Prince and Chyna – Digital Ashes

Following news of Prince’s death, the USPTO posted the following image on Facebook about Prince’s intellectual property portfolio:

uspto

(Original HERE)

That was an interesting post, and kudos to the USPTO for posting it.  Who knew Prince had a design patent for a keytar?

Sadly, Chyna was not mentioned. She also died within the last 24 hours, and she had some IP. Well, actually, the registered trademarks for CHYNA were owned by the WWF/WWE, her former employer. Even more sad is that they all appear to be “dead” marks, meaning that they were not renewed for some reason:

chyna

When a company no longer uses a brand, it makes sense to stop paying the few-hundred dollars in fees between the 5th and 6th years of registration and every 10 years thereafter. In fact, if a company has no intention of continuing to use a mark, and if they have in fact stopped using it, then it would be improper to renew the registrations.  In this case all of the registrations were initiated around 2001, and they were all abandoned in 2009.  At that point she has already started the next phase of her career – adult film and reality TV.  But there is something morose about seeing the abandoned trademark registrations in the wake of her death when there were rumors that Chyna would wrestle again one day, or at least be inducted into the wrestling hall of fame.

From the graphic above, here are the links to the various registrations:

For “Toy action figures, bendable toys, bean bag bears, bowling balls, pool cues

For “PRERECORDED VIDEOTAPES AND CASSETTES FEATURING SPORTS ENTERTAINMENT

For “CLOTHING, NAMELY, SHIRTS

For “BOOKS IN THE FIELD OF SPORTS ENTERTAINMENT; FOLDERS; FRAMED PICTURES; POSTERS; TRADING CARDS; COMIC BOOKS; CUSTOMIZED PERSONAL CHECKS

For “Entertainment Services, namely, wrestling exhibits and performances by a professional wrestler/entertainer

New take on an old (infringing?) idea

I read about a recently-published patent application from Apple that will allow an audio device (presumably an i-Device) to “self-censor” explicit content.  The application is titled “Management, Replacement and Removal of Explicit Lyrics during Audio Playback,” and you can read the application HERE.

apple-fig1
Figure 1 from the patent application

Here is the abstract from the application:

Unwanted audio, such as explicit language, may be removed during audio playback. An audio player may identify and remove unwanted audio while playing an audio stream. Unwanted audio may be replaced with alternate audio, such as non-explicit lyrics, a “beep”, or silence. Metadata may be used to describe the location of unwanted audio within an audio stream to enable the removal or replacement of the unwanted audio with alternate audio. An audio player may switch between clean and explicit versions of a recording based on the locations described in the metadata. The metadata, as well as both the clean and explicit versions of the audio data, may be part of a single audio file, or the metadata may be separate from the audio data. Additionally, real-time recognition analysis may be used to identify unwanted audio during audio playback.

That description immediately reminded me of an old copyright infringement case that was brought on behalf of Hollywood movie directors who objected to a service called “CleanFlicks.”  CleanFlicks would purchase DVDs of movies, edit out the “objectionable” content, and then sell or rent the “clean” versions.  Ultimately, this practice was considered copyright infringement.  Here’s a brief analysis of the case from the Copyright Office.  From the analysis:

The court held that public distribution of edited versions of plaintiffs’ films for the purpose of eliminating objectionable content did not constitute fair use. It ruled that the edited film versions were not transformative because they added nothing new to the originals. It further held that the “amount and substantiality” factor weighed against a finding of fair use because the movies were copied in their entirety for non-transformative use. Regarding the fourth factor, plaintiffs claimed that there was no adverse effect on the market for the films because they maintained a one-to-one ratio between original and edited films, and that but for their editing, the defendants would not have sold those particular original copies. The court, however, stated that this argument ignored the defendants’ “right to control the content of the copyrighted work,” and further remarked that “[w]hether these films should be edited in a manner that would make them acceptable to more of the public … is a question of what audience the copyright owner wants to reach.” The court also found that editing the versions as a form of comment or criticism was a public policy argument that was not appropriately raised in the copyright context.

