Hello Everyone!
Trademark infringement lawsuits are plentiful. Pop Icon, Madonna, is currently being sued by apparel manufacturer, LA Triumph, over the use of the trademark "Material Girl", the name of Madonna's new teen clothing line. L.A. Triumph claims it has used the "Material Girl" trademark in commerce since 1997. The company further stated, it has used the trademark in the same classification as Madonna, which is junior clothing. Apparently, both lines offer similarly styled clothing which is reflective of the 80s era.
Who Has Priority Trademark Rights
I did a search for Material Girl on the USPTO Trademark database website and Madonna's company, Material Girl Brand, LLC, filed for the trademark "Material Girl" in the clothing and accessory classifications based on intent to use. The application was published for Opposition (meaning another company can assert priority trademark rights and have the application denied) on July 20, 2010. Then there is L.A. Triumph, which does not have a registered trademark or pending trademark application with the USPTO, claiming it has been using the mark in commerce (offering goods for sale to the public) since 1997.
As I have previously discussed on this blog, an unregistered trademark, has priority rights, if the mark is used first in the region the mark originated. If it is proven L.A. Triumph did actually have a viable junior clothing line using the trademark "Material Girl" since 1997, then L.A. Triumph can assert trademark infringement in its region: the West Coast. Madonna could possibly still use the mark in other parts of the country, but of course that would be near impossible as the clothing is offered nationwide in Macy's stores.
Did Madonna's team do a thorough trademark search?
The answer to that question is not known. Either her legal team did not perform a good comprehensive trademark search and did not discover L.A. Triumph's prior use of the "Material Girl" mark. Or the search was valid and because of L.A. Triumph's non-use of the mark, could not be found. We just do not know the answer to that question yet.
Resolution
Madonna could fight L.A. Triumph regarding the use of the "Material Girl" trademark or she could settle. I predict she will settle because millions of dollars have already been spent manufacturing, marketing the clothes, and distributing the line. So a quick resolution is in the best interest of Material Girl Brand, LLC. A settlement could include either the purchase of the trademark rights outright or an agreement to some type of licensing fee.
I am looking forward to the outcome of this case.
Monday, August 23, 2010
Monday, August 16, 2010
Pillsbury Doughboy vs. My Dough Girl: Is it trademark infrigement?
Hello Everyone:
Have you heard about Pillsbury Doughboy vs. My Dough Girl. Pillsbury sent a cease and desist letter to Tami Cromar owner of My Dough Girl cookie bakery asserting her "My Dough Girl" trademark was too similar to the trademarked "Doughboy." Apparently, Ms. Cromar applied for registration of the mark with the USPTO and Pillsbury immediately sent her a cease and desist. As I have discussed previously, trademark infringement occurs if 1) a trademark owner can assert priority to use the mark (1st to use the mark in commerce) and 2) there is a likliehood of confusion between the priority mark and the subsequent mark. Pillsbury stated "the application was for categories in which we operate, including cookies and refrigerated dough products nationally. We needed to protect our trademarks — and we did." Ms. Cromar sells fresh baked cookies and refrigerated dough cookies.
Are the marks too similar?
Well that is debatable. There are many factors that are assessed to determined if two marks are likely to cause confusion in the marketplace because they are too similar. One is are the marks similar in sight, sound, and meaning. One could argue that because "Doughboy" and "My Dough Girl" have the same meaning as both companies are in the cookie and refrigerated cookie dough business. Also, one could argue "Dough Girl" is too similar in sight and sound to "Doughboy." However, I could also argue the three words "My Dough Girl" together are unique enough not to infringe "Doughboy" and they are not similar in sight and sound. But I believe because the classifications and products are the same, Pillsbury did not want to take any chances.
Similar Doughboy registered trademarks
Ms.Cromar stated she did not understand why Pilsbury was picking on her as there are several companies with the "Doughboy" trademark. I did review registered "Doughboy" trademarks with the USPTO and either they were established well before Pillsbury's "Doughboy" trademark or the marks are in unrelated categories. Two similar trademarks can co-exist if the product or services are unrelated and are categorized in entirely different classifications. The only instance a company can prevent registration of a similar trademark in an unrelated classification is when the company has a very famous trademark and they can assert Dilution, i.e., the similar trademark is diluting the famous brand.
