A Florida lawyer is sending threatening letters claiming others cannot say they are the “Florida Tea Party,” based on his registration of it as a political party.
The recipients filed a declaratory judgment action on trademark theories. Complaint here. Reuters coverage here.
South Florida Tea Party, Inc. et al versus Tea Party, S.D. Fla. 10:cv-80062-KAM (Justia docket).
HT Amerikat.
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It’s a small point, but an important one:
| The recording of a [patent] assignment with the PTO is not a determination as to the validity of the assignment. However, we think that it creates a presumption of validity as to the assignment and places the burden to rebut such a showing on one challenging the assignment. Such an understanding is consistent with and supported by the provisions of . . . [the] bona fide purchaser defense. |
New law by the Federal Circuit. Here, the assignment was the first one from the inventor to his employer, as reflected on the face of the patent. The case also reviews a duty to assign provision under an employment agreement.
Patently-O summarized the whole case here; decision here.
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The Seattle Trademark Lawyer blogs about a newly-filed suit over a dispute about the ownership of the “Angels” name and show content for a Pussycat Dolls tribute band. The complaint says coyly that the defendant Goldberg Entertainment “engaged” the plaintiff Kristen Colliander (um, “employed”?), that the defendant purchased the website “kristencollianeli.com” (Ms. Colliander’s stage name) but that she is the one who promoted her business and performances on it during her “tenure” with Goldberg Entertainment, and that she then “withdrew from her engagement” with Goldberg Entertainment. No paper for the relationship or there wouldn’t be a lawsuit. Unremarkably, the application for copyright registration evidencing Ms. Colliander’s ownership of the show choreography was filed after her “tenure” ended and has an issue date of March 12, 2010, just a few days before the complaint was filed. I suspect the court wouldn’t give it much evidentiary weight.
My first reaction is, since when are there tribute bands for groups still performing? My second reaction is, how can a copyist own the copyright in the choreography for a tribute band? Isn’t the point that it’s copying the original band as closely as possible? Wouldn’t the Pussycat Dolls actually own the copyright in the choreography?
Pussycat Dolls here.
Legal pussycats here.
Trololo pussycat here.
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There’s a somewhat puzzling complaint newly filed in the Northern District of California. Zorro Productions, Inc. (ZPI) filed an unfair competition suit against Mars, Inc., maker of M&M’s candies, and its advertising agency, BBDO Worldwide, Inc. The complaint alleges that
| ZPI is the owner of all rights, including without limitation, trademarks and trade dress, both registered and unregistered, associated with “Zorro,” the well-known fictitious character who has been widely popularized by ZPI and its licensees through depictions in, among other media, feature films, television programs, novels and comic books. ZPI and its licensees have extensively marketed, publicized and promoted “Zorro” through the use of distinctive depictions featuring “Zorro” as a masked fighter for justice, dressed in black, wearing a flat Cordoba hat and a cape, and brandishing a sword by which he generates the distinctively and separately trademarked “Z” and/or “Zorro.” |
The complaint alleges that Mars is showing an M&M’s television commercial that incorporates a “Zorro” character, but there’s no exhibit to the complaint and I couldn’t find an M&M’s “Zorro” commercial online. (Let me know if you can find one.) News outlets use this image to illustrate their stories:
But it’s not entirely clear that the above character is the accused infringement. The first count of the complaint, under section 43(a) of the Lanham Act, claims that Mars is
| using an actor wearing a trademarked “Zorro” Halloween costume in the commercial. Defendants have also falsely and without authorization placed on the unauthorized “Zorro” character in the television commercial Defendant Mars, Inc.’s claim of ownership by placing its own trademark or other symbol of registration over the actor wearing the trademarked “Zorro” Halloween costume. [ed. – the “M” on an M&M perhaps?] Defendants’ conduct of using the Zorro Halloween costume and placing its own registration mark over it in the television commercial is confusingly similar to ZPI’s protected “Zorro” character, trademark and trade dress. |
The complaint also has a count under section 32 of the Lanham Act for infringement of a registered trademark, alleging infringement of this registration for the word mark “Zorro” for Halloween costumes. The complaint therefore also alleges that the “Zorro” mark is
| found on its and its licensees’ Halloween costumes . . . includ[ing] the hang tag on the “Zorro” Halloween costume used without authorization by defendants in their television commercial. |
Perhaps like this, available here:
ZPI also alleges generally that it has trademark registrations “pertaining” to Zorro, “including pictorial depictions of ‘Zorro,’ dressed in black, wearing a flat Cordoba hat, a mask and a cape such as that used by the defendants in their television commercial.” These are presumably what the plaintiff is referring to, which are variously registered for publications, toys and games, but nothing close to candy (use this query in the TESS free form search ):
Notably, nothing was mentioned about this one, a registration for antenna balls:
So lets assume charitably that the commercial had a real actor wearing a costume licensed by Zorro Productions, Inc. (Indeed, BBDO did an M&M’s campaign with commercials showing humans turning into M&Ms, like this one.) We have now entered the territory of direct conflict between copyright law and trademark law.
