USPTO Refuses to Register Design: Will the Cheesehead Stand Alone?

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Foamation is the company to blame for the flood of the Cheesehead products commonly enjoyed by Green Bay Packer fans. But soon they may not be the only one as the “essence” of its products has failed to achieve trademark protection.

According to the company’s website, the idea for the Cheesehead novelty hat was born in 1987. The company holds a trademark registration for the hat which was issued in 1997. A registration was obtained for other hat designs, including fezzes, turbans, and berets, in 1998. And they produce a variety of other products including ties, ear muffs, footballs, flying discs, belts, coasters, beverage holders and Christmas tree ornaments all of which are made of foam that emulates cheese.

While this company has undoubtedly been successful, it has recently faced issues when attempting to register what it claims is the essence of its products: the cheese design.

On July 30, 2012, an application was filed and described as “mark consist[ing] of the color yellow/gold and a pattern of pock marks which are circular or oval-shaped depression[s] applied to the entire surface of the goods in a manner evoking the appearance of cheese.”

The proposed mark was initially denied in an Office Action dated Dec. 4, 2012. The denial was based on the examiner’s assertion that this is a phantom mark, “a mark that contains a changeable or ‘phantom’ element.”

The USPTO describes “phantom” elements as parts of a mark that are “subject to change.” While there are many variations, common examples include “marks incorporating a date (usually a year), a geographic location, or a model number that is subject to change.” Phantom marks are typically denied under 15 U.S.C. §1051 and 1127 because it is viewed as attempted registration of more than one mark. “Marks with phantom elements provide insufficient notice to potential consumers and businesses as to what the mark consists of when it is in actual use in commerce.”

The Court of Appeals for the Federal Circuit made it clear that phantom marks should not be registerable in the 1999 decision of In re International Flavors and Fragrances. In its application, the company attempted to register a mark with placeholders that would be filled in with a variety of words described as a “number of flavors or scents of herbs, fruits, plants or vegetables” (i.e., “Living XXXX Flavor” could become “Living Cucumber Flavor,” “Living Cherry Flavor” or “Living Basil Flavor”). The court rejected the application stating that it attempted to register more than one mark.

Foamation filed a Response to this Office Action on May 16, 2013 arguing against the phantom mark classification. It asserted that “no element of the applied-for mark is ‘missing or subject to change.’” The response provides examples of 12 registered marks that “are comprised of inconsistent design patterns applied to the surface of goods” and argues that regardless of the fact that the pock mark pattern is not uniform or repeating, the design is still registrable.

Again, on July 9, 2013, the examiner denied the registration. This time, three different grounds for refusal were cited. In regards to a Multiple Marks Refusal, the examiner stated that “the applicant is trying to register a concept, and not an actual single mark.” In support of an Ornamental Refusal, the examiner wrote “the applied-for mark as used on the specimen of record (1) is merely a decorative or ornamental feature of the goods; and (2) does not function as a trademark to indicate the source of applicant’s goods and to identify and distinguish them from others.” The third ground for refusal was the Mark Differs on Drawing and Specimens. According to the examiner, “the specimen displays the mark as a pattern of pock/holes; and the drawing shows the mark as pattern of pock/holes in different sizes and location.”

Foamation again disagreed with the examiner’s assertions in a Response dated Aug. 2, 2013. It stated that the new refusals seemed to be “a different way of characterizing the phantom mark refusal that was withdrawn.” It restated all of its previous arguments and once more included the 12 examples of similar marks that had been registered.

The third ground for refusal seems to be the easiest for Foamation to rebut, however they have not taken any action to do so. The examiner has clearly pointed out that the position of the pock marks is different on the specimen provided and the drawing. By not responding with additional drawings and/or specimens (which were requested by the examiner), it appears that Foamation is trying to avoid committing to having the pock mark appear in the same exact location on each product or having any type of consistent marking.

A Final Office Action was issued on Oct. 3, 2013 that again denied the registration. Foamation has six months in which it can “submit a response that fully satisfies all outstanding requirements” or it can appeal to the Trademark Trial and Appeal Board. So the fate of this registration remains hanging in the balance.

This ruling has potentially opened the door for other companies looking to break into this market. Foamation will likely continue to fight to protect its market share and the brand that it has built.

