Pattishall IP Blog

May 12, 2017

Humanity Hates Trump may ________ Cards Against Humanity’s Trademark and Copyrights

Filed under: Copyright, Licensing, Trade Dress, Trademark (General) — Tags: , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:42 am

By Paul A. Borovay

Chicago’s own Cards Against Humanity, the vulgar/raunchy/funny/the-opposite-of-politically-correct card game, filed a lawsuit against SCS Direct for its selling card sets called “Humanity Hates Trump.”[1]  Humanity Hates Trump – along with Humanity Hates Hillary Too!, to be non-partisan about it all – card sets are available on its website.[2]

SCS Direct displays the following disclaimer on its website:

This set is in no way endorsed or affiliated with Donald J. Trump himself or Cards Against Humanity™, a registered trademark of Cards Against Humanity LLC, nor does it represent the views of SCS Direct Inc.

The focus of the case is whether the Humanity Hates Trump cards infringe Cards Against Humanity’s trademark and copyrights.

Cards Against Humanity makes its cards available for free download through a Creative Commons license, namely, the “Attribution-Non Commercial-ShareAlike 2.0 Generic (CC BY-NC-SA 2.0)” license.[3]  While the name is a mouthful, the license is actually rather simple.  Licensees can share, copy, and adapt the Cards Against Humanity game as long as they give credit to Cards Against Humanity, make their adapted product available under the same license, and not use the borrowed material for commercial purposes.[4]

SCS Direct clearly sells its Humanity Hates Trump cards online for commercial gain, and its cards use the same simplistic, black and white appearance of the Cards Against Humanity products.

The case touches on several interesting issues.  Is Cards Against product appearance protected under trade dress law?  Are its cards protected under copyright law?  Do the Humanity Hates Trump cards “remix, transform, and build upon the [Cards Against Humanity] material,” as described in the Creative Commons license?  Or, are the Humanity Hates Trump cards a separate product not covered under the CC BY-NC-SA 2.0 license?  How much latitude do licensees have under the license, or Creative Commons licenses in general, with respect to making, offering (for free), or selling “adapted” products?  Maybe none, maybe some.  We’ll see.

_____________________________

[1] Cards Against Humanity LLC v. SCS Direct Inc. et al., case number 1:17-cv-02781 (E.D.N.Y. May 8, 2017).
[2] See https://humanityhatestrump.com/.
[3] See https://cardsagainsthumanity.com/ and http://s3.amazonaws.com/cah/CAH_MainGame.pdf.
[4] The license is available on the Creative Commons website.  See https://creativecommons.org/licenses/by-nc-sa/2.0/.

These materials have been prepared by Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP for general informational purposes only.
They are not legal advice. They are not intended to create, and their receipt by you does not create, an attorney-client relationship.

January 8, 2014

Who is Johnny Football?

Filed under: Licensing, TM Registration — Tags: , , , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 11:28 am

Paul Borovay F LRBy Paul A. Borovay, Associate

Unless you have turned a blind eye to all sports over the last two years, there is a good chance that you have heard of Johnny Manzeil, the talented (and polarizing) quarterback from Texas A&M.   Manzeil was the first freshman football player to win the Heisman trophy, and he won it in style.  During his rise to the college football elite, he, like many athletes before him, received a nickname from the media: Johnny Football.  While NCAA amateurism rules kept Manzeil from profiting from his name and likeness during his collegiate sports career, those same rules did not keep the media and other private companies from making money on selling merchandise bearing the mark JOHNNY FOOTBALL.

In November 2012,  Kenneth R. Reynolds Family Investments (“Reynolds Investments”) filed an intent to use trademark application for JOHNNY FOOTBALL, which covered electronic games, athletic apparel and footballs.  Ser. No. 85/769,563.  Not surprisingly, Manzeil, submitted a Letter of Protest against Reynolds Investments’ application, claiming that JOHNNY FOOTBALL identifies a particular living individual and Reynolds Investments’ application failed to include Manzeil’s consent.

After receiving the Letter of Protest, the Examiner for this trademark application rescinded his approval of the trademark application and, on August 16, 2013, requested that Reynolds Investments submit a  the written consent of Mr. Manzeil to use his “name.”  The consent requirement includes any pseudonym, stage name or nickname, or signature, if the name or signature identifies a particular living individual.  Trademark Act Section 2(c), 15 U.S.C. §1052(c); TMEP §§813, 1206.04(a). Reynolds Investments has until February 16, 2014 to respond.

