Harley-Davidson Sues Urban Outfitters for Shredding Trademarks

Harley-Davidson has sued clothing company Urban Outfitters Inc. for allegedly violating Harley trademarks by buying licensed Harley clothing, shredding it, and then re-branding the apparel before re-selling it.

Harley-Davidson claims that Urban Outfitters violated the federal Lanham Act (which regulates trademarks) and Wisconsin law.

The shredding clothing is part of the Urban Outfitters “Urban Renewal” line. Urban Outfitters allegedly ripped sleeves and necklines off of Harley-Davidson tops to create a tank-top-style garment. Urban Outfitters also allegedly tore the bottoms of Harley shirts into strips to create streamers.

The complaint alleges that Urban Outfitters “cut through and mutilated” the Harley logo and replaced the Harley-Davidson tags and labels with its own.

The Urban Outfitters tags labeled the clothes as “vintage, recycled [and] remade.”

According to the complaint,

Urban Outfitters has used the Harley-Davidson marks in a variety of unauthorized ways that falsely suggest and are likely to create the mistaken impression that [the] reconstructed and materially altered products are authorized, approved and/or licensed by Harley-Davidson, when they are not.

Harley-Davidson claims that the retailer’s actions will likely dilute and tarnish the Harley trademarks, and that its actions constitute unfair competition and false advertising. The value of the Harley-Davidson brand has been estimated at $4.2 billion.

Harley-Davidson is seeking an injunction against further sales of their products by the retail chain.

Urban Outfitters was previously sued by the Navajo Nation for its use of the “Navajo” trademark on clothing, jewelry, and bags. The tribe was particularly concerned about its name being used for an underwear line and a liquor flask. The tribe bans “the sale and consumption of alcohol within its borders and the Navajo Nation does not use its mark in conjunction with alcohol,” according to its attorneys.

If you have questions about the sale and re-sale of products bearing third-party trademarks, contact our office to arrange a free consultation with one of our trademark attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

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PTO Glossary Program Will Expedite Software Patent Application Process

The US Patent and Trademark Office is introducing a pilot program to use glossaries to speed up the processing of software-related patent applications.

The program will launch on June 2 and run until December 12.

The Glossary Initiative arose out of a Software Partnership Meeting held by the USPTO at UC Berkeley School of law in October of 2013.

According to the PowerPoint Presentation at that meeting, the use of glossaries is intended to clarify “potentially ambiguous, distinctive, and specialized terms.”

The USPTO noted that although some favor the use of glossaries, the majority of patent applicants oppose them, as in the following example:

Requiring an applicant to put a glossary of “potentially ambiguous, distinctive, and specialized terms” in the specification seems to handcuff an applicant to using terms that are actually defined, limited the language that could be used in the claims.

The Patent Office conducted a study on the use of glossaries in patent applications and found:

  • No significant difference in the occurrence of patentability errors based on the presence/absence of glossaries or definitions
  • The presence of a glossary did not impact either the pendency or ultimate disposition of a patent application.

However, in the study definitions were not standardized in any way as to form and content, and there were too many variables for a controlled evaluation.

Thus, the Patent Office concluded that there was a need for a pilot program under more controlled conditions.

According to Michelle Lee, Deputy Under Secretary of Commerce for Intellectual Property and Deputy Director of the USPTO, the USPTO recognizes “that a patent with clearly defined boundaries provides notice to the public to help avoid infringement, as well as avoid costly and needless litigation down the road.”

Patent applications accepted into the pilot program will be given expedited treatment.

If you plan to submit a software-related patent application and would like to be included in the pilot program, contact our office to make an appointment for a free initial consultation with one of our patent lawyers.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

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Trademark Appeals Board Defines when Catalogs Are Merely Advertising

The Trademark Trial and Appeal Board (TTAB) of the US Patent and Trademark Office has provided an analysis of the elements required to convert a catalog from “mere advertising” to an acceptable “point of sale” specimen for the purpose of trademark registration.

The case of In re Tsubaki Inc. involved U.S. Tsubaki’s use-based trademark application for the mark TSUBAKI: THE CHOICE FOR CHAIN for “industrial machine parts, namely, chains and sprockets.”

The Trademark Examining Attorney refused registration based on sections of the Trademark Act that require an applicant to submit a specimen showing proper trademark use. The Examining Attorney contended that the catalogues submitted by Tsubaki were not acceptable to show the use of the mark in connection with the goods because they were merely advertising material.

Under Section 45 of the Trademark Act, a mark is deemed to be in use in commerce on goods when:

  1. it is placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto, or if the nature of the goods makes such placement impracticable, then on documents associated with the goods or their sale, and
  2. the goods are sold or transported in commerce.

Under Trademark Rule 2.56(b)(1),

A trademark specimen is a label, tag, or container for the goods, or a display associated with the goods. The Office may accept another document related to the goods or the sale of the goods when it is impracticable to place the mark on the goods or packaging for the goods.