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Judge Grants Summary Judgment in Favor of Google Books — A Fair Use Victory

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Judge Denny Chin, in the Southern District of New York, issued an opinion and order granting defendant Google Books’ motion for summary judgment, and dismissing the case. Judge Chin engaged in in-depth analysis of the fair use factors, and found that the copying and distribution performed by Google Books falls squarely within the purview of the fair use doctrine. Notably, Judge Chin devoted a significant portion of the decision to discussing the gains that Google Books affords to scholarly researchers and the field of education. Additionally, he quotes several of the amicus briefs that were filed in the case.

This decision represents a solid victory in favor of fair use, generally, and bolsters the causes of education and scholarly research.

Fair use analysis has four factors: (1) purpose and character of the use; (2) nature of the copyrighted work; (3) amount and substantiality used; (4) the effect of the use upon the potential market of the copyrighted work.

Purpose and Character of the Use; Transformativeness

A key factor in the fair use analysis is whether the use of the copyrighted work is transformative, or whether the new work supplants or supersedes the original. While a finding of transformativeness is not required for a use to be fair, where a work is transformative, the factors may tend to weigh in favor of a fair use finding. Here, Judge Chin found that there were several transformative uses, particularly uses that use the words of the original work for a completely different purpose than that of the original, such as for data mining and text mining. These uses serve to open up new fields of research.

This factor weighs in favor or fair use, even when considering that Google Books is a commercial enterprise. The judge found that Google Books did not make efforts to directly commercially profit from the works at issue, either through selling them or putting advertising on the pages.

Nature of the Copyrighted Works

According to the undisputed facts of the case, the vast majority of the books (93 percent) in Google Books are non-fiction, which enjoy a lesser level of copyright protection than works of fiction, therefore tipping this factor toward fair use.

Amount and Substantiality of the Portion Used

While Google Books scans the entirety of a work for its use, that does not necessarily mean that the use is not fair. Judge Chin balanced that full-text scan against the fact that Google limits the amount of text, or snippets, that are viewable in response to a search.

Effect of the Use Upon the Potential Market or Value

The plaintiffs, The Authors Guild, argued seemingly most strenuously on this factor, stating that the Google Books service would serve as a replacement market for the original works. Judge Chin found this argument unconvincing, in light of the undisputed facts, and stated: “a reasonable factfinder could only find that Google Books enhances the sales of books to the benefit of copyright holders. An important factor in the success of an individual title is whether it is discovered—whether potential readers learn of its existence. Google Books provides a way for authors’ works to become noticed, much like traditional in-store book displays. […] Further, Google provides convenient links to booksellers to make it easy for a reader to order a book. In this day and age of on-line shopping, there can be no doubt but that Google Books improves book sales.” Opinion, page 25.

Promoting the Arts and Sciences

The stated goal of copyright is to promote the arts and sciences. Here, Judge Chin notes that not only is the use by Google Books squarely within the realm of fair use, but it also substantially furthers the goal of copyright. Making available books for the purposes of research, scholarly study, and other educational uses undoubtedly furthers the goal of promoting the arts and sciences.

Finally, Judge Chin found that other claims by the plaintiffs, in particular, any allegation of secondary liability due to Google providing digital copies to libraries, would fail due to fair use as well. The libraries were only provided with digital copies of books they already owned, in situations where they originally provided the physical copy for scanning to Google. The judge cites Authors Guild, Inc. v. HathiTrust, 902 F. Supp. 2d 445, 460-61, 464 (S.D.N.Y. 2012), which held that the library-defendant’s digitization project fell under fair use. “[I]f there is no liability for copyright infringement on the libraries’ part, there can be no liability on Google’s part.” Opinion, page 28.

The full opinion can be viewed here: Authors Guild v. Google Books, 05-cv-8136 – Summary Judgment Granted for Google Books.

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Harvard Law Professor and IP Scholar Files Suit After Receiving DMCA Notice

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Lawrence Lessig is very well-known in the legal community. Lessig, a professor at Harvard Law School, frequently lectures on copyright and technology issues around the world and serves on several organizations focused on expanding laws to allow increased access to creative works. Over 50 of his lectures can be found on YouTube, but one lecture in particular has led to recent litigation.