According to Wikipedia, the work originating the Zorro character is in the public domain, a situation fast creeping up on Mickey Mouse. Zorro was created in 1919 in a pulp fiction novel called
The story became “The Mark of Zorro,” a 1920 silent film starring Douglas Fairbanks:
Available here.
According to the Copyright Office, all works published before January 1, 1923 are in the public domain. So if the copyright in the original Zorro character is in the public domain, the public may also exploit the character. But how far does the right extend? As a matter of legal doctrine, in general copyright and trademark can happily co-exist. Therefore, even if Zorro was in the public domain, to the extent that Zorro has source-identifying significance (like Mickey Mouse does), Mars may use Zorro only as long as doing so isn’t likely to cause confusion as to the affiliation, connection, or association of Zorro with Mars, and Mars doesn’t suggest that Zorro sponsors or approves of Mars’ goods. (That’s an abridged version of the statutory language, don’t blame me because it’s almost unintelligible).
We can’t know whether this might be happening without knowing what the accused work is, but the complaint may be squarely in doctrinal conflict territory. There is no suggestion that Mars used the word “Zorro”; it instead appears that ZPI is alleging that use of a Zorro character in any form is infringing. ZPI describes it’s proprietary character as dressed in black, wearing a flat Cordoba hat, a mask and a cape, and you can see that the registered logos of Zorro and the Zorro costume are both quite similar to the public domain Zorro (notably, the M&M – if that is the accused character – is not wearing a Cordoba hat or a cape). So to the extent that the claim of proprietary rights in the Zorro character is co-extensive with the copyright in the character, which gives?
Dastar held that unfair competition law did not trump copyright in its factual scenario:
| To hold otherwise would be akin to finding that §43(a) created a species of perpetual patent and copyright, which Congress may not do. |
So score one for Mars. But, perhaps when we see the commercial in context there’s some colorable theory that the fictional character Zorro is seen to be endorsing M&M’s, the theory that worked for the fictional characters Conan the Barbarian (albeit a case involving use of the character name, too) and the Naked Cowboy (albeit a living person’s character). ZPI also has a Tiger Woods problem that it will have to finesse, “as a general rule, a person’s image or likeness cannot function as a trademark.”
I don’t think the ZPI claim improves even if an actor is wearing an authorized “Zorro” costume; I’m having a hard time following a leap from “it has the word Zorro on the tag” to infringement of a registered trademark when Mars apparently never used the word “Zorro.” It reads as an awkward way to get a claim for infringement of a registered trademark in the complaint. I suppose the theory is that the costume, because it’s authorized, somehow is a source identifier for ZPI, but there was no separate claim of secondary meaning in the costume apart from the general allegation that the character as a whole is the property of ZPI. Perhaps if Mars had just used the “Bandido” costume instead it could have avoided the whole complaint.
My vote right now is that the mere use of a character in the public domain, particularly when it appears to be someone simply wearing a Halloween costume representing the character, isn’t going to be perceived as an endorsement in the first instance. If there is a perception of endorsement though, it will be interesting to see whether our right to exploit fictional characters in the public domain trumps ZPI’s endorsement rights in the character as suggested by Dastar.
