to do it, because the first factor in the fair use analysis examines whether the works in question have a similar “purpose.”
On March 7, 2018, in the case of Oyewole v. Ora, Judge Alison Nathan dismissed Oyewole’s claims. The Court assumed for the purposes of the motion that Oyewole had properly alleged substantially similarity, and then turned to fair use. Judge Nathan dutifully noted all four fair use factors, but the case turned on the first (“purpose and character”), which the Court noted is “the heart of the fair use inquiry.” Judge Nathan held that the works themselves self-evidently demonstrated that the defendants had “transformed” the phrase “party and bullshit.” Oyewole considered “party and bullshit” as something to be shunned; the defendants considered it something to be glorified. Oyewole’s admission in the complaint that the defendants had used the phrase for a different “purpose” sealed the deal for Judge Nathan, and turned what may have been a genuine dispute into a 12(b)(6) dismissal.
What exactly is the definition of a “United States work” for copyright registration purposes? And why is a certain Albanian television company unlikely to forget that definition any time soon?
As we’ve previously discussed, plaintiffs must register their work with the Copyright Office before filing suit in a U.S. court. Section 411(a) of the Copyright Act, 17 U.S.C. § 411(a), provides that:
No civil action for infringement of the copyright in any United States work shall be instituted until . . . registration of the copyright claim has been made in accordance with this title.
There is currently a circuit split over Section 411(a)’s definition of “registration,” which you can read about here. But that’s not the only part of the statute causing controversy. Take for example, the definition of “United States work,” as discussed in the recent case of DigitAlb SH.A v. Setplex, LLC.
The (Alleged) Albanian Television Pirate
DigitAlb SH.A is an Albanian corporation that distributes Albanian television programming, including to U.S. customers through a subscription-based Internet Protocol Television platform. In September 2017, DigitAlb brought suit in the Southern District of New York against Bronx-based Setplex, LLC. The complaint contained copyright counts alleging that Setplex was pirating DigitAlb’s programming for a competing online platform.
Consistent with the United States’ obligations under the Berne Convention, Section 411(a)’s registration requirement applies only to “United States works.” In other words, if you own a non-United States work, you can sue without registering. Because of this, DigitAlb figured that it had no obligation with respect to Section 411(a). It alleged in its complaint that it was an Albanian company and that its programs originated in Albania. But DigitAlb didn’t bother expressly pleading that it was exempt from the Section 411(a) registration requirement, and it didn’t include any allegations about where and when the programs were published.
Setplex moved to dismiss, claiming that DigitAlb had failed to state a claim because it did not affirmatively plead that the works in question were exempt from the registration requirement of 411(a). The judge agreed that this omission was a fatal flaw and allowed the motion to dismiss. Moreover, because DigitAlb already had been warned about this deficiency and didn’t correct it, the Court barred DigitAlb from amending its complaint.
What is a “United States work”?
DigitAlb lost its copyright case because it failed expressly to plead a negative, i.e., that the works were not “United States works” subject to Section 411(a). Such detailed pleading is required in part because the question of whether something is a “United States work” cannot be answered simply by reference to the national origin of the party or even of the work. Section 101 of the Copyright Act provides that a work is a “United States work” if:
The work is first published in the United States;
The work is published simultaneously in the United States and a foreign nation; or
In the case of an unpublished work, the authors reside in the United States.
It’s the issue of publication that makes things complicated. The publication date is not the same as the creation date of a work, nor is it necessarily the date a work is first displayed. Rather, publication occurs when you first distribute copies to the public. Thus, a work can be created in Albania and first published in the U.S., or simultaneously published in both countries. Therefore, DigitAlb’s failure to plead “where or when [its] programming was first published” left the Court unable to determine whether the works, which indisputably originated in Albania, were nevertheless also alleged to be “United States works.”
The lesson here is simple: if you are suing for copyright infringement of a non-United States work, you must expressly plead that you are exempt from Section 411(a). And if you are defending a lawsuit against a foreign copyright owner, pay special attention to whether the plaintiff has sufficiently alleged the exemption, including the “where and when” of first publication.
Is Internet Publication the Same as “Simultaneous” Publication?