Lessig gave a lecture titled “Open” at a conference in Seoul, South Korea on June 4, 2010. Within the 49 minute lecture, he showed five clips of amateur music videos ranging from 10 seconds to 47 seconds. Each of the videos featured the song “Lisztomania” performed by a French band, Phoenix.

Lessig received a DMCA takedown notice from Liberation Media, a record company based in Australia, on behalf of Phoenix and the video was removed by YouTube. Owners of copyrighted material can submit takedown notices under the Digital Millennium Copyright Act (DMCA) to internet service providers that are hosting allegedly infringing material. In this instance, Lessig received a notice from YouTube concerning the takedown notice on June 30, 2013, three years after the video was originally posted.

Lessig, represented by the Electronic Frontier Foundation (EFF), filed suit against Liberation Media in the U.S. District Court of Massachusetts citing 17 U.S.C. §107 seeking a declaratory judgment stating that the video is protected by the fair use doctrine, injunctive relief from copyright claims by this company related to this video and damages for misrepresentation based on what he claims is the defendant’s “improper assertion of copyright infringement.”

The fair use doctrine can be applied when the following factors are considered: “(1) the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purposes; (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 for or value of the copyrighted work.”

As of this writing, Liberation Media has not yet filed an answer to the complaint.

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New Copyright Legislation: What Potential Changes Are in Store?

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In a world where technology is constantly changing, it seems only logical that copyright law would shift to accommodate it. There are currently three proposed bills in the House of Representatives and four in the Senate concerning copyrights that have been proposed since May 2013, each making only small-scale alterations to the existing law.

Free Market Royalty Act (H.R. 3219) (http://thomas.loc.gov/cgi-bin/query/z?c113:H.R.3219:)

This is the most recent of the proposed copyright legislation and was introduced by Rep. Melvin L. Watt (D-NC) on September 30. This bill has been referred to the Subcommittee on Courts, Intellectual Property and the Internet and looks to amend Title 17 to “provide copyright owners in sound recordings with the exclusive right to negotiate in the marketplace the performance of their works to the pubic by means of an audio transmission, and for other purposes.” It involves changing the focus from only digital audio recordings to all audio recordings for the purpose of royalty payments, as non-digital transmissions are not covered by the existing law.

This bill authorizes SoundExchange, Inc., a non profit organization, to be solely responsible for royalty payments, including negotiation, paying and receiving payments. Copyright owners would still have the option of negotiating directly for their recordings and not using the agent if they desired to do so.

The current law, 17 U.S.C. §114(e)(2)(B), provides that “entities performing sound recordings…may designate common agents to act on their behalf to obtain license and collect and pay royalty fees: Provided, That each entity performing sound recordings shall determine the royalty rates and material license terms and conditions unilaterally.” Payment under this bill would require that 50% of the royalty payment be paid to the copyright owner, 45% to the featured recording artist(s) and the remaining 5% to nonfeatured artist(s) through the American Federation of Musicians and Screen Actors Guild-American Federation of Television and Radio Artists Intellectual Property Rights Distribution Fund.

While this bill will not likely have a direct effect on the consuming public, it does affect the amount of power that copyright owners have when negotiating for royalties and licensing. If a large number of copyright owners opt for utilizing SoundExchange’s services, it could effectively level the playing field for both small-scale and large-scale owners in terms of negotiation. By limiting the number of agents specializing in this action to one, that is used by a majority of copyright owners, and setting forth a structured royalty fee arrangement, small-scale copyright owners would greatly benefit in the market.

Television Consumer Freedom Act of 2013 (S. 912) (http://thomas.loc.gov/cgi-bin/query/z?c113:S.912:)

Introduced by Sen. John McCain (R-AZ) on May 9, this bill looks to amend the “Communications Act of 1934 to modify the types of programming constituting the minimum contents of basic tier service” and to permit “multi-channel video programming distributors…,except with respect to…basic tier service, to provide subscribers with any channel of video programming on an a la carte basis.” It is currently being considered by the Committee on Commerce, Science and Transportation.

A majority of these bills deal with wireless communications and the “unlocking” of devices so that consumers are allowed to chose their wireless provider. For the most part, they are looking to achieve similar objectives and it will be interesting to see if any one predominates in the coming months.

