AstraZeneca Is Giving a Generic Drug Maker Heartburn

When I was in law school, one of the hot topics in the trademark world was whether "color per se" (color without more) could act as a trademark.  At the time, there was a Circuit split regarding whether "mere color" could receive trademark protection.  Some of the cases involved the color of fake sugar packets, the color of insulation, or the color of cleaning press pads.  In 1995, it was the cleaning press pads case where the Supreme Court resolved the question about the trademarkability of color per se.

In that case, the Supreme Court ultimately ruled that, as long as the color had acquired distinctiveness (secondary meaning), then it may obtain protection as a trademark.  In other words, if consumers came to understand that the color indicated the source of the product, then color is trademarkable.

Today, AstraZeneca is arguing that the color purple of its heartburn pill, Nexium, is a protected trademark.  In so doing, AstraZeneca is able to block a generic drug maker from selling its generic version of Nexium.  AstraZeneca notes that it heavily promoted Nexium as the "purple pill."  It is this big advertising campaign which helps consumers to come to connect a purple pill with Nexium.

If you have read this blog before, you will know that having a trademark registration allows a trademark owner to block the importation of infringing goods.  This is what I believe AstraZeneca did to the generic drug manufacturer trying to get its generic Nexium here.  If I were to guess, I would say that the generic drug manufacturer will have to choose a different color for its generic Nexium before it could sell it here in the United States.

Understanding California's Fair Pay Act

After the hack of Sony's e-mails and the revelation of the pay inequality in Hollywood between male actors and female actors, there was a call by some of the actresses for fair pay.  You may recall Patricia Arquette's acceptance speech at the 2015 Oscars wherein she called for wage equality.  That spawned action at the California Legislature to enact the California Fair Pay Act.  Gov. Brown signed the law in early October.  So, what does the law do, you ask?

Well, it ensures that male and female employees who perform "substantially similar" work are paid equal wages.  This language is broader than the "equal work" language in the prior law.  This is true even if they have different job titles or work in different offices of the same employer.  There is also an anti-retaliation component to the law which allows co-workers to discuss their wages with each other without fear of punishment by the employer.  Only merit, seniority, quantity/quality of production, or a "bona fide" factor other than sex that is a legitimate business necessity are allowable explanations for wage differences between male and female employees.  

All businesses (public and private) must comply with the law.  However, keep in mind that the business must have both male and female employees doing the same or similar work.  For example, most nurses are women.  If your company has only women who are nurses, then there is no way to apply the law because there would be no male nurse's wages to compare with the female nurses.  Of course, this "loophole" (for lack of a better term) existed in the prior equal pay law.  

With this law, California remains at the forefront of employee protection.  

There is No Way to Sugar Coat It: Corn Syrup v. Sugar!!

UPDATE:  The parties settled the litigation in the middle o trial.  The terms of the settlement are confidential.

Earlier this month, the trial between the sugar industry and the high fructose corn syrup producers began in a Federal court.  The sugar industry sued the corn syrup producers for falsely claiming that their product is just as healthy as sugar.  Not to be outdone, the corn syrup producers shot back with a claim that the sugar industry engaged in a lengthy misinformation campaign.  It would seem strange that the two would be fighting over allegedly false claims about the health information of their products. This is especially true given that both products have been linked to a host of health ailments (obesity, tooth decay, diabetes--just to name a few).

The sugar industry claims that the corn syrup producers' ads claiming that corn syrup is "nutritionally the same as table sugar" and "your body can't tell the difference" between the two sweeteners is false. They further claim that the corn syrup producers know these claims are false.  The corn syrup producers counter that argument with a claim that the ads were an "educational campaign" to correct ten years of falsehoods made by the sugar industry about their product.  They also claim that the lawsuit is nothing more than the sugar industry's attempt to throttle its competition.

This one may be a fun one to watch.  Stay tuned!

Another Athlete Suing Over His Name and Likeness

As if FanDuel has not had enough to worry about recently, Pierre Garcon (Wide Receiver for the Washington Redskins) recently filed a class action lawsuit against it.  Mr. Garcon alleges that FanDuel used his name and likeness in marketing without his permission.  The lawsuit includes advertising using his name and likeness, as well as using his name and likeness in FanDuel's daily fantasy football contests.