What is next for My Dough Girl
Ms. Cromar agreed to select another trademark rather than fight Pillsbury. But all is not lost. The considerable amount of publicity she has received from the media coverage will no doubt boost her sales at her physical bakery and her online business. She does have a Facebook Fan Page of supporters who want her to fight Pillsbury. I did visit her website and her cookies are indeed unique and look very tasty. If this controversy had not surfaced, she would just be a locally known bakery in Utah..Now her business is a nationally known and famous bakery. Not a bad trade off.
Have you heard about Pillsbury Doughboy vs. My Dough Girl. Pillsbury sent a cease and desist letter to Tami Cromar owner of My Dough Girl cookie bakery asserting her "My Dough Girl" trademark was too similar to the trademarked "Doughboy." Apparently, Ms. Cromar applied for registration of the mark with the USPTO and Pillsbury immediately sent her a cease and desist. As I have discussed previously, trademark infringement occurs if 1) a trademark owner can assert priority to use the mark (1st to use the mark in commerce) and 2) there is a likliehood of confusion between the priority mark and the subsequent mark. Pillsbury stated "the application was for categories in which we operate, including cookies and refrigerated dough products nationally. We needed to protect our trademarks — and we did." Ms. Cromar sells fresh baked cookies and refrigerated dough cookies.
Are the marks too similar?
Well that is debatable. There are many factors that are assessed to determined if two marks are likely to cause confusion in the marketplace because they are too similar. One is are the marks similar in sight, sound, and meaning. One could argue that because "Doughboy" and "My Dough Girl" have the same meaning as both companies are in the cookie and refrigerated cookie dough business. Also, one could argue "Dough Girl" is too similar in sight and sound to "Doughboy." However, I could also argue the three words "My Dough Girl" together are unique enough not to infringe "Doughboy" and they are not similar in sight and sound. But I believe because the classifications and products are the same, Pillsbury did not want to take any chances.
Similar Doughboy registered trademarks
Ms.Cromar stated she did not understand why Pilsbury was picking on her as there are several companies with the "Doughboy" trademark. I did review registered "Doughboy" trademarks with the USPTO and either they were established well before Pillsbury's "Doughboy" trademark or the marks are in unrelated categories. Two similar trademarks can co-exist if the product or services are unrelated and are categorized in entirely different classifications. The only instance a company can prevent registration of a similar trademark in an unrelated classification is when the company has a very famous trademark and they can assert Dilution, i.e., the similar trademark is diluting the famous brand.
What is next for My Dough Girl
Ms. Cromar agreed to select another trademark rather than fight Pillsbury. But all is not lost. The considerable amount of publicity she has received from the media coverage will no doubt boost her sales at her physical bakery and her online business. She does have a Facebook Fan Page of supporters who want her to fight Pillsbury. I did visit her website and her cookies are indeed unique and look very tasty. If this controversy had not surfaced, she would just be a locally known bakery in Utah..Now her business is a nationally known and famous bakery. Not a bad trade off.
Thursday, August 12, 2010
Blogher 2010: Mastering Intellectual Propery Law on the Internet Session Recap
Hello Everyone:
As some of you know, I co-presented a presentation at Blogher 2010 entitled Mastering Intellectual Property Law on the Internet and other legal issues in cyberspace. My co-presenter was Wendy Seltzer of the blog ChillingEffects.org. She is a Berkman fellow and law school professor. She specializes in copyright, fair use, and other legal issues in cyberspace such as first amendment and privacy issues.
We covered four main topic areas. They were: Protecting your own Intellectual Property, Respecting others Intellectual Property, Privacy, and Defamation on the Internet. We tag teamed all topics and had so many detailed questions we actually ran over our allotted time. Apparently this is a much needed topic for social media enthusiasts.
