Ninth Circuit Revives Copyright and Trademark Claims by Heirs of Bill Graham

The Ninth Circuit has revived a case involving copyrights and trademarks associated with the late Bill Graham.

Graham, who was born in Berlin, escaped Germany and France during the Second World War and lived as a foster child in the Bronx.  He moved to San Francisco in the early 1960s and got his start as a promoter by organizing a benefit.

He presented concerts at the Fillmore Theater in San Francisco and worked with performers including Jefferson Airplane, the Rolling Stones, and the Grateful Dead.

He died in 1991 in a helicopter crash near Vallejo, California, on his way home from a Huey Lewis and the News concert.

His will created trusts for his sons, who were 14 and 23 at the time of his death.  The executor of the will and the trustee was Nicholas Clainos, Grahams’s friend and business partner.

In 2010, 15 years after the probate court had made the final disposition of Graham’s estate, Graham’s sons sued Clainos, his attorneys, and the Bill Graham Archives.  Graham’s sons claimed that they had been cheated out of hundreds of valuable rock concert posters and the copyrights associated with those posters.

Graham’s sons also claimed that Clainos and his attorney had “concealed and converted” the rights to “The Fillmore” trademark.

Graham’s sons claim Clainos and his attorney had assigned the poster rights to a new subsidiary of Bill Graham Presents in a document dated August 31, 1995, and then backdated that document to August 1, before the probate case closed.  Clainos became the subsidiary’s largest shareholder, according to the complaint.

A federal district court dismissed the claim against Clainos but the Ninth Circuit reversed and remanded, holding that the plaintiffs had pled facts sufficient to show that assignment was not effective and thus that they had a legitimate claim to the copyrights for the posters.

Some of the concert posters, including the one above, were published without copyright notices before 1977 and thus are now in the public domain.

For works created after January 1, 1978, copyright protection lasts for the life of the author plus 70 years.  Thus, an author or artist can bequeath copyrights (and the associated royalty streams) to his or her heirs after death.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Amazon Found to Infringe Trademark in UK Based on “Lush” Searches

The High Court of Justice of England and Wales has ruled that Amazon’s UK subsidiary infringed the trademarks of cosmetic maker Lush Retail Ltd. by directing website customers to other products when they searched for the Lush brand.

Lush cosmetic products are not sold on Amazon.  UK-based Lush says this is for “ethical” reasons.

Lush makes cruelty-free and mostly vegan beauty and bath products and reportedly donates about 2% of its profits to charity.

The founders of Lush have criticized Amazon for how it pays taxes in the UK.  Amazon’s UK subsidiary paid £3.2 million in taxes in 2013, based on UK sales of £4.2 billion.

The High Court said that Amazon consumers who were directed to other companies’ products after searching for “lush” would be confused and think that these competing brands were associated with Lush.

The product descriptions shown in the Amazon search results used the word “lush” in various contexts.

Amazon contended that it was merely providing its customers with similar options when it could not match their exact requests, but the High Court rejected this defense.

The High Court said:

This right of the public to access technological development does not go so far as to allow a trader such as Amazon to ride roughshod over intellectual property rights, to treat trade marks such as Lush as no more than a generic indication of a class of goods in which the consumer might have an interest.

The High Court also said that Amazon had infringed Lush’s trademark by buying Google adwords including the term “lush,” such as “Lush bath products.”  This could cause sidebar ads to pop up for things like “Lush bath products at Amazon.co.uk.”  But consumers who clicked on the ads would be taken to non-Lush products on Amazon.

The Court noted:

The average consumer seeing the ad … would expect to find Lush soap available on the Amazon site.  The consumer is likely to think that Amazon is a reliable supplier of a very wide range of goods and he would not expect Amazon to be advertising Lush soap for purchase if it were not in fact available for purchase.

According to Lush’s trademark attorney, the ruling will make retailers reconsider their use of third party trademarks in generating ads or search results.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

App Developer Says Facebook Should Not Use “Paper”

FiftyThree Inc., which markets a sketching app called “Paper,” says that Facebook should refrain from using the same name for its new news-reader app.

The sketching app was launched in 2012 and named iPad’s “App of the Year.”  FiftyThree claims that the app has been downloaded 100 million times.

FiftyThree has held a federal trademark for the name “Paper by FiftyThree” since December 31, 2013.  It applied for a trademark for the word “Paper,” standing alone, on January 30, 2014 – the day that it claims to have learned about Facebook’s app.