Unlocking Technology Act of 2013 (H.R. 1892) (http://thomas.loc.gov/cgi-bin/query/z?c113:H.R.1892:)

This bill was introduced on May 8 by Rep. Zoe Lofgren (D-CA) and has since been referred to the Subcommittee on Courts, Intellectual Property and the Internet. This bill seeks to amend the current “prohibition under federal copyright law” and “declares that it shall not be a violation to: (1) circumvent a technological measure if the purpose is to engage in a use that is not an infringement… or (2) use, manufacture, import, offer to the public, provide, or otherwise traffic in any technology, product, service, device, component, or part primarily designed or produced to facilitate non-infringing uses of protected works…”

Unlocking Consumer Choice and Wireless Competition Act (S. 517 and H.R. 1123) (http://thomas.loc.gov/cgi-bin/query/z?c113:S.517: and http://thomas.loc.gov/cgi-bin/query/z?c113:H.R.1123:)

Referred to the Committee on the Judiciary, this bill was introduced by Sen. Patrick Leahy (D-VT) on March 11 and Rep. Bob Goodlatte (R-VA) on March 13. If enacted, it would repeal a “Library of Congress rulemaking determination…regarding the circumvention of technological measures controlling access to copyrighted software on wireless telephone handsets for the purpose of connecting to different wireless telecommunications networks.”

Wireless Device Independence Act of 2013 (S. 467) (http://thomas.loc.gov/cgi-bin/query/z?c113:S.467:)

This bill deals specifically with the Digital Millennium Copyright Act (DMCA) and access to copyrighted material. It was introduced by Sen. Ron Wyden (D-OR) on March 5 and is being considered by the Committee on the Judiciary. In short, it would allow unlocking of mobile devices if “(1) the user legally owns a copy of the computer program, (2) the use of the program is solely for connecting to such wireless telecommunications network, and (3) the access to such network is authorized by the network operator.”

Wireless Consumer Choice Act (S. 481) (http://thomas.loc.gov/cgi-bin/query/z?c113:S.481:)

This bill, introduced by Sen. Amy Klobuchar (D-MN) on March 6, is being considered by the Committee on Commerce, Science and Transportation. The bill “requires the Federal Communications Commission to direct providers of commercial mobile services and commercial mobile data services to permit their subscribers to unlock any type of wireless device used to access such services.” It is not designed to alter existing contracts between providers and subscribers.

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“Torrent Wars” Article by Jeffrey Antonelli Published by ISBA

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Have you been sued for downloading a movie using BitTorrent or a streaming service like PopcornTime?

This article describes “copyright trolling” litigation in movie download lawsuits by attorney Jeffrey Antonelli of Antonelli Law.

The article, Torrent Wars: Copyright trolls, legitimate IP rights, and the need for new rules vetting evidence and to amend the Copyright Act was published by the  Illinois State Bar Association’s Intellectual Property Section Newsletter.

For those who cannot view pdfs an excerpt is below.

Today, a program called BitTorrent is spurring a new wave of internet file sharing, and along with it an ocean of online copyright infringement. Those running the program post torrent files on immensely popular websites like the Pirate Bay. While filed to ostensibly catch and stop the online infringers, critics of this practice contend it is really about revenue. Consequently, the blogs on the internet came up with an addition to the English and legal lexicon: the copyright troll.

TO SETTLE OR FIGHT

It is no secret that litigation is expensive, and that fact is often used by plaintiffs as a factor in determining how much to demand in settlement. For an innocent defendant to choose not to pay a settlement of a few thousand dollars, and instead pay his or her attorney potentially tens of thousands of dollars or more in legal fees, clearly more than financial incentives must be at play. Often times, innocent defendants will pay a settlement of $2,000 or so rather than live through the ordeal of fighting a lawsuit and paying that amount of money many times over for legal defense. Yet sometimes innocent parties are sometimes so angered at being named that even after full disclosure by their counsel as to the costs of competent defense, they will decide to fight rather than to settle.