But, Apple’s technology might not be making a new copy of a song to then censor, rather, it’s merely bleeping or silencing-out a portion, so there is a decent argument that this will not be a copyright issue.  “Moral rights,” which can protect the integrity of (or cursing in) a work, are generally not recognized in the U.S., so the mere act of censoring a work isn’t necessarily copyright infringement.  But, Apple’s technology is similar to the facts of a 1970’s case wherein ABC was sued by the people behind the Monty Python program based on ABC making edits to Monty Python re-broadcasts.  There, the court found that ABC might actually be violating the Lanham Act, which forms federal trademark and unfair competition law.  By editing the episodes, ABC misrepresented the source of the episodes.  That is, by screwing around with the way that Monty Python’s writers intended the episodes to look, ABC damaged Monty Python because viewers might think that the edited, “less good,” episodes originated with Monty Python.  This is similar to a line of cases where Rolex has successfully sued after-market jewelers who add “bling” to Rolex watches.  Rolex argues that they would never add a dial full of diamonds or other tacky embellishments, and when jewelers do so, they damage the Rolex brand because consumers might think that Rolex was the source of the tackiness.

In sum, Apple may not even bring this technology to market, and even if they do, I would imagine that for artists to have their music on iTunes (the patent anticipates use in streaming environment), they will have to agree to allow the use of the technology.  But at the end of the day, this may not be legally actionable anyway.  Artists typically create a “clean” mix of a song.  I wonder if Tipper Gore would have approved?

Apple’s full application may be downloaded HERE.

(Bonus thoughts:  the idea of piecing a song together from multiple audio streams located at different sources is interesting.  The patent application doesn’t just address adding a “beep” in place of a dirty word.  The “clean” music can be seamlessly spliced into the song on-the-fly.  As we’ve recently seen with Kanye tinkering around with edits and mixes of songs from The Life of Pablo after its release, this technology may have some positive creative merit – i.e. custom MP3/audio files depending on what time of day the audio is streamed or downloaded.)

Trademark Presentation

I’ve been meaning to post the slides from my Trademark Law – 2015 Update CLE that I presented at the Orange County Bar Association’s Intellectual Property Committee meeting back in May.

So, here they are in PDF format: Trademarks – OCBA CLE 2015.

I went over the following topics:

1) A Trademark Trial and Appeal Board (“TTAB”) proceeding which sought to cancel the registration for Gerber Childrenswear’s “ONESIES” trademark.  Since giving the CLE, the TTAB proceeding has been terminated because the party seeking to cancel the ONESIES registration has withdrawn the petition for cancellation.  Given that the petitioner’s website still uses the “onesies” term/mark, I’m guessing that Gerber has given the petitioner a free license or some other incentive to abandon its efforts to cancel the registration.  Even though I’m a trademark attorney, as a new dad, I admit to using the term “onesie” in a generic sense.  All baby bodysuits are “onesies” to me even though I know it’s a registered trademark and should not be used generically.  I still think Gerber will lose this registration at some point.  It might be many years from now, but ONESIE’s days as a registered trademark seem limited to me.

2) The Supreme Court’s B&B Hardware case, which addressed issue preclusion – i.e. does a TTAB finding of likelihood of confusion preclude a subsequent district court from finding otherwise?  (Answer:  It depends.  If the issues raised in the TTAB proceeding are identical to the issues in the district court litigation such that traditional collateral estoppel rules are triggered, then the TTAB decision can preclude a contrary district court decision.)

3) The Supreme Court’s Hana Financial case, which addressed whether or not “tacking” is a question of fact for a jury or if it is a question of law for the court.  (Answer: it is a factual issue which “falls comfortably within the ken of a jury.”)

4) A federal case in Maryland involving campaign signs.  I’ve blogged about campaign signs and trademarks on several occasions (HERE, HERE), so this one interested me for that reason as well as for the case’s analysis of another Supreme Court case – the Lexmark case with addressed standing in false advertising claims.  In this case, the Hershey chocolate company was upset that Mr. Steve Hershey was using the Hershey’s familiar trade dress – brown background, similar block letter typeface, etc.

hershey

The court found that Mr. Hershey does not have a fair use or First Amendment right to use the Hershey’s trade dress. Given how many local campaign signs I see in Orlando which play on famous trademarks, this case should serve as a warning.