When discussing protecting intellectual property, we specifically covered how to protect copyrights, trademarks, and trade secrets. We also discussed why owners of these types of intellectual property should protect them. One reason is because owners of intellectual property can lose out on valuable royalty or licensing income if not protected. No one wants to lose money!
Next we discussed how to respect others intellectual property and not infringe their works. We explained when it is permissible to copy without permission in certain Fair Use circumstances. Wendy explained in detail proper linking, the DMCA take down procedure, and creative common licenses.
I then gave a general overview of Privacy issues. I explained the need for every website or blog to have a basic privacy policy which is a disclosure document. A privacy policy protects the owner of the site and the user. Read my article on Privacy policies here.
Lastly, we both touch on Defamation and how to avoid defamation on the Internet. We also discussed the Communications Decency Act which states website owners or internet service providers are not liable for defamatory statements left by visitors.
If you are interested in seeing the notes or hearing the audio from this presentation, please click here.
As some of you know, I co-presented a presentation at Blogher 2010 entitled Mastering Intellectual Property Law on the Internet and other legal issues in cyberspace. My co-presenter was Wendy Seltzer of the blog ChillingEffects.org. She is a Berkman fellow and law school professor. She specializes in copyright, fair use, and other legal issues in cyberspace such as first amendment and privacy issues.
We covered four main topic areas. They were: Protecting your own Intellectual Property, Respecting others Intellectual Property, Privacy, and Defamation on the Internet. We tag teamed all topics and had so many detailed questions we actually ran over our allotted time. Apparently this is a much needed topic for social media enthusiasts.
When discussing protecting intellectual property, we specifically covered how to protect copyrights, trademarks, and trade secrets. We also discussed why owners of these types of intellectual property should protect them. One reason is because owners of intellectual property can lose out on valuable royalty or licensing income if not protected. No one wants to lose money!
Next we discussed how to respect others intellectual property and not infringe their works. We explained when it is permissible to copy without permission in certain Fair Use circumstances. Wendy explained in detail proper linking, the DMCA take down procedure, and creative common licenses.
I then gave a general overview of Privacy issues. I explained the need for every website or blog to have a basic privacy policy which is a disclosure document. A privacy policy protects the owner of the site and the user. Read my article on Privacy policies here.
Lastly, we both touch on Defamation and how to avoid defamation on the Internet. We also discussed the Communications Decency Act which states website owners or internet service providers are not liable for defamatory statements left by visitors.
If you are interested in seeing the notes or hearing the audio from this presentation, please click here.
Tuesday, August 3, 2010
Is Google Winning the Battle in Key Words Advertising Litigation?
Google may have won the battle in Europe in regards to allowing advertisers to purchase trademarks as key words in their Google Ads program. Recently, the highest court in France found Google not liable for trademark infringement in the Google vs. LVMH case and referred the case back to the France Court of Appeals.
Previously, the lower court ruled Google was liable for trademark infringement for this practice. I previously wrote about this practice here. Basically Google allows a competitor of a company with a well established trademark like "Catepillar", to purchase the trademarked "Catepillar" as a key word. When a search is executed for the competitor company on Google, the competitor's link may show up before "Catepillar's" own link. Doesn't sound fair, does it? Many companies have either complained or sued Google for this practice and the courts have been split. In the U.S. one circuit agrees it is trademark infringement, while another circuit disagrees. However, in Europe, Google seemed to be having a harder time defending this practice as the courts have pretty much sided with the trademark owners.
The French lower court concluded a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products. I previously covered this ruling here. However, the higher court disagreed.
Where does this leave Google? Well Google feels like this decision was in their favor and believes and I quote "All cases which get ruled upon by the French Supreme Court go back to the French Court of Appeal as matter of course," Ben Novick, a Google spokesman said. Google further argues, "The French Court of Appeal will need to apply the law as laid down by the Cour de Cassation today. The Cour de Cassation has ruled that Google is not guilty of trade mark infringement, unfair competition or misleading advertising. All else is 'ifs' and 'buts."
