Beverly A. Berneman
VIP Products LLP sells a series of dog toys called “Silly Squeakers”. The toys are often fashioned to look like well-known beverage containers. One of the toys is called “Bad Spaniels”. It looks like a Jack Daniel’s whiskey bottle but with alterations. Of course, the name was changed from Jack Daniel’s to Bad Spaniels. But it didn’t stop there. Instead of “Old No. 7”, it said “Old No. 2 on your Tennessee Carpet” (which should resonate with dog owners). The alcohol description read 42% POO BY VOL” and “100% SMELLY” (again something instantly recognized by dog owners).
Jack Daniel’s Properties, Inc. didn’t think it was funny. So they sent a cease and desist letter to VIP. VIP responded by filing suit for a declaratory judgment seeking a judgment that there was no infringement of the Jack Daniel’s brand. After losing in the district court, VIP appealed to the Ninth Circuit Court of Appeals. The Ninth Circuit affirmed the district court’s ruling that the Jack Daniel’s bottle was protectable trade dress. However, the Ninth Circuit reversed the other district court findings that VIP’s use of the Jack Daniel’s brand caused dilution and trademark infringement. The Ninth Circuit held that the “Bad Spaniels” toy was an expressive work entitled to First Amendment Protection.
This case was not unlike a 2007 involving Louis Vuitton and a dog toy named “Chewy Vitton”. Sort of the same thing happened. Haute Diggety Dog, LLC manufactured and sold parody dog toys. One of them was designed to look like a Louis Vuitton hand bag. The Fourth Circuit Court of Appeals held that the toy was a parody of the original. And as a humorous expressive work, it’s protected by the First Amendment. The Fourth Circuit called it “permissive fair use”.
WHY YOU SHOULD KNOW THIS. Parody can be a strong branding strategy for the right product. However, parody creates a tension between a trademark owner’s need to protect their brand and their ability to stop anything that references their brand. The line between going along with the joke and accusations of trademark infringement can be treacherous to navigate. But, in this case, Jack Daniel’s was given the proverbial newspaper on the nose by the Ninth Circuit.
Beverly A. Berneman
Alex Cruz was on his way to visit his girlfriend in the Tribeca neighborhood of New York City. He heard a commotion, took out his iPhone and took a snap shot. He thought he was just taking a photo of the police subduing a crazy person. What he really caught was a picture of law enforcement taking down a suspected terrorist. Alex shared the photo with a friend who then posted the photo on Instagram.
Cox Media, Inc. published the photo without Alex’s permission. Alex sued Cox Media for copyright infringement.
Cox Media came up with some defenses.
The first defense was that the photo wasn’t creative enough to be protected by copyright. Cox Media argued that Alex didn’t make any creative choices when he took the photo. The court rejected this argument. Copyright law has long recognized rights based on a bare minimum of creativity. A photograph may be original in three respects: rendition, timing, and creation of the subject. This means that almost any photograph may claim the necessary originality to support a copyright. Alex’s photo met these criteria.
Cox Media next claimed that its publication of the photo was fair use. The court rejected the argument using four-factor test in the Copyright Act which are: (1) the purpose and character of the use; (2) the nature of the copyrighted work; (3) the amount and substantiality of the portion used in relation to the copyrighted work as a whole; and (4) the effect of the use upon the potential market or value of the copyrighted work. The court didn’t have to go further than the first factor. The heart of the first factor is whether the use is “transformative”. Transformative use alters the meaning or message of the first work. In other words, does the potential infringer’s use add something new with a different purpose or nature of the work? Cox Media didn’t do anything to transform Alex’s photo. It just republished it without commentary. So the court held that Cox’s use was not transformative. The court felt that buying Cox Media’s fair use defense is “antithetical to the purposes of copyright protection to allow media companies to steal personal images and benefit from the fair use defense by simply inserting the photo in an article which only recites factual information—much of which can be gleaned from the photograph itself.”
Cox Media’s last defense was the First Amendment. The court rejected this too holding if fair use exists then First Amendment rights are protected too.
