Archives: Intellectual Property

Copyright:  / 123RF Stock Photo
Copyright: / 123RF Stock Photo

As featured in the Washington Post, the artist who inked superstars LeBron James and Kobe Bryant is suing the makers of the video game NBA 2K16. The game featured the tattoos on the arms of the players. Solid Oak Sketches alleges that the game developers refused to pay to license the designs after it offered such an arrangement, but used them in the game regardless.

As with so many issues, it always pays to get a release. By the same token, LeBron could try charging rent to the artist for the space on his arm where the design rests.

Registered trademark and the Washington Redskins
Copyright: silvia / 123RF Stock Photo

As a start to the new year, let’s take a look at the legal doctrine of “nominative fair use.” This doctrine essentially says that you shouldn’t be sued for simply describing something, even though another party might take offense or believe that their intellectual property rights have been affected as a result.

For example, Mike Piazza was just elected to the Baseball Hall of Fame. He let it be known just recently and in his autobiography that he would want to go in as a Met and not as a Dodger. Yet the Dodgers trumpeted his election and his years as a Dodger, including him on Dodgers.com, and Piazza cannot object.

Why not? Nominative fair use, of course. He cannot complain because he was a Dodger.

Second case in point, Terry Welles. She listed herself online as a former Playmate in Playboy and Playboy sued her (no, we will not give you a link!). She won before the 9th Circuit (I was there for the hearing) despite the fact that she showed up in a rather revealing outfit before a panel with two women judges of a certain age. She won because she had been a Playmate and she was strictly describing her former status. Denominative fair use triumphs.

Lori Kozak writes:

Registered trademark and the Washington Redskins
Copyright: silvia / 123RF Stock Photo

We have blogged previously about the litigation involving cancellation of the “Redskins” trademark as disparaging and the team’s appeal to the 4th Circuit, claiming (among other arguments) that the disparagement provision of Lanham Act Section 2(a) is unconstitutional because it violates free speech under the First Amendment.

Today, the U.S. Court of Appeals for the Federal Circuit handed down a decision in In re Tam, Appeal No. 2014-1203, finding that the disparagement provision of Lanham Act Section 2(a) violates free speech under the First Amendment.

The Asian-American rock bank The Slants had been denied registration of their mark on the grounds that the mark is derogatory of persons of Asian-American descent.  That refusal has now been overturned and the case returns to the Trademark Trial and Appeal Board, who will have to approve the trademark if no other provisions bar it from being registered.

No doubt the Redskins feel that Christmas came early this year, as this decision helps to boost their efforts to keep their “Redskins” trademark registrations.


Lori S. Kozak is a partner in the firm’s Los Angeles (Century City) office.

Intellectual property - copyrights, trademarks and patents
Copyright: grandeduc / 123RF Stock Photo

When I go to parties and describe what I do, one of the most common responses is, “Oh, so you are a patent lawyer.”  Actually, I am not. There are differences amongst copyright, trademark and patent that are important to know as each has separate protection under the law.

  • A copyright is for an expression in  tangible form. So for example, think of “Brian’s Song”, the classic movie about a football player dying young.
  • That can be contrasted with a trademark. A trademark (or trade dress) is a unique moniker that has strong associations with the American public. A useful example is the Oakland Raiders football logo on their helmets or their battle cry, “Just Win Baby.”
  • A patent is for a product that is so unique as to command the protection  of the law. An example of this might be a football helmet that has impact resistance.

So if you have something that merits intellectual property protection, the first thing to do is to identify what it is that you will be seeking. The second thing to do is to call reputable counsel before you rush to market.

Copyright:  / 123RF Stock Photo
Copyright: / 123RF Stock Photo

I was in NYC last week for the annual dinner of the Media Law Resource Center. Wonderful event. The pre-dinner panel was on hate speech and it intersected with the sports law world, with of course the Washington Redskins as Exhibit “A”.

The room was packed with luminary lawyers and  numerous opinions on the subject. What is the proper standard? I am not offended by the Boston Celtics (a reference to the historically large Irish-descended population of the city) but I had been raised to hear that “Canucks” was not a polite term, and now we have a hockey team so-named. Is the free market to determine whether there should be a trademark in a name? Should a sports arena be a “safe place” as the term is used on college campuses. Will ever-changing standards mean that teams need to change their names? My wife’s high school went from the Braves to the Patriots. My partner Lori Kozak blogged on this subject. I extend the dialogue and welcome useful commentary from readers.