Steamboat Willie is still safe for awhile; he doesn’t much resemble the current version of Mickey Mouse, so anyone trying to use Steamboat Willie to leverage into Disney’s blockbuster territory will have a hard go of it. But this case is an interesting test bed.
Zorro Prods., Inc. v. Mars, Inc., No. C10-01179 (N.D. Cal. March 22, 2010).
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Pinnacle Pizza was a franchisee of Little Caesar Enterprises (LCE), the corporation that manages the “Little Caesars” franchises. Pinnacle Pizza created a promotional program for its stores called “Hot ‘N Ready,” which guaranteed a hot, medium pepperoni pizza for $4 within five minutes of the order every Tuesday. There was some discussion about who conceived of the terms of the promotion, but there was no dispute that Pinnacle conceived of the phrase and first use “Hot ‘N Ready” for its version of the program.
The program was very successful and Pinnacle Pizza willingly spread, and aided Little Caesar in spreading, the concept throughout the Little Caesar’s chain. Pinnacle Pizza claimed that the promotion helped to turn the company from one $200 million in debt to one with $200 million in assets. Little Caesar later successfully registered a variant of the mark, “Hot-N-Ready,” relying on Pinnacle’s first use date in the application.
Pinnacle Pizza sued Little Caesar on a variety of state law claims, including a claim that under the terms of the franchise agreement Pinnacle, not Little Caesar, owned the trademark. The trial court held in Little Caesar’s favor, as explained in more detail here. The decision was appealed to the Court of Appeals for the Eighth Circuit.
The appeals court reached the same place, albeit in a different way. The alleged breach occurred more than six years before the claim was filed, and thus the first question was whether the statute of limitations barred the claim. The trial court held that the “continuing wrong” doctrine applied so the claim was timely, but the appeals court disagreed:
| We thus conclude that if LCE breached the franchise agreement, it did so once – the first time LCE appropriated “Hot-N-Ready.” Pinnacle’s action for breach of contract, therefore, accrued when LCE allegedly materially breached the contract. This breach would have occurred before October 25, 1998. |
Therefore the contract claim and the state law franchise claim were untimely.
Pinnacle had also appealed the trial court’s decision that the registration was not invalid for fraud. This claim was not time-barred, but Pinnacle was as unsuccessful here as it had been in the trial court. But, the appeals court fell into the trap that the district court avoided. It relied on this provision in the franchise agreement:
“Proprietary Marks” is defined thus:
These provisions says nothing about how to decide if Little Caesar has “acquired” a “Proprietary Mark,” only that once it had, a franchisee cannot claim ownership. Imagine a phrase that can only be used locally – “South Forks’ Best Pizza!” – and it’s easy to see that nothing in these paragraphs would clarify who owns it.
But once the court finds that Little Caesar owns the trademark, Little Caesar’s reliance on Pinnacle’s first use date cannot be fraudulent.
And franchise owners, take heed. Little Caesar counterclaimed that Pinnacle breached the franchise agreement by challenging the validity of the HOT-N-READY trademark. Closing the circle, the appeals court agreed that since Little Caesar owned the HOT-N-READY mark, Pinnacle had indeed breached the no challenge provision in the franchise agreement; good faith was no excuse. Fortunately for Pinnacle the remedy was $1.00. But prepare for an all or nothing battle if you think the franchisor stole your mark.
Pinnacle Pizza Co. v. Little Caesar Enter., Inc., No. 08-3999 (8th Cir. Mar. 22, 2010). Link to opinion on 8th Circuit website here.
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The Coinco strategy is an attack on standing because the company has shuffled patent ownership around between corporate family members. If the plaintiff is not the family member that owns the patent, then it can’t bring the suit.