This situation is similar to that of Anthony Davis, the Kentucky basketball star and the NBA’s number one draft pick in 2012.  There, BlueZone, LLC, a local clothing store in Lexington, Kentucky, began selling T-Shirts and jerseys with the mark FEAR THE BROW.  The “brow” for which people should fear was actually Davis’ unibrow – a distinguishing feature that Davis wholeheartedly embraced.  To secure its rights in the mark, BlueZone applied for the trademark FEAR THE BROW.  Ser. No. 85/643,417.  Similarly, Davis contested the mark and filed his application for FEAR THE BROW.  Ser. No. 85/643,417.  BlueZone ultimately abandoned its application.

Like Davis’ situation, Manzeil technically remains second in priority for the mark JOHNNY FOOTBALL because he filed his trademark application in February 2013.    However, without Manzeil’s consent, Reynolds Investments will likely have no choice but to abandon its application, giving Johnny Football himself the right to finally make money off of JOHNNY FOOTBALL the trademark.

Davis and Manzeil, while stars in their own right, highlight a revenue stream that many athletes have yet to fully exploit.  As media licensing agreements and mobile advertising dollars increase exponentially, so to can athletes’ endorsements contracts.  If athletes protect their brands and build them properly, these endorsements will continue long after his or her professional career is over.  Athletes, now more than ever, need to actively manage their brands, which will ultimately ensure that Johnny Football profits from being “the” JOHNNY FOOTBALL and that Anthony Davis reaps the rewards of keeping the best kempt unibrow in the NBA.

*          *          *

Paul A. Borovay is an associate with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.   Paul’s practice focuses on litigation in trademark, media, online gaming and entertainment, advertising, as well as trademark prosecution and counseling.

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January 31, 2013

Hear This: Court Denies Motion for Summary Judgment in Dispute over Headphone Trademarks Between Dolby Labs and Monster, Inc.

Filed under: Licensing, Litigation — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:02 pm

JAWby Jeffrey A. Wakolbinger

From a dispute involving trademarks used in connection with headphones, we are reminded how inherently difficult it is to defeat a likelihood-of-confusion claim on summary judgment.

I.   The Parties

Monster, Inc., is a consumer electronics company, which sells a variety of goods to musicians and home-audio enthusiasts in connection with the following registered trademarks:

Monster3

Dolby Laboratories specializes in audio-signal processing.  It licenses its technologies to manufacturers of audio/visual equipment and to content producers, who display Dolby’s trademarks on their products.  Many people may be familiar with the Dolby Double-D symbol from noise-reduction technologies used during the cassette-tape era.  More recently, most people have almost certainly encountered the following trademark on television broadcasts, DVD cases, home-theater equipment, and cinema screens:

Dolby

Both parties either sell headphones or license technology used for headphones.  Monster sells a variety of higher-end headphones, which retail between $100 and $299 per pair.  Dolby developed a headphone technology that purports to deliver 7.1-channel surround sound to a single pair of headphone transducers and licenses this technology to manufacturers who display Dolby’s logo on their products.  Monster and Dolby use the following trademarks, respectively:

Headsets

Dolby’s headphone mark has been registered since 2002.[1]  Monster applied to register its mark in 2008.  After Dolby opposed registration of Monster’s application, Monster filed suit in the Northern District of California, seeking a declaratory judgment that its headphone trademark did not infringe Dolby’s and that Dolby had abandoned its mark by failing to exercise sufficient control over its licensees.  Dolby counterclaimed for infringement.  Both parties moved for summary judgment. (more…)

July 25, 2012

Who owns a trademark? Jeremy Lin wins Linsanity, as Anthony Davis fights for his unibrow.

Filed under: Licensing, Right of Publicity, TM Registration — Tags: , , , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:38 am

By Paul A. Borovay, Summer Associate

THREE-PEAT is a well-known term that refers to a sports team’s third consecutive championship.[1] Byron Scott, an ex-Los Angeles Laker, coined the term after his team won its second consecutive NBA championship in 1988.[2] Unfortunately, Scott could not profit from licensing the term to apparel companies, advertising agencies, or sports teams. Why? Scott did not try to establish rights in the term THREE-PEAT, either through registration or use. Scott likely did not see the value in trademark licensing at the time, but his coach, Pat Riley, saw an opportunity and obtained a trademark registration for the term in November 1988. Even though Scott coined the term “Three-peat,” Riley is the one that has been earning royalties from use of the trademark.