There is one more point worth making about Section 411(a). Because DigitAlb failed to include the necessary pleadings in its complaint, the Court never reached what may be a far more interesting issue: Is internet publication the same as “simultaneous publication?” A great deal of copyrighted works these days are first made available online, where they are often accessible to the whole world at once. Does this mean that any work first published online from a foreign country is published “simultaneously in the United States,” and is therefore a “United States work” that must be registered before filing suit?
As far as we can tell, this question has been considered only twice in published opinions. A 2009 opinion by the District of Delaware, in Moberg v. 33T LLC, concerned photographs created outside of the United States and first uploaded to a German website. The Court held that, despite the simultaneous availability of the photographs in multiple countries, they were not “United States works,” because requiring U.S. registration in such circumstances would be contrary to the Berne Convention.
However, a couple years later, in Kernal Records v. Mosley, the Southern District of Florida came to the opposite conclusion with respect to a sound recording uploaded to the internet from Australia. The Court distinguished Moberg on the grounds that the Moberg photographs were only being displayed and not intended for downloading (and thus not truly “published” in the statutory sense). By contrast, the sound recording in Kernel Records was intended to be downloaded and distributed (and therefore “published” in the statutory sense). The Eleventh Circuit later reversed because of a lack of evidence that the sound recording was in fact publicly available in the United States and not, for example, uploaded to a platform with restricted access. However, nothing in the Eleventh Circuit’s opinion undermined the basic notion that internet publication can be “simultaneous publication” for purposes of Section 411(a).
The takeaway: in addition to the “registration” circuit split (now pending before the Supreme Court), we appear to be quietly but “simultaneously” developing another Section 411 rift over the definition of “United States works.” If you are in the District of Delaware or the Eleventh Circuit, you have a little case law to show you the way. The rest of us are on our own for now. Circle back for updates.
Over the past few years, we have seen numerous instances of companies protecting their trademarks in creative ways – approaches that leverage humor and the brands themselves in order to achieve an acceptable legal outcome while simultaneously promoting the company and its brands, thus minimizing the risk of public relations blowback. In this “Creative Trademark Enforcement” series of blog posts, I’ll be exploring some of the more interesting takes on this approach, from singing lawyers to “pop-up” bars and beyond. In the most recent Part III of the series, I discussed a book cover modeled to evoke a famous Tennessee whisky. In this post, we stick with the alcoholic beverage theme, but with an archaic twist.
The Dilly Dilly! Campaign
Multinational brewing and beverage company AB Inbev, macro-brewer of Bud Light and countless other beverages, is not necessarily known for its gentle IP enforcement activities. But a few weeks ago it got seriously creative with one of the most impressive combination enforcement/marketing stunts in recent memory.
In case you haven’t been watching television lately, you may not know that recent ads for Bud Light have featured a “medieval” theme: a Bud Light-obsessed monarch and his equally thirsty subjects. The original “Banquet” ad was released in August 2017, to coincide with the season finale of Game of Thrones:
The second “Pit of Misery” ad was released just before Thanksgiving:
“Dear friend of the Crown, Modist Brewery Company,” the scroll reads, “Congratulations on the launch of your new brew…We are duly flattered by your royal tribute. However, ‘Dilly Dilly’ is the motto of our realm. So we humbly ask that you keep this to a limited addition one-time only run. This is by order of the King. Disobedience shall be met with additional scrolls. Then, a formal warning. And finally, a private tour of the pit of misery,” referencing the pit of the eponymous second “Dilly Dilly” ad. As if the demand weren’t benign enough, the scroll also bestowed “two thrones” to the Super Bowl “for two of your finest employees to watch the festivities and enjoy a few Bud Lights on us.”
Modist Responds In Kind
Rather than take its Super Bowl tickets and run, Modist eventually responded with its own scroll, explaining that its employees – rather than “joust for the right” to attend the Big Game – decided to raffle off the tickets to raise money for their favorite charities. The response scroll – which depicted “Dilly Dilly,” obscured by scorch marks, also invited the Bud Light team to the “citadel of Minneapolis” to try Modist’s new beer (Dungeon Juice, keeping to the theme).
