tag:blogger.com,1999:blog-40792117557362183642024-02-06T20:38:19.170-08:00McCliman Law FirmMcCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.comBlogger149125tag:blogger.com,1999:blog-4079211755736218364.post-36677631514772714042018-05-30T07:48:00.001-07:002018-05-30T07:48:15.059-07:00Sesame Street Not Happy With STX's "Happytime Murders" MovieThe wholesome and longstanding children's program Sesame Street is suing the studio STX over STX's "Happytime Murders" movie. "Happytime Murders" is definitely not G-rated. Apparently, Jim Henson's son, Brian, directed the movie which depicts Muppet-type characters in unsavory ways. For example, some of the Muppet-like characters are prostitutes, others criminals of questionable character. "Happytime Murders" is an adult film wherein the "actors" (including the Muppet-like characters) engage in various adult situations (sex, drugs, violence, etc.). While STX claims that it worked with Jim Henson Co. (Jim Henson created many of the Sesame Street characters), it seems that Sesame Street (actually, the plaintiff is Sesame Workshop, a nonprofit organization) was not pleased with STX's use of the tagline "No Sesame. All Street." This is what appears to have prompted Sesame Workshop to sue STX for trademark infringement. Sesame Workshop claims that the tagline is a deliberate attempt to confuse consumers into believing that Sesame Street endorses or is otherwise associated with the movie. <br />
<br />
One of the claims by Sesame Workshop is dilution. I have written about dilution before <a href="https://mcclimanlawfirm.blogspot.com/2012/09/ben-jerrys-upset-at-being-ben-jerry-ed.html">here.</a> Generally, dilution is defined as the lessening of the capacity of a famous mark (the mark must be "famous" in order to earn protection against dilution) to identify and distinguish its goods. It involves two types of unauthorized use: Blurring and Tarnishment. Blurring is the whittling away of an established trademark's selling power through its unauthorized use upon similar products. Tarnishment is the linking of a mark to products of an inferior quality or when the mark is portrayed in an unwholesome or embarrassing context. <br />
<br />
For a refresher on trademark basics go <a href="http://mcclimanlawfirm.blogspot.com/2011/04/trademark-basics.html" target="_blank">here</a>.<br />
<br />
<br />
<div class="MsoNormal" style="margin-left: .5in; mso-list: l0 level1 lfo1; tab-stops: list .5in; text-indent: -.25in;">
<br /></div>
<br />McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-57500353534679952692018-05-08T09:00:00.000-07:002018-05-08T09:00:10.339-07:00Craft Beer Pun ReduxYou may recall my blog about the thinning of the possible names for <a href="http://mcclimanlawfirm.blogspot.com/2016/07/craft-beer-names-are-getting-crafty-and.html" target="_blank">craft beer.</a> Well, it seems there is another way that a craft brewery can find itself on the wrong side of a trademark dispute. A brewery in Auburn, California, Knee Deep Brewing Company, has a "Breaking Bad"-themed IPA (Indian Pale Ale for those not hip to brew designations). Knee Deep's Breaking Bud IPA earned a bronze at the Great American Beer Festival in 2016. Alas, one of Breaking Bad's production companies, Sony Pictures Television ("Sony") was not as enamored with Knee Deep's concoction and sued the brewery for trademark infringement and trademark dilution. <br />
<br />
According to the statement released by Knee Deep's CEO, the lawsuit came as a complete surprise because Sony representatives had expressed appreciation for the "call out" to the show in 2015 or so. He also went on to explain that Knee Deep and Sony explored the possibility of a more formal partnership between the brew and the show, but ultimately decided not to do so. He also makes clear that the name of the IPA was a joke and any dispute should have been raised by Sony in 2015, not via lawsuit in 2018.<br />
<br />
If what Knee Deep's CEO claims is true, that may mean that Sony's lawsuit just got harder. It certainly would lend credence to the argument that Sony acquiesced to Knee Deep's use of the name, and therefore, would be estopped from asserting its claims now. Stay tuned.McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-75297084508155182752018-05-01T09:00:00.000-07:002018-05-01T09:00:08.390-07:00From Comic Con to CoachellaWell, the Coachella Valley Music and Arts Festival recently took place in Indio. As expected, plenty of entities tried to use the "chella" suffix for their products or events. Coachella Valley Music and Arts Festival ("Coachella") did not find this form of copying flattering. For example, the Palm Desert Whole Foods announced a concert and tasting event it called "Wholechella." That caught the attention of Coachella who immediately sicced its attorneys on Whole Foods. Whole Foods took the path of least resistance and changed its event name to the Pre-Fest Beer Garden.<br />