In Advanced Micro Devices, Inc. v. Samsung Electronics Co., Ltd., the patent-in-suit was owned by a wholly-owned subsidiary, not the plaintiff, at the time of the operative complaint:
| WHEREAS, upon the filing of AMD’s First Amended Complaint on May 1, 2008, which added claims of infringement against Samsung relating to the Purcell ’434 patent, AMD did not own the Purcell ’434 patent and instead the Purcell ’434 patent was owned by a wholly owned subsidiary of plaintiff ATI Technologies, ULC known as ATI International SRL. |
Companies can try to argue around it with claims of exclusive licensing:
| WHEREAS, the parties disagree whether ATI International SRL’s ownership of the Purcell ’434 patent at the time AMD filed its First Amended Complaint impacted AMD’s standing to assert the Purcell ’434 patent in this action, in that AMD maintains ATI Technologies, ULC was an implied exclusive licensee of the Purcell ’434 patent that possessed standing to sue for infringement of the Purcell ’434 patent when the First Amended Complaint was filed and Samsung maintains that plaintiffs AMD and ATI Technologies, ULC lacked standing to assert the Purcell ’434 patent on May 1, 2008. |
But it can be a tough go. Here, in a rare litigation tactic called “cooperation,” the parties stipulated to dismissing the count for infringement of the ‘434 patent and refiling it, with AMD conceding all damages for infringement of the patent before the refiling:
| IT IS HEREBY STIPULATED AND AGREED, by and between AMD and Samsung that:
1. Samsung consents, pursuant to Federal Rule of Civil Procedure 15(a)(2), to AMD’s filing a Second Amended Complaint that voluntarily dismisses the infringement claims relating to the Purcell ’434 patent without prejudice. The Second Amended Complaint is attached hereto as Exhibit A. 2. Samsung consents, pursuant to Federal Rule of Civil Procedure 15(a)(2), to AMD’s filing, immediately after the filing of the Second Amended Complaint, of a Third Amended Complaint that asserts infringement claims against Samsung relating to the Purcell ’434 patent. The Third Amended Complaint is attached hereto as Exhibit B. 3. AMD will not seek damages for infringement of the Purcell ’434 patent occurring prior to the date of filing its Third Amended Complaint. 4. The parties agree that all patents asserted in this action by plaintiffs AMD and ATI Technologies, ULC will proceed on the same track and no dates in the Court’s schedule will be altered as a result of this stipulation. |
Advanced Micro Devices, Inc. v. Samsung Electronics Co., Ltd., No. CV-08-0986-SI (N.D. Cal. March 3, 2010).
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You just can’t trust your readership. When the City of New York first claimed that it owned the name of the landmark New York City restaurant “Tavern on the Green,” I posted a poll asking readers’ opinion. The result from the many, many voters (15) was resoundingly in favor of the restaurant.
We were wrong, according to the District Court for the Southern District of New York. The court decided the ownership dispute in favor of the City, so the only true “Tavern on the Green” will stay in Central Park.
The court tells us that in 1934 the City hired an architect to turn an 1870’s sheepfold into a restaurant, hired a concessionaire, and opened the restaurant in October of that year. Over the years a series of concessionaires ran the facility and the City paid for a substantial part of the renovations during that time. The defendant Tavern on the Green, L.P. (referred to in the decision as Debtor, since the decision is related to a bankruptcy proceeding) had been operating the restaurant since 1973. The relationship was governed by two agreements, from 1973 (amended in 1976) and 1985. Both were styled as “licenses,” although neither addressed trademark ownership directly other than to allow the restaurant owner to change the name with the City’s permission. (The new operator was also owner of the famous Maxwell’s Plum, a name that at the time might have overshadowed Tavern on the Green in fame.)
The City’s greatest hurdle was that the restaurateur owned an incontestable registration for “Tavern on the Green,” giving it exclusive rights to the trademark. This meant that, under Lanham Act § 15, 15 U.S.C. § 1065 (2006), the City had to demonstrate that it was a prior user of the mark. Turns out it was fairly easily done:
| The evidence shows that the City established the restaurant well over thirty-five years prior to the Debtors’ use and registration. The City chose the name and each concessionaire and made significant investments to ensure the success of the restaurant –- such that “Tavern on the Green” was closely associated in the public mind with a building owned by the City and located in New York’s Central Park. |
But the use not only has to start first, it has to be continuous. The parties disputed whether a two year period of closure for renovations (when the defendant took over) meant there wasn’t continuous use. The court, rightly, held that this was not a sufficient break. What no one touched, though, was how the City could have had continuous use during the defendant’s occupation of the premises. To find that the City had continuous use presupposes that the defendant was a mere licensee whose use inured to the benefit of the City, the very fact disputed. It’s the right outcome, but a foundation for it (tolling, perhaps) would be nice.