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It’s going to be tough to top this one, but I’ve no doubt some enterprising trademark owner will give it a shot. In the meantime, InBev’s onslaught of “Dilly Dilly” ads has apace, and it will surprise no one to learn that, after the Philadelphia Eagles’ victory over the New England Patriots, InBev celebrated with a “Philly Philly” campaign during the victory parade, where presumably well-behaved Philadelphians could score free Bud Light along the parade route.
It’s been a few years since we first wrote about the 5Pointz dispute, where graffiti artists first tried to prevent the destruction of their works by the owner of the spray-painted buildings, and then sought money damages for their destruction. Gerald Wolkoff, who initially allowed and encouraged the creation of the artwork on his buildings, is widely portrayed as the “bad guy” in this story. While he claims that he sought only to redevelop property he owned, his late-night whitewashing infuriated the art community. He has suffered a string of significant defeats, leading up to this month’s multi-million dollar verdict for the artists.
First, Wolkoff attempted unsuccessfully to register 5POINTZ as a trademark for real estate services, which provoked outrage from the artists and their fans. They thought his claim to ownership in the name allegedly coined by the artists themselves was adding insult to injury. It might have been an interesting legal battle, if the artists had tried to assert their trademark rights in connection with the now-destroyed art and ancillary goods and services (like merchandise and tours) against Wolkoff’s desire to protect the mark for real estate services, but things never got that far. The USPTO refused Wolkoff’s application due to a likelihood of confusion with an earlier-filed application unrelated to the dispute.
Last year, Wolkoff failed to end the VARA litigation through summary judgment. VARA stands for the Visual Artists Rights Act, which is designed to protect the “moral rights” of visual artists, in relation to their works. The judge did remove the artists’ state law claims from the case, finding that property damage, conversion, and even intentional infliction of emotional distress were preempted by VARA. The judge also dismissed Wolkoff’s abuse of process counterclaim, finding that the artists were doing exactly what they were entitled to under VARA. What survived was the VARA claim itself, as the judge found that graffiti can have the required “recognized stature.”
Last November, after a three-week trial during which the judge threatened to hold Wolkoff in contempt, a jury found that Wolkoff had willfully violated artists’ rights with respect to 36 of 49 pieces at issue. But, just before closing arguments, the parties waived their right to a jury. Rather than disband the jury, the judge allowed it to complete its service, but viewed its verdict as a recommendation only. This month, the judge issued his own decision and awarded the artists maximum statutory damages for 45 of the murals (the artists failed to prove actual damages). That’s a total of $6.7 million.
The judge said he meant for the award to serve as a deterrent to Wolkoff and others. Owners of real estate are now on notice that art they may not take seriously can be a very serious matter indeed.
On past Presidents’ Days, we have discussed the critical roles in the development of U.S. copyright law played by Abraham Lincoln (who extended copyright protection to photographs) and George Washington (whose correspondence was at the center of the dispute that gave rise to the fair use doctrine). This year, it’s Gerald Ford’s turn to ascend to our Mount Rushmore of Copyright. Not an obvious choice? Maybe, but we are putting him up there for two reasons. First, Ford signed into law the Copyright Act of 1976, the foundation for modern copyright law and the economic engine for big chunks of the entertainment industry.
Shortly after Ford left office in 1977, he signed a deal with Harper & Row to publish his memoirs. Ford spent the next two years working on them, and the publisher planned a splashy release in April 1979. As part of its PR push, Harper & Row sold to Time Magazine the right to publish the first exclusive excerpt of the work just before the book went on sale. The excerpt Time planned to publish was what everyone was waiting for: Ford’s explanation for his pardon of President Richard Nixon on the heels of Watergate.
But then something very Watergate-ish happened. An undisclosed source obtained a copy of the Ford manuscript and secretly presented it to Victor Navasky, editor of The Nation magazine. Navasky was told that the manuscript must be returned within twenty-four hours so that the source could avoid detection, so he spent the night copying down as much as he could. Navasky knew that if he wanted to scoop Time, he would not have the luxury of doing any additional research, so he relied on his notes of the memoirs to compose a 2,250-word article. About 300 of those words were copyrightable expression by Ford lifted directly from the manuscript, including Ford’s version of the events surrounding the pardon. Navasky’s article also bragged about the fact that The Nation was scooping Time.