Lori Kozak writes:

Football
Copyright: tiero / 123RF Stock Photo

It’s no secret that football is big business, and the Washington Redskins, recently ranked the third most valuable team in the NFL by Forbes, are heavyweights within that enterprise.  So the ongoing legal battles over the “Redskins” trademarks have attracted a lot of interest and controversy, particularly among sports fans who also happen to be trademark lawyers.

In July, the Eastern District of Virginia ordered cancellation of six federal trademark registrations of the “Redskins” on the grounds that the marks violate Section 2(a) of the Lanham Act, which states that a mark “shall be refused registration on the principal register” if it “consists of or comprises…matter which may disparage…persons.” 15 USC § 1052(a).  This case came up on appeal from the Trademark Trial and Appeal Board, which had held in June of 2014 that the term “Redskins” is disparaging to Native Americans.

Pro-Football, Inc. (“PFI”) appealed further to the 4th Circuit on behalf of the team, and recently filed its opening brief.  Various entities, including the ACLU, have filed amicus briefs in the case. PFI makes two intriguing constitutional arguments on appeal: (1) that Section 2(a) violates the First Amendment right to free speech, and (2) that Section 2(a) violates the Fifth Amendment Due Process and Takings Clause.

(a) At a basic level, these key issues can be broken down as follows:The district court held that Section 2(a) does not implicate the First Amendment because the decision does not prevent the team from using the term “Redskins”; rather, it simply means that PFI cannot access the benefits associated with federal trademark registration.  PFI argues that Section 2(a) impermissibly denies protections to marks based on content and viewpoint, excessively burdens speech, and simply doesn’t pass the strict scrutiny or intermediate scrutiny applicable to commercial speech.

(b) The district court further held that the federal trademark registration program is government speech and therefore is exempt from First Amendment scrutiny.  PFI argues that no one associates the message of a particular trademark with the government, and any speech implicated by a particular trademark is private speech and thus is protected by the First Amendment.

(c) PFI argues that Section 2(a) is unconstitutionally vague and thus violates Fifth Amendments Due Process Clause.  The lower court had held that Section 2(a) gives fair warning of what is prohibited, and the PTO provides sufficient guidance as to what “may disparage” through its publicly available decisions, manuals, and letters approving or denying registration.  However, PFI argues that the term “disparage” is itself vague, as are the PTO guidelines and decisions.  It also argues that Section 2(a) fosters arbitrary and discriminatory enforcement, driven by the subjective personal views of PTO officials, and offers up examples of other arguably offensive marks that have been allowed for registration by the PTO.

(d) Finally, the district court held the Takings Clause and Due Process Clause claims fail because a trademark registration is not considered property under the Fifth Amendment, again making a distinction between the registration and PFI’s underlying property right in the trademark.  However, PFI argues that because owners can sell their registered marks and exclude others from infringing them, they have a protected property interest.  Moreover, because they have held the trademark registrations for so long, they have an expectation to continue that property interest, and the cancellations are takings that trigger due process, which was violated by the long delay.


Lori S. Kozak is a partner in the firm’s Los Angeles (Century City) office.

A Los Angeles resident has sued the National Football League, NFL Commissioner, Roger Goodell, and eight NFL employees in the United States District Court for the Central District of California alleging theft of intellectual property. Representing himself pro se, Plaintiff, Rickey B. Reed, claims that he developed the concept for an original production profiling the lives of aspiring young athletes who dream of playing in the NFL; an idea he claims is remarkably similar to a show aired on the NFL Network in late 2014.

Reed attaches a batch of emails addressed to numerous NFL employees dating back to August 2013 in which Reed describes his concept for an original show titled “NFL: The Next Generation”:

In any given year 100,000 guys may play high school football, 10,0000 guys may play at the colligate level, but after that the numbers take a dip that is steeper than a bungee jump down the side of Mount Everest when the selection committee only invites 332 players to participate in the 2013 NFL scouting combine. These figures translate into a great number of broken hearts and enough man tears to float a cruise ship from California to Czechoslovakia.

*          *          *

This is the football version of (American Idol) seated in the heart of an unofficial NFL combine that will give these rejected and neglected, hungry and thirsty young men a nationally televised platform to prove the experts wrong, and to show those who said that they can’t, that they can.

In his email pitch, Reed outlined the procedure for evaluating the athletes using NFL combine metrics. Reed envisioned that the show would feature a mixture of segments, including human interest stories and personal profiles. Further, the show would highlight the contestants’ physical attributes to appeal to… um… a wider audience:

People are interested in interesting people so our contestants will be personalized before our viewers. Of course we expect our contestants to be tough, but when they are sexy as well, we will exploit that quality to lock in female viewers, who are for the most part born with a dedicated spirit.