Facebook does not own a federal trademark for the term “Paper.”

FiftyThree’s founder said that he reached out to Facebook about the “confusion” between the names and that Facebook offered an apology but nothing else.

FiftyThree has publically asked Facebook to stop using the “Paper” mark nut has apparently not yet filed suit.

In addition to its federal trademark rights, FiftyThree may be able to assert a common-law trademark to the “Paper” name based on its two years of prior use in the app field.

As we recently reported, the developer that makes the popular app game “Candy Crush” recently filed a trademark application for the word “Candy” in a wide range of fields

A word can only be considered a trademark if it is “distinctive” – i.e., if it can distinguish one type of goods from another.  Trademarks are ranked from most distinctive to least distinctive as follows:

• Fanciful
• Arbitrary
• Suggestive
• Descriptive
• Generic

“Fanciful” terms include made-up words like “Kodak.”

“Arbitrary” trademarks use words with common meanings but apply them in an unrelated context.  For example, “Apple” would be considered generic if used for “Apple”-brand apple juice, but is arbitrary when used for computers.

“Suggestive” marks are very similar to “Descriptive” marks but are not quite as overtly descriptive.  For example, “Microsoft” is considered a suggestive mark.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

EU Parliament Approves Trademark Law Update

The European Union Parliament has approved new laws to update the EU’s trademark system, although the changes still need to be approved by the Council of the European Union.

The new laws include both administrative changes and substantive improvements designed to block shipments of counterfeit goods via the 28 member states.

The new anti-counterfeiting rules would allow customs officials in European countries to stop counterfeit goods in transit, even though the goods were not being sold within Europe.

Rulings by the Court of Justice of the European Union had held that customs officials could only inspect and identify counterfeit goods but could not stop them from being shipped unless there was evidence that the goods would be sold within Europe.

Under the new rules, trademark owners would still need to show that their marks were valid in the country that was the original destination for the goods.

A study by the US Patent and Trademark Office found that only 15% of owners of American small-to-medium businesses realized that their US trademarks did not protect them internationally.

The International Trademark Association recommends that US trademark owners also seek trademark protection in countries where:

• Their products or parts are manufactured,
• Their products are sold,
• Their products pass through during shipping,
• They plan to do business in the future, and/or
• Counterfeiting is a likely risk.

Another change in the EU law would allow trademark owners to prevent the import of even small shipments of counterfeit goods by consumers for non-commercial purposes.

US law continues to have a “personal use exemption” for counterfeit goods:

Passengers arriving into the United States are permitted to import one article, which must accompany the person, bearing a counterfeit, confusingly similar or restricted gray market trademark, provided that the article is for personal use and is not for sale. This exception may be granted not more than once every thirty days. The arriving passenger may retain one article of each type accompanying the person. For example, an arriving person who has three purses, whether each bears a different infringing trademark, or whether all three bear the same infringing trademark, is permitted one purse.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Furniture Maker Herman Miller Claims Trademark Infringement

Furniture maker Herman Miller, Inc. has sued furniture company Modernica Inc. for allegedly infringing Herman Miller’s trademarks.

Herman Miller accused Modernica of infringing its design trademarks for “Eames” and “M” and for false advertising, breach of contract, and violating the publicity rights of the late designer Charles Eames.

Charles Eames and his wife Ray Eames were American designers associated with a style now known as “mid-century modern.”  Their work was popular and widely copied.

The Eameses’ furniture designs are considered pioneering for their use of molded plywood, fiberglass and plastic resin, and wire mesh.  They designed chairs for Herman Miller starting in the 1940s.

Herman Miller has been using the Eames trademark since at least 1951, according to the plaintiff’s complaint.  The US Patent and Trademark office issued a federal trademark for the Eames name to Herman Miller in 1982.

The complaint charges that Modernica sells imitation Eames products, including chairs, and uses the “Eames” mark to sell these products.  The complaint also charges that Modernica uses the names and photos of Charles and Ray Eames to sell its chairs.

Herman Miller first learned of Modernica’s infringement of its trademarks in 1996, and the companies later entered into an agreement under which Modernica agreed to stop its alleged trademark infringement.

Herman Miller alleges that Modernica is continuing to use Eames and Herman Miller trademarks as metatags on its website.

