Firefly’s Jayne Cobb wearing the poofball hat in question.
It should come as no surprise that a nerd such as myself is into Sci-Fi, so when news of the Fox / Firefly / Shiny Hat kerfuffle hit the ‘verse, I was naturally all over it like the Alliance on an illegal salvage operation.
For those of you who are totally missing out, Firefly was a briefly lived television show that aired on Fox in 2002. It only lasted for a few months before Fox yanked the plug (a most egregious decision that I shall never EVER forgive them for). In the years that followed, Firefly – the best space western you didn’t watch – gained a cult following that gives Trekkies a run for their money. In one of the episodes, the character Jayne Cobb receives a care package from his mother containing a homemade orange and yellow poofball hat. The hat wasn’t a focal point of the episode but fans of the show, known as Browncoats, can easily be identified at conventions by wearing this most cunning hat.
Despite collecting dust on the shelf at Fox for over a decade, the fans’ devotion to Firelfly has kept the series alive. If you’ve never been to a convention like ComiCon, it’s common to see folks dressing up as their favorite character from a comic, movie, or TV Show. There may be a Viper Pilot here, a 4th Doctor there, even a Stormtrooper or two. Browncoats wear the Jayne Hat. The hat is, and has been, a favorite item of do-it-yourselfers to sell on sites like Etsy.
49ers Meatballs, courtesy of John Mola of Gianni’s North Beach.
Recently I was swapping e-mails with one of our regular, featured columnists — Beth Hutchens. She had posted to Facebook about a particular pizza recipe she was working to perfect. She shared with me what she had at the moment, but said it wasn’t ready for prime time just yet. We then started talking about cooking and I asked if she might be interested in participating in a fun article that had nothing to do with intellectual property, at least not in any real way. How about sharing recipes from IP professionals for festive occasions? She was in immediately.
Now I suppose using the word “Superbowl” in the title puts a potential IP spin on this article since the National Football League would like everyone to believe that they and only they have the right to use the name, or those who they have specifically authorized. Now there is something to that in one respect. You can’t use the term to create an impression of affiliation, but no trademark ever gives any owner the right to preempt all uses of the trademark term, name, phrase or slogan. See Super Bowl® time!!
The other forced IP tie-in is that recipes are not copyrightable in and of themselves, but they can be patented technically speaking, although you are going to have an incredibly difficult time (think impossible) demonstrating non-obviousness. See Law of Recipes.
In any event, as I was contemplating the article I decided to reach out to John Mola, who runs the Practising Law Institute San Francisco Conference Center and is in charge of virtually all the PLI patent programs. John is a foodee, and in his spare time is the purveyor of Gianni’s North Beach, which is a wonderful website and blog dedicated to Italian cuisine and the Italian restaurants in San Francisco’s North Beach. But I couldn’t show favoritism in the post, so I needed a Baltimore counter-balance. So I reached out to Barry Herman, who is in the Baltimore, Maryland offices of Womble Carlyle Sandridge & Rice, LLP, and who recently co-authored Predicting Patentability in the Unpredictable Arts. His assistant, Angela Whaples, is a die-hard Ravens’ fan, and she came up with something that screams Baltimore!
Love her or hate her, Lady Gaga certainly provides good fodder for news stories and blog topics. For some reason, an infringement suit against her that started back in 2011 is now the copyright topic du jour. A Chicago musician called Rebecca Francescatti says that Mother Monster stole part of her song “Juda” for the hit song “Judas”. More specifically, the complaint alleges that a particular portion of “Judas” violates Francescatti’s exclusive rights of reproduction, distribution, performance, and preparation of a derivative work. But before we get to that, we’ll need to wade through a bit of a semantics morass.
This suit is being couched in terms of plagiarism. This is incorrect. Plagiarism is taking someone else’s work or ideas and passing them off as your own. While the term may be linguistically correct, it is not the appropriate way to frame the issues here. The actual basis for the suit is copyright infringement so let’s be sure to call it what it is. While each allegation merits its own separate analysis, the biggie here is whether the accused portion of Gaga’s song is substantially similar to the relevant portion of Francescatti’s song. Sweet! Today we get to talk about sampling- my musician friends are going to be all over this one.
