Trademarks

Court Says CrossFit May Have Violated Copyright Act by Basing Takedown Notice on Trademark Rights

The US District Court for the Northern District of California has ruled that the exercise company CrossFit may have violated the Digital Millennium Copyright Act (DMCA) when it submitted a takedown notice to Facebook based on alleged infringement of its trademark rights rather than on a violation of its copyrights.

The case arose out of a dispute between CrossFit and Jennie Alvies, a mother of four. Alvies wrote a blog at the URL crossfitmamas.blogspot.com and also created a Facebook page called “CrossFit Mamas.” She shared with her readers updates about her high-intensity interval training regimen.

Alvies also used her blog to sell fitness-related products and advertisements using Google AdWords.

CrossFit contacted Alvies and demanded that she stop using their name. Alvies agreed, but CrossFit sued her anyway, alleging causes of action for trademark infringement, trademark dilution, cyberpiracy, and false description of origin.

CrossFit also submitted a takedown notice to Facebook, asking the company to remove Alvies’ page.

Under a “Safe Harbor” provision of the DMCA, an online service provider (OSP) may avoid liability for copyright infringement due to material posted on its site by third parties if the OSP:

  • does not receive a financial benefit directly attributable to the infringing activity,
  • is not aware of the presence of the infringing material, and
  • upon receiving a notice from a copyright owner, acts expeditiously to remove the allegedly infringing material.

Alvies filed a counterclaim against CrossFit alleging that its takedown notice violated the DMCA.

The DMCA imposes liability on a party that knowingly makes a takedown request based on material misrepresentations. Alvies claimed that CrossFit’s claims based on trademark infringement, rather than copyright infringement, were improper under the DMCA.

CrossFit moved to dismiss Alvies’ counterclaim, arguing that Facebook allowed trademark-based takedown notices as well as copyright-based takedown notices. Thus, said CrossFit, Alvies suffered no injury due to the DMCA request because Facebook would have taken her page down anyway.

The court denied CrossFit’s motion, finding that Alvies had a viable claim. The court noted that it could not be assumed that Facebook would necessarily have taken down her page pursuant to a trademark-based takedown request.

If you have questions about takedown requests based on either copyright or trademark law, contact our office to arrange a free initial consultation with one of our attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

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Photo Attribution: “Force athlétique” by Greg Westfall is licensed under CC BY 2.0.

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Trademark Appeal Board Says “Pretzel Crisps” is Generic

The Trademark Trial and Appeal Board (TTAB) has ruled that the product name “Pretzel Crisps” is generic and cannot be registered as a trademark.

The issue arose in a dispute between snack-food titan Frito-Lay Inc. and Princeton Vanguard LLC, a much smaller New Jersey snack company.

Princeton had tried to register the trademark for its gourmet flat pretzels.

The TTAB determined that consumers considered “pretzel crisp” to be a generic name for a type of pretzel cracker snack, rather than as a brand name associated with Princeton’s specific product.

Princeton introduced its crisps in 2004, after owners Warren and Sarah Wilson obtained a patent for the flat pretzels, claiming the ornamental design for a “pretzel cracker.” The Wilsons, who got their start selling funnel cakes at fairs in 1969, also invented bagel chips.

Frito-Lay’s own Rold Gold pretzels and Stacy’s Pita Chips compete with Pretzel Crisps. When the Wilsons tried to register the trademark for their product name, Frito-Lay challenged the proposed mark.

In a 2010 motion, Frito-Lay wrote that “Like ‘milk chocolate bar,’ the combination of ‘pretzel’ and ‘crisp’ gains no meaning as a phrase over and above the generic meaning of its constituent terms.”

The TTAB agreed, saying, “We find that ‘Pretzel Crisps,’ as used by defendant, would be understood by the relevant public to refer to ‘pretzel crackers.’”

The TTAB also held that it was irrelevant that Princeton was apparently the first company to use the term “Pretzel Crisps.” “The law does not permit anyone to obtain a complete monopoly on use of a descriptive or generic term simply by grabbing it first.”