Metatags are words in the hypertext markup language (HTML) on a website and are not visible to users in a site’s normal mode.  However, they are detected by search engines such as Google and can be used to direct traffic to a site when someone searches for a word in a metatag.

For example, a Google search for “Eames style chair” will produce a link to Modernica’s site on the first page of results, even though the word “Eames” does not visibly appear on the Modernica page.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Underwear versus Hummus in Trademark Dispute

A Canadian hummus maker is embroiled in a trademark dispute with an American underwear manufacturer over the use of the “Hanes” name on their respective products.

Yohannes Petros established his food business in Saskatoon, Saskatchewan, four and a half years ago.  He has four employees.

Hanesbrands, Inc. is based in Winston-Salem, North Carolina and is a publicly traded company with 50,000 employees worldwide.

Hanesbrands has threatened to sue Petros for violating the Hanes trademark.  The US company has also demanded that Petros destroy his stock of allegedly infringing hummus.

Hanesbrands sent Petros a “cease and desist” letter objecting to his use of the mark “Hanes Hummus” in his application to register the name in Canada and the United States:

The mark HANES HUMMUS is essentially identical and confusingly similar to the HANES mark.  Your … mark incorporates the distinctive HANES mark in its entirety and the mere addition of the generic wording HUMMUS does not distinguish the marks.

The underwear company asked Petros to withdraw his application for the trademark.

Petros told reporters that the name “Hanes” comes from his nickname, which is short for “Yohannes.”

His trademark attorney responded to Hanesbrands with 36 pages of case law opposing the underwear company’s contention that consumers would confuse the hummus maker with the underwear brand:

I was not aware that HBI [Hanesbrands Inc.] was in the business of manufacturing and selling hummus. In fact, I am confident that HBI is not in the food production business at all, let alone the production of fine and tasty hummus of the type manufactured and sold by Hanes Hummus.

Petros said that his customers had never confused his product with Hanes underwear.  “I was not aware that HBI’s T-shirts were edible, made with chick peas, lemon or garlic,” his trademark lawyer added.

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Kanye West Brings Trademark Suit over Online Currency

Hip-hop artist Kanye West has filed a trademark infringement lawsuit against the operators of a digital currency called “Coinye West.”

Within hours after the complaint was filed, the defendant’s website was taken down and replaced with the message “Coinye is dead. You win, Kanye.”

Amazon, which hosted the website, was also named as a defendant, along with other named and “John Doe” parties.

The suit claims that the Coinye operators “usurped” West’s brand in order to increase the value of their virtual currency, which is similar to Bitcoin and launched on January 7.

According to the complaint, “Although defendants could have chosen any name for their cryptocurrency, they deliberately chose to trade upon the goodwill associated with Mr. West by adopting names that are admitted plays on his name.”

Coinye admitted adopted the name as an homage to West, and expressed the hope that the performer would “name drop” Coinye.

The currency’s logo originally showed a cartoon version of West’s face on a coin.  The logo was later replaced with a “half-man-half-fish hybrid who is wearing sunglasses.”

The complaint includes causes of action for trademark infringement, unfair competition, trademark dilution, cybersquatting, state law deceptive practices, and violating West’s protected name and likeness.

West’s trademark lawyer said that the removal of the website would not end the matter and that his client would continue to pursue the defendants for damages.

Under the right of publicity, also called the “personality right,” a person can control the commercial use of his or her name or image.  This right is considered a property right and can even survive death in some jurisdictions.

For example, Albert Einstein bequeathed his estate to HebrewUniversity, which licenses the right to use his image in educational materials and commercial products.

The right to prevent one’s name or likeness from being used commercially without permission is similar to a trademark right.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Supreme Court to Rule on Whether Lanham Act Governs FDA-Regulated Products

The US Supreme Court has agreed to rule on whether the federal Lanham Act governs a case involving labeling of a product regulated by the Food and Drug Administration (FDA).

POM Wonderful LLC and Coca-Cola Co. are engaged in a dispute over Coca-Cola’s labeling of a drink as “pomegranate blueberry juice.”

The drink’s label says “Pomegranate Blueberry Flavored Blend of 5 Juices,” and the first two words are in bigger letters.

POM, which makes its own pomegranate-based juice drinks, claims that Cola-Cola misled consumers into believing that the Coca-Cola drink contained mostly pomegranate and blueberry juice.

POM claims that the label is misleading because the drink actually contains only .3% pomegranate juice and .2% blueberry juice.  Apple and grape juice are 99% of the drink’s ingredients.