Time pulled out of its no-longer-exclusive deal with Harper & Row. Harper & Row then filed a copyright infringement suit against The Nation in the Southern District of New York.
The Fair Use Analysis
The Nation essentially admitted to copying from the manuscript, so the main issue for the Court to decide was whether Navasky’s article was a fair use of Ford’s memoirs pursuant to 17 U.S.C. § 107, which provides that:
The fair use of a copyrighted work . . . for purposes such as criticism, comment, news reporting . . . or research, is not an infringement of copyright. In determining whether the use made of a work in any particular case is a fair use the factors to be considered shall include—
(1) the purpose and character of the use, including whether such use is of a commercial nature . .
(2) the nature of the copyrighted work;
(3) the amount and substantiality of the portion used . . . and
(4) the effect of the use upon the potential market . . .
The Nation argued that it was engaged in news reporting, one of the protected activities enumerated by the statute. The District Court disagreed, finding that the details in the memoirs (and by extension in Navasky’s article) had already been reported publicly in various places, and therefore the article was not truly “news.” The Second Circuit reversed, holding that the fair use doctrine protected the publication of such important matters of state, and cautioning that it was not the District Court’s role to determine “what is and what is not news.”
Harper & Row appealed to the Supreme Court. Justice Sandra Day O’Connor’s majority opinion reversed the Second Circuit and held that there was no fair use. As to the first factor (the purpose and character of the use), the Court agreed with the Second Circuit that The Nation was engaged in “news reporting.” However, Justice O’Connor wrote that this otherwise protected purpose was offset by the for-profit nature of the publication and by the “bad faith” of Navasky, who knew that the manuscript was “purloined” and who was trying to “exploit the headline value of [the] infringement” by making The Nation’s procurement of the unpublished manuscript part of the story.
What really turned the tide against The Nation, however, was the second factor (the nature of the copyrighted work). The Court agreed with The Nation that the factual nature of the material weighed in favor of fair use. However, Justice O’Connor wrote that the non-fiction nature of the work was far less important than the fact that it was unpublished. The Court held that fair use is predicated on an author’s implied consent to “reasonable and customary” uses of a work, and what is “reasonable and customary” for a published work is not the same as what is “reasonable and customary” for an unpublished work. Here, the Court held, it was not reasonable and customary to deprive the author of his right of first publication, and his choice as to when and where to first publish. Therefore, the fact that work was unpublished was a “highly relevant” factor weighing against fair use.
Was too much weight given to publication?
In dissent, Justice William Brennan argued that the majority gave too little weight to the public importance of the information and way too much weight to the unpublished nature of the manuscript. Brennan argued that, since the right to be the first publisher of a work was something bought and sold on the open market, whether a work was published or not should be considered under the fourth factor (market harm). Here, however, the Court also made publication status the determinative component of the second factor, and an important consideration in the first factor. In other words, the majority was allowing the unpublished status of the work to overwhelm entire fair use analysis.
Congress apparently shared Justice Brennan’s concerns. A few years later, the legislature amended Section 107, and tempered Harper & Row, by adding the following text:
The fact that a work is unpublished shall not itself bar a finding of fair use if such finding is made upon consideration of all the above factors.
Congratulations to Trademark and Copyright Law Blog co-editor Natasha Reed and author Josh Jarvis on their appointment as Co-Chairs of Foley Hoag’s Trademark, Copyright & Unfair Competition practice group. To celebrate their ascension, we asked them to interview each other about their practices, their histories, and their thoughts on trademark and copyright law.
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Natasha: First question! What aspect of your practice do you find most rewarding?
Josh: Launching a global brand. I’ve had the good fortune to be involved in the launches of several such trademarks from inception, helping to usher them through domestic and foreign clearance, developing worldwide application strategies, identifying and neutralizing risks, and securing registrations. It’s rewarding to see a mark go from a reasonably promising knockout search to a billboard or a store shelf in just a few years. What about you?