What about consumer perception, though? My informal poll, although not at all representative, demonstrates that consumer perception might be different. The court merely assumes consumer perception: “‘Tavern on the Green’ has become a famous name associated in the public mind with a restaurant in a City building located in New York’s Central Park.” But is it? Where’s the evidence of the public perception? There was none; instead, the court reached its conclusion based solely on the history and the agreements between the parties.
Mind you, I don’t disagree with the outcome. It should be exceedingly difficult to appropriate another’s trademark for one’s own. It was the City’s trademark before this particular operator started running the restaurant, and vaguely worded licensing and the unilateral act of registration shouldn’t be enough to defeat the City’s ownership. It is an interesting question, though – this owner had run the restaurant for over 30 years, so few would remember any earlier iteration of the services offered there. What are appropriate circumstances when consumer perception should be more material?
The court also cancelled the registration for fraud, likewise an easy call:
| That the 1973 Agreement is not explicitly labeled a trademark license agreement does not alter the fact that LeRoy acknowledged the City’s right to the trade name “Tavern on the Green” in the Agreement and knew that his venture was merely one in a succession of operators of the restaurant. Accordingly, the undisputed facts establish that LeRoy deliberately attempted to mislead the PTO about his status as the licensee of “Tavern on the Green,” and the Debtors’ restaurant services mark must be canceled. |
New York practitioners take note, you just can’t fight city hall: “The traditional view in New York [is] that the goodwill and rights to the name of a public building run with the building.” See Shubert v. Columbia Pictures Corp., 189 Misc. 734, 739, 72 N.Y.S.2d 851 (N.Y. Sup. Ct. 1947) (“[T]he good will of a public building, such as a theatre or hotel, runs with the building, and that good will passes with the lease of the building to the lessee and cannot be severed therefrom even by its first adopter and user.”) (citations omitted), aff’d, 274 A.D. 751 (1st Dep’t 1948); Norden Rest. Corp. v. Sons of the Revol. in the State of N.Y., 51 N.Y.2d 518, 522-23, 434 N.Y.S.2d 967, 415 N.E.2d 956 (1980), cert. denied, 454 U.S. 825 (1981).
City of New York v. Tavern on the Green, L.P., 09 Civ. 9254 (MGC) (S.D.N.Y. March 10, 2010).
Law.com article here.
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Artist Frank Gaylord created the bronze figures that are part of the Korean War Veterans Memorial. He sued the U.S. Postal Service when a photo of the sculptures was used on a stamp. In take one, the Court of Claims split the baby, deciding that the photo was a fair use of the sculpture, but also found that the government was not joint owner of the sculptures. Now on take two, the Court of Appeals for the Federal Circuit gives Gaylord the full win – it affirmed on the ownership issue, reversed on the fair use defense, and sent the case back to the Court of Claims for a determination of damages. The unanswered question is how it can be that the copyright in a war memorial isn’t in the public domain.
As a refresher, Cooper-Lecky Architects, P.C. was selected to create, build and install the Korean War Veterans Memorial. The Memorial includes 19 statues of soldiers, a mural, granite plates at the soldiers’ feet representing the reflection of rice paddies, and landscaping. Cooper-Lecky sponsored a competition to select the sculptor for the human figures and plaintiff Gaylord won the competition.
A photographer, Alli, then took a photo of the statues in the snow. The U.S. Postal Service later used the photo, with Alli’s permission, on a stamp.
Gaylord sued the US Postal Service in the U.S. Court of Claims.
On fair use, the Court of Claims had bootstrapped a questionable analysis on the first fair use factor into a successful fair use defense overall, but the Federal Circuit was not so gullible (a reversal that isn’t so popular, but I leave it to others to argue what “fair use” really means).
