Tag Archives: trademarks

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:

https://pitchfork.com/news/the-isolation-check-in-week-2/

https://www.npr.org/2020/03/17/816504058/a-list-of-live-virtual-concerts-to-watch-during-the-coronavirus-shutdown

https://www.glamour.com/story/coronavirus-all-the-artists-offering-free-online-concerts-while-youre-stuck-at-home

https://www.stageit.com/ShutInandSing?fbclid=IwAR16ntCxx-Yf76bfOnmlvJIN0JIUr23nPHoOWfTC5HADgp5DYlI2gIM7NRc

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

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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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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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Trial of the Century: Trademark Style

“So this is the Day of The Dead” from “We All Lose One Another” by Jason Collett
Trial of the Century! For most Americans, those words conjure two letters—O.J.  But for the past week or so, O.J. arguably has been upstaged by an unlikely figure—Dan Aykroyd.
That’s right, Dan Aykroyd–one of Saturday Night Live’s original “Not Ready For Prime Time Players” who won the fame as the staccato pitchman in SNL’s “Bass-O-Matic” infomercial parody, and who cemented his place in comedy’s pantheon with the original “Ghostbusters” and “Blues Brothers” films. That Dan Aykroyd has evolved into a trademark crusader for his real-life brand of vodka called “Crystal Head,” sold in a distinctive skull-shaped bottle:

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As with most things, success breeds imitators. For Crystal Head, imitation came in the form of rival KAH brand of tequila, also packaged in skull shaped bottles. Unlike Aykroyd’s brand, those skulls were opaque, brightly colored affairs:

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KAH founder Kim Brandi claimed that Mexico’s iconic Day of The Dead imagery had inspired her skull design. Aykroyd and his business partner Globefill, Inc., didn’t buy it. They sued for trademark infringement back in 2010. But in a 2013 trial, Brandi beat back Aykroyd’s infringement claim. She testified that she hadn’t even seen Aykroyd’s skull bottles. And the jury bought it.

Dan Aykroyd didn’t give up. He and his lawyers appealed and won a new trial. That new trial, which unfolded last week in a California courtroom, featured showmanship, skullduggery, and scandal worthy of one of Aykroyd’s big-budget Hollywood movies. Aykroyd cast himself in the role of star witness for the prosecution. Wielding a tape measure, Aykroyd systematically compared the features, angles, and dimensions of his skull bottle to Brandi’s. He also testified that confusion in the marketplace was threatening his brand. Claiming to have found a broken glass inside a KAH bottle, Aykroyd told the jury: “I thought, even more reason for me to be concerned about source. What if someone got hurt? And for someone to think we have a product on the market that’s inferior to our vodka, that’s unacceptable.” Aykroyd also testified that KAH tequila “obviously” was a confusingly similar copycat: “I really couldn’t count about how many people who have come and asked us about our new tequila in the skull bottle. We had to say, ‘It’s not ours.’”

Brandi, for her part, argued that Aykroyd shouldn’t be able to block all skull shaped liquor bottles, especially ones like Brandi’s, whose bright colors evoked iconic Mexican imagery. And Brandi stuck to her story, insisting that she hadn’t seen Aykroyd’s skull bottles when decided on the Day of The Dead theme for her tequila bottles. She brushed-aside the similarities Aykroyd had pointed out as “coincidence.”

That’s when the real drama happened. In a finale worth of Perry Mason, Aykroyd’s legal team unveiled a bombshell—the guy Brandi hired to design her bottles. This surprise witness testified that Brandi handed him one of Aykroyd’s skull bottles and told him to make a plaster cast of it so that she could model her design on Aykroyd’s distinctive skull container.
Armed with this testimony, Aykroyd’s lawyer told the jury that Brandi had lied. Four hours later, the jury returned its verdict—guilty as charged.

