Trademark’s Cousin: Copyright

Trademarks are my passion, but when cool stuff happens in copyright, I just have to write about it. [1]

What Happened?

Robert Davidson is the creator of the Lady Liberty statue at the New York-New York Hotel & Casino in Las Vegas.

In 2010 the United States Postal Service inadvertently selected a photograph of Davidson’s statue to use on its Forever® stamp. The Postal Service thought it was a picture of the actual Statue of Liberty.[2]

Davidson sued the Postal Service for infringing his copyright.

Everyone agreed that the image on the postage stamp was of Davidson’s statue but the Postal Service argued its use wasn’t infringing because:

  • Davidson’s statue isn’t entitled to copyright protection; and
  • The Postal Service’s use was “fair use” under the Copyright Act. [3]

The Statue is Entitled to Copyright Protection

The Copyright Act protects sculptural work derived from another work as long as its original and contains “nontrivial expressive variation.” [4] Davidson testified at length about how he had given the statue’s face a fresh look, modeling it on his mother-in-law.

The court found that the Postal Service used the image of Davidson’s statute specifically because of the differences Davidson made to the statue’s face.

The Postal Service’s Use is Not Fair Use

The Postal Service’s “use of the image on its . . . workhorse stamp, printing billions of copies and selling them to the public as part of a business enterprise . . . so overwhelmingly favors a finding of infringement that no fair use can be found.”[5]

This little mistake cost the Postal Service $3,554,946.95 + interest + legal fees.

Bottom line: Using someone else’s intellectual property is a really big no-no.

 

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[1] Trademark rights protect your brand. Copyright protects original works of authorship.

[2] Judge Eric G. Bruggink of the U.S. Court of Federal Claims described the selection process like this: Terry McCaffrey, the manager of stamp development at the time, “initially narrowed his selection to . . . three images . . ., one of which was of plaintiff’s statue, a photograph of the [statue’s] face taken by Raimund Linke. Mr. McCaffrey . . . did the subsequent culling by himself over the course of a single afternoon. He then . . . obtain[ed] digital image files that he could work with to make his final selection. The photograph of plaintiff’s sculpture came from Getty Images (“Getty”). Mr. McCaffrey did not realize that it was not of the New York statue. The other two pictures, from other vendors, were of the original statue.” Opinion of the U.S. Court of Federal Claim, Case No. 13-942C at page 10 (July 29, 2018).

[3] 17 USC §107. Here’s a great way to understand “fair use”: Everyone always thinks their use is fair use but it almost never is. Literally, not once has it been fair use when one of my clients has used copyrighted materials thinking it was “fair use.”

[4] 17 USC §102(a)(5). Shrock v. Learning Curve Int’l, Inc., 586 F.3d 513, 521 (7th Cir. 2009).

[5] Here are the reasons the court gave for finding that the Postal Service’s use was not “fair use.”

  • The “purpose and character” of the Post Office’s use was commercial.
  • The “nature” of the copyrighted work as a “replica” favors neither party.
  • The “portion used” was only the face of the entire statue but that was the part that was most original.
  • The “effect of the use” did not result in any revenue lost to Mr. Davidson because there was no ready market for images of the statue’s face. For the Post Office.

Opinion at pages 21-24.

 

Featured image By user: Flicka [GFDL or CC BY-SA 3.0 ], from Wikimedia Commons

Three Stripes, You’re Out

There’s a brand that’s going after the owners of each of these trademarks for infringement against its famous logo. Can you guess what these trademarks are all allegedly infringing?

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No? You can’t figure out who’s going after Futbol Club Barcelona’s jersey stripes, Huck Faters’s stylized bird-flipping, Turner Sports’ stylized “E”, God is Limitless’s . . . whatever that is, and Tesla’s stylized “3”?

Here’s a hint:  They make clothing and shoes, but are best known for their shoes.

Still not sure?

Scroll on down for the answer.

 

 

It’s Adidas®, THE BRAND WITH THE THREE STRIPES® .