However, LVMH feels differently. They welcome the case being remanded to the Court of Appeals and believes the French Court of Appeals "will enable the Paris Court of Appeals to rule on Google's civil liability when using trademarks without the trademark owner's authorization. The Court of Appeals will determine any potential wrongdoing committed by Google to the detriment of Louis Vuitton"
It will be an interesting outcome.
Previously, the lower court ruled Google was liable for trademark infringement for this practice. I previously wrote about this practice here. Basically Google allows a competitor of a company with a well established trademark like "Catepillar", to purchase the trademarked "Catepillar" as a key word. When a search is executed for the competitor company on Google, the competitor's link may show up before "Catepillar's" own link. Doesn't sound fair, does it? Many companies have either complained or sued Google for this practice and the courts have been split. In the U.S. one circuit agrees it is trademark infringement, while another circuit disagrees. However, in Europe, Google seemed to be having a harder time defending this practice as the courts have pretty much sided with the trademark owners.
The French lower court concluded a "likliehood of confusion" existed when consumers searched for the rightful trademark owner's products and instead a search produced a competitor's or imitator's products. I previously covered this ruling here. However, the higher court disagreed.
Where does this leave Google? Well Google feels like this decision was in their favor and believes and I quote "All cases which get ruled upon by the French Supreme Court go back to the French Court of Appeal as matter of course," Ben Novick, a Google spokesman said. Google further argues, "The French Court of Appeal will need to apply the law as laid down by the Cour de Cassation today. The Cour de Cassation has ruled that Google is not guilty of trade mark infringement, unfair competition or misleading advertising. All else is 'ifs' and 'buts."
However, LVMH feels differently. They welcome the case being remanded to the Court of Appeals and believes the French Court of Appeals "will enable the Paris Court of Appeals to rule on Google's civil liability when using trademarks without the trademark owner's authorization. The Court of Appeals will determine any potential wrongdoing committed by Google to the detriment of Louis Vuitton"
It will be an interesting outcome.
Wednesday, July 28, 2010
The Importance of a Website Compliance Program
Hello Hello!
I have been somewhat absent on this blog but that is going to change. My goal is to recommit to posting weekly on this blog. Thank you for continuing to read and visit this blog.
Today I am going to discuss the importance of an effective website compliance program. Website owners should ensure employees and users of their websites are not exposing them or their companies to liability by posting items that are illegal, defamatory, or infringing. A perfect example of a website that did not have an effective website compliance program is Blogetery.com. Two weeks ago, web host, Burst.net, shut down the Blogetery website, a platform that hosted 70,000 blogs. Why? The FBI contacted Burst.net and informed the company that an FBI investigation revealed the site's server contained terrorist threats and Al-Queda activity. There was only one blog in the platform that engaged in the illegal activity, but Burst.net chose to shut down the entire site because it violated the Terms of Service Agreement. Blogetery.com could have avoided termination of its services/website if they were ensuring all blogs posted on the blog were complying with applicable laws and Terms of Service.
What does a website compliance program look like?
A website compliance program involves content scanning and analysis to help ensure compliance with privacy rules, industry regulations, (such as HIPAA) as well as internal Web quality standards such as defamatory statements and infringing activity. A company can hire one or two people dedicated to ensuring all content posted is in compliance or a company can purchase website compliance software that will do the job.
For example, a website such as Blogetery.com, which hosted 70,000 blogs, should install website compliance software to ensure compliance. It would take an army of individuals to effectively ensure a site that large was in compliance. However, a smaller website or blog, can simply have one person dedicated to identifying potential liable information and removing it immediately. This person may also have the authority to issue the offender a warning and/or permanently block the offender from the site.
There are several website compliance software programs available. They can be programmed and tailored to fit each website's needs. Here are a few:
IBM Rational Policy Tester
Trace Security, Website Compliance Audit
Does your website have some sort of compliance program or procedure in place?
I have been somewhat absent on this blog but that is going to change. My goal is to recommit to posting weekly on this blog. Thank you for continuing to read and visit this blog.