Although it is easier to protect “fanciful,” made-up words like “Kodak” as trademarks, the value of more descriptive terms, like “Pretzel Crisps,” has increased in the internet era, when consumers look for products on the Web.

Princeton spent over $1 million in legal fees trying to obtain the Pretzel Crisp trademark. Retail sales of Pretzel Crisps are more than $100 million per year and growing.

Sales of Rold Gold pretzel products have declined in recent years, and Frito-Lay’s attempts to market its own flat pretzel products have been unsuccessful.

If you have questions about trademark law, or if you anticipate being involved in trademark litigation, contact our office to arrange a free initial consultation with one of our attorneys.

 

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Michael Jordan Flying High After Reversal of Trial Court Decision in Trademark Case

Basketball superstar Michael Jordan will get a second bite at the apple in a case involving the use of his identity by a Chicago supermarket chain.

In 2009, Sports Illustrated published a special commemorative issue devoted to Jordan’s career, in recognition of his induction into the Basketball Hall of Fame.

Jewel Food Stores, Inc. was offered free advertising in the magazine in exchange for agreeing to sell it in its stores.

Jewel ran a full-page ad on the inside back cover of the magazine congratulating Jordan on his induction. The ad included a pair of “23” sneakers as well as Jewel’s trademarked logo and slogan.

Jordan sued, claiming that the ad (which used his well-known jersey number) was a misappropriation of his identity for Jewel’s commercial benefit. He brought claims under the federal Lanham Act (which governs trademark law) and also under the Illinois Right of Publicity Act.

Jordan sought $5 million in damages, plus punitive and treble damages under the Lanham Act.

Jewel claimed that its ad was a form of non-commercial speech entitled to First Amendment protection. A federal district court agreed, and Jordan appealed to the Seventh Circuit.

The parties agreed that if Jewel’s speech was non-commercial in the Constitutional sense, then the First Amendment would provide a defense to Jordan’s claims.

The Seventh Circuit noted that it did not necessarily agree with the parties on this point but that the commercial/non-commercial distinction was potentially dispositive:

If the ad is properly classified as commercial speech, then it may be regulated, normal liability rules apply (statutory and common law), and the battle moves to the merits of Jordan’s claims. If, on the other hand, the ad is fully protected expression, then Jordan agrees with Jewel that the First Amendment provides a complete defense and his claims cannot proceed. The district court held that the ad was fully protected noncommercial speech and entered judgment for Jewel.

The court reversed and remanded the case to the trial court for further proceedings. In doing so, the appellate court found that Jewel’s ad was in fact commercial speech:

Jewel’s ad … prominently features the “Jewel-Osco” logo and marketing slogan, which are creatively and conspicuously linked to Jordan in the text of the ad’s congratulatory message. Based on its content and context, the ad is properly classified as a form of image advertising aimed at promoting the Jewel-Osco brand. The ad is commercial speech and thus is subject to the laws Jordan invokes here.

If you have questions about whether you can use the names or likenesses of famous people, contact our office to arrange a free initial consultation with one of our attorneys.

At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge – and it needs protection. Recognized as one of the country’s “Best Law Firms” by U.S. News and Best Lawyers, Sheldon Mak & Anderson was established in 1983 and is one of Pasadena’s oldest law firms. Our full-service IP firm provides local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.

Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.

We have offices conveniently located in Pasadena (626-796-4000, 100 Corson Street Third Floor, Pasadena, CA 91103-3842);  Riverside (951-787-7770, 5885 Brockton Avenue, Riverside, CA 92506-1863); Upland (909-946-3939, 222 N. Mountain Avenue, Suite 210, Upland, CA 91786-5714); and Orange County (855-874-3327, 2102 Business Center Drive, Suite 130, Irvine, CA 92612-1001).

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “Michael Jordan” by Diegoestefan97 is licensed under CC BY 3.0.

Lions Gate Files Copyright and Trademark Counterclaims over Twilight Spoof

Lions Gate Entertainment Corp. has filed copyright and trademark counterclaims against the producers of a Twilight parody film.

