Monthly Archives: March 2020

Slam Dunk Win for NBA Video Game Accused of Tattoo Copyright Infringement

“I acquired a weakness over the weekend for a guy with a gold tattoo.” “New Tattoo” music and lyrics by Ana Egge and Maryann Kranis

Norwegian teen tattoos McDonald's receipt on his arm, confirms Big ...

It’s a generational thing, I know, but I just don’t get tattoos. Back in the day, they were associated with grifters, carnies, and drunken sailors. Popeye had one on his forearm. Mighty Mouse did not.

Recently, however, I got an anthropology lesson on tattoos and their cultural significance. I learned that “tattoos have been part of human expression for thousands of years,” and that “modern tattoos reflect the personal expression of the person bearing the tattoo and are intended for that purpose.”

That lesson came not from a book or article, but from expert testimony in a court decision involving the tattoos of none other than LeBron James. The issue was whether the maker of the video game NBA 2K infringed the copyrights in the tattoos of Mr. James and two other NBA stars when the the trio were included as video game figures, in NBA 2K, tattoos and all.

First, some basics. Yes, tattoos are pictorial works subject to copyright. And yes, absent a written agreement between the tattoo artist and the client, the artist owns the tattoo copyright, which gives the artist the right to control when and how the tattoo is reproduced. So in theory, including Mr. James’s likeness with his tattoos could implicate the tattoo artist’s copyright.

In this case, the artist had granted an exclusive license to the copyright to the plaintiff, a company formed primarily to enforce the copyright against the video game company and others who similarly included likenesses of tattooed stars in commercial products such as video games.

The court of law in this case took a very dim view of the plaintiff’s efforts to profit from the tattoos’ presence in a virtual court of basketball. In fact, the judge agreed with all of defenses:

First, U.S. District Judge Laura Taylor Swain ruled that there was no copyright infringement because the tattoos in question were not “substantially similar” to the copyrighted tattoos. The virtual tattoos were a fraction of the actual tattoos in size and were barely visible, appearing only fleetingly on moving figures who themselves were part of a larger group of moving figures in the video game as its being played.

Second, the court ruled that the artists had granted LeBron and the others implied licenses to allow the tattoos to be publicly displayed, including in video games. “The tattooists necessarily granted the players nonexclusive licenses to use the tattoos as part of their likenesses,” Judge Swain wrote. “The players, who were neither requested nor agreed to limit the display or depiction of the images tattooed onto their bodies, had implied licenses to use the tattoos as elements of their likenesses.”

Finally, Judge Swain concluded that including the tattoos in the virtual likenesses of LeBron and others was “fair use.” She concluded the company had made a “transformative use” of the tattoos, noting: “The tattoos were originally created as a means for the players to express themselves through body art,” Judge Swain wrote. “Defendants reproduced the tattoos in the video game in order to most accurately depict the players.”

Judge Swain was also swayed by a survey conducted by Dr. Deborah Jay that showed that consumers do not buy NBA 2K for the tattoos on LeBron James’s likeness.

The full court press of defenses thus produced a blowout win for NBA 2K and a stinging loss for the plaintiff.

As for me, I still may not totally get cultural phenomenon that is the modern tattoo. But guided by the expert testimony in this case about the history and significance of tattoos across the millennia, I can finally accept that my aversion and skepticism were narrow-minded, misguided, and worthy of an OK BOOMER retort.

The case is Solid Oak Sketches LLC v. Visual Concepts LLC et al., case number 1:16-cv-00724, in the U.S. District Court for the Southern District of New York.

QOUTE OF THE DAY: “Show me a man with a tattoo and I’ll show you a man with an interesting past.”
― Jack London

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TM Suit by BRIZZY against VIZZY Lacks Sparkle, Court Rules in Denying P.I. Motion

“I’m forever blowing bubbles. Pretty bubbles in the air.” I’m Forever Blowing Bubbles, music by John Kellete, lyrics credited to Jean Kenbrovin

Image result for brizzy hard seltzer

“Hard seltzer” has been one of the brightest product categories in a declining market for alcoholic beverages. As reported by Bloomberg, “Alcohol drinkers are becoming more and more concerned about health and wellness, and are becoming more involved in mindful drinking. Hard seltzers are meeting these consumer needs.”

What is hard seltzer? It’s carbonated water infused with 5% alcohol and flavorings. It has fewer carbs and calories than beer. Hard seltzer drinkers tend to be younger, have higher incomes and skew more female than traditional beer drinkers, according to Bloomberg.