Natasha: Well, my reasons are pretty similar to yours, although I would add that I truly enjoy being involved in the creative process of developing a brand. I come from a creative background and worked as an assistant producer of on-air promotions for a major cable network in my previous life. Working with brand owners on not just selection and clearance of a new brand or a rebrand, but also counseling them on creative ways to strengthen the brand, set it apart from competitors, and withstand challenges to the distinctiveness of the brand is really fun for me. I also really enjoy the enforcement side of trademark and copyright law. I often work with investigators and litigate cases involving brands that are being knocked off by counterfeiters. I find that side of my practice exciting and rewarding.
Josh: Okay, next question: Why did you choose to specialize in trademark and copyright law?
Natasha: I always knew I wanted to practice law, but my work as an assistant producer and other creative work I did prior to law school led me to trademark and copyright law. In my previous job I had to go to our lawyers to clear footage, taglines, music, and scripts I wanted to use in promotional spots. When they told me I couldn’t use something it always frustrated me, because the concept of IP ownership was not entirely clear to me at that time. As time went on, I learned more about trademarks and copyrights and really took a liking to that area of the law. How did you get into this area of law?
Josh: Interesting! I’d always been interested in the creative/copyright side of things – my background is in music and web development – but other than an IP survey course in law school, I started at Foley back in 2005 as a trademark newbie. I was lucky enough to get some trademark assignments early on, and then I was hooked. For better or for worse, brands are a fixture in our lives, and learning how they work, under the law, was fascinating. For me, understanding the legal framework behind our brands, our creative works, and the always-developing interplay between these and emerging technologies, makes everyday life more enjoyable (tolerable?). Sorry, I almost got existential.
Natasha: Name one of the biggest trademark or copyright mistakes that businesses make regularly.
Josh: Number one on my list the failure to file a federal intent-to-use (ITU) application with the USPTO. Not that I’m telling you anything you don’t already know, but for the sake of our readers: once you have a bona fide intent to use a trademark in connection with certain goods or services, an ITU application essentially allows you to “lock in” a trademark priority date, even if you don’t end up using the mark for several years. We’ve run into countless companies who have had to re-brand, or suffer geographically limited trademark rights, because another company starting using a confusingly similar mark first – situations which could have been avoided with a simple, inexpensive ITU filing. What’s your number one mistake?
Natasha: One of the biggest mistakes I see all too often, even with sophisticated companies, is waiting too long to register copyrights. Failing to register a work before it is published or within three months of publication can be a big mistake, because you lose the ability to collect statutory damages and attorney’s fees against infringers. Without statutory damages, copyright owners usually have to prove the infringement resulted in lost sales or other harm, which is often hard to prove. Statutory damages can be awarded even if you haven’t lost profits or otherwise been hurt financially from the infringement. Also, the right to seek attorney’s fees can be a game changer in copyright infringement litigation. The cost to file a copyright application is pretty small, so I usually advise clients to file often and early.
Josh: There’s clearly a theme here: ITUs and copyright apps, often and early! Shifting gears, how do you see trademark and copyright practice changing significantly over the next decade?
Natasha: That’s an interesting question. I think we already see a trend in trademark and copyright enforcement focused on online-related activities. I think this trend will only continue and may predominate trademark and copyright enforcement and litigation over the next decade. We will continue to see more online counterfeiting and piracy, cybersquatting, and infringements in social media. I think this trend will also affect our roles as legal practitioners, as we will increasingly be more involved in brand management generally for our clients. How do you see the practice changing?
Josh: That’s a really interesting point, that we’ll increasing be handling “brand management” more generally. I feel like that’s already occurring, and in non-enforcement settings as well: e.g., we’re helping companies to holistically manage their social media and online presences (and all that entails), which is complicated but also keeps us on our toes! I think another significant change will be the role AI/machine leaning plays in our practices. AI-based search engines are already changing the way that we search for confusingly similar designs, and identify infringing content, and I feel like these and other tools will continue to mature and will become fixtures in our practices. Until, of course, the AIs take over our practices. I’m only half-joking.
Natasha: Ending on a silly question: who is your favorite fictional attorney?
Josh: I answered this recently in response to a similar question on a podcast interview. It’s obviously The OC’s Sandy Cohen, public defender and stand-up dude, perfectly portrayed by Peter Gallagher and Peter Gallagher’s eyebrows. Runner-up: Al Pacino as Managing Partner John Milton/Satan in The Devil’s Advocate.