<br />
Similarly, Sean "Diddy" Combs tried to organize an event (a Bermuda Dunes bash) and named it "Combschella." Then there was the "Hoodchella" for a rap festival and "Filmchella" for a movie festival. All of these "chellas" raised the ire of Coachella and had to change the name of their event to remove the reference to "challa." <br />
<br />
In addition to being aggressive in protecting its trademark, Coachella also protects its turf. For example, Coachella's artist contracts includes a "radius clause" which prohibits artists performing at Coachella from performing at music festivals or other events within a five-state radius of California from December to May. Well, the organizers of "Soul'd Out Music Festival" who could not book some artists because of the aforementioned radius clause were not amused. Soul'd Out is in Portland, Oregon and was not happy that it could not book artists who were playing at Coachella. So, Soul'd Out sued claiming that the radius clause was a violation of antitrust laws. Stay tuned.McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-11873322082786558132018-04-24T09:00:00.000-07:002018-04-30T08:49:25.340-07:00Comic-Con v. Comic Con UpdateA while back I opined that there was a potential settlement between the parties in the <a href="http://mcclimanlawfirm.blogspot.com/2016/03/this-trademark-dispute-is-not-funny.html" target="_blank">lawsuit between the San Diego Comic-Con and the Salt Lake Comic Con.</a> Well, apparently, the two sides were not able to resolve their dispute and went to trial in San Diego. As I mentioned in my earlier blog post, Salt Lake Comic Con ("Salt Lake") argued that the term "Comic Con" was a generic term for a comic convention. In case you need a <a href="http://mcclimanlawfirm.blogspot.com/2014/10/google-has-not-become-generic-yet.html" target="_blank">refresher</a>, in general terms when a trademark no longer represents the <b>source</b> of the good or service and becomes the <b>name</b> of the good or service, it loses its value as a trademark. For example, Escalator once was a brand of moving staircase, but has since become the name of the thing itself. Salt Lake's argument was a little different than most genericide arguments. Usually, the genericide argument is that the mark transforms into the item (a la "escalator"). However, in this instance, Salt Lake argued that the term "Comic Con" was never able to be a trademark because it identified the type of convention being held (i.e. a comic convention or "comic con").<br />
<br />
Unfortunately for Salt Lake, the jury in San Diego did not buy this argument and found in favor of San Diego Comic-Con ("San Diego"). Notably, the jury only awarded a somewhat minimal amount of damages (I read somewhere that the award was $ 20,000). This award amount indicates that the jury may not have been thoroughly impressed with the strength of the mark "Comic-Con." Keep in mind that there are several of these "Comic Cons" around the nation.<br />
<br />
Needless to say, it appears as if this matter is headed for appeal. Stay tuned.McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-52021554972662836482018-03-06T08:25:00.001-08:002018-03-06T08:25:50.868-08:00Branding To Attempt to Widen Your MarketDiageo, PLC, owner of the Johnny Walker Scotch and other spirits, is seeking to enhance its market by appealing to women to drink its Scotch. Diageo's marketing campaign started with a "#LoveScotch" campaign which showed photos of women (young ones) drinking Scotch together. These photos were blasted on billboards and across social media platforms. Diageo apparently finally figured out that Johnny Walker was primarily a "man's" drink and wanted to change that notion. So, Diageo began its campaign to include members of the opposite sex whom it ignored for years. <br />
<br />
Diageo's next step was to roll out a female-branded version of its Johnny Walker Black Scotch. Notably, Diageo is altering its logo from this:<br />
<br />