Chief Justice John Roberts delivered the opinion of the Court.
Last week, theåç Supreme Court handed down its ruling in Nike v. Already, dba YUMS, 568 U.S. — (2013). While this case is set against the backdrop of trademark infringement, the big issue here is tied up in the way the Constitution grants federal courts the power to hear cases. For those who haven’t survived a Constitutional Law class, this can be a bit confusing. The Nike case was “mooted out”, which is a phrase lawyers like to throw around when we want to sound like we know something. Mootness is part of the larger doctrine of justiciability and requires a bit of an explanation before we can discuss what was really going on in Nike. Bear with me-things are going to get a bit technical.
Article III of the United States Constitution establishes the judicial branch of our government and creates the Supreme Court (lower federal courts are created by Congress). Section 2, Clause 1 has what’s known as the “Case or Controversy Clause”, which the Supreme Court has interpreted to tell us what limitations must be put on judicial review, e.g., what cases courts can or cannot decide. There are several different limitations on a court’s power to hear a case, but for our purposes in discussing Nike, the justiciability concepts of standing and mootness are what we need to focus on.
It is that time of the year when reflections are made on the year that is about to pass, wishes are made for the new year, and a prediction or two start to pop from both amateur and professional prognosticators alike. In years past we have done a Patent Wishes article, which is currently in the works. This year I thought I would add an article that gave some industry insiders an opportunity to reflect upon the biggest moments in intellectual property for 2012.
Whenever I do something like this I keep my fingers crossed. The biggest moments in IP seem rather obvious to me, so will they to others? Will I wind up printing the same thing 5 or 6 times? The answer: Absolutely not! We had a very busy year, from Supreme Court decisions to failed legislation to fight piracy on the Internet, to important Federal Circuit cases and implementation of the America Invents Act.
Indeed, for this inaugural edition of Biggest Moments in IP we have a variety of reflections on a wide array of IP issues. Former Commissioner for Patents Bob Stoll walked through some of the biggest items on the patent docket for the year. Stephen Kunin of Oblon Spivak gives us his Top 10 list in David Letterman style. Former staffer to Senator Leahy (D-VT) and current lobbyist Marla Grossman reflects on Senator Leahy’s decision to refuse the Chairmanship of the Senate Appropriations Committee to stay on as Chair of the Judiciary Committee. IP attorney and frequent feature contributor to IPWatchdog.com Beth Hutchens focuses on several copyright and first amendment issues, and reminds us of the battle that ensued to defeat SOPA.
Regular readers of my rants have figured out by now that I am a scotch drinker, a bit of a nerd, and have a penchant for the quirky (and good Scrabble® words). Now comes another confession- I’m a horror film aficionado. My favorite movie of all time is George Romero’s 1968 Night of the Living Dead, so when I came across the concept of a “zombie” trademark, I found myself once again squealing with glee and clapping my hands like a schoolgirl.
The Trademark Office classifies marks as live or dead, which dovetails nicely into the zombie concept. But a zombie trademark does not refer to the recent increase in popularity of zombie culture or the slew of trademark applications it has inspired. It actually refers to the revival of an otherwise “dead” mark. This does not involve patching together pieces of dead trademarks to create a new living one, as Dr. Frankenstein would presume, but it does require resurrecting a mark from the trademark graveyard.
Now that the Olympics are over, or as Jon Stewart calls them, the “Quadrennial Corporate-Sponsored International Ring-Based Sports Event”, it’s time to take a look back at some of the humor the Games inspired. From NBC’s coverage to rumors of rogue wi-fi scramblers and the brand police, the XXX Olympiad’s (snicker) festivities provided plenty of fodder for the jokester in all of us.
