Earlier this year, the Federal Circuit found the COACH mark for famous American handbags to be not famous enough to oppose a similar mark that an educational testing preparation company sought to register. In trademark law, a trademark owner generally has to prove the likelihood of consumer confusion in order to successfully oppose another’s use or registration of a similar mark. This usually means that the two companies will be competing in the same line of business or in related markets. However, those whose marks are famous enough can stop another from registering a similar mark, even if they are not likely to confuse consumers or even run into each other in the marketplace. This is what Coach, the luxury handbag and accessories designer, attempted to do. It brought a dilution claim saying that those who saw the advertising of the Coach testing prep company might not confuse it with the company’s trademark COACH for handbags, but that the use by the testing company was likely to blur or tarnish (to “dilute”) the famous mark of Coach handbags.
Monthly Archives: May 2012
The First Sale Doctrine: Made in the U.S.A. Only?
The Supreme Court decided on Monday, April 16, to hear a case about a Cornell student from Thailand who thought he could finance his education (and more) by reselling to U.S. students textbooks that he bought in Thailand. What could be wrong with that?
The first sale doctrine in copyright law allows purchasers of any copyrighted work to resell or use the particular copy in many ways without the copyright holder’s permission.
It is codified in section 109(a) of the Copyright Act, stating “the owner of a particular copy…lawfully made under this title…is entitled, without the authority of the copyright owner, to sell or otherwise dispose of the possession of that copy.”
It is because of the first sale doctrine that entities such as libraries, used books and video game stores, and sellers on eBay are allowed to lend, sell or lease the books and games they have purchased.
With the Cornell Student from Thailand, the Supreme Court has taken the opportunity to clarify the applicability of the first sale doctrine to copyrighted goods manufactured in a foreign country.
The justices have decided to review Kirtsaeng v. John Wiley & Sons, Inc., involving textbook maker John Wiley & Sons and Thai national Supap Kirtsaeng, who was studying at Cornell University at the time he resold the textbooks.
Supap had his family send him copies of Wiley textbooks purchased abroad, and then resold them on eBay at a profit, without the publisher’s consent, sometimes called “gray marketing”. Because the evidence shows Supap profiting $900,000 to $1.2 million in sales, it is likely that he was running a business on this model.
Recording Artist Pitbull’s First Amendment Defense
Artists, authors and advertisers often ask our law office if they can use references to celebrities and other public personalities in their works and performances.
Isn’t it fair use if I’m not charging for my own work that uses the celebrity’s name? Isn’t it parody if the name or image is imbedded in my original funny skit? Isn’t it free speech if the object of critique is of public interest?
If an impersonation of Sarah Palin is ok, can’t I show the dark unknown about the Queen of England? Or write a song about George Zimmerman’s parents?
Personal publicity rights, which are largely the creations of state law (note that California has one of the more protective publicity statutes), combined with privacy laws established in constitutional jurisprudence and statutory recognitions, come up against the ever-shifting domain of First Amendment rulings and exclusions. The legal consequences can be surprising.
These are areas where the artist, producer or publisher may never find a clear answer. Nevertheless, an informed, good faith evaluation of the interests at stake, in light of the legal environment, goes far towards avoiding unpleasant legal threats against one’s work, or giving some piece of mind to the creative entrepreneur who wants to push the envelope without necessarily being stopped even before the work can be appreciated for what may be truly creative.
Last month recording artist Pitbull filed a motion to dismiss Actress Lindsay Lohan’s suit against him for infringing her publicity rights. Pitbull used Lohan’s name in his hit song “Give Me Everything Tonight.” The line in question: “So, I’m tip-toein’ to keep blowin’, I got it locked up like Lindsay Lohan.”
This mention led Lohan to sue Pitbull, Sony Music, RCA Music and other parties last year. She claimed the song caused her “tremendous emotional distress” with words “destined to do irreparable harm” to her image as “a professional actor of good repute.”
Pitbull’s attorney responded by arguing First Amendment protection. He admonished the court to consider the consequences of letting Lohan’s claims go to trial. As he described it, allowing Lohan’s suit to proceed would, essentially, put publicity rights above free speech and place a gag order on any work of art using celebrities’ names in its expression.
Pitbull’s attorney lists other reasons to dismiss Lohan’s lawsuit such as: use of Lohan’s name was not for advertising or trade purposes; the use of Lohan’s name was de minimis; Lohan’s emotional distress claim is barred by the First Amendment; and use of Lohan’s name falls under the newsworthy exception to publicity rights. Interestingly, Pitbull’s attorney argues that, because of Lohan’s infamous run-ins with the law – arrests, drug possession, being in and out of court, rehab, and community service – the mention of her is inevitably of public interest and, therefore, not subject to publicity rights. Will a newsworthiness exception be recognized in the song context and when something isn’t really news? We’ll have to wait and see.
With suits like this, the legal issues are “squishy.” The legal analysis in the areas of of privacy, publicity, First Amendment, and defamation requires a balancing of interests. The articulation of those interests truly affects the weight of them in the balance. Also, damages, as hurtful as another’s use or abuse of one’s image may feel, are difficult to show with any certainty. There are a lot of subjective factors in these lawsuits, and it’s not easy to determine what will appeal to a finder of fact. All of this adds up to a real challenge in the assessment of whether or not to bring an action or when and for what amount a reasonable settlement might be achieved.
I recall assisting, some years ago, in the resolution of a publicity rights action by a public personality. In 1999, the civil rights hero Rosa Parks sued LaFace Records and the performing group, OutKast, over OutKast’s use of her name in a song title.
She considered the use of her name particularly offensive, especially in the context of a rap song. She claimed that the use of her name without permission was false advertising and infringed her right to publicity.
How the case might have fared in court is anyone’s guess. The group made the argument for its First Amendment rights. A U.S. District Court dismissed the case largely on First Amendment grounds. But Rosa Parks hired Johnnie Cochran, who appealed and argued that the use of her name could not have First Amendment protection because, while the song had her name in its title, it was not repeated in the song’s lyrics or message.
This was a battle that ultimately benefited from a settlement which included the group undertaking an educational effort to increase knowledge and interest in Rosa Parks in a young generation.
As of now, in the Lohan matter, the Eastern District Court of New York has yet to rule on Pitbull’s motion to dismiss, but the opposition brief filed by Lohan’s attorney has been attacked for plagiarism with Pitbull claiming it consists mostly of excerpts of articles found on various websites without any citations. At this stage, it does not appear that Lohan’s attorneys have done much to protect her “good repute.”
Facebook Asserts Trademark Rights Over the Word “Book”
If the day comes that Facebook applies to register “book” as a trademark, is the USPTO likely to reject its application? Perhaps Facebook is better off leaving that question open rather than documenting any USPTO denial.
Does Facebook actually even use “book” as a mark as its new user agreement implies? If it does, is “book” sufficiently arbitrary, and not just descriptive, such that it can be recognized as a protectable mark? What is truly a “book” anyway in the technology of today’s publishing? We could quickly get philosophical.