Copyright Cases: Mavrix Photographs, LLC v. LiveJournal, Inc.

Mavrix Photographs, LLC v. LiveJournal, Inc.

 LiveJournal is a social media platform that displays photographs posted by users.  Maverix Photographs sued for copyright infringement of some of its photographs.  LiveJournal raised the defense that it was protected by the safe harbor provisions of the Digital Millennium Copyright Act (DMCA).  The district court agreed and dismissed the case on a summary judgment motion by LiveJournal.

Appeal

The appeals court (1) reversed the district court’s decision, instead finding that the safe harbor would apply if the photographs were posted at the direction of users. However, LiveJournal posted the photographs after a team of volunteer moderators, led by an employee,  reviewed and approved them. The court held that whether the photographs were posted at the direction of users depended on whether the acts of the moderators could be attributed to LiveJournal. Disagreeing with the district court, the panel held that the common law of agency applied to the LiveJournal’s DMCA safe harbor defense. Because there were genuine factual disputes regarding whether the moderators were the defendant’s agents, the panel reversed the district court’s summary judgment and remanded the case for trial.

The panel also discussed the remaining elements of the safe harbor affirmative defense. If an internet service provider shows that the infringing material was posted “at the direction of the user,” it must then also show that (1) it lacked actual or red flag knowledge of the infringing  material; and (2) it did not financially benefit from infringements that it had the right and ability to control. The court held that to fully assess actual knowledge, the fact finder must consider not only whether the copyright holder has given notice of the infringement, but also the service provider’s subjective knowledge of the infringing nature of the posts. The court held that to determine whether the defendant had red flag knowledge, the fact finder would need to assess whether it would be objectively obvious to a reasonable person that material bearing a generic watermark or a watermark referring to the plaintiff’s website was infringing. When assessing the service provider’s right and ability to control the infringements, the fact finder should consider the service provider’s procedures that existed at the time of the infringements and whether the service provider had “something more” than the ability to remove or block access to posted materials. Finally, the panel vacated the district court’s order denying discovery of the moderators’ identities.

Summary based on courts case summary.  Full opinion available HERE.

Court: U.S. Court of Appeals for the Ninth Circuit

Docket: 14-56596

Opinion Date: April 7, 2017

District Court

What does Consideration mean in a Contract?

WhaQuestion for Trademark lawyert does it mean for a contract to be not enforceable because of a lack of consideration?

Answer: In order for a contract to be enforceable, the mutual promises of the parties must be supported by “consideration”. Considerations means each party gives something of value to the other.  The reason that the courts and legislatures generally require some form of consideration is to insure that the promises being made are not merely a casual statement, and accident, or gratuitous – in short – to make sure the people making the agreement really mean it. Consideration looks at whether the parties have assumed an obligation on the condition of an act or forbearance of another. Except in cases of employment matters, Minnesota courts generally do not look at the adequacy of the consideration being offered – only whether some consideration has been exchanged. For written agreements, the court presumes valid consideration. While adequacy of consideration is not usually analyzed, vague or indefinite terms of consideration (including other conditions of the agreement) may invalidate an agreement, unless it is clear from the subsequent actions.

In contracts related to copyrights and trademarks, this mean that things like royalties might be subject to discontinuance if the only thing that it does is to grant a right to use the IP and it turns out the licensor in fact does not have the rights in the first place (assuming the licensor did not know that the rights were invalid). However, if the contract also goes on to provide that the licensor will discontinue use of the rights for their own use, this forbearance may be enough to be deemed adequate consideration to enforce the contract.

Consideration is important as a part of any contract.   When setting up a licensing arrangement it’s important that you evaluate what the parties are exchanging.

Benefits of a Federal Trademark Registration – FAQ

Question for Trademark lawyerWhat are the benefits of a federal trademark registration?

Answer: There are many benefits of a federal trademark registration, both direct and indirect.  Direct benefits are numerous and include:

  • National protection of the mark;
  • Ability to obtain injunctions stopping infringers;
  • Ability to use the registration to apply for foreign trademark registrations;
  • Greater access to the  federal court system;
  • Assistance from the United States Custom in stopping counterfeit and infringing goods from importation; and
  • Attorneys fees when proper notice has been attached to the goods or services. I

In addition to these considerations, trademark registration provides indirect benefits in the form of being able to point to it when protecting marks used for social media accounts, protect against improper use in search engines, ability to obtain new domains in sunrise periods, and providing great leverage in UDRP and URS disputes against cyber-squatters.