<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiZS_Mz_Avg8feC9GRXY8DcWbjJFkiadQQFzBnsYmr5nRR9wBHc2vFy-n1crqPWXrK5KWdiLWzgUgMphPUHza95C3i0jWU8SfswpDaX30g9MBSxvLHe5eSivbhcXO-x0Rs_aHHo2_5PiaGg/s1600/pasted+image+0.png" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="512" data-original-width="512" height="200" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEiZS_Mz_Avg8feC9GRXY8DcWbjJFkiadQQFzBnsYmr5nRR9wBHc2vFy-n1crqPWXrK5KWdiLWzgUgMphPUHza95C3i0jWU8SfswpDaX30g9MBSxvLHe5eSivbhcXO-x0Rs_aHHo2_5PiaGg/s200/pasted+image+0.png" width="200" /></a></div>
<div class="separator" style="clear: both; text-align: left;">
To this:</div>
<br />
<div class="separator" style="clear: both; text-align: center;">
<a href="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh5fz4ks3Egw6pv53zDn2AR7r8jeoCymlZcCr9ofKPhlaVSl0ksIUTFg4hvoIdqIlgAVjO2RmyOIB38731klH9whNUK1K54J_qpnwT4oAEe9R79agfQpQC-_HciWjj1DhPrtGXMnR9Pa5lB/s1600/images.jpg" imageanchor="1" style="margin-left: 1em; margin-right: 1em;"><img border="0" data-original-height="267" data-original-width="189" height="200" src="https://blogger.googleusercontent.com/img/b/R29vZ2xl/AVvXsEh5fz4ks3Egw6pv53zDn2AR7r8jeoCymlZcCr9ofKPhlaVSl0ksIUTFg4hvoIdqIlgAVjO2RmyOIB38731klH9whNUK1K54J_qpnwT4oAEe9R79agfQpQC-_HciWjj1DhPrtGXMnR9Pa5lB/s200/images.jpg" width="141" /></a></div>
<div class="separator" style="clear: both; text-align: left;">
While this logo change is for a limited time, it certainly gets the point across as to who the target audience is for Diageo. This ad campaign is quite a change for a label that only targeted men in its ads just a short time ago. Clearly, the new ad campaign to target female Scotch drinkers is a nod to the fact that more women are drinking Scotch than before which could be a reaction to more Scotch makers adding new flavors (e.g. honey, maple, etc.). The times, they are a-changing and smart companies are changing with them.</div>
<br />McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-11333347498491609582018-02-27T09:10:00.000-08:002018-02-27T09:10:06.742-08:00Emojis and Legal DisputesI must admit, I am an emoji neophyte. Anything past the smiling, laughing, or thumbs up emoji baffles me. I honestly have no idea what some of the emojis mean. Now, it appears that emojis are causing quite a stir in the legal world. Recently, emojis have become the source of contention in all kinds of lawsuits (ranging from business disputes to harassment to defamation). For example, the meaning of an emoticon--apparently, this is slightly different than an emoticon. Who knew? <span style="background-color: white; font-family: "Lyon Text", Georgia, Times, serif; font-size: 18px;">¯\_(ツ)_/¯ </span><br />
<br />
For example, in a defamation lawsuit, the issue is what the emoticon, ":p" means. It represents a face with its tongue sticking out. That case involves a comment on a message board that accused an official of corruption. The poster inserted the emoticon at issue after his/her accusation. According to the Appellate Court, the insertion of the emoticon negated the defamation claim because the emoticon denotes a joke or sarcasm. Thus, according to the court, the defamatory comment cannot be taken seriously because it was a joke or a sarcastic statement.<br />
<br />
In another case, a sexual harassment case, the question is the significance of a red-lipstick kiss mark emoji used by an employee to an employer in response to sexually explicit texts. Was this an acquiescence to the advances of the employer or just a polite reply in an attempt to distance herself from the employer? According to the attorneys in the case, the testimony of the employee about what she meant to convey may not resolve the issue. <br />
<br />
These are only a couple examples as to how emojis and emoticons can confound us attorneys and judges. According to Eric Goldman, a Santa Clara University School of Law professor, emojis or emoticons "appeared" in 33 state and federal cases. This number is undoubtedly going to keep increasing as people continue to increase their use of technology to communicate and the creators of such technology keep creating more and new emojis. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-40857405444825180972018-02-21T08:29:00.000-08:002018-02-21T08:29:12.055-08:00U.S. Army's "War" With the Las Vegas KnightsI must admit, I am a fairly casual hockey fan. However, the Las Vegas Golden Knights caught my attention when they catapulted to the top of their division (they currently hold a ten point lead over the second place team) as an extension franchise. For those of you who are unaware, the Las Vegas team is in its first year ever. The general rule is that new franchises usually do not perform at a high level--they usually are the team that every other team in the league beats quite easily. New franchises usually flounder for the first couple/few years of their existence. But, not the Las Vegas Golden Knights. They hold the best home record in the league, are among the top six teams in goals, and are successful when going into overtime. <br />