The arena of sports provides a ripe field for coining catchphrases such as “three-peat,” as well as terms that incorporate the names and likenesses of the superstar athletes themselves. Understanding who owns a trademark that incorporates the name or likeness of one of these individuals requires understanding the basics of two distinct bodies of law: trademark and the right of publicity.

Celebrities can obtain trademark rights for catchphrases associated with them by using the marks in commerce in connection with a specific good or service. Celebrities can also obtain state registrations for their marks, or simply own common law rights without a registration after using the marks in commerce. Filing for a registration with the United States Patent and Trademark Office (USPTO) is important and will often trump later applications, except for a few exceptions that are discussed later in this article.

Under the protections afforded through state right of publicity statutes, a celebrity is protected against commercial loss caused when someone appropriates their name or likeness. The celebrity does not have to have used the catchphrase in commerce, nor would the celebrity have to use the catchphrase in the future, as the right of publicity protects celebrities’ entire persona from commercial exploitation. For example, Michael Jordan would have a right of publicity claim against a car wash company that used his photograph to promote its business. While the photograph may not be protected under trademark law, the right of publicity prohibits any unauthorized commercial exploitation of a person’s name or likeness.

Two recent trademarks surrounding basketball players Jeremy Lin and Anthony Davis illustrate the delicate balance between trademark law, the right of publicity, and the person who coins the catchphrase’s rights to his or her creation. (more…)

July 12, 2012

Seventh Circuit Issues Important Decision Regarding Trademarks in Bankruptcy

Filed under: Licensing, Trademark (General) — Tags: , , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 10:46 am

By Janet Marvel, Trademark Attorney

When a trademark licensor declares bankruptcy, the trustee may reject the trademark license.   The trademark licensee then can lose its rights to use the licensed trademark, which obviously can be a disaster for the licensee.  The Bankruptcy Code protects patent and copyright licensees from this fate, but not trademark licensees.  See 11 U.S.C. § 365(n).

On Monday, the Seventh Circuit created a circuit split and issued a very encouraging decision for trademark licensees.  In Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC., 2012 WL 2687939 (7th Cir. July 9, 2012), the Seventh Circuit held that a trademark licensee retained its rights to use a licensed trademark even after the bankruptcy trustee for the licensor rejected the license agreement.

Some background is necessary.  In 1985, the Fourth Circuit decided Lubrizol Enterprises, Inc. v. Richmond Metal Finishers, Inc., 756 F.2d 1043 (4th Cir. 1985).  There, the court held that an intellectual property licensee loses its rights to use licensed property if the license is rejected in bankruptcy.  Three years later, Congress amended the Bankruptcy Code to permit “intellectual property” licensees to continue to use licensed property after rejection, subject to certain conditions. 11 U.S.C. § 365(n).  The Bankruptcy Code’s definition of “intellectual property” includes patents, copyrights, and trade secrets, but not trademarks.

Many courts interpreted the omission of trademarks from the definition of “intellectual property” to mean that the Lubrizol holding continued to apply to trademark licensees, and they would not retain any license rights upon rejection.  This interpretation has been assailed, but never as aggressively as by the Sunbeam Products decision.  See In re Exide Technologies, 607 F.3d 957 (3d Cir. 2010), cert. denied, 131 S.Ct. 1470 (2011) (Ambro J., concurring).

Chief Judge Easterbrook, writing for the court in Sunbeam Products, found that Lubrizol “was mistaken”.  In the Sunbeam Products case, the debtor-licensor made box fans, among other things.  It contracted with Chicago American Manufacturing (“CAM”) to manufacture the fans, and granted a patent and trademark license to CAM.  The agreement permitted CAM to itself sell box fans it made for the debtor if the debtor could not afford to buy the fans for resale.  When the debtor went bankrupt, Sunbeam bought its trademarks.  Sunbeam wanted to make fans under the licensed mark without competition from CAM.  The trustee rejected CAM’s license agreement, and Sunbeam sued CAM for infringement.