Today I am going to discuss the importance of an effective website compliance program. Website owners should ensure employees and users of their websites are not exposing them or their companies to liability by posting items that are illegal, defamatory, or infringing. A perfect example of a website that did not have an effective website compliance program is Blogetery.com. Two weeks ago, web host, Burst.net, shut down the Blogetery website, a platform that hosted 70,000 blogs. Why? The FBI contacted Burst.net and informed the company that an FBI investigation revealed the site's server contained terrorist threats and Al-Queda activity. There was only one blog in the platform that engaged in the illegal activity, but Burst.net chose to shut down the entire site because it violated the Terms of Service Agreement. Blogetery.com could have avoided termination of its services/website if they were ensuring all blogs posted on the blog were complying with applicable laws and Terms of Service.
What does a website compliance program look like?
A website compliance program involves content scanning and analysis to help ensure compliance with privacy rules, industry regulations, (such as HIPAA) as well as internal Web quality standards such as defamatory statements and infringing activity. A company can hire one or two people dedicated to ensuring all content posted is in compliance or a company can purchase website compliance software that will do the job.
For example, a website such as Blogetery.com, which hosted 70,000 blogs, should install website compliance software to ensure compliance. It would take an army of individuals to effectively ensure a site that large was in compliance. However, a smaller website or blog, can simply have one person dedicated to identifying potential liable information and removing it immediately. This person may also have the authority to issue the offender a warning and/or permanently block the offender from the site.
There are several website compliance software programs available. They can be programmed and tailored to fit each website's needs. Here are a few:
IBM Rational Policy Tester
Trace Security, Website Compliance Audit
Does your website have some sort of compliance program or procedure in place?
Monday, July 12, 2010
Playboy Sues Artist Drake, Cash Money and Universal Music for Copyright Infringement
Drake, Cash Money, and Universal Music Group are currently being sued by Playboy Enterprises for copyright infringement. Playboy Enterprises claims Drake used a sample of their copyright protected song "Fallin' in Love" by Hamilton, Joe Frank, and Dennis/Reynoldstown in the beginning of the hit "The Best I Ever Had," without their express permission. I actually listened to "Fallin' in Love" and "The Best I Ever Had" and the tracks are very similar. You can listen to both songs here.
If Playboy's claims prove to be true, someone on Drake's team failed to properly receive clearance from Playboy to use the song. As I previously discussed on this blog, the process of clearing a song can be difficult. Usually, the producer or production team will use a sample of a song before it is actually cleared. Producers are not actually thinking about clearing songs while caught up in the creative process. The producer's legal team, agent or manager will contact the publisher or copyright owner to get permission to use the sample. However, getting clearance to use a song can take a while. Sometimes it takes months before there is a return call from the publisher or copyright owner. Also, there can be a break in negotiations regarding royalty payments. The publisher or copyright owner may demand royalty payments that the producer is not willing to pay. Or the copyright owner can simply refuse to allow the producer or artist to use the song. This happens often and can be very frustrating for artists.
As I previously discussed here on Black Web 2.0, a copyright owner can receive between $750 and $30,0000 per instance of copying against a defendant for copyright infringement. If the copyright owner can prove that the infringement was willful, i.e., the infringer had knowledge that the activity (copying) constituted infringement or recklessly disregarded the possibility of infringement, then the copyright owner can receive $150,000 per instance of copying. Playboy is claiming Drake and company willfully committed copyright infringement and are asking the court for an accounting of all of the profits Drake, Cash Money and Universal Music Group have made from the song. They are also requesting an injunction to stop the defendants from further playing or selling the song.
It is much easier to just ask permission.
If Playboy's claims prove to be true, someone on Drake's team failed to properly receive clearance from Playboy to use the song. As I previously discussed on this blog, the process of clearing a song can be difficult. Usually, the producer or production team will use a sample of a song before it is actually cleared. Producers are not actually thinking about clearing songs while caught up in the creative process. The producer's legal team, agent or manager will contact the publisher or copyright owner to get permission to use the sample. However, getting clearance to use a song can take a while. Sometimes it takes months before there is a return call from the publisher or copyright owner. Also, there can be a break in negotiations regarding royalty payments. The publisher or copyright owner may demand royalty payments that the producer is not willing to pay. Or the copyright owner can simply refuse to allow the producer or artist to use the song. This happens often and can be very frustrating for artists.