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Were you confused into thinking that Turner Sports was connected to Adidas?

Did it seem to you that Tesla had adopted the three horizontal lines to capitalize on Adidas’s fame?

I’m all for going after infringers. I completely understand the need to protect a trademark or risk losing it, but I think it’s possible to go too far.

What’s next? Suing Calphalon® if they use a picture of a frying pan with three strips of bacon? Forcing the U.S. Navy to change the insignia on a seaman’s uniform? Going after Verizon® when it provides good, but not great, cell phone coverage?

Sigh.

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The Right to Poke Fun

My Other Bag prints sketched images of iconic handbags onto canvas totes. The bags are brilliant, funny, and flattering.

Louis Vuitton sued My Other Bag for trademark infringement.[1] The courts ruled for My Other Bag.[2]

It’s incredibly hard to properly parody a trademark. For the joke to work, the image of the trademark being parodied has to be recognizable. But, if it’s too convincing, you’re infringing. As the Court of Appeals said, My Other Bag managed to convey “two simultaneous—and contradictory—messages: that it is the original, but also that it is not the original and is instead a parody.”[3]

A few years ago, Louis Vuitton sued Warner Brothers over a joke in a movie. The Hangover: Part II included a scene where a character was established as an uncool wannabe by showing him carrying a knockoff of a Louis Vuitton bag. Louis Vuitton lost that case, too.

If you own a famous trademark, it’s important to protect your rights, but it’s equally important to have a sense of humor so you can tell the difference between infringement and permissible parody.

In both the Warner Brothers and the My Other Bag cases, the viewer had to acknowledge that Louis Vuitton was a highly desirable, iconic, luxury brand and that the thing she was looking at wasn’t an actual Louis Vuitton. That’s the key to the distinction.

If Louis Vuitton had a sense of humor, it could avoid looking like a bully and get free favorable publicity. Sounds like a good outcome for everyone to me.

 

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[1] The suit also included a claim for copyright infringement. I’m not going to discuss that here, except to say that it was shot down by the court, too.

[2] The United States District Court for the Southern District of New York (Jesse M. Furman, Judge) granted My Other Bag a summary judgment on all claims on January 8, 2016. The United States Court of Appeals for the Second Circuit affirmed the judgment as to all claims on December 22, 2016.

[3] Hormel Foods Corp. v. Jim Henson Prods., Inc., 73 F.3d 497, 503 (2d Cir. 1996) (quoting Cliffs Notes, Inc. v. Bantam Doubleday Dell Publ’g Grp., Inc., 886 F.2d 490, 495 (2d Cir. 1989)).

Photo copyright My Other Bag. Used with permission.

Above the Law

Another campaign season, another long slog of intellectual property infringement by candidates.

It’s amazing to me that people who are running for public office steal other people’s property and then flaunt that theft in public. Imagine if a campaign made a habit of stealing a car every time the candidate needed to go somewhere. Even in today’s world of weird politics, I have to think that people would be upset by that. And yet they steal music, fame, and trademarks and no one bats an eye.

Theft of music rights is so commonplace that ASCAP has a set of guidelines covering the use of music in campaigns. It’s not just a question of getting a standard license. If a campaign makes substantial use of a particular song, makes it the theme song for example, then there are other rights involved, including the right of publicity, and the potential for a claim for false endorsement.

Most recently, the Committee to Restore America’s Greatness put up a billboard showing the candidate it supports dressed as Superman®. Unless they had a license to use the famous mark[1] pictured above, which is owned by DC Comics E.C. Publications, Inc. and Warner Communications LLC, this is an incredibly serious infringement of intellectual property rights.

Disregard for property rights is not traditionally a popular plank in a candidate’s platform, but it is a very common one.

[1] The owner of the trademark has not responded to my inquiry.

 

 

Just Don’t Do It

Coca-Cola® can. Samsung® can. McDonald’s® can.

Your company can’t.

So just don’t mention that big event going on down in Brazil. Not in your ad, not in your company’s tweet, not on your company’s Facebook page.