Why Provide these Benefits

Providing these benefits serve two primary functions.  By granting these rights to trademark owners the government helps to incentivise business owners by helping to protect the goodwill embodied in their brands.  This in turn helps protect consumers by letting them know that when they buy a product, that  the product originated from the brand owner and not an impostor.  This ability to build a portfolio of valuable business assets has obvious benefits to any business owner.

 

Call 612-414-3113 to discuss how I can help you with your trademark and copyright related matters.

Trademark Registration Scam – FAQ

Question for Trademark lawyer

I filed a trademark application recently and suddenly I have been receiving papers from all these companies saying that I owe more money to finalize my trademark. Is this some kind of trademark registration scam?

Answer: In December (2016) the Department of Justice announced that two men had pled guilty of a scamming owners of US trademark applicants. Through there company called the Trademark Compliance Center (TCC) and Trademark Compliance Office (TCO), the men, Artashes Darbinyan and Orbel Hakobyan, stole approximately $1.66 million from registrants and applicants of U.S. trademarks through a trademark registration scam by sending fraudulent solicitation for additional filing fees.

The USPTO worked with California law enforcement in this case and takes a number of steps to fight solicitations from companies fraudulently promising to protect trademarks. These questionable solicitations have been growing problem, both nationally and globally over the years. To help combat this, the USPTO has taken a number of steps.

1) Each Office Action regarding an application includes a warning and a link to the USPTO Non-USPTO Solicitations page.

2) A bright orange paper with a warning is sent along with every registration.

3) the USPTO maintains a list of non-USPTO solicitations on our Non-USPTO Solicitations page that the public can use to check against and they encourage the public to contact them with new solicitations so that the list can continually be updated.

Similar scams involve organizations contacting registrants claiming to represent foreign trademark offices, claiming that someone is attempting to register their trademark in their country’s registry. They then offer to register the mark in that country for you to prevent to claim jumper from moving in.

A registered trademark is a valuable asset, and where there’s money, unfortunately, there are bound to be criminal elements lurking. The USPTO continues to provide its ongoing full support to U.S. law enforcement officials working on this issue.

Common Law Trademarks – FAQ

Am I protected with a common law trademark – without federal registration?Q&A: Common Law Trademarks

Q: I recently started professionally my photographs in the US.  I registered the copyright for photos and have decided on new name for my company.   I think the name is pretty distinctive and I am not aware of anyone else selling a similar product by the same name.   Do I have to register my company name as a trademark to prevent others from using it or can I rely on the laws concerning common law trademarks?

A: Kenneth’s answer:  Since your mark is not registered you are limited to the common law trademark rights. Common Law Trademarks are generally limited in scope to the geographic area where the mark is known (think of a restaurant where everyone has heard of it in one town, but is unknown in another). Common law trademarks can be enforced (but not as well and as easily as registered marks) in both state and federal courts. In short, it depends on your long term business objectives.  While registration may not be required for everyone, deciding what’s right requires actual consultation with people knowledgeable about trademarks.

Links for Common Law Trademarks

10 Trademarks Just in Time for Halloween

10 Trademarks Just in Time for Halloween

While some folks might think trademarks can be a little scary, I know that they can also be a little fun.