The Government’s argument that it was joint owner of the work was still futile. The Court of Appeals agreed with the Court of Claims that the government’s contributions to the statues – changes in ethnicity, altering soldiers so they were clean-shaven, adding buckled chin-straps, putting ponchos on the soldiers, reducing the wind in the ponchos, removing wrinkles on the solders’ faces, changing the position of the lead soldier from squatting to standing, and staggering the placement of the statues in formation – were just “suggestion and criticism,” not joint ownership. But even if these suggestions had risen to the level of copyrightable contribution, joint ownership requires an intent to create a joint work. Gaylord and Cooper-Lecky had disagreed about ownership long before the statues were completed, so clearly Gaylord did not intend that anyone have joint ownership in the copyright.
But the real meat of the case is in the dissent. As some have recognized, how can it be that a private person owns the copyright in a public monument? Judge Newman points out in dissent that the majority’s holding “is contrary to the contract provisions, contrary to statute for works done in the service of the United States, contrary to copyright law, and contrary to national policy governing access to public monuments.”
The dissent and commenters are right to be outraged; Cooper-Lecky’s contract said that “the Government shall have unlimited rights, in all drawings, designs, specifications, notes and other works developed in the performance of this contract, including the right to use same on any other Government design or construction without additional compensation to the Contractor. The contractor hereby grants to the Government a paid-up license throughout the world to all such works to which he may assert or establish any claim under design patent or copyright laws . . . .” Here is a 2000 letter to Cooper-Lecky from a government contracting officer stating in no uncertain terms that, in the government’s opinion, it owns all copyrights in the work and demanding the assignment to the government:
and
The letter shows that Cooper-Lecky repeatedly claimed that it was the owner of the copyright in the work and required permission for others to reproduce it. The government threatened to take action if there was no assignment, but must not have done so.
The majority disposes of the dissent by pointing out that the issue wasn’t raised by either party but only by the dissent sua sponte, and, further, Gaylord was not a party to the contract. Indeed, the contract language arguably doesn’t require Cooper-Lecky to assign any copyright but only give a license to its own, not those of subcontractors, with a grant only to the government, not to third parties. But perhaps now the government will see fit to enforce the contract against Cooper-Lecky and put the ownership of the work where it belongs, with the government, and then the government can dedicate it to the public domain.
Gaylord v. U.S., No. 2009-5044 (Fed. Cir. Feb. 25, 2010).
Court of Claims decision here.
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The IP Finance blog has risen to the occasion, updating us on the dispute over ownership of the “MG” trademark. It has been resolved, for the moment, in favor of Nanjing Automobile Corporation. Nanjing has worldwide rights to the MG mark and the English company that claimed to own it was ordered to change its company name to one without the letters “MG” and to transfer any “MG” domain names to Nanjing. IP Finance story here.
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Stanford Law School‘s Center for Internet and Society is not where I usually get content for my blog. But Larry Downs has written an interesting story about an experience with buying what could easily be characterized as a counterfeit camera battery on Amazon.com. The twist is that the vendor claims he didn’t brand the battery, it was another seller facilitated by Amazon.com itself. Here’s the explanation from an Amazon.com web page, as reported in the story:
The information displayed on an Amazon single detail page, called “reconciled” data, is drawn from multiple seller contributions. When a seller contributes product information to an existing item in our catalog, a decision is made about whether or not to display any changes to the product details on the single detail page. This decision is processed automatically according to business logic known as “Detail Page Control.” Detail Page Control determines which of the available product descriptions, features, titles, and additional details are displayed on the single detail page.
The selection is made based on which contributing seller has greater Detail Page Control as determined by our automated system. This could be Amazon or any seller offering the item. Detail Page Control rankings are not modified manually, but are regularly reviewed and updated automatically by our system. Some factors that affect Detail Page Control are a seller’s sales volume, refund rate, buyer feedback, and A-to-z Guarantee claims.
The original seller says he properly listed his battery as OEM, but that the above system changed it to a listing for an authentic battery.
Although the seller’s story seems sympathetic, Amazon hasn’t told its side yet. But it leads to interesting questions about liability, referential use by others, and overall control over your trademark and your brand in an automated world. It’s highly recommended reading for anyone who has goods sold in the electronic market.
Full story here.
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