The Twilight movie series, based on the hyper-popular novels by Stephanie Meyer, was produced by Lions Gate subsidiary Summit Entertainment and has earned over $3.3 billion worldwide.

Between the Lines Productions LLC, producers of the spoof film Twiharder, had previously sued Lions Gate for antitrust violations.  The 219-page complaint charged that Lions Gate and Summit engaged in “ridiculous-to-insane overreaches of intellectual property law.”

The Lions Gate counterclaim alleges that the Between the Lines “use of the ‘Twilight’ motion pictures … in the absence of a valid license agreement …. would constitute copyright infringement.”  It also includes state and federal causes of action for trademark infringement, false designation of origin, unfair competition, and trademark dilution.

Between the Lines has claimed that several major distributors had expressed interest in distributing Twiharder, but that they immediately lost interest after Between the Lines received a “cease and desist” letter from Lions Gate.  The film’s budget is estimated at $3 million.

The antitrust complaint alleges that Lions Gate tried to “monopolize the conversation” about Twilight via “oppressive” IP enforcement using “sham” cease-and-desist notices.

Lions Gate and its subsidiary Summit Entertainment have sought to have the antitrust case dismissed.

According to the Urban Dictionary, “Twihards” are “Stupid obsessive people (mostly teenage girls) who are ‘in love’ with fictional characters and wouldn’t know a good book if it punched them in the face.”

The dispute will likely turn on the issue of whether Twiharder constitutes a “parody,” which is considered “fair use” under US copyright law and thus not copyright infringement.

Courts distinguish between parodies (which poke fun at the work being parodied) and satires (which use elements of a copyrighted work to poke fun at something else).  Parodies are more likely than satires to be considered fair use.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

App Developer Says Facebook Should Not Use “Paper”

FiftyThree Inc., which markets a sketching app called “Paper,” says that Facebook should refrain from using the same name for its new news-reader app.

The sketching app was launched in 2012 and named iPad’s “App of the Year.”  FiftyThree claims that the app has been downloaded 100 million times.

FiftyThree has held a federal trademark for the name “Paper by FiftyThree” since December 31, 2013.  It applied for a trademark for the word “Paper,” standing alone, on January 30, 2014 – the day that it claims to have learned about Facebook’s app.

Facebook does not own a federal trademark for the term “Paper.”

FiftyThree’s founder said that he reached out to Facebook about the “confusion” between the names and that Facebook offered an apology but nothing else.

FiftyThree has publically asked Facebook to stop using the “Paper” mark nut has apparently not yet filed suit.

In addition to its federal trademark rights, FiftyThree may be able to assert a common-law trademark to the “Paper” name based on its two years of prior use in the app field.

As we recently reported, the developer that makes the popular app game “Candy Crush” recently filed a trademark application for the word “Candy” in a wide range of fields

A word can only be considered a trademark if it is “distinctive” – i.e., if it can distinguish one type of goods from another.  Trademarks are ranked from most distinctive to least distinctive as follows:

  • Fanciful
  • Arbitrary
  • Suggestive
  • Descriptive
  • Generic

“Fanciful” terms include made-up words like “Kodak.”

“Arbitrary” trademarks use words with common meanings but apply them in an unrelated context.  For example, “Apple” would be considered generic if used for “Apple”-brand apple juice, but is arbitrary when used for computers.

“Suggestive” marks are very similar to “Descriptive” marks but are not quite as overtly descriptive.  For example, “Microsoft” is considered a suggestive mark.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Ninth Circuit Revives Copyright and Trademark Claims by Heirs of Bill Graham

The Ninth Circuit has revived a case involving copyrights and trademarks associated with the late Bill Graham.

Graham, who was born in Berlin, escaped Germany and France during the Second World War and lived as a foster child in the Bronx.  He moved to San Francisco in the early 1960s and got his start as a promoter by organizing a benefit.

He presented concerts at the Fillmore Theater in San Francisco and worked with performers including Jefferson Airplane, the Rolling Stones, and the Grateful Dead.

He died in 1991 in a helicopter crash near Vallejo, California, on his way home from a Huey Lewis and the News concert.

