Infringement makes federal court Krabby

Cartoon eatery wins mark protection

With its corps of intellectual property lawyers, Viacom, the entertainment giant, somehow didn’t legally shield the Krusty Krab— and some interlopers soon had plans to have their way with it.

Unfamiliar with this famed eatery, and maybe not savvy about the Sponge Bob Squarepants universe, too? Well, the Krusty Krab is the fictional, featured workplace of SpongeBob and the ever acerbic Squidward. Their famous joint also has its own legendary burger: the Krabby Patty.

Both were in danger, in Viacom’s view, of falling into the nefarious mitts of IJR Capital Investments, an LLC that proposed to open a Krusty Krab restaurant and to trademark that name.

As Mr. Bill, another notable fictional character, would exclaim: Oh, no!

Fear not sea sponges. Viacom pulled up its legal big boy pants and fought back – winning its case recently with a reminder from a federal court in Houston about critical components of IP and trademark law. Hint: Use in the market matters.

(more…)

Read More

Podcasts? Here are 3 on entertainment law

If you’re looking for a way to stay up to date in easy, convenient fashion with key developments in entertainment and media law, why not try a novel, different technology: Podcasts, which hit big in the early 2000s then seemed to fade a decade or so later, have reemerged to become all the rage again. We’re talking Serial, This American Life, Fresh Air, and the many offerings available through National Public Radio and Apple.

There also are at least a trio of Entertainment Law podcasts worth considering for some reasons described below: It’s a subjective call, and there may be options to add.

But in the upcoming downtime connected to the holidays, it may be worth devoting some moments to: the Entertainment Law Update Podcast, Laws of Entertainment with Lisa Bonner, and the Fordham Intellectual Property, Media, and Entertainment Law Journal Podcast. Here’s why, for those with long commutes or the need for informative diversion, to listen up! (more…)

Read More

Will studio win after a decade, 3 court rulings?

Wizard of OZThe solemn, esteemed appellate courts don’t get to tell parties to just buzz off, of course. But after a decade of litigation, will some movie memorabilia product-makers finally give up their campaign to tap images from some of Warner Brothers’ most iconic films and characters?

The U.S. Court of Appeals for the Eighth Circuit, in a second adverse decision, has affirmed lower court rulings against plaintiffs Art and Vintage Entertainment Licensing Agency (AVELA), Dave Grossman Creations, X One X Productions and Leo Valencia. Instead, the court has given the studio yet another legal victory. Specifically, the appellate judges said AVELA et al can’t raise new arguments now and they owe Warner Brothers $2.57 million for copyright infringement.

The appellate judges upheld a permanent injunction in favor of Warner against the plaintiffs, a court order issued as part of a lawsuit launched in 2006, in which the studio accused AVELA et al of acquiring restored versions of movie posters and lobby cards for its films and extracting from publicity materials images of legendary characters like Dorothy, Tin Man, Cowardly Lion, and Scarecrow from The Wizard of Oz, Scarlett O’Hara and Rhett Butler from Gone with the Wind, and Tom and Jerry from the eponymous cartoon show. Warner complained the images violated its intellectual property when they were used on products like T-shirts, lunch boxes, playing cards, and action figures. (more…)

Read More

How offensive will high court allow marks to be?

The SlantsFour white men, two white women, a Latina, and an African-American soon will decide how blunt, vulgar, and racist trademarks in the United States may be. This esteemed, older, and not necessarily greatly diverse group will consider whether Asian American musicians may “re-appropriate” Slants, a traditional slur against their ethnic group, and obtain formal, legal exclusivity and commercial protections for that term.

But Redskins, another racial term deemed offensive and derogatory, especially to Native Americans, another minority group in this country, will not be part of the deliberations for now by, of course, the justices of the U.S. Supreme Court.

Their impetus for examining the issue of “scandalous, immoral, and disparaging,” trademarks — a topic this blog has taken up before — resulted from an appeal by no less than Uncle Sam, who said the important issue had gotten unclear and messy for the multicultural nation. Here’s why: (more…)

Read More

Judge maps out where a mark won’t hold

Mention the appellation Westsiders to those who know well the self-proclaimed entertainment capital of the world, and heads nod in knowing acknowledgement: Yes, those who reside in Los Angeles, west of La Cienega Boulevard, are, indeed, a peculiar people. Similarly, the Pet Shop Boys, an English pop duo, scored a 2000 hit by describing the affinities of London’s distinctive “West End girls and Eastern boys.”

But when it comes to residents of a slice of Manhattan, denizens of the Lower East Side or Loisaidas, is that a sort of generic geographical descriptor en Espanol, or is it a name of a group of people, say, a band, that can be trademark protected by a “urban bachata” duo hailing from the neighborhood? And, more key, if a film mentions Loisaidas repeatedly, including in its title, is that a trademark infringement?