Five days later, Reed received a letter from the NFL’s legal department indicating that the NFL has a policy prohibiting unsolicited proposals. The letter further stated that the NFL had no interest in his production, and that all materials submitted would be returned to him unread.

Reed alleges that, in January 2015, he took his show idea to a local gym to discuss it with “a guy [he] knows who is a former NFL player.” After reviewing the concept, the unidentified player informed Reed that he had seen a similar show on the NFL Network, referring to a six-part original series produced by the NFL Network titled “Undrafted,” which the NFL Network describes as follows:

Every year, thousands of college football players leave school with dreams of achieving a career in the NFL. Of those, 256 players are selected in the NFL Draft. The remaining – the undrafted – are forced to overcome another obstacle to pursue their dream.

Reed alleges that the NFL took the concept without compensation, constituting a “great injustice that can only be effectively dealt with by imposing jail time and steep punitive damages.” Reed asserts causes of action for breach of implied-in-fact contract, breach of confidence,” and a statutory claim under California’s Business & Professions Code.

Reed seeks combined total damages of $25 million, representing “1.25% of the $2 billion in revenue gain by [the NFL] related to media income in 2014, and approximately 0.28% of the [NFL’s] total earnings for the same year which was $9 billion.” (Reed does not source his statistics – in fact, league revenue in 2014 was likely closer to $11 billion, with a significantly higher portion coming from broadcast rights/media.)

Reed further requests that the District Court enter an order restraining the NFL from using, broadcasting, advertising, selling, or distributing all content related to Reed’s alleged concept.  In his final prayer, Reed asks for relief that may or may not be within the District Court’s inherent equitable powers:

[O]rder any and all other favorable relief that should be granted to [Reed], as [Reed] has been victimized by the evil and deceptive method of robbery that has been practiced by industry giants for decades, as they have lusted after, lied, coveted and stolen from artist [sic], writers, inventors and creators of the fruit of their God given talent, oppressing the artist and denying him and his family the benefits that are a direct result of the use of his talents, and using the benefits of the artists to fill their own bank accounts, live in houses that the artist should be living in, driving cars that the artist should be driving, and stealing credit for successful products that rightfully belong to the artists. . . .

Reed only recently filed the suit and the docket does not contain an affidavit or waiver of service, meaning the NFL likely has not yet received a copy of the Complaint.  The NFL did, however, address the issue in a January 12, 2015 letter responding to numerous emails by Reed complaining of infringement, stating:

The NFL takes intellectual property concerns very seriously. However, a review of [the] matter indicates that there has not been any misappropriation or unauthorized use of [Reed’s] purported intellectual property.

Football uniforms
Copyright: / 123RF Stock Photo

USA Today had a must-read article on Under Armour’s crazy uniform designs. Creative uniforms are wonderful, but as with all else in the world of intellectual property, care needs to be taken. Taking a copyrighted design from someone oftentimes results in a lawsuit.

If you see the other design, run it by your fellows to see if they think that one needs the permission of the other to be published, printed or knit. This formal exercise can save you a mound of trouble. If you get a cease-and-desist or lawsuit, run to your trusted legal counselor and do not attempt to handle it yourself. Last but not least. err on the side of caution. There are lots of creative designs that will not violate any intellectual property rights.

On August 11, 2014, the ownership group for the Toronto Blue Jays, Rogers Blue Jays Partnership, filed a Notice of Opposition with the Trademark Trial and Appeal Board of the United States Patent and Trademark Office, opposing the registration of Creighton University’s redesigned Bluejay logo.

On September 18, 2013, Creighton filed a trademark application with the USPTO for the new logo, described as a “stylized capital C with the head of a bird placed over top of the letter C,” to appear on shirts, pants, jackets, footwear, hats and caps, and athletic uniforms. As depicted in the logo evolution below prepared by Creighton fan site, White and Blue Review, the new logo is quite a departure from 1972 iteration, which resembles a surly, hand-drawn Peanuts character:

 Jays

Toronto apparently believes that the new Creighton logo hits too close to home, with its “thick, clean lines and outline with no gradient or shading,” which “results in a bold, two-dimensional mark” that is substantially similar in design to the Toronto Blue Jays recently-refreshed logo:

Twin Jays

This isn’t the first time Toronto has sought to protect its trademark against a college/university.  In 2001 and 2002, Toronto opposed (or threatened to oppose) an attempt by my alma mater, Elizabethtown College, to register its flying jay and fighting jay marks, depicted below in all their black and white, pixelated glory:

Etown

(Elizabethtown has since adopted a much cooler and far-more aggressive representation of the otherwise harmless acorn-eating Corvidae.)