So now, seven years after the story began, Dan Aykroyd and his legal team are close to achieving their perfect ending. All that remains is for the Judge to decide the remedy. That phase of the case is still to come. For now, Aykroyd has the satisfaction of knowing that, at least for now, justice delayed is not justice denied.

The name of the case is Globefill Inc. v. Elements Spirits Inc., 2:10-cv-02034, U.S. District Court for the Central District of California.

Quote of the day: “Alas, poor Yorick! I knew him, Horatio, a fellow of infinite jest, of most excellent fancy. He hath bore me on his back a thousand times, and now how abhorr’d in my imagination it is! My gorge rises at it.” Hamlet by W. Shakespeare

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Guitar Wars – Martin Fights to Save Wildlife and Its Brand

“Please Papa can I go. Down to Richmond to the traveling show. Please Papa don’t you say I can’t. I just want to see the elephant.” See The Elephant, music and lyrics by James McMurtry.

I’m not a lucky person. I’ve never won the lottery, not even a five-dollar scratch-off. And when it comes to art, I’d have better luck at a raffle drawing than drawing an object, portrait, or thing. But this past weekend, I found myself in front of a booth run by Martin Guitar being invited to enter a contest that would require both luck and artistic talent to win.

442319.DOCFor those not familiar with the hierarchy of guitar-dom, C.F. Martin & Co. of Nazareth, PA. occupies the pinnacle of the acoustic guitar realm. (For those really not familiar with these six and 12 string instruments, “acoustics” are the hollow wooden ones).

The contest seemed simple—it was part of Martin’s “Draw an Elephant, Save an Elephant” campaign directed to raising awareness for the plight of that endangered species. The connection between elephants and guitars seemed a bit obscure, considering that the pachyderms are more likely to stomp on a guitar than to fingerpick one. But who was I to scoff at a worthy cause? Besides, I’ve been tuned-in to the evils and perils of poaching elephants in the jungle ever since watching Tarzan and the Ivory Hunters at a 25-cent Saturday matinee back in the day. As it turns out, Martin Guitar has a long history of environmental stewardship. Years ago, Martin Guitar substituted a synthetic for the ivory used on its instruments.

To enter this contest, #Save Elephant, all you had to do was draw an elephant and you were eligible to win a prize. Pretty simple. But to me, it was daunting. I had been kicked out of remedial art class in elementary school. So my “flight” instincts kicked-in.

But the folks running Martin’s booth were friendly, and my son, a graphic designer, egged me on. I decided to give it a shot. After all, we were at The Newport Folk Festival, we’d been enjoying energetic and passionate performances across three stages strategically placed around an old fortress that once protected Rhode Island from pirates and non-musical British invasions. The sun shone and spirits were high. And I was surrounded by an array of gorgeous C.F. Martin guitars—the same brand made by this family company since 1833 and played by legends and musical greats for over a century. Hank Williams strummed a Martin model D-28 that Neil Young now owns and plays in concert. Woody Guthrie owned several Martins. And Bob Dylan played a Martin guitar before famously picking up an electric Fender Stratocaster at Newport 50 years ago this past week, shattering the folk music world, prompting boos from the crowd, and changing popular music forever. (A 50th anniversary tribute to this seminal moment from 1965 capped this year’s Newport weekend. The infamous Fender was on hand, strummed by Taylor Goldsmith, a member of the indie-folk band Dawes, leading a soaring version of Maggie’s Farm, backed by keyboard legend Al Kooper who played the same organ lines when Dylan performed that song five decades earlier.)

Martin was offering one prize per hour, and for all I knew, a guitar could have been one of them. So rather than succumb to my inhibitions and phobias, I reached for a pen and began drawing my elephant. I won’t say it was elegant. I won’t say is was attractive. But my drawing definitely captures a certain elephantine essence. I eschewed cubism and abstract expressionism for my own brand of post-modern realism, that is to say, you’d have no trouble recognizing the trunk, ears, tusks, and stumpy legs of my elephant masterpiece.