No, a federal judge in New York decided recently,  dismissing a lawsuit against Kanye West, Damon Dash, and various corporate entities associated with Dash. The court found that Loisaidas, the film series by West and Dash, has artistic relevance and is protected by the First Amendment. (more…)

Read More

Court orders rapper to stop rolling with luxe TM

 

rolls royceRobert D. Davis, a rapper who on stage partly went by the moniker Rizzy and more, won’t be rolling any longer with references to a luxe automobile brand.

That’s because a federal judge in New Jersey has ruled in favor of Rolls-Royce Motor Cars Ltd in a trademark infringement and dilution action against Davis, aka “Rolls Royce Rizzy.” The court barred Davis from using “Rolls Royce” as his stage monkier and from employing the company’s registered “RR” logo on his website and on t-shirts. How did the rapper get run over with this decision? (more…)

Read More

2 empires collide over TM; Fox TV series wins

Empire_IntertitleEmpire, Twentieth Century Fox’s series, has made headlines since its January, 2015, debut for helping to revitalize television. With more viewers cord-cutting (with its legal risks),  TV networks have scrambled with varied results to win audiences back, resorting to live musical productions, special events, and exclusive concerts. For TV networks, Fox’s success with Empire was a refreshing ratings boost.

Created by Lee Daniels of Precious fame, Empire offers its twist on King Lear: Instead of three daughters vying for a kingdom, three sons struggle to take on their dad’s hip-hop legacy and his fictitious record company, Empire Entertainment.eHhMTHnF

That has displeased Empire Distribution, a real-life record label, music distributor, and publisher. It has worked with hip hop artists like Tyga, T.I., Ab-Soul, Busta Rhymes, Gladys Knight, Rae Sreummurd, and Kendrick Lamar (fresh off his win at the Grammy’s for “To Pimp a Butterfly”).

Empire Distribution, arguing art imitated life too closely, demanded that Fox pay $5 million for using its trademark; the real Empire also sought a cease-and-desist order against the show. Fox filed a counter-lawsuit,  seeking a declaratory judgment that neither Empire as a show title nor the fictitious record company violated trademarks. Empire Distribution brought counterclaims. That was the status quo until a federal judge in Los Angeles granted summary judgment, ruling in Fox’s favor.

(more…)

Read More

Slants ruling: troubling twist for Skins, TM law

Courtesy of redskins.com

I am going to admit my secret shame. I am a Washington Redskins fan. My father’s family hails from the District, and his grandfather had season tickets at one point. With the woeful lack of a LA football team (for now) the Skins were the only feasible fan option for me for pro football.

But I actually fit into an odd ‘Skins minority: I’d favor a name change for the team. Yes, it would be a shame to lose some franchise history — but not as much of a shame as rooting for a franchise with an odious name. As such, I was glad when a federal judge upheld the Federal Trial and Appeal Board’s 2-1 ruling that the team’s name is offensive to Native Americans, and, thus, ineligible for trademark protection under 15 USC §1052(a). That section of the Lanham Act states that offensive marks are not valid trademarks.

But then the U.S. Court of Appeals for the Federal Circuit (the special court dealing mostly with appeals from the patent office) recently struck down 2(a) as an unconstitutional violation of the First Amendment in the case In Re Simon Tam. Now my consternation applies not just to a football team and its name but also to the modernity, or lack of it, in trademark law. (more…)

Read More

GoDaddy beats Oscar over domain-name claims

godaddy

This guest post was written by Anahit A. Pogosyan, a Juris Doctorate candidate in Southwestern’s Entertainment Law and Web 2.0 course:

GoDaddy, go, but Oscar, please stop, the U.S. Ninth Circuit Court of Appeals has said. In legal terms, the appellate judges ruled recently that GoDaddy Inc. should triumph in a cybersquatting lawsuit brought by the Academy of Motion Picture Arts and Sciences, which claimed the giant domain-registration company illegally was profiting off its Oscar-related trademarks.

U.S. District Judge Andre Birotte wrote in his opinion that the Academy failed to show that GoDaddy acted in bad faith by letting customers buy 293 domain names, including academyawards.net, oscarsredcarpet.com, billycrystal2012oscars.com and theoscargoestothehangover.com. Purchasers often did nothing but buy these “parked” domain names, though, in theory GoDaddy might share revenue from advertising on the prospective sites. (more…)

Read More

For ‘The Slants,’ an appellate trademark coda

Call this a surprising coda for an Asian-American dance rock band involved in a long-running effort to secure a federal trademark registration for its name:  The Slants. A federal appellate court has taken it on its own accord to reconsider en banc the three-judge ruling that just recently reafirmed the Trademark Trial and Appeals Board decision to deny mark registration to the founder of the Asian-American band.

While a certain pro football team can take the field in the nation’s capital and give wide offense, many say, to Native Americans, Simon Tam, the dance rock band’s founder,  twice was refused mark registration for his group’s name. On both occasions, the examining attorney refused to register it, finding it “disparaging to Asian Americans.” The case went up on appeal, here’s how it came down, then turned around–a little like watching a Washington linebacker running in circles in downfield. (more…)

Read More