His will created trusts for his sons, who were 14 and 23 at the time of his death.  The executor of the will and the trustee was Nicholas Clainos, Grahams’s friend and business partner.

In 2010, 15 years after the probate court had made the final disposition of Graham’s estate, Graham’s sons sued Clainos, his attorneys, and the Bill Graham Archives.  Graham’s sons claimed that they had been cheated out of hundreds of valuable rock concert posters and the copyrights associated with those posters.

Graham’s sons also claimed that Clainos and his attorney had “concealed and converted” the rights to “The Fillmore” trademark.

Graham’s sons claim Clainos and his attorney had assigned the poster rights to a new subsidiary of Bill Graham Presents in a document dated August 31, 1995, and then backdated that document to August 1, before the probate case closed.  Clainos became the subsidiary’s largest shareholder, according to the complaint.

A federal district court dismissed the claim against Clainos but the Ninth Circuit reversed and remanded, holding that the plaintiffs had pled facts sufficient to show that assignment was not effective and thus that they had a legitimate claim to the copyrights for the posters.

Some of the concert posters, including the one above, were published without copyright notices before 1977 and thus are now in the public domain.

For works created after January 1, 1978, copyright protection lasts for the life of the author plus 70 years.  Thus, an author or artist can bequeath copyrights (and the associated royalty streams) to his or her heirs after death.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Furniture Maker Herman Miller Claims Trademark Infringement

Furniture maker Herman Miller, Inc. has sued furniture company Modernica Inc. for allegedly infringing Herman Miller’s trademarks.

Herman Miller accused Modernica of infringing its design trademarks for “Eames” and “M” and for false advertising, breach of contract, and violating the publicity rights of the late designer Charles Eames.

Charles Eames and his wife Ray Eames were American designers associated with a style now known as “mid-century modern.”  Their work was popular and widely copied.

The Eameses’ furniture designs are considered pioneering for their use of molded plywood, fiberglass and plastic resin, and wire mesh.  They designed chairs for Herman Miller starting in the 1940s.

Herman Miller has been using the Eames trademark since at least 1951, according to the plaintiff’s complaint.  The US Patent and Trademark office issued a federal trademark for the Eames name to Herman Miller in 1982.

The complaint charges that Modernica sells imitation Eames products, including chairs, and uses the “Eames” mark to sell these products.  The complaint also charges that Modernica uses the names and photos of Charles and Ray Eames to sell its chairs.

Herman Miller first learned of Modernica’s infringement of its trademarks in 1996, and the companies later entered into an agreement under which Modernica agreed to stop its alleged trademark infringement.

Herman Miller alleges that Modernica is continuing to use Eames and Herman Miller trademarks as metatags on its website.

Metatags are words in the hypertext markup language (HTML) on a website and are not visible to users in a site’s normal mode.  However, they are detected by search engines such as Google and can be used to direct traffic to a site when someone searches for a word in a metatag.

For example, a Google search for “Eames style chair” will produce a link to Modernica’s site on the first page of results, even though the word “Eames” does not visibly appear on the Modernica page.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Supreme Court to Rule on Whether Lanham Act Governs FDA-Regulated Products

The US Supreme Court has agreed to rule on whether the federal Lanham Act governs a case involving labeling of a product regulated by the Food and Drug Administration (FDA).

POM Wonderful LLC and Coca-Cola Co. are engaged in a dispute over Coca-Cola’s labeling of a drink as “pomegranate blueberry juice.”

The drink’s label says “Pomegranate Blueberry Flavored Blend of 5 Juices,” and the first two words are in bigger letters.

POM, which makes its own pomegranate-based juice drinks, claims that Cola-Cola misled consumers into believing that the Coca-Cola drink contained mostly pomegranate and blueberry juice.

POM claims that the label is misleading because the drink actually contains only .3% pomegranate juice and .2% blueberry juice.  Apple and grape juice are 99% of the drink’s ingredients.

Coca-Cola says the drink’s label is accurate in that it tells consumers that the drink is a fruit juice blend and tastes like pomegranate and blueberry.