My favorites were the Wall Street Journal’s “Homemade Highlights” and the UK Guardian’s “Brick by Brick” series. Gymnastics with pipe cleaners and clothespins? Count me in! Basketball teams made entirely of Legos®? Even better. But, given the litigiousness of the IOC, I thought this would be a good time to discuss why the Guardian and WSJ could get away with making us laugh without fear of the infringement hammer of doom.
The Copyright Statute provides a defense to infringement called “Fair Use” (17 U.S.C. 107). The statute gives us a non-exclusive 4-factor test that provides about as much guidance as furniture instructions requiring an Allen Wrench.
One week ago, on July 18, 2012, Justice Antonin Scalia of the United States Supreme Court sat down for an interview with Piers Morgan of CNN. See Scalia interview transcript. During the interview Morgan asked Scalia what his hardest decision has been while on the Supreme Court. This was the back and forth that ensued:
MORGAN: What has been your hardest decision, do you think?
SCALIA: My hardest?
SCALIA: You don’t want to know.
MORGAN: I do want to know.
SCALIA: No, it’s the dullest case imaginable. They — there is — there is no necessary correlation between the difficulty of a decision and its importance. Some of the most insignificant cases have been the hardest. And…
MORGAN: What has been the one that you…
SCALIA: It would probably be a patent case.
You want me to describe it really?
MORGAN: No, I don’t.
SCALIA: No. Of course. (LAUGHTER)
I thought it might be fun to ask some industry insiders what their guess was as to the unnamed case Justice Scalia was thinking of as the “hardest decision.” Some of those I asked didn’t offer a guess, but rather took the opportunity to discuss the aforementioned Scalia statements more generally. Those “musings” will be published tomorrow.
Justice Kennedy delivered the opinion of the Court in U.S. v. Alvarez.
Earlier this week, the United States Supreme Court handed down its opinion on the Stolen Valor Act (18 U.S.C. §§704). This poor little First Amendment case has been largely ignored for the simple fact that it was published just before the Healthcare Decision. U.S. v. Alvarezanswers the question of whether it is acceptable to lie about receiving military awards, more specifically, the Medal of Honor (long story short — it is for now). I summarized the First Amendment issues over at The Legal Satyricon in an article titled Lying is Constitutionally Protected (Sort of) — warning- grown-up language — but I’m not done with this case yet.
What is interesting about the opinion for us Intellectual Property nerds is that the concurrence and the dissent both appear to suggest that the harm resulting from such behavior is analogous to dilution in trademark law. Admittedly, I sounded a little like Marge Simpson as I muttered “mmmmmm” when reading that part of the opinion, but let’s explore the concept a bit further anyway.
I am pleased that a recent case gives me the opportunity to discuss two of my favorite things — whiskey and trade dress, an often overlooked and highly underrated form of intellectual property.
Trade dress is actually a kind of trademark, but the analysis is very different. It falls under the definition of “symbol” or “device” under §2 of the Lanham Act (15 U.S.C. § 1052). Trade dress is also discussed thoroughly in Chapter 1202.2 of the Trademark Manual of Examining Procedure (“TMEP”). Where a trademark is words or symbols that function to identify the source of goods, trade dress is the actual shape or design of the product or its packaging. It is the image as a whole and can include shape, color, size, and other thematic elements. While a single name or logo can be a trademark, trade dress is better thought of as the sum of an item’s parts. For example, the Coca-Cola bottle, the Rolls-Royce front grill, and the overall appearance of restaurants like IHop and McDonalds are all protected under trade dress, meaning that not only is it impermissible to copy the name of the good, but also the appearance of the good as well.
In order to qualify for protection as trade dress, the thematic elements must have acquired distinctiveness or secondary meaning and they must not be functional. With respect to acquired distinctiveness, the public must associate the thematic elements of the alleged trade dress with the source of goods. For example, if the label were removed from, say the Coca-Cola bottle, the carbonated beverage consuming public would still recognize the bottle as containing Coca-Cola’s beverage and not some other soft drink. Showing this level of distinctiveness typically requires a fair amount of evidence.