According to the Trademark Manual of Examining Procedure (TMEP),  “Folders, brochures, or other materials that describe goods and their characteristics or serve as advertising literature are not per se ‘displays’” and “[i]n order to rely on such materials as specimens, an applicant must submit evidence of point-of-sale presentation.”

Also according to the TMEP, “[i]n appropriate cases, catalogs are acceptable specimens of trademark use,” but catalogs that do not “(1) include[] a picture or a sufficient textual description of the relevant goods; (2) show[] the mark in association with the goods; and (3) include[] the information necessary to order the goods” may constitute “mere advertising” material and thus not qualify.

In the Tsubaki case, the TTAB explained that catalogs can serve as acceptable specimens of trademark use where they include at least the following:

  • a picture or sufficient textual description of the relevant goods,
  • the mark in association with the goods, and
  • information necessary to order the goods.

With respect to the last factor, a phone number, URL, or mailing address in an ad describing a product, standing alone, is not sufficient.

The TTAB concluded,

After reviewing applicant’s catalogs, prospective customers are not yet at the point of purchase and would need to contact applicant to obtain additional information. It is only after obtaining such information, which is not provided on the specimens, that the purchaser would be in a position to make a purchasing decision.

The specimens simply do not contain adequate information for making a decision to purchase the goods and placing an order and, therefore, we find that applicant’s specimens are advertisements that do not show the mark TSUBAKI: THE CHOICE FOR CHAINS used in commerce as a trademark for chains and sprockets. The mere listing of telephone numbers for corporate headquarters and a website URL does not turn what is otherwise an ordinary advertisement into a point-of-sale display or a “display used in association with the goods” and, thus, into a valid specimen showing technical trademark use.

If you have questions about the trademark application process, contact our office to arrange a free initial consultation with one of our trademark attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

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Bloomberg’s Use of Recording of Swatch Earnings Call Was Fair Use

The Second Circuit Court of Appeals has ruled that Bloomberg’s unauthorized publication of a recording of an earnings call was fair use under UScopyright law.

The case involved an earnings call for the Swatch Group, the watch company, which is traded on the Swiss stock exchange.

In February of 2011, Swatch hosted a telephone conference and invited hundreds of securities analysts to discuss the company’s financial performance.  Swatch arranged with a third party transcript service to record the call.

Swatch asserted that the recording was “an original work fixed in a tangible medium” and thus that it qualified for copyright protection. The company registered the recording with the US Copyright Office.

Bloomberg obtained an unauthorized copy of the recording and made it available via its news service.  Swatch asked Bloomberg to remove the recording.  When Bloomberg refused, Swatch sued for copyright infringement.

A district court granted summary judgment for Bloomberg, finding fair use as a matter of law.

The Second Circuit affirmed, finding that the first fair use factor – “the purpose and character of the use” – favored Bloomberg.

The court accepted that Bloomberg was a “commercial enterprise” providing information to paying users, and that it had obtained the recording using “clandestine methods.”  The court held that whether or not Bloomberg’s service was providing “news” or something else, publishing the Swatch recording provided an important public service in disseminating “newsworthy financial information.”

Although Bloomberg had obtained the recording without Swatch’s authorization, the court held that dissemination of information “would be crippled if the news media and similar organizations were limited to authorized sources of information.”

The court also held that Swatch’s copyright interest in the recording was “thin,” given its factual nature.

The court noted that Bloomberg’s publication of the call did not deprive Swatch of any revenue.  Bloomberg merely “widened the audience of the call, which [was] consistent with Swatch Group’s initial purpose.”

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Court of Appeals Affirms Summary Judgment in Expendables Copyright Case

The US Court of Appeals for the Second Circuit has affirmed the order of a federal district court granting summary judgment for the defendants, including Sylvester Stallone, in a copyright infringement claim related to The Expendables movie.

Marcus Webb is a corporate communications professional and an amateur screenwriter who wrote a screenplay in 2006 called The Cordoba Caper.  The plot involved an elite team of American mercenaries who are hired to defeat a Latin American dictator named General Garza.

Professional screenwriter David Callaham (DoomHorsemen) had a “blind” deal with Warner Brothers, and in late 2003 or early 2004 he suggested to the studio that he write a script about American mercenaries taking on a foreign dictator.  He sent Warner the first draft of his script, entitled Barrow, in 2005.

In 2008, Stallone told his agents that he wanted to do an action ensemble film.  He read the Barrow script, which he assumed came through his agents.  He then began writing his own script, eventually called The Expendables.

Although Stallone said that he set Barrow aside and didn’t “use one word of it” in his own script, the Writer’s Guild later awarded Callaham a “story by” credit and a joint “screenplay by” credit.

The film version of The Expendables script earned $274 million worldwide on an estimated budget of $80 million and has spawned one sequel so far, with more in the works.

After the film version of The Expendables was released in 2010, Webb sued Stallone, Callaham, and the various entertainment companies involved in the production including Lions Gate Films, alleging copyright infringement.

