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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.

SCOTUS protects "scandalous" trademarks in 2019

In a Supreme Court of the United States (SCOTUS) decision, the Court found a statutory bar to trademark protection was unconstitutional. The year 2020 promises to bring more in the realm of trademark law, and it will be reported here when it happens.

Ninth Circuit looks at copyright dispute over "The Shape of Water"

Anyone who saw the Best Picture winner "The Shape of Water" is likely to agree that it is a haunting film that uses elaborately detailed, blue sets with unexpected, random shots of water in a variety of circumstances throughout to create a mesmerizing visual story. While it seems like a unique movie, the son of Pulitzer Prize-winning playwright Paul Zindel has sued Fox Searchlight Pictures, Inc., and others linked with the film alleging copyright infringement of his father's 1969 play "Let Me Hear You Whisper."

Zindel's story tells of a janitor at a private dolphin research center who teaches a captive dolphin to speak, while "The Shape of Water" tells the tale of a mute janitor at a government research facility who falls in love with an aquatic, humanoid creature held captive there.

Two cosmetics giants sparring over "LASH LOVE"

When you walk through a cosmetics store, the sheer number of brands and variations on packaging can be overwhelming. Translate that into the volume of intellectual property that brand owners must protect in the marketplace and there are certainly going to be disputes.

In November, Mary Kay, the cosmetics company known for its use of individual consultant-marketers, filed a trademark infringement lawsuit against Ulta over the mark "LASH LOVE" in U.S. District Court for the Northern District of Texas.

Product counterfeiting a big concern in the gift-giving season

The massive increase in retail sales - both from brick-and-mortar stores and from internet sources - that accompanies the holiday season can create the perfect storm within which counterfeiters can try to launch their masquerading products, hoping to go unnoticed in the flurry of purchases. We have previously posted about counterfeiting, in which we explained that counterfeiting is an illegal attempt to pass off a copied product in the marketplace as having been placed there by the legitimate owner of the associated trademark.

A new and interesting article in Above the Law discusses the need for trademark owners to be on high alert for counterfeiting and other kinds of trademark infringement during this season of explosive retail sales. The author cites the International Trademark Association for the projection that by 2022, the value of counterfeit trade globally could reach about $1.9 through $2.81 trillion

NCAA to loosen ban on college athletes' use of own personas

We recently told readers about a California bill under consideration in the state legislature called the Fair Pay to Play Act. Since then, the legislation has become law and will take effect in 2023. California's move is groundbreaking in the world of collegiate athletics that has for so long been subject to the nonprofit - but powerful - National Collegiate Athletic Association and its requirement that student athletes remain amateurs.

Broadly, the new law will let student athletes in the state use their images and names for profit while still enrolled in school, with the exception that their colleges may not pay athletes to use their identities for promotion of the schools.

Can a landlord be liable for trademark infringement by a tenant?

When a third party directs or contributes to trademark-infringing activity of another party, the direct infringer’s liability is clear, but the third party may also be liable under the concept of contributory infringement. The U.S. Supreme Court said in 1982 that the manufacturer of generic drugs could be contributorily liable for trademark infringement for providing their product to pharmacists who were using the protected brand name on the labels, in the case of Inwood Laboratories, Inc. v. Ives Laboratories, Inc., explains a comprehensive article in IPWatchdog.

Will USPTO grant a new trademark that includes quotation marks?

Off-White is a popular Italian company affiliated with designer Virgil Abloh, creator of the line MARKERAD in collaboration with IKEA. MARKERAD items became available for sale at IKEA on Nov. 1. Some of the branded products at IKEA contain Abloh's signature use of quotation marks such as "TEMPORARY" on a wall clock and "WET GRASS" on a green doormat.

The Fashion Law reports that in May, Off-White filed an application for a trademark for "Product Bag" - including both the phrase and the quotation marks around them - for use on clothing. The Fashion Law speculates whether Off-White will try to expand rights to marks containing quotation marks around other words should this initial application be successful.

When must a trademark infringer disgorge its profits?

The U.S. Supreme Court released its January 2020 oral argument calendar and it schedules argument in an important trademark infringement case. On Jan. 14, the fourth case heard in the new year will be Romag Fasteners v. Fossil Inc., requiring the justices to decide whether the trademark owner must show the infringement was willful under the Lanham Act to be awarded the infringer's profits.

Aggressive trademark enforcement is a complex business decision

The ongoing story of a Utah-based online retailer and its efforts to preserve its trademark interests in the word “backcountry” provides a fascinating look into the careful consideration a business must conduct of potential outcomes of such a campaign. While we support vigorous protection of intellectual property, thought must be given to the potential pros and cons of each step taken in this effort.

ASCAP sues 19 bars and restaurants for copyright infringement

On Oct. 29, the American Society of Composers, Authors and Publishers, known as ASCAP, announced it had filed 19 lawsuits for copyright infringement lawsuits. According to its press release, the suits target bars and restaurants with music venues that allegedly failed to obtain proper licenses from ASCAP for performances and other use of copyrighted works.

ASCAP is a nonprofit organization with 725,000 member composers, songwriters and music publishers. ASCAP handles licensing of members’ copyrighted works – numbering more than 11.5 million works of music - and in turn pays members royalties. ASCAP sells a collective license granting permission to use all these works without limit. Licenses are available not only to bars and restaurants, but also to radio, television, internet, mobile phone services and others.

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