The man generally credited for sparking the hard seltzer craze is Von Mandl, a wine maker from Canada. His company’s WHITE CLAW hard seltzer currently accounts for 55%, with annual sales hovering at $1.6 billion. WHITE CLAW hard seltzer has been such a success that Mandl has been able to devote attention to his first passion, wine making, turning out bottles that sell for upwards of $250.

With such a lucrative and expanding market, it was only a matter of time until hard seltzer bubbled up into a trademark dispute. In a decision handed down yesterday, a Texas federal judge refused to block mega beer-maker Molson-Coors from selling its new VIZZY brand hard seltzer, scheduled to hit the market this month. The suit was brought by a much smaller hard seltzer company that has been selling the trendy beer alternative under its federally registered BRIZZY trademark.

With the products poised to compete head to head in the growing hard seltzer marketplace, the only real issue for the court to decide was whether Molson-Coor’s new brand VIZZY was too close for comfort to prior mark BRIZZY –stated in legal terms, are BRIZZY and VIZZY so similar that an appreciable number of ordinary consumers are likely to be confused?

In denying BRIZZY’s motion for a preliminary injunction–a temporary ban on VIZZY sales while the case goes ahead to trial–the judge found that “Plaintiff cannot realistically hope that by obtaining a mark based on and characterized dominantly by one word (‘fizzy’), it can prevent competitors from doing the same.” Miller-Coors swayed the judge with evidence of many other trademarks on the market derived from the word “fizzy.” The court was further persuaded that confusion is unlikely because the parties’ cans look noticeably different. Even though the court recognized that “V” and “B” are “easily confused,” it agreed with Molson-Coors that the “logos, font, coloring, cans, and packaging could not be more different.”

Law 360 reported today that the plaintiff intends to move forward with the case and is seeking a permanent injunction and unspecified damages.

The case is Future Proof Brands LLC v. Molson Coors Beverage Co. and MillerCoors, case number 1:20-cv-00144, in the U.S. District Court for the Western District of Texas.

Stay tuned to see whether this case will yet lead to a substantial verdict in favor of the David against an industry Goliath or whether BRIZZY will again fall flat. Until then, stay thirsty for trademarks, my friends. And drink responsibly.

Quote of the day: “The water in a vessel is sparkling; the water in the sea is dark. The small truth has words which are clear; the great truth has great silence.” Rabindranath Tagore

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Music Is Love

“Everybody’s saying it–music is love.” Music is Love” music and lyrics by David Crosby, from the album “If I Could Only Remember My Name.”

Brown and Black Gramophone

On a grey day, when sheltering in place begins to wear thin, a break from trademark themes seems in order. Trying to find the silver lining behind this dark cloud of Corona Virus may not be easy. But linings of silver are there to be discovered, whether its the chance to work side-by-side with one’s significant other and to discover what exactly it is that they actually do all day, to the opportunity to multi-task as dedicated work-at-homer and day-care provider, or one’s transformation from restaurant patron to intrepid pantry explorer–those dried beans were never going to hop into the Instant Pot themselves.

Among the few changes that have not been unpleasant has been the explosion of live musical performances being posted on social media and You Tube by artists and musicians across the musical spectrum. Neil Young shared an intimate mini concerts from his fireside, filled with gems and rarities. Willie Nelson and friends recast their cancelled Luck Reunion as an online musicthon. And many other artists and venues have followed suit, often tying their impromptu concerts with to a good cause, such as supporting fellow musicians or the dedicated staffs at venues and concert halls.

For the Internet concert curious, here are some lists complied by leading music publications to help you find tunes to ease a troubled mind:

So while music halls from Nashville to New York City remained shuttered, there are still plenty of ways to support live music, even from the couch. Perhaps you’ll make some new discoveries or reconnect with a favorite artist. Just a few years ago, none of this would have been possible. Today, our digital connectivity can help keep us connected with the healing power of music.

No Softrights post would be complete without at least some mention of intellectual property. So since this one concerns music, remember, artists make their living from their copyrights. So respect the artists and respect their creations by being a legit consumer–subscribe to a digital music service, buy CDs and other merchandise, and when Covid is history, buy a concert ticket, go to a festival, and enjoy music the way it was intended to be heard–live.

Quote of the day: “I think that live music is something that the Internet can never kill.” Jim James

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Fools Rush In To Cash In On Circle R

“Wise men say only fools rush in.” Can’t Help Falling In Love” music and lyrics by Haley Reinhart

Image result for gold rush

When confronting a global pandemic, it seems like folks would have better things to worry about than dreaming up schemes to monetize the panic part of pandemic. Yet predictably within days of Corona Virus and Covid-19 becoming household words, the US Trademark Office was flooded with applications for phrases such as CLASS OF COVID-19 for sweatshirts, COVID IMMUNE for wristbands, COVID-19 SURVISOR for t-shirts, and COVID KIDS for children’s clothing.