A district court had ruled in favor of Coca-Cola.  The Ninth Circuit Court of Appeals, based in San Francisco, found that POM might have standing to pursue state-law claims against Coca-Cola but upheld the lower court’s decision against POM on federal law grounds.

The question before the Supreme Court is whether the Ninth Circuit erred in concluding that POM, as a private entity, was not allowed to file a complaint under the Lanham Act since the juice drink was regulated by the FDA under the U.S. Food, Drug and Cosmetic Act.

The federal Lanham Act prohibits false designations of origin (including counterfeit trademarks), false descriptions, and trademark dilution.   It forbids misrepresentations about “the nature, characteristics, qualities, or geographic origin” of “goods, services, or commercial activities.”

The Ninth Circuit had said that “we must respect the FDA’s apparent decision not to impose the requirements urged by Pom.”

The case is expected to be decided by the end of June.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

Kanye West Brings Trademark Suit over Online Currency

Hip-hop artist Kanye West has filed a trademark infringement lawsuit against the operators of a digital currency called “Coinye West.”

Within hours after the complaint was filed, the defendant’s website was taken down and replaced with the message “Coinye is dead. You win, Kanye.”

Amazon, which hosted the website, was also named as a defendant, along with other named and “John Doe” parties.

The suit claims that the Coinye operators “usurped” West’s brand in order to increase the value of their virtual currency, which is similar to Bitcoin and launched on January 7.

According to the complaint, “Although defendants could have chosen any name for their cryptocurrency, they deliberately chose to trade upon the goodwill associated with Mr. West by adopting names that are admitted plays on his name.”

Coinye admitted adopted the name as an homage to West, and expressed the hope that the performer would “name drop” Coinye.

The currency’s logo originally showed a cartoon version of West’s face on a coin.  The logo was later replaced with a “half-man-half-fish hybrid who is wearing sunglasses.”

The complaint includes causes of action for trademark infringement, unfair competition, trademark dilution, cybersquatting, state law deceptive practices, and violating West’s protected name and likeness.

West’s trademark lawyer said that the removal of the website would not end the matter and that his client would continue to pursue the defendants for damages.

Under the right of publicity, also called the “personality right,” a person can control the commercial use of his or her name or image.  This right is considered a property right and can even survive death in some jurisdictions.

For example, Albert Einstein bequeathed his estate to HebrewUniversity, which licenses the right to use his image in educational materials and commercial products.

The right to prevent one’s name or likeness from being used commercially without permission is similar to a trademark right.

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.

In Trademark Dispute with Pinterest, Travel Company Claims “Pin” Is Generic

Pintrips, Inc., a startup travel planning company, has called Pinterest Inc. a “trademark bully” for suing over its use of the word “pin.”

Pintrips contends that “pin” is a generic verb that can’t be reserved for the exclusive use of one company.  A “generic” term is one that is merely the accepted and recognized description of a class of goods or services – for example, “Apple” brand apple juice.  Generic terms are not protected by trademark law.

Pinterest, which allows people to save and share images on a virtual bulletin board, sued Pintrips in federal court claiming that the travel company’s function allowing users to bookmark flight information using a “pin” button violated Pinterest’s trademark rights.

Pinterest’s causes of action also included false designation of origin, unfair competition, and trademark dilution.

Pintrips has asked the court to dismiss the case, saying,

This complaint is a textbook example of an industry giant using a spurious lawsuit to bully a small entity into giving up its right to use a generic, common term that merely describes a core function of its service.

According to Pintrips, just as Facebook can’t own the verb “like,” Pinterest can’t own the word “pin.”  The company pointed out that many other websites and apps use the term “pin” for similar functions.

Pinterest claims that it originated the use of the term “pin” for social media bookmarking and that the public now identifies the word “pin” with Pinterest.

Pinterest has applied for a US federal trademark for “pin” but registration is being opposed by Sprint.  The “Pin” mark has been successfully registered by the company in other countries.

 

Stay up-to-date on the latest Intellectual Property Law news from Sheldon Mak & Anderson.