Natasha: Wow, Satan, Esq. Pretty dark, Josh! My favorite fictional attorney would probably be the lawyer from Seinfeld, Jackie Chiles, played brilliantly by actor Phil Morris as a parody of famed attorney Johnnie Cochran. He had some classic moments on Seinfeld that still crack me up. I loved his use of successive, over-the-top adjectives when arguing his point, like “It’s outrageous, egregious, preposterous.” My second runner up would have to be Annalise Keating, played by the amazing Viola Davis on the show How To Get Away with Murder.
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Thanks to the new Co-Chairs for playing along, and best of luck in their new roles at Foley Hoag.
The past year has been an active one in the chocolate trademark wars, as confectionery giants attempt to use trademark law to protect the shapes of iconic candy products. In the US, and in many other jurisdictions, companies can protect product shapes or configurations, but only if they are sufficiently distinctive that the design functions as an indicator of source. Chocolatiers have had varying degrees of success in convincing trademark offices and courts that their confections have attained that status. In case you would like to give your valentine some sweets that inspire not only romantic feelings but also trademark-themed conversation, here are a few delicious options for your consideration:
As we have previously reported, confectionery giant Nestlé has been embroiled in a years-long dispute in various jurisdictions with rival confectionery/snack conglomerate Mondelez over trademark protection for Nestlé’s four-fingered Kit Kat chocolate wafer bar. Last May, the UK Court of Appeal ruled against Nestlé in an appeal of Mondelez’s opposition, finding that the shape of Kit Kat did not function as a “badge of origin” and therefore was not entitled to registration as a UK trademark. However, the shape is protected as a trademark in other jurisdictions, including Germany, France, Australia, South Africa, and Canada. Notably, that list does not include Norway, where Mondelez subsidiary Freia has been distributing a lookalike bar called Kvikk Lunsj (“quick lunch”) for nearly as long as Kit Kat has been around. “Fingers” crossed that Mondelez’s determination in attacking Kit Kat’s product configuration trademark means that it is planning to expand distribution of Kvikk Lunsj to worldwide markets!
Mondelez (through its Kraft division) has also been on the attack in Germany, seeking to cancel Ritter Sport’s three-dimensional trademark registration for the packaging of its square-shaped chocolate bar. Although a lower court had sided with Kraft, reasoning that the square shape of the package resulted from the square shape of the chocolate bar inside, which had practical advantages, the Federal Court of Justice held that the square shape was not essential to the use of the chocolate bar, and could not be invalidated as a trademark on that basis. After that decision last October, the case was remanded to the lower court for further consideration. Ritter also owns a US trademark registration for its square packaging, dating from 1986.
To be clear, Mondelez is not an enemy of chocolate shape trademarks across the board. It is the owner of the Swiss brand Toblerone, and has several US trademark registrations for the shape of its triangular “peaks and valleys” chocolate bar, dating as far back as 1971. Last fall, Mondelez found itself on the defensive end of a UK three-dimensional trademark dispute. Toblerone sought to cut costs by increasing the spaces between the “peaks” of Toblerone bars, and a UK retail chain, Poundland, announced its intention to capitalize on consumer displeasure with that change by releasing a rival bar called Twin Peaks, which shared a similar shape, except that each triangle had two “peaks.” Mondelez sent a cease-and-desist letter, and Poundland countered by seeking to cancel Mondelez’s UK registration for the Toblerone shape, arguing that it had lost its distinctive character as a result of the “austerity” redesign. The parties ultimately reached a settlement, pursuant to which Poundland was allowed to sell the stock it had already produced, in distinctive packaging, as long as it changed the shape of its “twin peaks” chocolate bar once that stock was sold.
Lindt Chocolate Bunnies
Hippity hoppity, Easter’s on its way! I know, it’s only Valentine’s Day, but Easter is coming early this year, and Cadbury eggs are already in stores! (And yes, that red, yellow, and blue wrapper is a registered trademark.) Chocolate bunnies are ubiquitous in spring, of course, but Lindt thinks that its chocolate bunny is distinctive. Although Lindt’s efforts to register a three-dimensional trademark for its golden bunny have been rebuffed by the European Union Intellectual Property Office, Lindt owns a couple of US registrations for the shape of its bunny, dating from at least 2003. While the color mark (gold with brown accents and a red bow) is based on acquired distinctiveness, Lindt’s earlier registration for the mark without any color claim is apparently based on inherent distinctiveness.