Unless you’re actually the United States Olympic Committee or an official sponsor, just stay a million miles away from all the words and all the symbols. If you’re Wham-O® don’t make a pretend symbol out of five Hula Hoops®.

And don’t even think about trying to use or register a trademark that includes the word OLYMPIC, unless you want to join the almost 500 other applicants who now have dead applications as a reward for their attempt.

How fast will your application die? Fast. Sarah Elizabeth Mason filed to register NERD OLYMPICS on May 4 of this year. She expressly abandoned that application before the month was out: May 31. Didn’t even live long enough to be rejected by an examiner.

An application to register Music Olympics was filed on July 25. That might live a little longer, but only because all of the lawyers are busy going after misuse of their trademarks in social media.

So, Just Don’t Do It.

Power to the People

A snippet of open source code goes dark, causing hiccups to websites like Facebook®.

Why?

Because of an argument over trademarks. Yeah, trademarks. Here’s what happened.

The code’s owner, Mr. Azer Koçulu, named his open source software package KIK.

KIK Interactive Inc. wrote him a friendly email[1] asking him to rename his package because they had lots of trademark registrations for KIK for software.

Mr. Koçulu literally told KIK Interactive “fuck you.” KIK Interactive contacted the node package manager. The governing body applied their dispute policies and concluded that KIK Interactive, and not Mr. Koçulu, should be allowed to use KIK. Instead of cooperating for an orderly transition, Mr. Koçulu just removed the package causing a brief flurry of problems.

Mr. Koçulu had two basic arguments:

  • He didn’t know about KIK Interactive when he started using KIK; and
  • “Power to the People”.

The first argument matters not a wit. Infringement exists whether or not the infringer knows about it.[2] What you don’t know can hurt you.

As for Power to the People: Trademarks empower consumers by letting them know the source of goods at a glance. Think how frustrating and difficult shopping would be without trademarks.

Trademarks are all about Power to the People, but I guess those aren’t the people Mr. Koçulu was thinking about empowering.

 

[1] They even offered to help out financially with making the switch.

[2] What the infringer knew and when he knew it can matter for some stuff, like damages, but knowledge is not an element of infringement.

Pink

Pink Image

Back in 1984 Thomas Pink started using PINK to sell men’s clothing. They have since branched out to women’s apparel.

In 2001, Victoria’s Secret started using PINK for their line aimed at younger women and girls.

If you’ve been reading this blog for a while, no doubt you’re thinking:

  • They’re using the same exact word, in kinda similar fonts.
  • They’re both selling apparel, in branded stand-alone stores. (The pictures were both taken in Manhattan.)
  • They’ve both achieved a level of fame with their brands.

You’re also thinking:

  • Thomas Pink is targeted at professional men (and women) and Victoria’s Secret Pink is targeted at teenage girls. The Thomas Pink store in Manhattan is on Wall Street and the VS Pink store is in SoHo.
  • The fonts are similar because they’re blocky and have serifs, but they have a different feel. VS’s Pink is a college-banner sorta font and Thomas Pink is more an engraver’s font.
  • If a middle-aged banker walked into the VS Pink store, he wouldn’t be confused for long. Ditto with a teenaged girl in a Thomas Pink store.

Should these two apparel brands both be allowed to use PINK?

Mr. Justice Birss of the High Court of Justice in London ruled in 2014 that VS’s use of PINK would result in Thomas Pink’s trademark being “associated with a mass market offering, reducing its luxurious reputation.”

But what do you think about Pink? It’s hard, isn’t it? And that’s what makes trademark law fun.

 

 

 

The Greatest Legal Opinion of All Time

Twenty years ago, Jim Henson released Muppet Treasure Island and the accompanying merch. The film included a charming boar named Spa’am.

The executives at Hormel were “not amused” and worried that their sales of SPAM would plummet if it were linked with “evil in porcine form.” (You really can’t make this stuff up.)