The district court held for CAM, permitting CAM “on equitable grounds” to continue to use the licensed mark.  The Seventh Circuit rejected “equitable grounds” as the rationale for the decision, but affirmed it anyway.  The court held that the omission of trademarks from section 365(n) was not a codification of Lubrizol.  Instead, the court stated that “an omission is just an omission.”  The court then noted that a rejection under the Bankruptcy Code was a breach of contract, in this case by the licensor, “but nothing about this process implies that any rights of the other contracting party have been vaporized.”  Id. at *3.  The rejection ”merely frees the estate from the obligation to perform and has absolutely no effect upon the contract’s continued existence.” Id. at *4 (citations and internal quotations omitted). As such, rejection, even if effected, did not terminate the licensee’s rights.

After Sunbeam Products, trademark licensees in the Seventh Circuit now share “the same rights” under the Bankruptcy Code as other intellectual property licensees.  Whether Sunbeam will appeal to the Supreme Court, and then, whether the Court will grant certiorari, remains to be seen.

*     *     *

Janet Marvel is a partner with Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP, a leading intellectual property law firm based in Chicago, Illinois.  Pattishall McAuliffe represents both plaintiffs and defendants in trademark, copyright, and unfair competition trials and appeals, and advises its clients on a broad range of domestic and international intellectual property matters, including brand protection, Internet, and e-commerce issues.  Ms. Marvel’s practice focuses on litigation, transactions, and counseling in domestic and international trademark, trade dress, Internet, and copyright law.  She co-authored the Fifth Edition of the Trademarks and Unfair Competition Deskbook, recently published by LexisNexis.

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May 24, 2011

The Seventh Circuit Upholds Finding that EVA’S BRIDAL Mark has been Abandoned through Naked Licensing between Family Members

Filed under: Licensing, Litigation — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:29 pm

Categories: Licensing, Litigation
Tags: Licensing, 7th Circuit, Phillip Barengolts

by Phillip Barengolts, Trademark Litigator

Following the district court’s decision for defendant on summary judgment (see our prior post for the facts: Trademark Owners Must Exercise Sufficient Control over the Quality of Licensed Merchandise or Risk Losing Rights in Their Valuable Brands), the plaintiff, the owners of the original EVA’S BRIDAL, appealed.  Speaking on behalf of the Seventh Circuit, Judge Easterbrook found nothing wrong with the district court’s decision – affirming that the EVA’S BRIDAL mark has been abandoned through naked licensing.  Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., 98 U.S.P.Q.2d 1662 (7th Cir. 2011).[1]

A finding of abandonment of a mark means that anyone else in the world can use the mark, not just the defendant – a draconian finding for any brand owner, but here it presents an especially troubling result not just for the plaintiff but also for the defendant.  Family members operated both stores in relatively close geographic proximity (roughly 18 miles apart on the west side of Chicago), the second store having been licensed at one point.  The store owners presumably were in contact for the entirety of the existence of both stores, although neither the lower court nor Seventh Circuit discussed this issue.  Now, potentially neither side of this family may be able to protect the mark against any third party.[2] (more…)

December 8, 2010

Ninth Circuit Finds that Trademark Owner Did Not Exercise Adequate Quality Control Under an Implied License

Filed under: Licensing — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 2:46 pm

Categories:  Trademark (General)
Tags:  Licensing, 9th Circuit, Ashly A. Iacullo

by Ashly Iacullo, Trademark Attorney

We previously highlighted the importance of quality control in trademark licensing.[1] In most cases, an express, written trademark license governs the trademark owner’s duty to exercise quality control and also provides the method and manner in which the goods sold under the licensed trademark will be inspected.  But what happens when no such express license exists?

The Ninth Circuit recently addressed this issue in FreecycleSunnyvale v. The FreeCycle Network, No. 4:06-cv-00324 (9th Cir. Nov. 24, 2010).[2] Even where an express license does not exist, a trademark owner still has an obligation to control the use of its marks.  Although the absence of a written agreement itself is not fatal, a trademark owner must establish firm standards for use of its trademarks and ensure that those standards are maintained.

