Coincidence or copyright infringement? You be the Judge.

Sam Smith says that it’s a coincidence that his song “Stay with me” is similar to Tom Petty’s “Stand my ground” but won’t hang his hat on independent creation, where one author creates an identical or similar work without access to the previous work. Perhaps Mr. Smith is concerned that he may have subconsciously infringed Mr. Petty’s work since he so quickly offered a writer’s credit and royalties to Mr. Petty. With pop music, access to the original work is presumed because no one can avoid hearing pop music in the doctor’s office and shops. If the two works are strikingly similar to the ears of an ordinary listener, it’s copyright infringement. So you be the judge and let us know what you think.

George Harrison ‘stood his ground’ and ‘wouldn’t back down’ when Bright Tunes sued him for copyright infringement of Ronnie Mack’s “He’s So Fine” (made popular by the Chiffons in 1963) with Harrison’s “My Sweet Lord.” The court found him liable of subconscious copyright infringement.

Killing the Buzz: The “Highs” and Lows of Marijuana-Related Trademarks

KumarHeadshotThis post is the first in a series by Kumar Jayasuriya, attorney and Ober’s multi-talented Legal Research Manager.

 

May a company register a trademark connected to the use of a controlled substance, such as marijuana?

Recently, a federal court said “Yes.”  Started in 1974, the periodical magazine High Times reports on the medical and recreational use of marijuana and continues to advocate for the relaxation of state and federal drug laws.  High Times’ publisher, Trans-High Corp. (“THC”), owns the trademark HIGH TIMES for use on, among other things, “books about cannabis” and “magazines about hemp.”  In August of last year, THC filed an infringement lawsuit targeting Richard Reimers, a Washington State-licensed marijuana dispensary owner operating under the name High Time Station (“Reimers”).  In response to the suit, Reimers counterclaimed that THC’s trademarks be cancelled because THC had allegedly used them on unlawful goods not listed in the registration certificates.

Reimers’ counterclaim alleged sale of drug paraphernalia and controlled substances based on the claim that THC’s act of printing advertisements by third-party companies in its HIGH TIMES magazine violates the Controlled Substances Act.  In fact, the United States Patent and Trademark Office is expressly permitted by statute to inquire about compliance with federal laws to confirm that the trademark applicant’s use of the trademark in commerce is in fact lawful.  Use of a trademark on unlawful goods is grounds for cancellation.

However, the United States District Court for the Eastern District of Washington dismissed Reimers’ counterclaim upon a finding that a trademark registration is only vulnerable to cancellation if the goods and services listed in the registration are proven to be unlawful. None of the goods and services in the THC registrations were unlawful, said the Court, because the Controlled Substances Act expressly permits publications and advertisements “which merely advocate the use of a similar material, which advocates a position or practice, and does not attempt to propose or facilitate an actual transaction in a Schedule I controlled substance.” 21 U.S.C. 843.

The court dismissed (with prejudice) Reimer’s counterclaim for cancellation of THC’s federal registrations. This is not the last word on trademarks related to  unlawful goods.  In addition to the Reimer case in Washington State, THC has filed similar trademark infringement claims in Texas, New York and Colorado. It is just the beginning for protection of marijuana related marks.  As more and more lawful marijuana-related businesses spring up in the wake of marijuana legalization, trademark use will be only one of the many issues that presents a case of first impression to the nation’s courts.

Trans-High Corp., Inc. v. Richard Reimers, No. 2:14-CV-00279-LRS, (E.D. Wash. Jan. 12, 2015).