Like most of their COVID brethren, these applications were filed based on the applicant’s professed “bona fide intent to use” the mark in commerce. That’s a fancy legal term that means that the application must be more than a pipe dream, much more in fact. Trademark law demands that aspiring trademark owners be able to back up their aspirations with real commercial evidence, like having a prototype, investing in equipment, or having a strategic plan.

And before the Trademark Office will issue a certificate of registration with the impressive ribbon and official seal, the applicant must submit evidence that it has actually selling good or offering services under its trademark. These can’t be mere token sales to friends and family; they but must be genuine commercial transactions. Otherwise, if the applicant filed first and tried to develop a product or business later or relied on trumped up sales, the resulting registration can be challenged as having been void from the start.

So, many of these Covid trademark hopefuls are likely due for a rude awakening. Not only will the market for their novelty products run its course along with the novel virus, but the money they spent on these trademark applications likely would have been better spent on other things, like toilet paper and hand sanitizer.

Quote of the day: “In the middle of difficulty lies opportunity.” Albert Einstein

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Too Good To Be True: A Trade Dress Saga

“In my mind I see a mirage on the wall. But unfortunately it’s not there at all.” Mirage, by Iron Butterfly

I don’t put much stock in mirages. They may be good plot devices for movies set in the Sahara or a Bugs Bunny cartoon. But in the real world, I’ve never come close to experiencing the confluence of dehydration and desperation thought to produce the hallucinatory visions depicted in film and in literature.

Then came Covid-19 and sheltering in place. Within a few short days, things shifted from well-stocked supermarket shelves to the “new normal” where many staples have been in short supply. Not wanting the cupboard to go bare, we found an organic ranch in California that still had plenty of beef, lamb, and pork and would ship to our door.

I’ve long believed the adage “never shop for groceries on an empty stomach.” I’m here to report that the advice holds doubly true when ordering meat from the Internet. With a few clicks of the mouse, we had purchased approximately an entire side o’beef, or so it seemed from the price tag.

A few days later, UPS delivered a heavy box market “PERISHABLE, OPEN IMMEDIATELY.” After puzzling over what might be inside, it dawned on me that we now HAVE THE MEAT! I found the nearest sharp object and tore open the box. Reaching inside, I began to remove not the prime-aged cuts I’d been craving, but plastic white tubes with red lettering–one after the other, like circus clowns emerging from a tiny car.

This is where the mirage theme comes in. My mind’s eye saw the white and red tubes not for what they were–15 one pound packages of ground beef that rounded out our order. I saw what I wished them to be–tantalizing cylinders of Taylor Pork Roll (pictured above), a rare and unusual Spam-like meat product that comes from only one place on the planet–Trenton, New Jersey, my hometown. I had practically been weaned on the savory blend of pork and spices that Trentonians traditionally grilled or fried, topped with American cheese, and served on a fresh, crust Kaiser roll with mustard.

For an instant, I was thrilled. Then doubt began to seep in. Why would a premium organic beef purveyor have commingled 15 Taylor Pork Roll rolls among the T-bones, filets, and sirloins? The rock-frozen pork roll may be cheap, but not cheaper than dry ice!

But my initial belief that I’d received a motherload of the very pork roll brand my mother once served-up was no mirage. It was a by-product of the facet of trademarks called “trade dress.” You see, more than words and logos can function as a brand. Trademark protection also can extend to the appearance of packaging itself–the combination of colors, shape, and overall “look and feel” that can identify a product’s source as strongly as its name. Prime examples include the COCA COLA bottle and the Cracker Jack Box. In most cases, companies must earn trademark protection for their product packaging through five years or more of sales and advertising. They must prove what’s known as “secondary meaning,” which means that the trade dress has acquired brand significance among relevant consumers.

The Taylor Pork Roll package has all the hallmarks of protecible trade dress. The company has been selling its product in the same white and red packaging for decades while earning a devoted fan base of New Jerseyans that have migrated across the land and globe.

Considering the striking similarity between the Taylor trade dress and the ground beef now loaded into every nook and cranny of our freezer, my mirage moment is both understandable and forgivable. I’m sure I’ll be enjoying these meal-size packets of quality ground beef for weeks to come, and hopefully long after sheltering-in-place gives way to barbecuing with friends and family. And I’m equally sure that after shoppers pillage the supermarket shelves of dairy, groceries, and all other manner of comestibles, there’ll probably still be a few packages of pork roll left. And every time I take a package of that ground beef out of the freezer to thaw, I’ll smile to myself and think of the white and red Taylor Pork Roll trade dress.