In the spring of 2003, TFN popularized the concept of “freecycling,” or donating unwanted items to others rather than disposing of them.  This practice is primarily conducted through online groups including Yahoo!, Google and other similar forums.  TFN had been using the trademarks FREECYCLE, THE FREECYCLE NETWORK and a logo (“FREECYCLE Marks”)[3] and licensed them to others. (more…)

October 18, 2010

Trademark Owners Must Exercise Sufficient Control over the Quality of Licensed Merchandise or Risk Losing Rights in Their Valuable Brands

Filed under: Licensing — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:39 pm

by Phillip Barengolts, Trademark Attorney

Merchandise and character licensing is big business, generating billions of dollars in revenue for the most valuable brands.[1] Under U.S. law, the licensor of a brand must maintain real control over the quality of the products licensed for sale under the brand.  Without such control, the brand owner could lose its rights forever.  Many business people, however, treat brand licensing like patent licensing – prepare the written agreement, get it signed, and enjoy the royalties.  Such was the case in Eva’s Bridal Ltd. v. Halanick Enterprises, Inc., 1:07-cv-01668 (N.D. Ill. Aug. 4, 2010) – a dispute between a licensor and its licensee.

Disputes over the use of a brand between a licensor and licensee are the most frequent context for claims of abandonment through uncontrolled licensing of a mark (often referred to as “naked licensing” or “licensing in gross”).  Here, the licensee counterclaimed that the licensor/brand owner abandoned its trademark for a bridal shop through naked licensing of the trademark to the licensee. (more…)

September 14, 2010

Franchisors Must Take Control of Their Trademarks When Faced with a Failing Franchisee: Billboard Displaying a Formerly Licensed Mark Found not Actionable under Lanham Act

Filed under: Licensing — Tags: , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:31 pm

by Phillip Barengolts, Trademark Attorney

Franchisors must be vigilant in protecting their valuable intellectual property assets when confronted with failed franchise relationships.  The recent decision by the District of New Jersey in Howard Johnson International, Inc. v. Vraj Brig, LLC, Civ. No. 08-1466, 2010 U.S. Dist. LEXIS 3189, 2010 WL 215381 (D.N.J. Jan. 14, 2010)[1] (motion for reconsideration denied at 2010 U.S. Dist. LEXIS 21458 (D.N.J. March 8, 2010))[2] illustrate the perils of delay, and also the difficulty franchisors face when confronted with the need to debrand a physical location no longer within their control.

Howard Johnson International, Inc. (“HJI”), operates a hotel franchise system.  It licensed defendant Vraj Brig to use the HOWARD JOHNSON marks in connection with a HOWARD JOHNSON hotel in Mount Holly, New Jersey.  Defendant Peter Tucci owned the property on which Vraj Brig operated the hotel.  On September 1, 2006, Tucci took physical possession of the hotel after a dispossession action to obtain the property.  At the time Tucci took possession of it, the property was “non-functioning with extensive vandalism, theft, and destruction evident.” (more…)

August 27, 2010

First Circuit Affirms Trademark Owner’s Ability to Stop Former Franchisee’s “Holdover” Use Despite Disclaimer

Filed under: Licensing — Tags: , , — Pattishall, McAuliffe, Newbury, Hilliard & Geraldson LLP @ 4:44 pm

by Phillip Barengolts

The owner of a trademark generally has unfettered control over the manner in which its mark may be used in connection with goods and services offered in commerce.  Thus, one who does not own a trademark but wants to offer products using the mark must seek a license from the mark’s owner.  After such a license has been terminated, the former licensee has no right to continue using the mark. See, e.g., Burger King Corp. v. Mason, 710 F.2d 1480, 1493 (11th Cir. 1983) (“[M]any courts have held that continued trademark use by one whose trademark license has been cancelled satisfies the likelihood of confusion test and constitutes trademark infringement.”); Church of Scientology Int’l v. Elmira Mission of Church of Scientology, 794 F.2d 38 (2nd Cir. 1986).

This relationship between a trademark owner and its licensee forms the basis of most franchise systems.  Thus, franchisors have long been able to obtain relief against franchisees’ use of trademarks, trade dress, logos, and color schemes after the termination of the franchise, generally referred to as “holdover” use.  The First Circuit recently confirmed this fundamental concept in Shell Co. Ltd.  v. Los Frailes Serv. Station, Inc., 605 F.3d 10 (1st Cir. 2010). (more…)

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