While FanDuel asserts it did nothing wrong, it may want to look at how its competitor DraftKings handled the issue.  DraftKings entered into a licensing deal with the NFL Players Association allowing it to feature some of its players in marketing campaigns and daily contests.

It seems ever since Ed O'Bannon's lawsuit against EA Sports, this has become a hot legal issue.  Stay tuned to see how this one turns out.

Update Regarding Lawsuit Involving Whether the Batmobile Enjoys Copyright Protection

A while ago, I wrote about a lawsuit wherein DC Comics and its parent company, Warner Bros. sued a gentleman who was making replica Batmobiles.  The defendant, Mark Towle makes replicas of the Batmobile that appeared in the 1960's television show starring Adam West as Batman and the 1989 movie with Michael Keaton playing the role of Batman.

In case you missed it, here is what the 1966 television version of the Batmobile looked like:



And, what it looked like in the 1989 movie:



As I wrote in my earlier piece, the court determined that the design elements of the Batmobile were not functional, and therefore, may be subject to copyright.  That ruling by the court meant that the next issue (or one of them) was whether the Batmobile was actually subject to copyright protection.  Well, the Ninth Circuit Court of Appeals settled the issue in favor of DC Comics and Warner Bros.  In so finding, the court found that the Batmobile's bat-like appearance and other distinct design elements like its high-tech weaponry, made it copyright-able.  In addition, the court noted that Mr. Towle appeared to try to use the Batmobile's fame in marketing it.  In particular, he had the website batmobilereplicas.com and advertised the vehicles as the "Batmobile."

Google Tweaks Its Logo

Google recently tweaked its logo.  Its new logo uses a different font: sans serif rather than serif.  The change follows the lead of other technology companies who went through the same sort of logo transformation.  Undoubtedly, one of the ideas behind the change was to make the logo simpler.  Google explained that it was to reflect the fact that its users access its services from various platforms.  This suggests that Google's new logo is an acknowledgement of its transformation from strictly a search engine to a company with a broader array of services. 

To see the evolution of the logo, go to Google's official blog. 


Even if you are a small company, it is always a good idea to review your logo or trademarks with an eye towards freshening them up to better reflect your goods or services--or, the changing times.

WD-40's Formula Remains a Trade Secret

The formula for WD-40, the lubricant, rust protector, and squeak eliminator, is locked in a vault in San Diego.  Chemists invented it sometime in the 1950s to stop corrosion on the outside of the Atlas space rocket.  Amazingly, the chemists wrote the original formula in pencil on a notepad.  In order to maintain the secrecy of the formula, WD-40 mixes it "in house" and then sends the concentrate to its manufacturing operations.  From there, the manufacturers add some other ingredients and then put the product in the blue and yellow containers with the red cap. 

It takes quite a bit of work to maintain a trade secret.  Often, the secret or product is no longer useful or wanted by consumers.  It is amazing that the WD-40 recipe is still both a secret and in demand.  In fact, WD-40 keeps growing steadily.  Its growth is especially apparent in foreign markets.  Sometimes when you have "that" one product that you believe will be in demand for decades, it makes more sense to try and protect it as a trade secret rather than try to patent it.  It takes work and constant vigilance, but if successful, you can have protection for a very long time.  Whereas, with a patent, you get protection for a relatively short period of time. 

It is a good idea to conduct an annual review of your company's trade secrets in order to make sure that they keep their trade secret status. 

Handshake Deals Not Recommended

If I had a dollar for every time a client or potential client came to me and said that they did not need a written agreement for a business deal they were entering into with a friend . . .

It is all too common for friends who decide to go into business together to rely on that friendship rather than a good ol' fashion agreement.  I often see the results of when the business relationship and the friendship sours.  It turns into an ugly divorce! 

A recent news article reminded me of how these relationships based on handshakes, oral agreements, and napkin scribblings often turn into a legal quagmire for those involved.  The creation of Facebook was a fairly high profile example of how things can go so wrong without an agreement in writing.  Now, Snapchat, Inc. is suffering the same malady.