<br />
For reference, the Minnesota Wild only won 25 games in their first season. It took the Wild three seasons to make the playoffs. The Columbus Blue Jackets only won 28 games in their inaugural season. It took the Blue Jackets nine seasons to make the playoffs. Currently, the Las Vegas Nights have won 39 games this season. They are tops of the Western Conference and look to be a shoo-in for making the playoffs. <br />
<br />
Yet, they have found themselves embroiled in a fight with the United States Army. The Army opposes the Knights' trademark application to register "Vegas Golden Knights." Apparently, the "Golden Knights" is a nickname used by the Army since the 1960s for its parachute team, its public relations, and recruiting. In addition, the Army claims that it has common law trademark rights in the black/gold and yellow/white color schemes which are the colors of the Las Vegas Knights. As I understand it, both sides were aggressively fighting the other. At stake for the Las Vegas Golden Knights would be that they would have to change their name and, potentially, their color scheme. Given the amount of time, effort, and resources expended by the team to build their brand, that would be a huge set back. That is probably why the hockey team filed a settlement motion with the Trademark Trial and Appeal Board yesterday. The settlement motion seeks to work out a deal where both sides can continue to use their respective marks. <br />
<br />
Even if the Army and the Las Vegas Golden Knights can reach an agreement, the College of Saint Rose in Albany, New York is lurking. Their nickname is the "Golden Knights." The College filed a request for an extension to oppose the hockey team's trademark application which means that they may decide to deny the hockey team the right to the mark--as did the Army. <br />
<br />
<br />McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-81837740048112356312017-08-23T12:28:00.002-07:002017-08-23T12:30:02.914-07:00From Napster to NowWhen the battle between the record companies and Napster raged in the early 2000's, the record labels held all of the power to control music and musicians. To be fair, the labels would spend quite a bit of money on the front end of a musician's or band's career to get them started without any real guarantee that they would recoup anything on their investment. The stories were fairly common, big musical acts would find themselves owing more than they were making because of the labels' early investment. <br />
<br />
After Napster and with the advent of streaming services, the artists were able to take more control over their careers and their music. It also allowed others to use another's music in <a href="https://mcclimanlawfirm.blogspot.com/2013/07/covering-songs-has-become-youtube.html" target="_blank">various settings</a>. As I've written before, the proliferation of streaming services can be a boon or a bane to musicians depending on their perspective. <br />
<br />
Unfortunately for the artists, this change has meant that record companies are less willing to invest on the front end because there will not be as many record sales. That means that artists must tour and promote themselves on a shoestring budget. Many will not "make it big." However, musicians, being the resourceful and creative types, have found other ways to earn some money for their art. They license their music to commercials, shows, movies, or other similar kind of placements. If able to do so, this helps the artist(s) gain some publicity which cloaks them in legitimacy. Legitimacy makes it easier to market their art and book themselves for other venues. I know for me, I have discovered some songs from commercials or television shows. For example, the <a href="https://www.youtube.com/watch?v=xq0z7T0hR7M" target="_blank">Dodge Ram commercial featuring "California Soul" by Marlena Shaw</a> and <a href="https://www.ispot.tv/ad/7lUt/gillette-proglide-with-flexball-technology-mercy-rule" target="_blank">"When I'm Small" by Phantogram from the Gillette Proglide commercial</a>. <br />
<br />