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I signed my work, filled out the entry information, and went back to enjoying music and Newport Harbor breeze.

About an hour later, my cell phone rang. It was a call from “Allentown, PA.” Not knowing anyone from that part of the Keystone State, and being in the middle of a migration from one festival stage to the next, I almost declined the call. But instinct urged me to answer. “This is Martin Guitars. You’re our twelve-o’clock winner,” the caller said. I froze, disrupting the stampede of festival foot traffic, then I headed to the Martin Guitar booth. There I met Skip, who congratulated me and showed me a table piled with prizes. No, the guitars weren’t part of the contest. But I got to select a t-shirt with the original Martin logo and lettering, direct from the company archives:

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Admiring the logo, I mentioned that when I’m not attending music festivals and concerts, I’m a trademark lawyer, and told him about my interest in brands and their histories. We then discussed, how, as with many brands, the Martin logo and iconography have evolved. But the essence of Martin’s brand identity has remained constant through the use of the C.F. Martin name, and through continuous use of Martin’s simple, iconic, headstock design:

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I then learned from Skip that Martin Guitar was no stranger to intellectual property battles. A few years ago, on a visit to China, the company’s sixth-generation CEO, Chris Martin, discovered a collection of guitars that looked like genuine Martins, but were actually poorly made counterfeits. (Where a genuine Martin takes weeks to make by hand and may sell for several thousands of dollars, the Chinese company was mass-producing its ersatz Martins and selling them for a few hundred dollars each). It turned out that another company had registered Martin’s trademark in China, and was hijacking Martin’s reputation under the protection of Chinese law. (Michael Jordan faces similarly vexing copycats of his name and the “Jumpman” logo.)

Martin took action, registering the shape of its iconic headstock as a trademark in the United States Patent and Trademark Office:

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(Registration No. 3,048,307). Martin also recruited Pennsylvania Senator Robert Casey to come to its aid. But the problems Martin faced in China stem from that country’s legal system. Chinese trademark law protect the first company to file for a mark in that country, even if that company is hijacking a brand that’s famous elsewhere in the world. And the law in China lets that company sue if the Real McCoy tries to sell its genuine goods in China.

Martin Guitar’s experience in China highlights the need for companies with strong U.S. brands and worldwide reputations to take preemptive action. Brand owners need to be proactive, aggressive, and creative. They should consider trademark registrations for key brand names, logos, and shapes in key countries, especially ones like China with reputations for counterfeiting. Like Martin Guitar, don’t just register words, look at products shapes and designs, which can also qualify for protection under trademark and patent law. And be vigilant. Otherwise, like the elephants that gave rise to this story, a famous trademark may be prone to poaching, which can weaken a brand, and in rare cases, drive it to the point of extinction. And the last thing anyone needs is another crude drawing from me trying to save another endangered species.

QUOTE OF THE DAY: “Sometimes the nicest thing to do with a guitar is just look at it.” Thom Yorke.

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Beer TM Today, Gone Tommorow: IPA Spat Goes Flat

“The room was humming harder, As the ceiling flew away, When we called out for another drink, The waiter brought a tray.” A Whiter Shade of Pale by Keith Reid, Gary Brooker (recorded by Procol Harum)

Surprise turned to Schadenfreude last week in trademark land when micro-brewer Lagunitas sued micro-legend Sierra Nevada for trademark infringement. The mark at issue? IPA–a common acronym for the style of beer called “India Pale Ale.” For years, Lagunitas’s IPA packages featured the letters IPA in large, highly stylized script. And Lagunitas saw red when Sierra Nevada changed the packages for its IPA to put those letters front and center:

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Scores of brewers offer up their takes on this hoppy variety of pale ale. And many call it “IPA.” So the odds that any one company could snag “IPA” as a trademark would seem long at best–not the makings of a good bar bet. But those long odds did not deter Lagunitas. In its lawsuit, the company focused on style, not substance. According to Lagunitas’s complaint in Federal court, the letters IPA weren’t the issue. Sierra Nevada’s offense was copying the large-letter format and style of Lagunitas’s IPA logo.