WHY YOU SHOULD KNOW THIS. This case has two takeaways. First, the amount of creativity needed for copyright protection is often misunderstood. All that is needed is a bare minimum of creativity. It doesn’t have to be novel. It doesn’t have to be on the Annie Leibowitz level of artistry. And it isn’t measured by “sweat of the brow”. Alex didn’t have to work hard to take his photo. But he got copyright protection anyway. Second, fair use is not a catch all even for media companies. Reporting on an incident in the news isn’t a blank check to use some else’s protectable content.
Beverly A. Berneman
Sex predicting technology for bovines is an extremely lucrative business. The revenues are $200 million industry worldwide with about $50 million of that in the USA.
Inguran, Inc. d/b/a Sexing Technologies owns patents that sort bovine semen as it is prepared for artificial insemination. This helps breeders control how many bulls and how many cows will be born. Obviously, the technology is very valuable in the dairy industry and in the cattle breeding business.
ABS Global Inc. filed an antitrust suit against Sexing Technologies. ABS alleged that Sexing Technologies used anti-competitive contracts and acquired about 60 patents in order to corner the market on sexed bovine semen.
Sexing Technologies filed a counterclaim against Sexing Technologies for infringing on about 6 patents.
The matter went to trial in 2016. The jury returned a mixed verdict finding that Sexing Technologies did improperly corner the market but that ABS was not entitled to damages because it didn’t prove anti-competitive harm. The jury found in Sexing Technologies’ favor on the counterclaim and awarded it $2 million.
The decision was appealed. The Seventh Circuit Court of Appeals reversed the decision. The Seventh Circuit found the jury verdict “somewhat puzzling” and contradictory. The verdict had invalidated a claim that was dependent on a validated claim. So the Seventh Circuit remanded the matter back to the trial court for a new trial.
At the conclusion of the new trial, the jury found in Sexing Technologies’ favor again and also found that two other patents were infringed. The jury added another $8.5 million to the original judgment raising the total award to Sexing Technologies to almost $11 million.
WHY YOU SHOULD KNOW THIS. Patent infringement litigation can be long, arduous and expensive. Sometimes, there are rewards at the end. Sometimes there aren’t. The outcome of patent litigation is not as easy to predict as breeding livestock with sexed bovine semen. ABS took a huge risk when it pursued antitrust litigation. Patents, by their nature, are anti-competitive. A patent gives the owner a monopoly on the use of the invention for 20 years. The owner can use the invention pretty much any way they want during the life of a patent. That doesn’t mean that a patent forecloses antitrust litigation. It just means that the anti-completive activity has to be more than practicing the patent.
Beverly A. Berneman
The Hard Rock Café’s operating company, JC Hospitality LLC, tried to register the trademark “The Joint” for its casino based music venues. The USPTO refused registration. On appeal, the TTAB affirmed. Hard Rock then appealed to the Federal Circuit Court of Appeals who also affirmed the refusal.
The most protectable types of trademarks are inherently distinctive. Inherently distinctive trademarks are arbitrary, fanciful or suggestive of the goods or services. Merely descriptive trademarks can eventually be registered as long as they acquired distinctiveness through use.
The Examining Attorney who reviewed the application thought the words “The Joint” were either merely descriptive or even possibly generic for a restaurant or entertainment space. So the Hard Rock Café argued that The Joint had acquired distinctiveness.
To determine whether a mark has acquired distinctiveness, the USPTO or a court may consider: (1) purchasers’ association of a mark with its owner (typically by means of consumer surveys); (2) the length, degree, and exclusivity of use; (3) the amount and manner of advertising; (4) sales and number of customers; (5) intentional copying; (6) unsolicited media coverage of the product or service bearing the mark.