Just as advertising is changing to keep up with consumer's tastes, needs, and shortening attention span, so is the music industry. It is going to be interesting to see how it evolves next. Stay tuned.McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-83696844915126614252016-11-29T07:00:00.000-08:002016-11-29T07:00:05.694-08:00Big Name Brands vs. Department StoresThis time of year department stores begin to heavily discount merchandise in an effort to lure consumers into their stores. Big name brands, with an eye towards maintaining the strength of their trademarks, are fighting back. Brands like Levi Strauss, Michael Kors, and Coach are seeking exclusion from this discounting in order to maintain control of their pricing. While this may mean shrinking sales, it does help maintain the strength of their brands. <br />
<br />
While many of these brands started because the department stores bet on their labels, many of these brands now have retail stores of their own. This dichotomy has created tension between the labels and the department stores. In some instances there have been "irreconcilable differences" between the two sides such that the brands pull their product from the department stores. In turn, the department stores will offer weaker brands with less power to set pricing. Department stores find that their consumers are happiest when they can purchase merchandise at a discount and are willing to switch brands to obtain one. Indeed, both Macy's and J.C. Penney learned this lesson the hard way when they tried to eliminate coupons and discounts. The idea was that they were providing low prices every day, yet consumers stopped shopping at those stores until the coupons and discounts returned. <br />
<br />
The lesson learned: trademarks and marketing go hand in hand and trademark holders must be diligent in protecting their trademarks.McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-51481326136128830832016-07-19T08:11:00.001-07:002018-04-23T11:35:53.520-07:00Craft Beer Names are Getting Crafty and Causing Trademark PandemoniumOne of my favorite stores to visit in San Diego is a store dedicated to hot sauces. Now, mind you, I don't go there strictly for the hot sauces. The main attraction for me is reading the witty (often racy or raunchy) names of the sauces. It always amazes me at how creative the makers are in coming up with their names. <br />
<br />
I have also discussed the witty names by <a href="http://mcclimanlawfirm.blogspot.com/2012/09/ben-jerrys-upset-at-being-ben-jerry-ed.html" target="_blank">Ben & Jerry in another context.</a> However, there is another type of product which lends itself to creative naming: the craft beer industry. Unfortunately, it appears as if the term "hops," is becoming scarce for this industry. The same goes for names involving animals, natural features, and historical references. Unfortunately, with the fairly recent onslaught of craft breweries--many of whom have several different types of brews--the possible variations of "punny" or creative names for those beers has vastly diminished. That has lead to an increase in trademark battles over names, images, and the like around the Country. According to a Wall Street Journal article, the United States Patent and Trademark Office has approximately 25,000 active registrations and applications related to beer. <br />
<br />
If that were not enough, those charged with naming their brews must also be aware of wine and spirits trademarks. For example, Fireball Cinnamon Whiskey maker opposed a brewer's attempt to trademark "Fireball Beer." <br />
<br />
Of course, it is not simply the craft brewers who find themselves in a trademark dispute. <a href="http://www.wsj.com/articles/SB123801865666341507" target="_blank"> Budweiser lost a suit by a small Czech brewery over the use of the Budweiser name in Europe.</a><br />
<br />
This is not surprising given how the importance of trademarks has risen in today's fast-paced economy. I certainly have been guilty of trying a beer just because its name was clever (although, I am not as inclined to do so for the hot sauces). McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-59806909364494502632016-06-16T10:27:00.000-07:002016-06-16T10:27:01.419-07:00Re-Opening of United States Market to Cuba Rum Rekindles Name Dispute<br />
As I <a href="http://mcclimanlawfirm.blogspot.com/2014/12/interesting-issues-over-cigar-and-rum.html" target="_blank">wrote a while back, </a> there was a potential dispute reemerging between Bacardi, Ltd and Pernod Ricard SA over the ownership of the name, Havana Club. The dispute is not new. Pernod Ricard is a distiller based in Paris, France who entered into a joint venture with the Cuban government to create Havana Club International. To hear Pernod Ricard tell it, it entered into a deal with the Cuban government in 1993 which gave it rights to sell the Cuban-made rum around the world, including the United States. However, the 1962 trade embargo blocked any such sales.<br />