The "founders" of Snapchat, Inc. conceived of their idea for what they hoped to be the next technology start up to make it big.  They agreed to be partners via handshake in their undergraduate dorm room (at that school that shall not be named).  The Snapchat "partners" later became embroiled in a bitter dispute when one founder ousted the other just as the company was going big.  The "partners" settled their dispute sometime last year.

Now, the founders of the message board application Yik Yak, are squabbling.  The common theme throughout these disputes are that the founders are either friends or family.  Each side believes that the friendship or the family relationship is a strong substitute for a binding business contract.  Unfortunately, that is a recipe for disaster especially when an event involving money occurs.  More often than not, the event is a huge influx of cash (purchase by a larger company) and each of the partners wants to get their fair share. 

Unfortunately, my clients get me involved when things go bad rather than at the beginning.  Having clearly defined roles and goals at the beginning will save headaches at the end.  It is important to memorialize your business relationship even if you are friends or family.

Copyright Infringement and Twitter

Surprisingly, it took this long for a copyright holder to sue Twitter for copyright infringement, but a photographer recently did so.  The lawsuit alleges that someone shared a copyrighted photo owned by the photographer on Twitter.  The account that shared the photo is no longer active.  According to the complaint, the photographer issued a takedown notice pursuant to the Digital Millennium Copyright Act ("DMCA") to Twitter.  Allegedly, Twitter ignored the takedown notice prompting the photographer to file her lawsuit in California. 

The question in the case is whether Twitter is liable for copyright infringement when one of its users shares a protected photograph even though the account is no longer active.  Despite the account being inactive, the photograph remains on Twitter.  The most likely avenue for asserting liability against Twitter would be if Twitter failed to act on the DMCA takedown notice.  As long as an internet service provider (Twitter, in this case) complies with the DMCA in handling takedown notices, the internet service provider is not liable for copyright infringement. 

This will be a case to keep an eye on as it progresses. 

Tethered to Your Work Smartphone? That May Mean Overtime Pay

When I was a younger attorney, I worked for a firm where the first name on the letterhead had strange work hours.  He would stay at home in the morning with his kids and generally arrive at the office around 11.  Often, he would exasperatedly wonder where everyone was during the noon hour.  He was also the one who would work later into the evening.  Needless to say, he expected his employees to be available day and night.  I recall him telephoning one of his partners as she was on her way to the hospital (she was in labor) asking her about a particular case!

There were several instances where this partner would expect responses to his inquiries late at night or early in the morning.  While attorneys are usually exempt employees, there is now a question about whether answering e-mails, phone calls, texts, etc. after work hours could lead to a claim for overtime. 

With the rise of company-issued smartphones and the expectations that one is always within reach of that smartphone, employees are working at all hours by answering those after hours e-mails, calls, or texts from the boss or the client.  This has given rise to a slew of lawsuits regarding overtime pay.  These lawsuits are fairly new and have not set any precedents regarding the line between answering one e-mail and "overtime." 

Adding to this wave of lawsuits is the expected updated rules from the Labor Department raising the salary floor.  By raising the salary floor, there will be significantly more employees eligible for overtime pay pursuant to the Fair Labor Standards Act. 

If you are an employer, what do you do? First, be sure to implement (and stick to) a policy regarding expectations for use of smartphones or other devices during non-work hours.  The policy should include reporting of time worked outside of the normal work hours for that employee.  Second, make sure to pay the appropriate overtime pay for work performed remotely above and beyond the normal work hours.  Third, if you have an expectation that employees work around the clock (e.g. requiring them to provide customers with their mobile number or e-mails in order to ask you questions), then you may want to adjust the work schedule of that employee to include a set amount of time (one hour?) as part of the work day. Fourth, you may want to consider capping the amount of time spent working remotely during off hours.  Finally, you may want to implement a "no working on the smartphone after hours" policy. 

Keep in mind, if the time spent by the employee working remotely is not significant (e.g. answering one or two e-mails every so often), it is unlikely that will qualify for overtime pay. It may be wise to get an idea from the non-exempt employees who work via their smartphones (especially company-issued devices) how much time they spend using those devices for work-related matters when not "on the clock."  That way, you can fashion an appropriate policy to handle such matters.  Generally, it is wiser to take care of these types of matters on the front end because any successful lawsuit for overtime pay includes liability for the plaintiff's attorneys fees, as well as penalties.    