Coca-Cola says the drink’s label is accurate in that it tells consumers that the drink is a fruit juice blend and tastes like pomegranate and blueberry.

A district court had ruled in favor of Coca-Cola.  The Ninth Circuit Court of Appeals, based in San Francisco, found that POM might have standing to pursue state-law claims against Coca-Cola but upheld the lower court’s decision against POM on federal law grounds.

The question before the Supreme Court is whether the Ninth Circuit erred in concluding that POM, as a private entity, was not allowed to file a complaint under the Lanham Act since the juice drink was regulated by the FDA under the U.S. Food, Drug and Cosmetic Act.

The federal Lanham Act prohibits false designations of origin (including counterfeit trademarks), false descriptions, and trademark dilution.   It forbids misrepresentations about “the nature, characteristics, qualities, or geographic origin” of “goods, services, or commercial activities.”

The Ninth Circuit had said that “we must respect the FDA’s apparent decision not to impose the requirements urged by Pom.”

The case is expected to be decided by the end of June.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Lions Gate Files Copyright and Trademark Counterclaims over Twilight Spoof

Lions Gate Entertainment Corp. has filed copyright and trademark counterclaims against the producers of a Twilight parody film.

The Twilight movie series, based on the hyper-popular novels by Stephanie Meyer, was produced by Lions Gate subsidiary Summit Entertainment and has earned over $3.3 billion worldwide.

Between the Lines Productions LLC, producers of the spoof film Twiharder, had previously sued Lions Gate for antitrust violations.  The 219-page complaint charged that Lions Gate and Summit engaged in “ridiculous-to-insane overreaches of intellectual property law.”

The Lions Gate counterclaim alleges that the Between the Lines “use of the ‘Twilight’ motion pictures … in the absence of a valid license agreement …. would constitute copyright infringement.”  It also includes state and federal causes of action for trademark infringement, false designation of origin, unfair competition, and trademark dilution.

Between the Lines has claimed that several major distributors had expressed interest in distributing Twiharder, but that they immediately lost interest after Between the Lines received a “cease and desist” letter from Lions Gate.  The film’s budget is estimated at $3 million.

The antitrust complaint alleges that Lions Gate tried to “monopolize the conversation” about Twilight via “oppressive” IP enforcement using “sham” cease-and-desist notices.

Lions Gate and its subsidiary Summit Entertainment have sought to have the antitrust case dismissed.

According to the Urban Dictionary, “Twihards” are “Stupid obsessive people (mostly teenage girls) who are ‘in love’ with fictional characters and wouldn’t know a good book if it punched them in the face.”

The dispute will likely turn on the issue of whether Twiharder constitutes a “parody,” which is considered “fair use” under US copyright law and thus not copyright infringement.

Courts distinguish between parodies (which poke fun at the work being parodied) and satires (which use elements of a copyrighted work to poke fun at something else).  Parodies are more likely than satires to be considered fair use.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

In Trademark Dispute with Pinterest, Travel Company Claims “Pin” Is Generic

Pintrips, Inc., a startup travel planning company, has called Pinterest Inc. a “trademark bully” for suing over its use of the word “pin.”

Pintrips contends that “pin” is a generic verb that can’t be reserved for the exclusive use of one company.  A “generic” term is one that is merely the accepted and recognized description of a class of goods or services – for example, “Apple” brand apple juice.  Generic terms are not protected by trademark law.

Pinterest, which allows people to save and share images on a virtual bulletin board, sued Pintrips in federal court claiming that the travel company’s function allowing users to bookmark flight information using a “pin” button violated Pinterest’s trademark rights.

Pinterest’s causes of action also included false designation of origin, unfair competition, and trademark dilution.

Pintrips has asked the court to dismiss the case, saying,

This complaint is a textbook example of an industry giant using a spurious lawsuit to bully a small entity into giving up its right to use a generic, common term that merely describes a core function of its service.

According to Pintrips, just as Facebook can’t own the verb “like,” Pinterest can’t own the word “pin.”  The company pointed out that many other websites and apps use the term “pin” for similar functions.

Pinterest claims that it originated the use of the term “pin” for social media bookmarking and that the public now identifies the word “pin” with Pinterest.

Pinterest has applied for a US federal trademark for “pin” but registration is being opposed by Sprint.  The “Pin” mark has been successfully registered by the company in other countries.

 

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.