<br />
Bacardi counters that it owns the rights to the brand after buying it from the founding family of Havana Club, the Arechabalas. The Arechabalas and Bacardi fled Cuba in 1960 after Fidel Castro's government nationalized the country's distilleries. Bacardi has been making its rum in Puerto Rico under the Havana Club brand name. Initially, the two sides worked together until Bacardi decided to compete with Pernod Ricard by distilling its rum in Puerto Rico in the early 1990's. <br />
<br />
Now, both sides are ramping up their production to distribute their rums in the United States. In the case of Bacardi, to increase its distribution and in the case of Pernod Ricard, to enter the market. <br />
<br />
Needless to say, the two sides will have their day in court over who actually owns the trademark. Stay tuned for updates.<br />
<br />
<br />
<br />McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-1736849066497631962016-05-03T06:00:00.000-07:002016-05-03T06:00:17.971-07:00Supreme Court to Decide New Patent RulesThe government recently made it easier for companies and/or individuals to challenge patents without fighting in Federal courts. It is no secret that patent litigation is one of the most costly and lengthy legal battles possible. The new process allows the United States Patent and Trademark Office ("USPTO") to make a determination about the patent dispute. Of note is the fact that the USPTO would use different legal standards to resolve the issues. This would mean that a Federal court judge and the USPTO could reach different conclusions over the same dispute. <br />
<br />
The case before the Supreme Court comes after Congress "updated" the patent laws in 2011. The issue before the Court is whether the USPTO rules must conform to the legal standards the courts use in adjudicating a patent dispute. <br />
<br />
One of the purposes of the 2011 overhaul was to cull bad patents and discourage patent trolls (those who buy patents who do not manufacture the patented item, but merely assert those patents against others). As you can imagine, because patent litigation is so costly, many patent trolls found success in suing companies for patent infringement. In many instances, it was a better business decision to pay the patent troll rather than fight the issue in court. <br />
<br />
Personally, I like the idea of a less expensive process allowing litigants to get resolution in patent matters. However, I fear that the parties would go through the USPTO process and then the "loser" would decide to initiate a lawsuit which would put the parties in the unenviable position of having to pay twice for an adjudication of the same issue. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-8231100292582058572016-04-27T11:39:00.000-07:002016-04-27T11:39:30.010-07:00Another Company Changes Its Name to Distance Itself from a Prior Bad AssociationFisker Automotive changed its name to Karma Automotive in order to disassociate itself from its predecesser. Fisker Automotive stopped producing vehicles in 2012 amid financial difficulty and a recall that led to bankruptcy. Now, Chinese auto parts company, Wanxiang Group owns Fisker Automotive and decided to distance itself from the prior name in favor of Karma Automotive. Karma Automotive is working to develop a luxury electric car which it hopes to start selling this summer. <div>
<br /></div>
<div>
It makes sense, in today's markets, to try to maintain a strong brand and to distance oneself from tarnished brands. That is certainly one of the reasons why Fisker decided to re-brand itself. This is especially true since Fisker received a loan from the Energy Department in 2009 and caused the energy agency to lose $ 139 million on that loan when Fisker filed for bankruptcy protection. </div>
<div>
<br /></div>
<div>
This is another example of how important a company's trademark or trade name can be and how it is virtually essential to maintain a strong one. </div>
McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-65158953859709466212016-03-02T12:19:00.000-08:002016-03-02T12:19:23.647-08:00This Trademark Dispute is Not FunnyApparently, there are two Comic Cons. There is the San Diego Comic-Con and the Salt Lake Comic Con (note the hyphenation and lack thereof). As you may have guessed, the San Diego outfit sued the Salt Lake one for trademark infringement. One of the main questions was whether the removal of the hyphen in the name mattered. Usually, it would not. Unsurprisingly, the San Diego convention argued that it owned all iterations of "comic con" in all of its possible variants. The Salt Lake one countered that the term is a general term for the type of convention, and therefore, is not trademarkable. <br />