10-Trademarks-Just-in-Time-for-Halloween-.jpgG&S: Processed cereal-based food to be used as a 10-Trademarks-Just-in-Time-for-Halloween-.jpgbreakfast food, snack food or ingredient for making other foods.Serial (no pun intended) 85120586 and 85120583 
G & S: Beer.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86110135Yes – a stumbling disheveled guy is your image for beer – why didn’t this get rejected as merely descriptive?
G & S: Books in the field of children’s literature.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86271191Whenever I put my child to bed, I always like to talk about monsters too – keeps her quiet when I tell her how she will get eaten-up if she asks for a glass of water.
10-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Parlour games.Serial: 86222077What the heck is a Haint you ask?  Well I had to look it up too – God bless American entrepreneurship.http://www.haintinabox.com/
G&S: Magazines featuring women modeling in horror-themed pictorials for entertainment purposes.10-Trademarks-Just-in-Time-for-Halloween-.jpgSerial: 86506372And Playboy decided to get out of the nudie business – perhaps they just weren’t putting enough dripping blood on them?
10-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Clothing, namely, short and long sleeve t-shirts, sweatshirts, jackets, baseball hats, and beanies.Serial: 85803000My first reaction was “How did this get by Major League Baseball??”, then I noticed that they have filed a pending cancellation action (http://ttabvue.uspto.gov/ttabvue/v?qs=85803000)
10-Trademarks-Just-in-Time-for-Halloween-.jpg86446861G & S: Sporting Goods, namely, skateboards.AAARRGGHHH – Happy Face Vampire
8639254210-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Repair of computers, cell phones, and tablets.I can live with that.  Sometimes my computer feels a little brain dead.
8639600210-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: Firearms.I particularly like the description on this one.  “The mark consists of a vampire skull with bullet hole.”   Don’t they know it take stake to the heart – zombies need to be shot in the head.

See How to Kill A Vampire (http://www.gods-and-monsters.com/how-to-kill-a-vampire.html)

8633194410-Trademarks-Just-in-Time-for-Halloween-.jpgG & S: LED (light emitting diode) lighting fixtures.Really?  Shouldn’t the light be used for killing Vampires (see above)

Trump’s Trademark Issues

How long has Trump been planning this?

MAGAApparently Mr. Trump decided he liked the sound of “Make America Great Again” as  far back as 2012, when he first filed an application for the phrase with the Trademark Office (Serial 85783371).   However, in the application he seems to be  anticipating using it for a Political Action Committee, rather than for his own candidacy. The required list of services he listed were as follows:

  • Political action committee services, namely, promoting public awareness of political issues. (IC 035)
  • Fundraising in the field of politics. (CIC 036)

However he was apparently not ready to use it back then, as he did not finalize the registration until earlier this year – about a month before he formally announced.

Trademark Issue #1

Subsequently, on August 13th two new filings  (86724115 , 86724213were made by him for the phrase and include an exhaustive list of such items as  

  • Bumper stickers; decorative decals for vehicle windows; stickers; advertising signs of papers; advertising signs of cardboard; placards and banners of paper or cardboard; printed publications, namely, pamphlets providing information regarding Donald J. Trump as a political candidate; posters; pens
  • Clothing, namely,sweatshirts, T-shirts, tank tops, long sleeve shirts; headwear, namely, caps and hats; baby clothing, namely, one piece garments; children’s clothing, namely, t-shirts
  • Campaign buttons, and
  • interestingly a series of items referencing “Political campaign services”.

This last items underscores an interesting question. Why include this if he already had the rights for “Political action committee services” –  while I won’t pretend to know, the answer may lie in the fact that a Political Action Committee recently popped up using the same name which begs the question that if the trademark is Trump’s – he is either coordinating with the PAC, or  he needs to police it and demand they change the name in order to preserve his rights.

Trademark Issue #2

On August 5, 2015, a another party filed an application for “Make America Great Again” for 

  • All purpose sport bags; Backpacks; Duffel bags; Knapsacks; Tote bags; Umbrellas and
  • Footwear; Hats; Jackets; Pants; Shirts; Short-sleeved or long-sleeved t-shirts; Shorts; Socks; Sweat shirts; Swim wear

This application was filed as an intent to use application, while Trump’s August 13 application alleged prior usage as of 4/12/2015.   Trump’s second August 13 application however, listed the identical items “All purpose sport bags; Backpacks; Duffel bags; Knapsacks; Tote bags; Umbrellas” as being as intent to use.  So what? – you might ask. Strictly speaking, this would normally mean that the other filer would have priority over any claim has on exclusive rights to the phrase for the purposes of items like these., but the fact that he has now filed an application for identical goods hints that he will oppose the issuance of other applicant.

I also think it is safe to say that Mr. Trump plans to use this application to try and stop anyone from using the phrase on any merchandise from now on.  Ebay is Awash in items already . The real question will be if he can be successful in enforcing the mark for these items (See trademarking a phrase for tee-shirts).

 

 

Ten Cute Cat Trademarks

Ten Cute Cat Trademarks

Because cats make everything more entertaining.  (search using (03.01.04)[DD]  and  (2)[MD]).  A sample of 10 recent applications for cat related trademarks for your viewing pleasure.