Quote of the Day: “Adversity is a mirage. People, situations, and relationships sometimes change for the worst but inevitably clear a path for far better replacements. The continued journey will always find bliss.”
― Carl Henegan

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Blowin' In the Wind

“Black clouds overhead, old man says looks like rain. Thieves’ Road winds to the Black Hills sign.” Pale Sun, Cowboy Junkies

Every day these days feels like it has a black could overhead. New revelations, new worries. But even with so much uncertainty in the air, we trademark junkies can find something to write about other than panic and pandemic.

I was out for a brief dose of sun and fresh air, walking along deserted streets with my rambunctious dog, when I came across two bright orange road signs. Both were broken, crumpled, bent over to the ground. Could the Covid-19 be so potent as to level even these rugged devices built to withstand heavy winds and other physical adversities?

As my dog began dragging me to the nearest shrub for some satisfying sniffing (by him, not me), I noticed that the crippled road signs each had twin plastic orange springs at the base. And instantly, I recognized the source. These were signs made by TrafFix, the company that years ago had famously sued to protect its orange dual-spring design as a trademark. The case was TrafFix Devices, Inc. v. Marketing Displays, Inc. It made it all the way to the U.S. Supreme Court, where TrafFix’s trademark hopes were dashed by the Court’s unanimous decision. The Court held that no matter how recognizable those dual-springs might be, (as they were to me) trademark law can’t protect them because they are functional features whose main purpose was bolstering street signs against the wind and elements, not serving as a brand. The Achilles Heel for TrafFix;s trademark claim was another form of intellectual property–a utility patent. The patent covered the very characteristic that TrafFix sought to protect by trademark, leading the Supreme Court to conclude that giving TrafFix trademark rights on top of its patent would unfairly give TrafFix a perpetual monopoly on a useful feature and put other companies at a competitive disadvantage.

The TrafFix case thus joined a body of famous trademark cases that, like modern celebrities such as Kanye, Madonna, J-Lo, and Shakira, are known simply by one name. (I’ll cover others in future posts.)

Pulling my dog away from the felled road signs, their “Caution” warnings flattened by some mysterious force, I glanced up and saw a trio of mature cherry trees in full bloom across the street. That they had been planted in front of a funeral home did not dim the thrill of seeing the delicate, ephemeral pale pink blossoms. We may not be able to go to see the annual wonder of cherry blossoms draping the tidal basin and Jefferson Memorial like a gauze tapestry, we know that Spring is here, even if a few TrafFix springs, and ourselves, have seen better days.

Quote of the day: “I don’t think people are going to talk in the future. They’re going to communicate through eye contact, body language, emojis, signs.” Kanye

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Does Endless Summer Have Two Rs?

“Let’s go surfin’ now, everybody’s learning how, come on on safari with me.” Surfin’ Safari, music and lyrics by Brian Wilson

Surfing has strangely been on my mind lately. I’ve been reading the book Barbarian Days, A Surfing Life by William Finnegan. In it, Mr. Finnegan chronicles his early fascination with the sport, sparked not only by his family’s proximity to surfing meccas in Southern California and Hawaii, but also by the surf culture of the early-to-mid sixties, indelibly captured by the guitar driven surf music of Dick Dale and The Ventures and in films such as Beach Blanket Bingo, Gidget, and Ride the Wild Surf. I grew up during in those days, only an hour or so drive “down” the Jersey Shore. And though my sporting interests were rooted in terra firma, I recall my family’s first visit to Long Beach Island, a sliver of a barrier island north of Atlantic City. After a day in the sun, the five of us sat on logs around a small fire and listened to a local cover band tear through a credible version of the ultimate surf instrumental, Wipeout. I fell asleep that evening with visions of taking drum lessons and then mesmerizing my classmates with a virtuoso performance of Wipeout’s iconic drum solo. But when school rolled around that September, I was given a Bundy clarinet, began free lessons, and was forever consigned to the woodwind section, several strata below the rarefied cool of brass and percussion.

Around that time, in 1966, a bunch of us kids walked downtown to see a film called The Endless Summer. Produced and directed by Bruce Brown, the movie followed two surfers on a surfing trip around the world in search of “the perfect wave.” Again, I was a city kid who had as much contact with surfing and surf culture as I had with bullfighting. Yet the film’s exotic locations and thrilling action photography captivated me like no movie before or since.