In fact, Toronto has filed or threatened approximately a dozen trademark oppositions since 2000, including a joint effort with the Tampa Bay Rays baseball club in 2010 to prevent a Virginia-based entertainment vendor known as “Ray Jay’s” from using this iconic mark for the following highly-specialized and succinctly-stated business purpose:

Amusement arcades; Arranging and conducting nightclub entertainment events; Arranging and conducting special events for social entertainment purposes; Arranging, organizing, conducting, and hosting social entertainment events; Booking of entertainment halls; Bowling alleys; Children’s entertainment and amusement centers, namely, interactive play areas; Entertainment in the nature of a bicycle park; Entertainment in the nature of baseball games; Entertainment in the nature of basketball games; Entertainment in the nature of hockey games; Entertainment in the nature of laser shows; Entertainment in the nature of light shows; Entertainment in the nature of roller skating competitions; Entertainment services in the nature of providing outdoor facilities for playing paintball; Entertainment services, namely, a video arcade housed in a mobile trailer; Entertainment services, namely, conducting contests; Entertainment services, namely, conducting parties; Ice skating instruction; Leasing of figure skating equipment; Movie theaters; Organisation and provision of sports installations for figure and speed skating championships; Organising and holding figure and speed skating championships and competitions; Organizing and conducting a bowling event the proceeds of which are donated to charity; Providing bowling alleys; Providing children’s party centers for the purpose of entertaining children and celebrating birthdays; Providing facilities for movies, shows, plays, music or educational training; Providing facilities for playing paintball games; Providing skating rinks; Rental of roller skates; Rental of skates; Roller skating instruction; Roller skating rinks; Video arcade services

Ray Jay’s abandoned the ship approximately two years after filing its application.

Cristiano-Ronaldo8

Not many people know “fitness enthusiast” Christopher Renzi.  In 2008, the Rhode Islander registered the “CR7” trademark with the United States Patent and Trademark Office for use in his fashion line of jeans and t-shirts.  Mr. Renzi’s inspiration for the name allegedly comes from his initials and the date of his birth.  Unfortunately, Mr. Renzi has the same initials as larger-than-life Portugese international footballer, 2014 Ballon d’Or winner, and Real Madrid legend, Cristiano Ronaldo.  Ronaldo’s jersey number is 7, and he has built a brand identity using the same CR7 mark.

In late 2013, Ronaldo partnered with Danish clothing manufacturer, JBS Textile Group, to release a line of “fashion briefs” under the CR7 brand.  In May 2014, JBS’s stateside counsel, Dykema Gossett PLLC, sent Mr. Renzi a scathing letter accusing him of violating Section 2 of the Lanham Act.  Dykema alleged that Mr. Renzi registered the CR7 name with full knowledge of Ronaldo’s fame, reputation, and the significant commercial value of the CR7 mark, and that Mr. Renzi’s use of the mark falsely implies that his product line is endorsed by, affiliated with, or sponsored by Ronaldo.

As proof of its absolute dominion over the CR7 brand identity, Dykema cited Ronaldo’s 81,000,000 Facebook followers.  (Mr. Renzi, it appears, does not have a Facebook account, placing him approximately 81,000,000 Facebook followers behind Ronaldo.)

JBS filed a Petition to Cancel with the USPTO and demanded that Renzi voluntarily transfer all rights to and in the CR7 mark.  Dykema followed up with an email on June 10, 2014 offering an undisclosed sum to Mr. Renzi or the local sports club of his choice in exchange for an assignment of the CR7 mark and written assurances from Mr. Renzi that he would no longer use the mark.  On July 3, 2014, Dykema threatened a “more aggressive” legal course, prompting Mr. Renzi to file a single-count-complaint in the United States District Court for the District of Rhode Island.

In his Complaint, Mr. Renzi seeks relief under the Declaratory Judgment Act, which permits federal courts in the event of “an actual controversy” to “declare the rights and other legal relations of any interested party.”  See 28 U.S. Code § 2201.  Mr. Renzi asks the Court to declare, fully and finally, that (a) Mr. Renzi has not infringed upon any trademark right held by Ronaldo and JBS, and/or (b) that Mr. Renzi has not violated Rhode Island law by using the CR7 mark.

Fortunately, the chances of Ronaldo being deposed in the matter fall somewhere short of the USMNT’s chances of winning the 2014 World Cup.  The last time he was in the hot seat fielding questions in English, things didn’t go so well.

Mr. Renzi now “controls” the litigation, having filed in the court of his choosing, in his backyard, and with his counsel of choice.  According to its website, Dykema does not have any attorneys licensed to practice in Rhode Island, meaning local counsel and a pro hac motion will be required.  It is almost always better to go on the offensive than find yourself playing defense.