This Trademark Dispute is Not Funny

Apparently, 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.

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.

Lawsuit Over Copyright of Happy Birthday Song Settles

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.  

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.

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.  

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.  

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.  

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.  

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."