Burdick’s Chocolate Mice
And finally, a bit of local flavor: New England favorite chocolatier L.A. Burdick has registered the shape of its famous chocolate mice as a trademark, consisting of “a three dimensional configuration of chocolate candy in the form of a mouse, with chocolate-covered almond slices sticking out of the candy arranged to resemble the mouse’s ears, a strand of silk attached to the base of the chocolate to resemble the mouse’s tail, an elongated point at the top of the chocolate to resemble the mouse’s nose, and three small confectionery dots placed at the end of and near the elongated point to resemble the mouse’s nose and eyes.” That registration is based on acquired distinctiveness, as is Burdick’s registration for its seasonal chocolate ghost. Last year, however, Burdick failed to obtain registration for its chocolate elephant, which had only been on the market since 2016, apparently not long enough to acquire distinctiveness and function as an indicator of source.
Of course, you could opt for the same-old, same-old heart-shaped box of chocolates for your valentine, but we humbly suggest that this year you go with something a bit more distinctive.
The Intersection of Trademarks, Advertising and Corporate Social Responsibility
Protecting the value of your corporate brand is a critical mission. As companies are increasingly asked to make disclosures regarding their efforts to address social and environmental risks, these disclosures create both opportunities and challenges for those entrusted with protecting a company’s intangible assets.
In this webinar, we explore the interrelationship between trademarks, false advertising and emerging compliance requirements in the field of corporate social responsibility (CSR). What are the CSR disclosures most likely to impact your brand? How do you avoid litigation and regulatory pitfalls when you are marketing your company’s efforts to “go green” or develop socially conscious policies?
New York Fashion Week (NYFW) 2018 kicks off on Thursday, February 8 through Friday, February 16, with a full schedule of exciting and exhilarating runway shows. This year’s designers include many of the usual faces, like Tom Ford, Ralph Lauren, and Jason Wu, to name a few. As usual, there is some controversy concerning designers that are notably missing from this year’s schedule, like Georgina Chapman’s label Marchesa. Chapman (the estranged wife of film producer Harvey Weinstein) has apparently cancelled her customary runway show in the wake of her husband’s sexual misconduct scandal, which spawned the #MeToo movement. Other designers have embraced the #MeToo movement, and at least one designer, Myriam Chalek, is expected to do a runway show centered on the movement. Chalek’s show, titled “The #MeToo Fashion Show: Slap the Pig Outta Him!!, is expected to unveil clothing that visualize sexual harassment experiences in the fashion world.
Despite all the serious talk of sexual harassment, many designers continue also to talk about the business pains associated with runway shows, including the prevalence of knockoffs that are expected to pour into the market after the shows are over. In 2017, designers continued to fight back against alleged fake and counterfeit fashions, and many fashion infringement lawsuits in 2017 continue to make headlines in 2018. Below is a look back at the top five trademark, copyright, and design patent infringement lawsuits that had the fashion world talking in 2017. You’ll notice that one particular fashion retailer kept its lawyers quite busy last year.
Puma v. Forever 21
Fast fashion retailer Forever 21 is no stranger to being a defendant in an IP infringement lawsuit. In 2017, German fashion company Puma filed a complaint in California district court against Forever 21, alleging that Forever 21 infringed its rights in a line of Puma footwear products made in collaboration with singing sensation Rihanna. Puma sought a preliminary injunction and temporary restraining order to halt Forever 21’s sales of its three shoe designs that Puma alleged were identical to Puma’s “Creeper” sneaker, “Fur Slide” sandal and “Bow Slide” sandal. Puma pulled out all of the stops in its complaint, including relying on a trifecta of intellectual property violations – copyrights, trade dress, and design patents. (As discussed in a prior blog post, brand owners can rely on these three distinct intellectual property rights to protect certain fashion designs.) In asserting its copyright claims, Puma cited the 2016 Supreme Court copyright case Star Athletica v. Varsity Brands and alleged that elements such as a “casually knotted satin bow” can be “perceived as a two or three dimensional work of art separate from the Fenty Shoes and . . . would [also] qualify as protectable pictorial, graphic, or sculptural works—either on their own or fixed in some other tangible medium of expression.” Whether Puma’s Fenty line of shoes are protectable under copyright law will eventually be decided. For now, the Court has ruled that, even if it is, Puma failed to show irreparable harm and therefore was not entitled to a preliminary injunction against Forever 21. This early win for Forever 21 is huge, and the fashion world will continue to watch this case play out over the next several months.
