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San Francisco California Intellectual Property Law Blog

News and Notes Focused on the 3 Public Faces of IP Law

  • Brand Image Protection - Trademark Law
  • Visual Image Protection - Copyright Law
  • Personal Image Protection - Right of Publicity Law

The Image Protection Law blog has been created in order to share stories and information on the legal aspects of: 1) the marketplace reputation of a company or product captured in its trademark, 2) published or publicly-displayed artwork, photography, and any created visual design, and 3) use of a person's photograph or likeness for product promotion or other commercial purposes.

The "IP3" share at least one thing in common: Image is everything. In these posts let's look at what that means in the realm of intellectual property in the news, but let's also be prepared to explore if there's something more beyond "everything." Don't forget, the intellectual in "intellectual property" doesn't mean smart or brainy, although by nature true creators often are. The word is used to refer to any creation, i.e., a "product of the mind." While this blog will be regularly updated, you are encouraged to share your thoughts on these posts.

Court greenlights mashup of Seuss and Star Trek as fair use

On March 12, a U.S. District Court in the Southern District of California released an opinion that discusses at length the concept of fair use of a copyrighted work. We have previously written about fair use -- a legal doctrine that allows limited uses of copyrighted works without permission in narrow categories.

Dr. Seuss Enterprises, L.P. v. ComicMix LLC concerns a dispute between the owners of Dr. Seuss' copyrights and the creators of a book that combines elements of the Dr. Seuss book "Oh, the Places You'll Go!" (a popular graduation gift, referred to as "Go!" by the court) and themes from the television show "Star Trek." The controversy centers on the resulting book: "Oh, the Places You'll Boldly Go! (called "Boldly!" by the court), which plaintiffs allege infringes on their copyrights in Dr. Seuss' works.

Can't trademark your slogan? That's a pile of covfefe!

When you read this title, with whom or what did you associate "covfefe"? Of course, this is the nonsensical word President Trump used in a tweet, possibly when he was tired and in loose control of his typing fingers. Now people associate it with his persona and communication style.

According to part 2 of an interesting March 11 article in Above the Law, at the time of its writing, 40 federal trademark applications had been filed requesting registration of the term "covfefe" as a trademark for association with a variety of goods. According to the author, the U.S. Patent and Trademark Office had not yet approved any of the "covfefe" applications for registration.

Court lays out building blocks of trademark law

In October 2018, the U.S. Court of Appeals for the Federal Circuit released an opinion in a trademark dispute between Converse and certain shoe competitors over Converse's Chuck Taylor All Star sneaker, sold since 1932 and registered as a design trademark in 2013. The legal and factual details of this case are complex, but the opinion describes clearly basic concepts of trademark law.

Can a company claim its diversity data is a trade secret?

We have talked about trade secrets, a type of intellectual property that has no government process of registration like copyrights or trademarks. Yet, trade secrets can be highly valuable and important to the success of a business. A trade secret is specific information within a company that, if it became public or were discovered by another company, could have negative impact on the trade-secret owner's competitiveness and economic success.

US Copyright Office rulings on requests for dance copyrights

We recently posted a blog about three lawsuits alleging that the owner of Fortnite, the popular video game, violated copyrights in three dances reproduced in the game without permission or credit. As we described, dance choreography can be registered with the U.S. Copyright Office, but the copyright requirements for dance are complicated and significant.

Basically, a brief movement is not protectable, but “composition and arrangement of a related series of dance movement and patterns organized into a coherent whole” are required, according to the Office.

Part 2: Court watchers speculate about Fourth Estate arguments

In this second part of our look at the January 8 oral argument before the U.S. Supreme Court in the case of Fourth Estate Public Benefit Corporation v., LLC, we will consider what legal professionals are surmising from the justices' questions and comments.

As we have discussed, the court likely agreed to hear this case because of a circuit split among U.S. Courts of Appeal on the main issue: Whether the right to sue for copyright infringement in federal court begins when the copyright owner files a complete registration application with the U.S. Copyright Office or when the registrar has completely processed the application and has either issued the certificate of registration or rejected the application.

Part 1: High court hears argument in Fourth Estate copyright case

On January 8, the U.S. Supreme Court heard oral argument in the important copyright infringement case of Fourth Estate Public Benefit Corporation v., LLC. We previously told readers about this dispute that will require the highest court to make a crucial interpretation of the U.S. Copyright Act.

As we described in our first blog on this topic, to file a federal action alleging copyright infringement, the copyright owner must already have registered the copyright with the U.S. Copyright Office. Specifically, the law says that "no civil action for infringement of the copyright in any United States work shall be instituted until preregistration or registration of the copyright claim has been made ..."

Mold-A-Rama trademark owner files infringement suit

Many Americans have a distant childhood memory of the magical machines found at zoos, museums and amusement parks that created on the spot slightly-still-warm plastic souvenir animals and other figurines with seams down the backs where the two sides melded together.

You may be surprised to learn that the Mold-A-Rama trademark owner Paul Jones filed a suit in federal court in Chicago in December to defend its mark against alleged infringement, reports the Chicago Tribune. The plaintiff seeks money damages and an order not to use the Mold-A-Rama name.

Model's $1.1 million jury award for license violation upheld

We have recently been talking in this space about intellectual property licensing. A California Court of Appeal recently decided Olive v. General Nutrition Centers, Inc., an interesting licensing dispute in which the defendant admitted having engaged in activity that violated a license to use a model's photos.

On December 27, the California Court of Appeal, Second Appellate District, upheld a jury verdict in favor of actor and model Jason Olive against General Nutrition Centers for violating a license he had granted GNC to use his image in print advertising. Olive had signed a release authorizing GNC to use pictures from a photoshoot in advertising for one year in exchange for a fee. GNC had the right to renew for a second year for additional compensation.

IP licensing goals and protections: Leave no stone unturned

Last week we introduced some basics about intellectual property licensing. In that post, we explained that license agreements facilitate formal relationships between entities that own intellectual property like trademarks or copyrights, and individuals or businesses seeking to license the right to use that property, usually commercially.

Any quick Google search about intellectual property licenses turns up form licenses as well as articles that advise against using standard forms for this important legal document. This advice is sound. It is the rare circumstance when a canned license form is adequate to protect the parties from the ramifications of unforeseen problems or license disputes.

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