 

Software Patent Abstraction Hits Social Media Platforms

The process of creating “link relationships” between documents and personal profiles used by Facebook®, LinkedIn®, and other social media platforms came under fire in October 2012 via a patent infringement suit filed by technology company Bascom Research, LLC.  Facebook®, LinkedIn®, and three other network software companies were named as defendants in that suit.  More than two years later, and in the wake of the seismic ruling issued by the U.S. Supreme Court in Alice Corp. v. CLS Bank Int’l, Bascom’s challenge came to an unsuccessful end when the U.S. District Court for the Northern District of California determined that Bascom’s patents for the linking technology were invalid as being drawn to abstract ideas. Read More »

5 Reasons Not to “Right-Click” a Google Image for Your Blog

Google and other image search engines are a free and easy way to get visual information. Search engines are not the best way to find an image for your blog. Your copy of an online search image may not cause trouble if used in an off-line collage or physical artwork. Use of that same image online, however, carries enormous risk. Unfortunately, search engine results obscure image ownership information.  Images bounce around the internet as they are screen-captured, downloaded from social media, mixed with other material, and shared by users. The owner of the website where you found the image likely does not own the image or provide permission from subjects appearing in the image.

Nevertheless, the photographer and each party or location depicted in the photo has rights in the image. Obtaining each of their permissions to use the image for your particular personal, commercial, or professional use is required to avoid liability. Although most images online are of unknown provenance, people and businesses continue to use online search images without permission. Several clients this year received demand letters relating to the use of online images without permission. Here are a few reasons to avoid risk by not right-clicking an image:

  1. Photo Trolls are Copyright Owners with Registered Claims to Copyright. While true, certain copyright owners are very aggressive about policing their rights. They use electronic infringement detection tools to identify potential infringement of their copyrights then demand several thousand dollars per image to settle. Ignore their demand letters at your peril. Read More »

.bank is here!

On September 25, 2014, the Internet Corporation for the Assigned Names and Numbers (ICANN) granted the application of fTLD Registry Services (FRS) to operate a new Top Level Domain (TLD) exclusively for the banking industry: .bank. When general registration for the new TLD opens next year, banks and other members of the banking community will be able to operate through custom websites such as Local.bank, as opposed to the traditional LocalBank.com. To avoid the internet land rush for .bank extensions expected during the general registration window, banks with federally registered trademarks can get a 30-day head start towards TheirTrademark.bank by applying (and paying) for a spot on ICANN’s Trademark Clearinghouse registry. Read More »

FTC Seeks Your Comments on Proposed Verifiable Parental Consent under COPPA

On November 19, 2014, the Federal Trade Commission announced that it is seeking public comment on a second proposed verifiable parental consent method by AgeCheq, an online privacy protection service. The Children’s Online Privacy Protection Act (COPPA) requires children and family-friendly website operators and app developers to (1) post privacy policies and (2) notify and obtain verifiable consent from parents prior to collecting, using, or disclosing personal information from children under the age of 13.

There are considerable challenges to obtaining verifiable consent from parents in real time–particularly for use of online services by children. The rule lays out a number of acceptable methods for gaining verifiable parental consent and includes a provision allowing parties to submit new consent methods to the FTC for approval. Age Cheq’s new proposal eliminates the need for paper signatures by providing a digitally signed parental declaration authenticated by a verification code on the parent’s mobile device.

Read More »

Your Image Here: The NCAA Settles with Athletes Over Rights of Publicity

We’re all familiar with video games involving computer-generated depictions of real-life athletes; they are a multi-billion dollar industry.  Under pressure from consumers to make such games more and more realistic, software companies like Electronic Arts, Inc. have mined team rosters to allow gamers to field virtual versions of their favorite sports teams: a virtual Peyton Manning with the same height, weight, jersey and number, skill set and even facial features as the real Peyton Manning can be fielded alongside the rest of the virtual Denver Broncos®.  The NFL Players Association receives roughly $35 million annually from EA to compensate NFL players for consumers’ ability to tackle a virtual Tom Brady with a virtual Terrell Suggs.  Video games depicting college athletes and teams similarly utilize the likenesses and characteristics of those athletes.  Unlike the pros, though, student athletes are not paid for this.

That is, until last week, when a class-action suit brought by several NCAA athletes settled against the last remaining defendant, the NCAA, for $20 million.  Last week’s settlement followed a $40 million payout by EA and the Collegiate Licensing Co., the organization authorized to manage licensing rights on behalf of NCAA institutions. Read More »

Supreme Court: Federal Circuit got §271(b) wrong and maybe §271(a) as well.