5) Finally, I covered the In re Tam case, which was a case where the Federal Circuit first affirmed a TTAB decision that denied a band’s trademark application for THE SLANTS as being disparaging to those of Asian descent.  The band is made up of members of Asian descent, and they challenged the denial.  Interestingly, after the Federal Circuit affirmed the refusal in a majority opinion, the opinion went on in a dissent to question the constitutionality of the Trademark Act’s bar to registration of “disparaging” marks.  Five days after that opinion was issued, the Federal Circuit vacated it and ordered that the case will be heard en banc with new briefing on the constitutionality issue.  Oral argument will be held on October 2, which is a couple of days before my firm will be at the Federal Circuit in D.C. to argue an appeal in a patent case.

 

Taste Infringement?

I used to love the Coke Zero commercials that had the “regular Coke” workers complaining that the Coke Zero creators committed “taste infringement” due to the fact that Coke Zero tastes so much like regular Coke.  Well, as Eric Goldman writes, a pizza restaurant has tried to bring a “taste infringement” claim:

http://blog.ericgoldman.org/archives/2014/10/food-flavor-cant-be-trademarked-even-if-the-baked-ziti-is-delicious-ny-pizzeria-v-syal-forbes-cross-post.htm

 

 

Don’t Forget Domain Names When Purchasing a Sports Team

This one is kind of funny.  The Orlando Predators, which is an Arena Football team, was recently sold.  Apparently the sale did not include the domain name “orlandopredators.com” because the Orlando Sentinel is reporting that the domain is now redirecting to…drumroll…:

predators1

 

Yep – the Florida Department of Law Enforcement’s website for “predators.”  Well-played former owner, well-played.

See article HERE.

As the article states, an ICANN UDRP proceeding has been initiated.  I didn’t see it on WIPO’s or NAF’s websites this morning, but I wonder if the UDRP proceeding will even be successful.  If the sale contracts did not include the domain name, the only way that a UDRP proceeding would result in transferring the domain is if the UDRP Panel determines that the current owner registered AND used the domain in bad faith.  My guess is that the domain was registered prior to the sale for the purpose of promoting the Orlando Predators football team.  No bad faith there.  And, while it was used to promote the team, there’s probably no bad faith there, either.

So, will the act of redirecting the domain name to a website that really does contain information about Orland0-area predators be considered bad faith?  The UDRP is not designed to handle trademark infringement, just cybersquatting.  So, to the extent that the prior owner did not sell the domain and was not engaged in bad faith when he registered and used it, then the UDRP may be powerless, and this will become either a trademark infringement lawsuit or a contractual issue depending on the sale documents.  For now, redirecting to the FDLE Sexual Predators site seems like a safe move.  (Of course, there’s an argument that the redirection to a sexual predator site “dilutes” the Predators brand via tarnishment theories, but I doubt the Orlando Predators brand has attained the level of fame necessary for a federal dilution claim.  Maybe a state dilution claim though.)

This could be a very interesting proceeding, presuming it isn’t worked out between the parties.

For now, go to http://www.myorlandopredators.com for info on the football team (and not to create your own database of Orlando-area sexual predators).

predators2

The Party Crashing Trademark Attorneys

As blogged HERE and HERE, Clown Shoes Beer changed the name of its Vampire Slayer beer due to a trademark dispute.  Rather than going gentle into the good beer-fueled night, Clown Shoes raged on and mocked the dispute by writing an article about the issue and why they handled it the way they did.  (The article is no longer on the Clown Shoes website, but an archive is HERE.) To recap, Clown Shoes handled the issue by changing the name of the beer to Undead Party Crasher (which is a sly comment on the fact that Clown Shoes’ original Vampire Slayer beer was supposed to be a celebration of Clown Shoes’ second anniversary).  Oh, and they also mocked my profession in a pretty hilarious way. So, my final update on this issue is simply this:  My local Total Wine has just about cleared its inventory of Vampire Slayer, and they have the new Undead Party Crasher in stock.  Of course, I bought a bunch for my colleagues. While I applaud the fun that Clown Shoes had with this issue, I have to disagree with Clown Shoes by answering the question “do we need the undead and trademark attorneys” with a resounding, “YES!” (as opposed to “No, Die Monsters, Die”)

undead-closeup
“Die, monsters, die!”

 

undead-pano
Panorama shot. Oooooh. Fancy.

undead-slayer