In this case, the Examining Attorney had pointed to the fact that the dictionary defines the word exactly the way that Hard Rock used it. And there were a lot of third parties who used the same words in connection with other restaurants and entertainment venues. Hard Rock tried to argue that adding the word “the” to the word “joint”, distinguished it from other uses. Hard Rock pointed out that there are non-restaurant and entertainment uses for the word, such as another word for prison. So that made Hard Rock’s use more like a trademark. The Examining Attorney, the TABB and the Federal Circuit all rejected these arguments. The Federal Circuit’s opinion pointed out that although Hard Rock has spent millions for over 20 years promoting The Joint, there was no evidence of how much similar restaurant and entertainment venues spend on their promotion. Also, Hard Rock didn’t provide any evidence of unsolicited third party mentions.
So Hard Rock can’t register “The Joint” as a trademark.
WHY YOU SHOULD KNOW THIS. This opinion was rather harsh. In some ways, it set an impossible standard of proof for Hard Rock; and maybe others who try to prove acquired distinctiveness. Certainly, Hard Rock had longevity of use, a lot of advertising and a lot of money invested in advertising. But demanding proof of expenditures by other restaurant and entertainment venues? That kind of information isn’t public information. Imagine asking a competitor for that information. It would be unusual to even get a response. Unfortunately, this outcome may make it harder to prove a descriptive trademark acquired distinctiveness.
Beverly A. Berneman
A motion trademark is generally considered a type of trademark called “trade dress”. Trade dress protects the visual appearance of a product. Some examples are: (1) the zoom-in view of a female statue at the beginning of every Columbia Pictures' movie (Reg. No. 1,975,999), (2) the "duck march" associated with PEABODY hotels (Reg. No. 2,710,415), and (3) the lighting effects that rotate around the microphone of Apple's SIRI personal assistant and knowledge navigator (Reg. No. 4,471,608).
But, trying to protect a motion as a trademark isn’t easy.
Take, for example, a tour bus operator in New York City, The Ride LLC. The Ride offers a twist on the usual sightseeing tour around Manhattan (when such things were done and will be again). At various times, when the bus stops, street performers break out into song and dance. The Ride has gotten a lot of good feedback on this fun sightseeing twist. So it tried to register the sightseeing twist as its trade dress.
The Ride submitted a drawing (see the picture) and described the mark as follows:
The mark consists of the live visual and motion elements of the trade dress of a guided bus tour in which as the bus approaches at least one predetermined location on the tour an entertainer who is dressed as a banker walks normally along the street and then performs a tap dance routine dancing act when the bus stops at the predetermined location as viewed from inside of the bus. The drawing shows two sequential freeze-frames of the mark, in which the top frame shows an entertainer dressed as a banker walking along the street on the side of the bus and in which the bottom frame shows the entertainer performing a tap dance routine at the predetermined location. Dotted lines in the drawing show placement of the mark and are not part of the mark.
The examining attorney refused registration and on appeal, the Trademark Trial and Appeal Board (TTAB) affirmed. There were basically 3 problems with the application.
First, the TTAB thought the description was incomplete. The description certainly had a lot of words in it. But the description didn’t include every permutation of the street performers’ costumes and their songs and dances. More importantly, the description failed to indicate whether the trade dress is a three-dimensional mark (the act of doing the things) or is a two-dimensional mark that can be interpreted as three dimensional (something animated).
Second, the specimens of use didn’t match the drawing. The specimens consisted of photographs of various performances inside and outside the bus. But none of them matched the drawing.
Third, the mark didn’t function as a trademark. The Ride submitted survey evidence from its former riders to show that consumers connect the street performances with The Ride’s services. The TTAB discounted the survey as self-serving. The Ride didn’t provide any evidence that the public at large saw the motion of the street performances as a source or product identifier for The Ride.
WHY YOU SHOULD KNOW THIS. This case shows the importance of the connection with the drawing of a trademark and the specimen of use. All 3 issues demonstrate the need to be careful as a trademark is being developed. Let’s focus on the second problem. The failure to match a drawing and a specimen of use happens more than you might think. To avoid this problem, owners should consider developing the specimen of use with an eye towards how the trademark will be featured on it. And, owners always consult with their trademark attorneys to help make the appropriate connection.