As I previously discussed here on Black Web 2.0, a copyright owner can receive between $750 and $30,0000 per instance of copying against a defendant for copyright infringement. If the copyright owner can prove that the infringement was willful, i.e., the infringer had knowledge that the activity (copying) constituted infringement or recklessly disregarded the possibility of infringement, then the copyright owner can receive $150,000 per instance of copying. Playboy is claiming Drake and company willfully committed copyright infringement and are asking the court for an accounting of all of the profits Drake, Cash Money and Universal Music Group have made from the song. They are also requesting an injunction to stop the defendants from further playing or selling the song.
It is much easier to just ask permission.
Tuesday, July 6, 2010
Rising Recording Artists and Producers: How to Properly Clear a Song?
I have been absent from this blog because I have been extremely busy working and writing for other publications and my own personal blog. But every week, visitors come to this blog to receive good information about Intellectual Property and I am grateful. I hope to update this blog more often. Thank you for continually reading and supporting this blog.
Popular recording artist Drake and his record labels Cash Money, Inc. and Universal Music Group, Inc. are currently being sued for copyright infringement for allegedly using a song as a sample without the copyright owner's express permission. If the allegations are proven true, I can only conclude that someone on Drake's production team either did not understand the process of clearing a song or simply did not follow through with the process. In my practice I have represented recording artist and producers and the clearance process can be one of frustration and confusion for an artist. Therefore it is important that artists' representatives are diligent in ensuring their clients are not committing infringement when creating art.
The clearance process is relatively simple but can be complex for numerous reasons. They are:
1. The copyright owner is not available,
2. The copyright owner refuses to give permission to use the work,
3. The copyright owner demands an excessive royalty,
4. The need to get permission from multiple copyright owners of one song.
For artists who are not represented, here are a few simple tips in clearing a song:
1. Search the U.S. Copyright Office database to locate the owner of a song. All copyright registrations require the owner to list their contact information.
2. If the copyright owner is not available, search the databases of ASCAP, BMI, or SESAC to properly locate the publisher or copyright owner.
3. Send a request to use the song and an offer of royalties in writing.
4. Follow-up the letter with a phone call.
5. Negotiate an acceptable royalty rate to use the song.
6. Get a licensing agreement in writing.
If the publisher or copyright owner refuses to negotiate or allow use of the song, the only remedy is to choose another song and get clearance. It is the copyright owner's right to allow use of their work as they see fit.
Popular recording artist Drake and his record labels Cash Money, Inc. and Universal Music Group, Inc. are currently being sued for copyright infringement for allegedly using a song as a sample without the copyright owner's express permission. If the allegations are proven true, I can only conclude that someone on Drake's production team either did not understand the process of clearing a song or simply did not follow through with the process. In my practice I have represented recording artist and producers and the clearance process can be one of frustration and confusion for an artist. Therefore it is important that artists' representatives are diligent in ensuring their clients are not committing infringement when creating art.
The clearance process is relatively simple but can be complex for numerous reasons. They are:
1. The copyright owner is not available,
2. The copyright owner refuses to give permission to use the work,
3. The copyright owner demands an excessive royalty,
4. The need to get permission from multiple copyright owners of one song.
For artists who are not represented, here are a few simple tips in clearing a song:
1. Search the U.S. Copyright Office database to locate the owner of a song. All copyright registrations require the owner to list their contact information.
2. If the copyright owner is not available, search the databases of ASCAP, BMI, or SESAC to properly locate the publisher or copyright owner.
3. Send a request to use the song and an offer of royalties in writing.
4. Follow-up the letter with a phone call.
5. Negotiate an acceptable royalty rate to use the song.
6. Get a licensing agreement in writing.
If the publisher or copyright owner refuses to negotiate or allow use of the song, the only remedy is to choose another song and get clearance. It is the copyright owner's right to allow use of their work as they see fit.
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