In a decision highlighting the subtleties of trademark law and claimed “parody” websites, Will Applebee, a lawyer-turned-sports writer, has successfully defended his sports humor website, NOTSportsCenter.com, against ESPN’s recent efforts to seize its domain name to protect its flagship brand.
ESPN’s SportsCenter is a popular daily sports news television program that offers breaking news, highlights, and in-depth analysis and commentary on all things sports. It has also been known to employ elements of humor, especially in its advertisements. Continue reading
On July 26, 2017, the U.S. District Court for the Southern District of New York dismissed a copyright infringement claim brought by Sid Bernstein Presents, LLC (“SBP”) (owner by assignment of the intellectual property rights of the late music and event producer, Sid Bernstein, “Bernstein”) against Apple Corps Limited (a company founded by members of The Beatles) and its subsidiary Subafilms Limited (“Subafilms”), related to the raw, unedited, audiovisual footage (the “Master Tapes”) of The Beatles’ famed 1965 concert at Shea Stadium (the “Concert”).
The facts of the case are as follows: Bernstein created, produced, and promoted the Concert, which featured performances by The Beatles and several other musical acts. In this capacity, Bernstein undertook the responsibilities of raising the money for the Concert, renting the stadium, designing and building the stage, hiring the musical acts, hiring security, designing the tickets, and promoting the Concert. Bernstein also arranged for TV personality Ed Sullivan to introduce The Beatles during the Concert.
In 1994, a computer scientists named Nick Szabo—a man many believe to be the creator of Bitcoin—outlined, in a blog post, how the need for corporate counsel would eventually be eliminated and replaced by a concept similar to vending machines. Now, two decades after Szabo’s original post, cutting-edge clients have begun to ask whether legal costs can be cut by Szabo’s so-called “smart contracts.”
In the recent past, artificial intelligence chewed into the legal profession, first through the revolution of e-discovery tools such as Symantec and Exterro, which can search thousands of documents in less than one billable hour, and then through software such as Ross Intelligence, which can research more substantive legal questions. But, while both sets of tools are used to reduce the number of hours that appear on a client’s bill, both are considered additive contributions to lawyers’ effectiveness. Szabo’s “smart contracts,” however aim to make attorneys’ contributions entirely redundant.
Fyre festival, vigorously promoted by “social media influencers” such as Kendall Jenner, Gigi Hadid, and Emily Ratajkowski as a “luxury” music festival with tickets ranging in price from $1,200 to over $100,000 per person, was scheduled to take place over two weekends in April and two weekends in May on the “private” Bahamian island of Great Exuma. Unfortunately, the festival was not nearly what its promoters were touting: it ended up being, what some described as, a “post-apocalyptic nightmare” resembling a chapter out of the “Lord of the Flies.” The story of Fyre Festival blew up in the press this spring, and is now lighting up the federal court system.
In a nearly unanimous opinion, the Supreme Court recently limited the rights of patent holders to enforce post-sale restrictions on how patented products may be used, reversing a prior decision by the U.S. Court of Appeals for the Federal Circuit.
The case involved a dispute between Lexmark International, Inc., a manufacturer of toner cartridges used in laser printers, and Impression Products, Inc., a “remanufacturer” in the business of acquiring empty toner cartridges from Lexmark’s customers in the United States and abroad. Impression would refill used cartridges with new toner and resell them in the United States at a lower price than new cartridges available from Lexmark.
On June 19, 2017, the U.S. Supreme Court handed down its much-anticipated decision in Matal v. Tam, 582 U.S. __ (2017), issuing a ruling that clarifies that the door is open to trademark registration to a new category of trademarks: trademarks that may disparage others.
The facts that the Court looked at are relatively simple: The Slants, a dance-rock band whose members are Asian-Americans, sought to register their name as a trademark. Although the band argued that they chose the name because they were looking to “reclaim” and “take ownership” of stereotypes about people of Asian ethnicity, the U.S. Patent and Trademark Office (USPTO) refused to register the mark THE SLANTS on the ground that it was a derogatory or offensive term. An appeal to the USPTO’s Trademark Trial and Appeal Board failed on similar grounds. But a further appeal to the U.S. Court of Appeals for the Federal Circuit resulted in this case finding itself before the U.S. Supreme Court: the majority of the Federal Circuit, sitting en banc, found that the USPTO’s basis to refuse to register THE SLANTS was unconstitutional. Continue reading
WGA writers, particularly as they advance in their careers, often end up engaged in both their capacity as writers as well as in an additional non-writing capacity, such as executive producers. Article 14 of the WGA Minimum Basic Agreement (MBA) is therefore an important provision to understand for both writers and anyone engaging them; it states that if a writer is engaged in such an additional capacity, but also provides writing services, those services are still covered by MBA and that writer is still entitled to at least a certain level of minimum compensation for writing services. Without Article 14 of the MBA, it would be difficult to determine what portion of a WGA writer’s time is spent writing, versus (for example) producing, and thus difficult to determine the writer’s minimum compensation. Article 14 was one of sections of the MBA that was updated as part of the May 2, 2017 three-year revision of the MBA, discussed here. Continue reading
A panel of the U.S. Court of Appeals for the Ninth Circuit ruled this month that Google’s trademark has not lapsed into the public domain by becoming generic even though today’s digital vernacular uses “google” as a verb synonymous with searching the Internet. As a general rule, generic terms used as trademarks are not protectable because they do not identify the product’s source. Also, an otherwise valid trademark like “GOOGLE” may suffer death by “genericide” when the public “appropriates” the trademark such that the “primary significance” of the mark is as a generic name for a particular type of good or service rather than an indicator of the source of that good or service. Classic examples of former trademarks that are now generic terms include aspirin, thermos, brassiere, and cellophane. On the contrary, the term “google,” at least according to the Ninth Circuit, still stands strong as a brand identifier. Continue reading
Enterprising corporations looking to join the “green rush” and cash in on the marijuana boom have found a loophole in the United States Patent and Trademark Office’s (USPTO) refusal to register trademarks for products that contain cannabis. By registering a trademark for ancillary products not related to marijuana, such as clothing or accessories, corporations can get a head-start in the budding cannabis industry by registering marks that they later hope to use in connection with actual cannabis products.
However, as the Trademark Trial and Appeal Board’s (“TTAB”) March 16, 2017 ruling in Margaritaville Enterprises, LLC v. Bevis (http://ttabvue.uspto.gov/ttabvue/ttabvue-91219403-OPP-44.pdf) demonstrates, applicants in the cannabis space, like all other applicants, should still be wary of the other potential potholes along the way.
Earlier today, the U.S. Copyright Office issued a new release of its electronic system used to designate and search for Digital Millennium Copyright Act (DMCA) agents.
Under the DMCA, a qualified online service provider (OSP) is not liable for copyright infringement with respect to infringing material residing on the OSP’s network if, upon notification of a claimed infringement, the OSP acts expeditiously to remove, or disable access to, the material. One of the prerequisites to receiving this statutory “safe harbor” protection is that OSPs must designate an agent to receive notifications of claimed infringement. The OSP must supply its agent’s contact information to the Copyright Office; in turn, the DMCA instructs the Register of Copyrights to maintain a publicly available, current directory of agents. Continue reading