But in this era where microbreweries are giving the beer establishment a run for its money and craft beer isn’t just for hipsters anymore, the nuances of trademark law sometimes can get lost on the blogosphere. Rather than stirring up sympathy, the lawsuit sparked a brew-haha of criticism, with Twitter and other social media sites overflowing with outrage over the idea that one brewer could monopolize IPA. So even though that wasn’t Lagunitas’s aim, the brewer responded to the backlash with contrition reminiscent of a morning-after dose of reality. In a Twitter post, owner Tony Magee wrote: “Today, I was seriously schooled . . . Tomorrow morning we’ll drop the infringement suit.[and] get back to answering other questions.”

So Lagunitaas learned a valuable lesson. When it comes to IP rights for IPA, size apparently doesn’t matter.

QUOTE OF THE DAY: “I am a firm believer in the people. If given the truth, they can be depended upon to meet any national crisis. The great point is to bring them the real facts, and beer.” Abraham Lincoln

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Onward Trademark Soldiers? Newsboys Cannot Stop the Rap Music

“Lately I’ve been thinking / What would the world do without the news / You wouldn’t know when wars were started / Or when they ended, win or lose.” Newspapers by Stan Ridgway

Yesterday’s IP blogosphere brought news of another battle of the bands involving trademark rights. Christian rockers the Newsboys did not turn the other cheek when they discovered a rap duo performing as New Boyz. They sued. And they lost. Bigtime. Oh, the Newsboys got their day in court all right, but it lasted just about one day, with the judge tossing the complaint as legally deficient. The Newsboys claimed that the rappers’ name New Boyz would confuse and confound the music buying audience. They railed that the New Boyz songs were sexually charged. They pointed to their own 1991 album title “Boys will be Boyz” as evidence that the groups’ names were too close for comfort. And the band that had honed its reputation in the realm of Christian Rock insisted that their music was not just for the religious set; they claimed “cross-over” appeal to the same “demographic” that listens to and downloads New Boyz allegedly salacious songs.

But the secular audience who mattered–the judge–was not buying it. He granted the New Boyz’s motion to dismiss the trademark infringement charges as implausible, concluding that the Newsboys’ “factual allegations of customer confusion do not include any factual allegations of confusion about the source of each band’s marketed music.” Influencing the court’s ruling was the focus of the Newsboys’ federal trademark registration–“live musical performances of a religious nature.” The two groups market their music to two distinctly different crowds, making the Newsboys claims of confusion and damage to reputation apocryphal, according to the court. In short, the judge hewed to the ancient adage “live and let live,” and stopped the trademark fight on a TKO–failure to plead enough facts to get to round 2.

This case joins a line of music themed trademark cases allowing similar names to coexist when used for different genres. Perhaps the granddaddy of all is Sunenblick v. MCA Records, Inc., 895 F. Supp. 616 (S.D.N.Y. 1995), aff’d, 101 F.3d 684 (2d Cir. 1996): where the jazz record label Uptown Records lost its trademark battle against popular rap record label Uptown, with the court concluding that the urban music geography was big enough for two Uptowns.

And of course, we only have to scan the bins of the few remaining brick and mortar record stores to see that bands with similar names often coexist without sparking nasty trademark battles. Pop-rocker Bryan Adams rubs shoulders with Alt. Country Rocker Ryan Adams, while The Who and The Guess Who have played in peace for nearly six decades.

So, while the ending of the Newsboys’ story may seem abrupt, the result, at least for now, seems to be in tune with history. If there’s a moral to the story, it may be this, it’s one thing for a band to claim that its music has crossover appeal, it’s another thing to prove it.

QUOTE OF THE DAY: “In the case of news, we should always wait for the sacrament of confirmation.” Voltaire

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