1.  Content Kitty (such a peaceful face)

Mark Image
Serial Number: 86468722 Description of Mark The mark consists of the face of a cat.

 

2.  Lethal Kitty (HiYA!!)

Mark Image
Serial: 86330685 Description: The mark consists of a stylized standing white cat with yellow eyes and wearing gray pants, gray shoes, and a blue jacket that has white trim, two visible white buttons and a white Chinese language symbol. The cat is standing upon a black oval.

 

3.  Hello Kitty (one of many recently filed applications)

Mark Image
Serial: 86582292 Description: The mark consists of the face of a kitty.

 

4. Butt Kitty (Ok –  this one creeps me out a little)

Mark Image
Serial: 86468165 Description: The mark consists of a feminine cat facing {walking} away, with tail up exposing a heart shape on the butt.

 

5. Knitted Kitty (this one is for “knitted underwear” -’nuff said -cool design)

Mark Image
Serial: 86426751 Goods: Knitted underwear.

 

6. Hipster Kitty (jeez – everyone knows cats prefer the chevron)

Mark Image
Serial: 86543982 Description: The mark consists of the stylized image of a cat’s head with a mustache.

 

7. Creepy Kitty (with dog overlord)

Mark Image
Serial: 86484950 Description: The mark consists of Cat having a primarily orange-brown fur coat and white chest laying in front of a seated dog having a primarily grayish-tan and brown fur coat and black nose, where both the cat and dog are depicted with large human-like smiling mouths with red lips and bright upper and lower white teeth showing, and a radiating sparkle emanating from the upper right-hand corner of each mouth.

 

8. Masked Kitty (what possible advantage would a cat have trying to pretend he’s a dog?)

Mark Image
Serial: 86420033 Description: The mark consists of a stylized cat wearing a dog mask.

 

9. Anthropomorphic Kitty (why no shoes on the hands??)

Mark Image
Serial: 86057456 Description: The mark consists of stylized image of a kitten wearing a dress and tennis shoes.

 

10.  Plain old Cute Kitty (just because)

Mark Image
Serial: 86056395 Description: he mark consists of a pictorial representation of a kitten in a woman’s hands. There is a purple arc to the left of the kitten. The kitten’s fur is white, black and gray. The kitten’s nose is pink and its eyes are blue and black. The woman’s hands are shades of tan. Both the kitten and hands have white highlights. The area between the kitten and the purple arc is white.

 

content kitty

Color-only Trademarks

What do UPS, Tiffany and Co., and Owens Corning have in common?  The mere sight of the color of their product (Pullman Brown, Robin’s Egg Blue, and Pink) brings to mind who they are without ever having to place a logo or word on their products.   These marks demonstrate how real people shop for goods and services and how trademarks are about providing a potential consumer resources to identify the source of the goods and services they are purchasing – while preventing others from using those identifiers to create consumer confusion.

Color Trademarks

Color TrademarksThe leading case involving color as a trademark is  Qualitex Co. V. Jacobson Prods. Co. (514 U.S. 159, 161, 163, 115 S. Ct. 1300, 131 L.Ed. 2d 248 (1995)), which noted that a color can sometimes serve as a trademark by itself  “when that color has attained ‘secondary meaning’ and therefore identifies and distinguishes a particular brand (and thus indicates its ‘source’).”   The Court went on to provide that if the color serves a “function” then it by definition is not protected by trademark law.  Function is broken out into “utilitarian” and “aesthetic” functionality – this is largely a nod to the availability of other areas of intellectual property such as patents (dealing in realm of utility), and copyright (entwined with issues of aesthetics) which are designed for these  uses.  What is left is color used as a source identifier – clearly within the scope of trademarks.

Courts, however, recognize that such use is limited and has potential to be damaging to many industries if overused, and as a result have taken the position that color by itself is not inherently distinctive, and as a result most color-only marks will have had to acquire distinctiveness through actual use.   This means that new users of a color, wishing to register color-only marks are limited to filing applications on the supplemental register until such time that they can show the mark has acquired distinctiveness.

Call 612-414-3113 to discuss how I can help you with your trademark and copyright related matters.

Additional Resources