In 2012, the US District Court for the Southern District of New York granted Stallone’s motion for summary judgment.

To establish copyright infringement, a plaintiff must prove:

  • Ownership of a valid copyright, and
  • Copying of the constituent elements of the work that are original.

The second element has two requirements:

  • Actual copying, and
  • Improper appropriation.

Copying may be shown by direct evidence or by indirect evidence, including access to the copyrighted work, similarities between the works that are probative of copying, and expert testimony.

The defendants contended that Webb could not establish copying because:

  • Barrow was written before Cordoba,
  • Webb could not show that Stallone had access to Cordoba when he wrote The Expendables, and
  • There were no similarities between the two scripts sufficient to prove copying.

Webb claimed that Stallone had access to his work on the basis that Webb had submitted his script to eight screenplay contests that employ staff and judges with contacts in the movie industry.  However, Webb introduced no evidence that anyone who worked for Stallone had any connection with the contests.

The court concluded that no reasonable juror could conclude that the two scripts were so similar as to preclude the possibility of independent creation.

On appeal, the Second Circuit affirmed the dismissal on the grounds that the two works were not substantially similar.  According to the court, The Expendables was a “gunfire-riddled ‘pure action’ flick,” while Cordoba was a “trickery-based true caper.”

The judge seemed to like the Cordoba script better, noting that it had

…sensitive and human characters, female figures who are independent and capable, and imagery that includes Mayan villages, horseback riding through the Andes Mountains, and Native American ceremonial costumes, food, and music.

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Musicians Oppose Changes in Copyright Laws to Make Sampling Easier

Aerosmith lead singer Steve Tyler has spoken out against a proposed change in US copyright law that would require musicians to let others create derivative works of their songs.

These derivative works would include samples, mash-ups, and remixes.

Unauthorized sampling is common in the music industry.  Record Label TufAmerica Inc. recently filed a copyright infringement lawsuit claiming that FrankOcean’s “Super Rich Kids” included an unauthorized sample of Mary J. Blige’s 1992 song “Real Love.”

TufAmerica does not own the Blige song, but it does own a 1973 song “Impeach the President” that Blige samples in her song.

Tyler’s comments, along with those of his attorney, were submitted in response to a request in a US Department of Commerce green paper on copyright policy.

One of the changes suggested was the creation of a compulsory license that would allow musicians to remix the works of others by paying a flat fee.  Cover versions of songs are now handled in this manner.

Tyler said that such a compulsory license would force artists to allow their music (or other works) to be associated with messages and causes that the artist objects to.  He said the compulsory license might allow someone to use a sample of music by Melissa Etheridge (a lesbian) in a song containing homophobic slurs, or could allow someone to use a song by gun-ownership-advocate Ted Nugent in a work promoting gun control.

Other musicians opposing the change include Deadmau5, Don Henley, Sting, and Joe Walsh.

The green paper resulted from hearings in May in the House Judiciary Committee’s intellectual property subcommittee to consider the modernization of US copyright law in the wake of technological advances in computers and digital media.

The last extensive revisions of US copyright law were in 1976, before the advent of the Internet and the PC.  Subsequent amendments have been piecemeal, including the Digital Millennium Copyright Act of 1998, which focused on digital rights management, anti-circumvention, and “safe havens” for Internet service providers.

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Supreme Court Rules Patent Holders Have Burden of Proof in Licensing Cases

The US Supreme Court has ruled that patent owners have the burden of proof when a patent licensee sues seeking a ruling that the patent is invalid and has not been infringed.

In the case of Medtronic Inc. v. Boston Scientific Corp. et al., Medtronic had licensed defibrillator patents from Boston Scientific Corp.  Boston Scientific had previously licensed the same patents from Mirowski Family Ventures LLC. 

Medtronic sought a declaratory judgment that its new products were not covered by some of the Mirowski patents.  The terms of the license prohibited Mirowski from filing patent infringement counterclaims against Medtronic.

A lower court found that Mirowski had the burden of proving that Medtronic’s new products were covered by the Mirowski patents and also found that Mirowski had failed to meet that burden. 

The Federal Circuit (which specializes in patent cases) vacated that ruling and held Medtronic had the burden of showing that it did not infringe. 

The Supreme Court disagreed with the Federal Circuit, holding that the burden of proof of infringement still falls on the patent holder, even if the patent holder can’t bring an infringement claim against the licensee.

According to the opinion by Justice Stephen Breyer,

In our view, the burden of persuasion is with the patentee, just as it would be had the patentee brought an infringement suit. Simple legal logic, resting upon settled case law, strongly supports our conclusion.

Justice Breyer noted that, since patents can be complicated, the patent owner is in a better position than the alleged infringer to specify why and how a product infringes:

Until he does so, however, the alleged infringer may have to work in the dark, seeking, in his declaratory judgment complaint, to negate every conceivable infringement theory.

The case will now go back to the federal district court for further proceedings, including a determination on the infringement issue.

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