EVIDENTIARY PROBLEMS – THE FAILURE TO CONTROL FOR “FALSE POSITIVES” 

Courts, too, are cognizant of the fact that not all IP addresses point to an actual infringer. See, e.g., Digital Sin, Inc. v. Does 1-176, 279 F.R.D. 239, 242 (S.D.N.Y. 2012) (estimating that 30% of the individuals whose names were disclosed to plaintiffs did not download the copyrighted material). The court in SBO Pictures stated: “the ISP subscriber to whom a certain IP address was assigned may not be the same person who used the internet connection for illicit purposes.” Similarly, In re Bittorrent Adult Film Copyright Infringement Cases, the district court explained that ‘it is no more likely that the subscriber to an IP address carried out a particular computer function … than to say an individual who pays the telephone bill made a specific telephone call.” The court explained that due to the increasing popularity of wireless routers, it is even more doubtful that the identity of the subscriber to an IP address correlates to the identity of infringer who used the address.

THE NEED FOR A COURT SCREENING PROCESS

The writer believes that this unacceptably high incidence of identity theft, referred to in the computer science literature as “false positives”, poses a serious due process problem and some technological screening process must be used by the court prior to copyright plaintiffs being granted leave to issue Rule 45 subpoenas to the ISPs to identify the accountholder associated with the IP address. Somewhat analogous to the grand jury in criminal cases, this screening process would be a vetting of the technical evidence presented by the plaintiff just as a prosecutor must present evidence to a grand jury prior to an indictment being issued.

This court screening process can be added to Section 502 (Injunctions), Section 503 (Impounding and disposition of infringing articles) and Section 504 (Damages and profits) in a fashion similar to what the Maryland District Court has done with all cases filed by copyright plaintiff Malibu Media.  Maryland has appointed Professor William Hubbard, a member of the faculty at the University of Baltimore School of Law, who teaches copyright and intellectual property law, to serve as a Master in the Malibu cases. When a copyright lawsuit is filed by Malibu Media, procedures are followed to, inter alia, a) allow the Master to obtain information from the ISP, b) allow the Subscriber to provide the Master with information to enable the Master to make a preliminary recommendation whether a plausible claim for copyright infringement may be brought against the Subscriber, and c) for the Master to makes a recommendation that a factual basis exists, or does not exist, for Malibu to assert a plausible claim for relief against a Subscriber for copyright infringement.

Even aside from the allegations that some unethical attorneys may actually be “seeding” their own copyrighted works online to induce others to download the work and then be sued later, it is fundamentally unfair that innocent individuals and families are currently being subjected to the unnecessary worry and expense of being targeted by copyright trolls starting with the notice of subpoena from the ISPs, perhaps based on flimsy evidence. A court screening process, perhaps like the Maryland District Court’s Master, is a necessity to prevent the current troublesome number of innocent individuals and families from continuing to be subjected to claims of online copyright infringement.

THE NEED TO AMEND THE COPYRIGHT ACT

Most people seem to agree that the average consumer who wrongfully obtains a copyrighted work should be subjected to the risk of being punished by a monetary fine. However, none of these BitTorrent copyright cases involve people attempting to redistribute the work for a profit. It seems incredibly unfair to subject consumers who are alleged to have downloaded a single movie or song on the internet for private viewing or listening purposes to be exposed to a potential $150,000 statutory damages award, plus attorneys fees as provided in Section 504(c)(2). In order to present the potential for a proportional remedy for non-profiteering copyright infringement by a consumer, the writer suggests amending the Copyright Act to a maximum of $5,000 statutory damages where willfulness is demonstrated, and $500 if willfulness is not demonstrated.

Suggested Changes to the Copyright Act:

Change Section 504(c)(1)’s text from “an award of statutory damages for all infringements involved in the action, with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $30,000 as the court considers just” (italics added) to “an award of statutory damages for all infringements involved in the action, when no monetary gain was intended by the infringement with respect to any one work, for which any one infringer is liable individually, or for which any two or more infringers are liable jointly and severally, in a sum of not less than $750 or more than $500 as the court considers just.” Change Section 504(c)(2)’s text to “In a case where the copyright owner sustains the burden of proving, and the court finds, that infringement was committed willfully, the court in its discretion may increase the award of statutory damages to a sum of not more than $150,000. However, if no monetary gain was intended by the infringement, the court may only increase the award of statutory damages to a sum of not more than $5,000.”

This cap on damages for non-profit-motivated copyright infringements may reduce the number of the more frivolous copyright trolling lawsuits and, at the very least, reduce the settlement amounts paid by those innocent defendants who just don’t want to deal with a lawsuit down from thousands of dollars, to just hundreds of dollars.

For the full article, and for more information about subpoena defense, please visit the Antonelli Law website.

 

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