There’s a veritable treasure trove of brilliance in Judge Ellsworth Van Graafeiland’s opinion. His destruction of Hormel’s infringement and blurring claims were just the warm-up. He really starts to sing when he addresses Hormel’s claim that Henson’s use tarnishes the SPAM trademark.[1]

Tanishment is when someone’s trademark suffers negative associations, usually associations with sex, sex, or crime. Hormel claimed that “linking its luncheon meat with a wild boar will adversely color consumers’ impressions of SPAM.”

Judge Van G pointed out that Spa’am is “a likeable, positive character” that won’t generate “any negative associations.” There was “no evidence that Spa’am is unhygienic or that his character places Hormel’s mark in an unsavory context.” (Seriously, there was an expert in children’s literature who testified that “Spa’am is a positive figure . . . even if he is not ‘classically handsome.’”)

Then Judge Van G gets out his hammer for the last nail in the Hormel coffin: A “simple humorous reference to the fact that SPAM is made from pork is unlikely to tarnish Hormel’s mark.”

That can be loosely translated to: SPAM isn’t exactly a luxury brand and being linked to the Muppets can only help.

I love you, Judge Van G.

[1] There’s this thing called dilution. It’s not infringement and isn’t based on being confusingly similar. There are two kinds of dilution: Blurring and tarnishment. Hormel claimed both.

 

Don’t Mess with the Giraffe

There are 231[1] dead applications that include R US. That’s pretty much every application for [FILL-IN-THE-BLANK] R US that’s been filed by someone other than Geoffrey, LLC.[2]

Almost all of the dead applications were expressly abandoned by their owners, which means they didn’t put up much of a fight. They probably got a letter from Geoffrey, LLC that politely but firmly suggested they pick a new trademark.

The dead applications include goods and services in just about every field: restaurants, dentistry, junk removal, bamboo processing, accounting (a lot of accountants), legal (an embarrassingly large number of attorneys including one who filed to register TRADEMARKS R US). My personal favorites: GLORYHOLES R US and HEMOROIDS[3] R US.

Some people look at this record and think TOYS R US is a bully, going after some little guy who’s just trying to process some bamboo. After all, who could think that TOYS R US would go into selling hemorrhoid medication? No one’s getting confused or misled, so what’s the harm?

But trademarks are a “protect it or lose it” kind of asset. Once someone gets a registration for BAMBOO R US, it will be harder to stop HEMOROID R US. Then a few more slip through and now everyone has an argument that Geoffrey’s rights stop at retail toy sales and the brand is tarnished and diluted. The giraffe is wisely protecting his turf.

 

[1] As of February 4, 2016.

[2] Five applications are still alive: 1 is being opposed and the other 6 haven’t reached the stage where they can be opposed yet. Only one application made it through: Books R Us was registered in 1982. The registration is dead. The owner didn’t renew.

[3] Yeah, that’s how they spelled it.

The Deepest Cut of All

A few weeks ago, Mr. Douglas Alan Lehocky received a final refusal to his application to register:

DOUGLAS ALAN LEHOCKY

I’ve written about Mr. Lehocky twice before, here and here. Mr. Lehocky filed over 150 applications during Thanksgiving week of 2014. That amounted to over $50,000 in application fees, all of which Mr. Lehocky has lost or soon will.

It’s not that hard to understand why the Trademark Office refused to give Mr. Lehocky a registration for DISNEY.COM, but why couldn’t Mr. Lehocky get a registration for his own name?

In order to get a trademark registration, you have to be using what you want to register as a trademark and you have to provide the Trademark Office with a specimen showing that use. Mr. Lehocky didn’t provide any evidence of use as a trademark. Instead, Mr. Lehocky provided a picture of a piece of paper with the words DOUGLAS ALAN LEHOCKY printed on it in really big letters.

When that didn’t work, he submitted the same picture 2 more times.

It still didn’t work and it never will.

One hundred fifteen of the original 150+ applications are now dead. The rest continue their slow but inevitable trip to “final refusal.” It would be funny if it weren’t so sad.