<br />
Nevertheless, it appears that these two conventions are working on a settlement because they asked the judge for more time to iron out some of the details. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-21064189469588088902016-02-10T09:34:00.000-08:002016-02-10T09:34:05.448-08:00Lawsuit Over Copyright of Happy Birthday Song Settles<div style="background-color: white; color: #333333; font-family: 'Guardian Text Egyptian Web', Georgia, serif; line-height: 24px; margin-bottom: 1rem; padding: 0px;">
In a strange lawsuit, a movie producer, Jennifer Nelson, sued music publisher Warner/Chappell over whether she had to pay royalties to use the Happy Birthday song in her documentary. Her documentary was about the history of the song. Ms. Nelson claimed that Warner/Chappell did not own the rights to the song, and therefore, could not charge her royalties. </div>
<div style="background-color: white; color: #333333; font-family: 'Guardian Text Egyptian Web', Georgia, serif; line-height: 24px; margin-bottom: 1rem; padding: 0px;">
Patty Smith Hill and her sister Mildred J. Hill wrote the tune in 1893 with the title "Good Morning to All." From what I understand the Hill sisters were teachers and included the song in a children's music book. They left the copyright with their publisher. Somewhere along the convoluted history of the song, the "Happy Birthday" lyrics were added.</div>
<div style="background-color: white; color: #333333; font-family: 'Guardian Text Egyptian Web', Georgia, serif; line-height: 24px; margin-bottom: 1rem; padding: 0px;">
In 1988 Warner began collecting royalties for the song. Warner had purchased the company that obtained the copyright from the Hill sisters' publisher sometime around that time. To add to the complexity of the case, two other groups claimed a right to the song's copyright: The Association for Childhood Education International ("ACEI") and the Hill Foundation. ACEI was a charity designated by the Hill family to receive a portion of the song's licensing profits. The Hill Foundation and ACEI claimed that they were the actual copyright holders of the song. </div>
<div style="background-color: white; color: #333333; font-family: 'Guardian Text Egyptian Web', Georgia, serif; line-height: 24px; margin-bottom: 1rem; padding: 0px;">
Earlier in the lawsuit, the District Judge ruled that neither Warner nor the prior companies had the right to charge for use of the song--the Judge did not rule on the issue regarding whether the song is in the public domain. </div>
<div style="background-color: white; color: #333333; font-family: 'Guardian Text Egyptian Web', Georgia, serif; line-height: 24px; margin-bottom: 1rem; padding: 0px;">
Ultimately, Warner/Chappell agreed to pay $ 14 million to settle the class action lawsuit. In addition, they have given up their claims to the song which means that the song falls into the public domain for everyone to use without having to pay a royalty. Now, the District Judge will need to approve the terms of the settlement for the settlement to be final. </div>
<div style="background-color: white; color: #333333; font-family: 'Guardian Text Egyptian Web', Georgia, serif; line-height: 24px; margin-bottom: 1rem; padding: 0px;">
According to documents filed with the court, the settlement is the result of intense "around the clock" negotiations during the week before the scheduled trial. The settlement includes ACEI and the Hill Foundation. No party to the settlement agreement admits wrongdoing and Warner denies that the song is in the public domain. </div>
McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-5694096928351058812015-12-01T07:00:00.000-08:002015-12-01T07:00:03.559-08:00AstraZeneca Is Giving a Generic Drug Maker HeartburnWhen 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. <br />
<br />
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. <br />
<br />
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. <br />
<br />
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. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-48304682136980667112015-11-24T07:00:00.000-08:002015-11-24T07:00:01.667-08:00Understanding California's Fair Pay ActAfter 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?<div>
<br /></div>