So, with surfing and The Endless Summer on my mind, I was surprised by the odd coincidence of seeing The Endless Summer in today’s intellectual property news. According to IP 360, “The filmmaker behind “The Endless Summer” is suing Nike and Foot Locker for trademark infringement, alleging that an ad campaign that ran last year used the movie’s title and graphics from its poster to sell shoes and other apparel.” In the Complaint filed in, where else, Los Angeles, the filmmaker’s company alleges not only that The Endless Summer is “considered to be one of the most influential films to depict surfing and the surfing lifestyle,” but also that “The Endless Summer and the images emblematic of the Endless Summer film poster have become famous and distinctive brands.” The Complaint goes on to allege that the Foot Locker/Nike “Endless Summer” ads confused consumers into thinking that the filmmakers had approved the campaign. The question posed by the case is this: Does The Endless Summer have to Rs–the “r” in summer and the “Circle R”–the registered trademark symbol? And, yes, the filmmakers do own a federal registration for THE ENDLESS SUMMER. The case is Bruce Brown Films LLC v. Foot Locker Inc. et al., case number 2:20-cv-02553, in the U.S. District Court for the Central District of California.

The Endless Summer has been on my mind for another reason. In 2003, Bruce Brown’s son put out a sequel to The Endless Summer called Step Into Liquid. Naturally, I had to see it. And I did–during the aftermath of a massive storm that knocked-out power in D.C. for nearly a week, leaving us unmoored and insecure. I’d been thinking about that small disruption during our current, more dire, national public health crisis. And reading William Finnegan’s surf memoir has been transporting me back to The Endless Summer of 1966 and to that film’s classic poster: the faceless silhouettes of three male surfers against an eye-popping Day-Glo background dominated by a giant yellow sun.

Today, during the first week in what likely will be a long and challenging test of our collective resolve, compassion, and ingenuity, when my age demographic appears to be at greatest risk, it’s strangely comforting to see that something so intertwined with my generation’s collective cultural consciousness–a film about a challenging journey, about risks, about courage and about the danger and beauty of the natural world–remains as vital and relevant today as it did over 50 years ago. Let “the perfect wave” be a metaphor; never stop searching.

Quote of the day: ““You can go right or left, but you can’t very well do both at once.” The Endless Summer


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As We Circle the Wagons, Count On “Circle R “

“If I cross your path again, who knows where, who knows when, on some morning without number, on some highway without end.” Keep Your Distance, music and lyrics by Richard Thompson

In what feels like the blink of an eye, our world has been turned upside down, inside out. Phrases we never before heard or uttered–coronavirus, social distancing–became part of our shared lexicon overnight. Many of us who can’t remember the last time we missed a day of work have seen our offices closed. So we’ve converted dining room tables and spare rooms into satellite offices for our companies and firms. In a matter of days, we’ve begun to suspect that these strange days may become our new normal.  Sure, this enforced proximity to spouses, children, and pets has its joys. But let’s face it, there are only so many times you can read that book, stream that show, walk to the park, and have that conversation before you begin to miss the solitude of the daily commute and anticipation of lunch at Chipotle.

With the very core and fabric of our economy and way of life facing this existential threat, those of us who practice trademark law can be forgiven for beginning to question whether our vocation has anything to add for the safety and welfare of our communities and our nation.

Turns out, its an easy question to answer. Yes! Now, when facing or experiencing shortages of vital supplies and products, we need trademarks more than ever. The U.S. has long been a leader in protecting all forms of intellectual property. We’ve been on the front lines of enacting laws to combat counterfeit products, aka low-quality fakes and knock-offs, to tackle cybersquatting, i.e., hijacking trademarks in phony email addresses, and to beat back grey market goods, i.e., goods intended for foreign markets that differ materially from genuine goods in quality, performance, or warranties. These laws that have protected us so well so far now are more vital than ever.  If unscrupulous profiteers prey on fear and panic with ersatz merchandise, the  Federal Lanham Act allows counterfeit products to be seized from store shelves and ports of entry.  And if online pirates try to deceive consumers with fake websites selling fake products online, those fraudulent sites and products can be taken down. 

Simply put, the ®, the symbol that signifies a registered trademark, has long served business and and consumers well in ordinary times.  In these extraordinary times when nothing seems certain and everything feels surreal, there’s comfort in knowing that ® is up to the task.

QUOTE OF THE DAY: ‘Never Have Your Dog Stuffed’ is really advice to myself, a reminder to myself not to avoid change or uncertainty, but to go with it, to surf into change. Alan Alda

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