Chanel v. Amazon Storefronts
While the thought of purchasing a genuine Chanel product on Amazon seems incredulous, that didn’t stop a slew of third-party Amazon sellers from listing various Chanel-branded products like bags, T-shirts and cell phone cases on the online marketplace. In response, Chanel filed a complaint in Florida district court against several of those storefronts for selling counterfeit Chanel products and infringing Chanel’s famous interlocking C logo. The French fashion house sought $2 million in damages from each storefront and demanded that their online stores be permanently removed from Amazon. Some of the sellers initially tried to convince Chanel to drop its lawsuit against them, with one claiming that it mistakenly uploaded photos of Chanel-branded products to its Amazon store, while another denied selling counterfeit products altogether. However, Chanel wasn’t having any of that and continued forward with its lawsuit, including obtaining a preliminary injunction against the sellers. The court eventually entered a default judgment against thirty such sellers, awarding Chanel $100,000 against each of the storefronts. Following the ruling, Amazon was required to permanently disable the storefronts of the accused sellers, remove all images of the infringing products bearing Chanel’s trademark, and transfer any funds held in the accounts of the sellers to Chanel.
Forever 21 v. Adidas
Yes, you read it right. In a rare turn of events, in 2017 Forever 21 (usually the defendant) decided to file a complaint in district court in California against Adidas, seeking a declaration from the court that its sale of striped clothing did not infringe Adidas’ 3-stripe trademark. According to Forever 21, it had suffered Adidas’ threats long enough, and was “tired of operating with a cloud over its head with regard to its right to design and sell clothing items bearing ornamental/decorative stripes, and unwilling to stop doing something it has every right to do and pay a bully to leave it alone.” The lawsuit was later moved to district court in Oregon, where Adidas brought infringement claims against Forever 21. Everyone will be watching to see how this lawsuit pans out. If Forever 21 wins, this could have a huge impact on how Adidas continues to enforce its famous 3-stripe trademark in the U.S.
Forever 21 v. Gucci
On the heels of its lawsuit against Adidas, and after allegedly receiving cease and desist letters from Gucci, Forever 21 filed a complaint against Gucci in California district court, seeking a declaration from the court that it was not infringing Gucci’s blue-red-blue and green-red-green stripe trademarks. Forever 21 also sought to cancel Gucci’s trademarks on grounds that they lack secondary meaning, are aesthetically functional, and generic. As you can imagine, Gucci was not happy. In response, it moved to dismiss Forever 21’s claims for cancellation, and filed counterclaims against Forever 21 for trademark infringement, trademark dilution and unfair competition. The court granted Gucci’s motion to dismiss, stating that it was “skeptical that [Forever 21] . . . sufficiently alleged facts to support its claims for cancellation.” The case will continue on as the parties fight over whether Forever 21 in fact infringed Gucci’s trademark rights.
Aquazzura v. Ivanka Trump
Technically, this beef started in 2016, when Italian footwear brand Aquazzura sued Ivanka Trump in New York district court for allegedly infringing Aquazzura’s trade dress rights in its “Wild Thing” fringe sandal and “Forever Marilyn” pump. However, the fight exploded in 2017, when Aquazzura demanded that Ivanka Trump be deposed during the discovery phase of the case. Ivanka Trump’s attorneys argued that she should not have to submit to a deposition in a lawsuit because “she was not involved in the design, promotion or sale of the shoe.” However, the judge disagreed and ruled that Ivanka Trump could be deposed since, according to her public statements, she played an active role managing the brand. The parties eventually settled their dispute towards the end of 2017, leaving us lawyers to wonder whether Aquazzura’s trade dress claims would have actually held up in court.
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