At its heart the Internet is an information distribution network and the ease with which all manner of information can be shared instantly has led to numerous innovative methods of doing, well, most anything. A hallmark of patents on such methods is that the various steps are carried out by multiple actors as information is passed around the Internet. Often the actors between which the steps of the patented method are divided have only the most tenuous connection with one another. In a case that is reshaping our understanding of what it means to infringe a method patent in the digital age, the Supreme Court reversed the Federal Circuit’s ruling on such divided infringement in Limelight Networks v. Akamai Tech. Read More »

Naturally, litigation results from unsupported advertising claims and undefined terms.

The WSJ Corporate Intelligence blog has an interesting article today that highlights the risks inherent in un-vetted advertising claims.  Apparently Proctor & Gamble took issue with “99% Natural” claim that toothpaste maker Hello Products, LLC was making with respect to its toothpastes which come in unusual flavors (for toothpaste) like pink grapefruit mint and mojito mint. Neither the FDA nor FTC have guidelines for what constitutes “natural” or “all natural” products.  In practice, the FDA takes the position that it will “not object[] to the use of the term if the food does not contain added color, artificial flavors, or synthetic substances,” but you are apparently on your own to determine what exactly is or is not a “synthetic substance.”  Because of the regulatory confusion over the meaning of “natural,” litigation over what does or does not qualify often resorts to claims sounding in state false advertising, unfair trade practices, or consumer protection statutes, or alleging common law fraud or breach of warranty.  Some clarity as to what it means to be natural that we can all agree on (or at least rely on) would be helpful from both the consumer and advertiser perspective, much like the USDA’s National Organic Program that tries to put some meaning into that word as used on food labels.  Apparently, though,  it is difficult from a food science perspective  to define a food product that is natural “because the food has probably been processed and is no longer the product of the earth,” according to the FDA.  That seems to have been part of P&G’s problem as the maker of one of the country’s leading toothpastes, Crest,  asserted that some of the Hello Product’s toothpaste’s ingredients, like fluoride, were chemically processed and thus not “natural.”

For its part, Hello Products offered to change its packaging after it had sold its existing stock but that did not satisfy P&G which filed suit and obtained an injunction to block the sale of the offending toothpaste. The upside for those of you in NYC tomorrow is that Hello Products plans to give away the 100,000 tubes it can no longer sell as free samples on the streets of Manhattan. Grab a tube (I recommend the grapefruit) and remember that FTC truth-in-advertising rules require that:

  1. advertising must be truthful and non-deceptive;
  2. advertisers have evidence to back up their claims; and
  3. advertisements are not unfair.

SCOTUS Joins Team Anti-Troll

HiRes

Just a few short months after the house passed the Innovation Act, HR 3309 (now before the Senate Judiciary Committee), a bill pointedly aimed at curbing the practices of non-practicing entities, or patent trolls, as reported earlier on this blog, the Supreme Court has now issued two decisions not as deliberately aimed but nonetheless injurious to the patent troll business model.

Yesterday, Justice Sotomayor delivered two nearly unanimous decisions of the Court (available here and here) that collectively lower the hurdle for prevailing defendants to obtain attorneys’ fees against the plaintiff.  The previous standard, oft implemented by the Federal Circuit, the federal Court of Appeals for patent cases, required “material inappropriate conduct” or both “subjective bad faith” and “objective[] baseless[ness]” on the part of the plaintiff in bringing the case before fees could be awarded against it.  Such conduct is commonly complained of by those targeted by patent trolls, entities named for their practice of acquiring patents in the hopes of collecting damages through infringement lawsuits, but is rarely punished.  Small businesses and individuals who are sued by patent trolls often pay a fee to settle the case rather than incur the expense and exposure of litigation.  Yesterday’s dual Supreme Court decisions may change that. Read More »