Left Shark Update

Update:  Having taken the uber aggressive course, Greenberg Traurig had to back off when the attorney realized that he may not be able to bully Mr. Sosa so easily.  Here's the letter. And the response to that letter.

Another One for the Big Firms Are Not Always the Smartest Option . . .

I have met my share of potential clients who look at me as a "lowly solo" and express that they would prefer to have that big name, big international firm represent their interests.  I always tell these potential clients to be careful what they wish for because big firms are not always the best option.  Katy Perry's "Left Shark" of Super Bowl infamy proves my point.

As some of you may or may not know, during the Super Bowl half time show, Katy Perry performed her song "California Gurls."  Her stage for this song had a beach theme and two dancing sharks on each side of her.  Needless to say, the shark on her left appeared to have either been asleep or completely absent during rehearsals.  So he (or she) made up his (her) own moves without regard to the apparent choreography.  This, in turn, provided much internet and social media fodder.  In fact, "Left Shark" became a pretty popular meme subject.

Well, to the point about big firms--that usually have several layers of staff and attorneys working on your matter at gargantuan hourly rates . . . One of Katy Perry's attorneys at Greenberg Traurig sent a gentleman in Florida, Mr. Sosa, a cease and desist letter claiming that the shark images and costumes were protected by copyright(s).  You can view the letter and the response to the letter here.

You see, Mr. Sosa began offering 3-D printed "Left Shark" figurines for a mere $25.00 a piece.   Initially, Mr. Sosa decided to stop printing the figurines and avoid the legal hassle.  However, he had a change of heart and received help from a law professor who specializes in copyright law.  Professor Sprigman responded to Greenberg Traurig's letter by pointing out the ridiculousness of claiming a shark costume as a copyright.  He also pointed out that, even if copyrightable, Ms. Perry in an interview before the show indicated that she may not have created the shark costume, and therefore, did not own the copyright.  Interestingly, the cease and desist letter does not include a registration for the shark costume copyright which means that Ms. Perry could not sue Mr. Sosa until she obtained one.  Of course, even if she tried to get a registration, it is not likely the Copyright Office would issue it for a costume. 

As I have advocated on this blog before, it is important to defend and protect your intellectual property, but you should probably actually own it before you allow big law firm to hastily fire off a cease and desist letter. 

La Liga's Valencia CF Irks DC Comics

Valencia CF recently redesigned their logo and it caught the attention of DC Comics.  The Spanish soccer club's logo, according to DC Comics, looks quite similar to Batman's calling card.  Here are the two side by side:

While Valencia has used a bat in its logo since 1919, the wings of the primary logo for the team are angling downward.  It was the change of the wing's angle upward that made DC Comics file a complaint in European Union's trademark organization.

Of note is that the batman logo originally appeared in 1939 and it has undergone variations in that time as well.  It will be interesting to see the results of DC Comics' lawsuit. 

From Crowdfunding to Crowdsourcing

A while ago, I wrote about companies using "regular Joes" to research patent prior art or create advertising.  Now, it appears that companies are taking it a step further by using crowdsourcing to assist the companies with marketing concepts and content.  You may be familiar with the concept of Kickstarter or Indiego as a way for entrepreneurs and small businesses to raise money for their products by obtaining small amounts of money from a large amount of potential customers.  

Now, companies like Quiksilver, Jamba Juice, and the band One Direction have turned to creative sourcing websites like Talenthouse and Tongal.  Here's how it works (as I understand it):  the Companies pay a fee to post a need; artists (musicians, videographers, etc.) pitch their proposal to fill the need of the  company; the best submissions then get paid for their submissions.  I understand in some instances the payout can be many thousands of dollars, but usually a few hundred dollars is the norm.  The websites have an added feature in that users register with the site can weigh in and vote for their favorite submission(s).  Of course, the company has the final say regarding which submission(s) it will accept, but this can be a good way to gauge how consumers may view the work. 

For big companies, these sites give them a chance to break away from stale ideas and infuse new ones.  They also are able to select several works targeting specific regions or demographics, as opposed to the "one size fits all" marketing campaign.  For artists, it gives them a way to get their work out there without having to drudge through the ranks of an advertising agency or other type of company.  It allows the artists to freelance, too.