<div>
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. </div>
<div>
<br /></div>
<div>
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. </div>
<div>
<br /></div>
<div>
With this law, California remains at the forefront of employee protection. </div>
McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-64048800284402178682015-11-19T10:17:00.002-08:002015-11-23T07:31:15.201-08:00There 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.<br />
<br />
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). <br />
<br />
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. <br />
<br />
This one may be a fun one to watch. Stay tuned!McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-90089793297488537042015-11-10T10:35:00.001-08:002015-11-10T10:35:03.164-08:00Another Athlete Suing Over His Name and LikenessAs 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. <br />
<br />
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. <br />
<br />
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. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-30538422335503094992015-09-24T10:11:00.001-07:002015-09-24T10:11:47.989-07:00Update Regarding Lawsuit Involving Whether the Batmobile Enjoys Copyright ProtectionA while ago, I wrote about a lawsuit wherein DC Comics and its parent company, Warner Bros. sued a gentleman who was <a href="http://mcclimanlawfirm.blogspot.com/2012/03/holy-copyrights-batman-batmobile-is.html" target="_blank">making replica Batmobiles.</a> 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. <br />
<br />
In case you missed it, here is what the 1966 television version of the Batmobile looked like:<br />
<br />
<img height="248" src="http://www.ew.com/sites/default/files/styles/tout_image_612x380/public/1443030545/batmobile.jpg?itok=cjleNpiG" width="400" /><br />
<br />
And, what it looked like in the 1989 movie:<br />
<br />
<img height="283" src="http://www.flickeringmyth.com/wp-content/uploads/2014/09/batmobile-1989.jpg" width="400" /><br />
<br />
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."<br />
<br />
<br />McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-707733020978455102015-09-03T09:00:00.003-07:002015-09-03T09:00:55.928-07:00Google Tweaks Its LogoGoogle 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. <br />
<br />
To see the evolution of the logo, go to <a href="http://googleblog.blogspot.com/2015/09/google-update.html" target="_blank">Google's official blog.</a> <br />
<br />
<br />
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. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-62685096512215733472015-08-18T06:49:00.000-07:002015-08-18T06:49:00.658-07:00WD-40's Formula Remains a Trade SecretThe 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. <br />
<br />
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. <br />
<br />
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. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-60918458428218119982015-08-11T07:00:00.000-07:002015-08-11T07:00:04.474-07:00Handshake Deals Not RecommendedIf 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 . . . <br />
<br />
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! <br />
<br />
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.<br />
<br />
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.<br />
<br />
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. <br />
<br />
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.McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-11253556023856687902015-08-06T08:59:00.000-07:002015-08-06T08:59:21.695-07:00Copyright Infringement and TwitterSurprisingly, 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. <br />
<br />
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. <br />
<br />
This will be a case to keep an eye on as it progresses. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com0tag:blogger.com,1999:blog-4079211755736218364.post-51157383801688050142015-05-26T08:16:00.003-07:002015-05-26T08:16:58.107-07:00Tethered to Your Work Smartphone? That May Mean Overtime PayWhen 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!<br />
<br />
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. <br />
<br />
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." <br />
<br />
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. <br />
<br />
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. <br />
<br />
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. McCliman Law Firmhttp://www.blogger.com/profile/09759520688627389572noreply@blogger.com1