First Amendment Wins in Trademark Law

This morning, the U.S. Supreme Court decided the closely watched Matal v. Tam trademark disparagement case. The Court decided unananimously (8-0, heard before Justice Gorsuch joined the Court) to allow the trademark to be registered. Interestingly, while the Justices all agreed the trademark law’s disparagement clause was unconstitutional (and struck it down), the Justices were divided on why the disparagement clause was unconstitutional (some said free speech violation, some said viewpoint discrimination).

Federal trademark law (called the Lanham Act) grants nationwide protection to marks (logos, phrases, slogans, etc) as continuously “used in commerce” by a person, nonprofit, or business (15 U. S. C. §1051(a)(1)). Part of the trademark application process is getting the mark approved by the U.S. Patent & Trademark Office in Washington, D.C. Most of the approval/vetting process is being sure the mark hasn’t already been claimed or used by someone else in the same context (that it’s not prior art), in a way that would be confusing to the average person or consumer.

One of the criteria, since 1946 when the Lanham Act was born, had been non-disparagement clause: a mark could promote one person or business’ advantages or virtue, but couldn’t (1) “disparage” a “person, living or dead, [an] institution [or business], belief, or national symbol” or (2) “bring them into contempt, or disrepute.” (15 U. S. C. §1052(a)).

Enter the Tam case. A rock band with Asian-American musicians wanted to trademark a name that was a racial/ethnic slur for people of Asian or Asian-American ancestry, even though the band sought to embrace the name as their own and hoped to turn it into a positive image or connotation. The Trademark Office denied the trademark application on disparagement grounds – the name was a racial or ethnic slur, so the band couldn’t trademark it. The band took its case all the way to the Supreme Court, and won. Time will tell how Tam will affect other cases, like the Trademark Office’s cancellation of the Washington Redskins football team’s trademark, or others.

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on trademark on entertainment law/copyright issues. We work with authors, musicians, artists, photographers, bloggers, songwriters, filmmakers, film owners, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you with your trademark or entertainment law, questions, please call (913-707-9220) or email (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2017, Stephen M. Johnson, Esq.

The Copyright of “I Have a Dream”

Happy Martin Luther King Jr Day! As we pause to reflect on Dr King’s great legacy of promoting racial reconciliation in America, here’s the interesting back story on why you don’t see or hear Dr King’s complete “I Have a Dream” speech online or on TV: it’s copyrighted. We encourage you to join us in reading the text today as we reflect on Dr King’s enduring legacy.

(c) 2017, Stephen M. Johnson, Esq.

 

Film & TV stills protected

The LA Times reports news of this 8th Circuit Court of Appeals decision from St Louis, which is good news for copyright and film owners. A Missouri business captured still images from film classics like Gone With the Wind and the Wizard of Oz, along with the TV show Tom & Jerry, and was using those stills in marketing and merchandising. After years of legal wrangling in the courts, the court found those stills were protected by copyright and/or trademark, so the Missouri business had to pay a licensing fee to the film owners or pay hefty damages for copyright and/or trademark infringement. It’s a rare treat to see a copyright or trademark case from the Midwest, since those cases are often handled in California or New York’s federal courts. And this decision is an important precedent for copyright and film owners to use in protecting their property and making a living from exercising their rights.

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on entertainment law, copyright, trademark, and IP litigation issues. We work with authors, musicians, artists, photographers, bloggers, songwriters, filmmakers, film owners, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you with your entertainment law, copyright, or IP questions, please call (913-707-9220) or email (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2016, Stephen M. Johnson, Esq.

The Art of Cease & Desist Letters: Trademarks

Drey Cooley, a St Louis attorney, has this good article on the art of trademark cease & desist letters (C&D letters) in the recent Missouri Bar Journal. His article is good food for thought for attorneys (including myself) who represent clients in defending or challenging copyrights, trademarks, or other IP – attorneys who often write or review C&D letters. Among other exhortations, he encourages attorneys to think about (1) elements of federal and state trademark infringement to see if the use is infringing, and (2) the letter or email’s form, style, tone, and substance. He rightly notes that C&D are “an essential tool to cost effectively resolve issues and avoid litigation.” To write a good C&D letter for each client, he recommends asking questions about 9 issues including: (a) client goals, (b) infringer’s size, (c) infringer online, (d) intentional (or accidental) infringement, (e) strength of client’s trademark, (f) strength of client’s infringement claim, (g) infringer’s investment in the mark, (h) infringement widespread (or not), (i) infringer’s past infringement history, and so on.

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on entertainment law, copyright, trademark, and IP litigation issues. We work with authors, musicians, artists, photographers, bloggers, songwriters, filmmakers, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you with your entertainment law, copyright, or IP questions, please call (913-707-9220) or email (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2016, Stephen M. Johnson, Esq.

Led Zeppelin wins “Stairway to Heaven” copyright case

Via BBC and NPR, a Los Angeles jury found Led Zeppelin did not infringe a copyright with its iconic song “Stairway to Heaven.” While Led Zeppelin won the case (and gets to keep its $562 million+ in royalties), the jury did find that the band had access to prior art (the older song), an element of copyright infringement. After the court victory, Zeppelin band members released a statement to the LA Times: “We are grateful for the jury’s conscientious service and pleased that it has ruled in our favor, putting to rest questions about the origins of ‘Stairway to Heaven’ and confirming what we have known for 45 years … We appreciate our fans’ support, and look forward to putting this legal matter behind us.” This jury verdict for Led Zeppelin comes on the heels of our prior post about the case.

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on entertainment law, copyright, trademark, and IP litigation issues. We work with authors, musicians, artists, photographers, bloggers, songwriters, filmmakers, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you with your entertainment law, copyright, or IP questions, please call (913-707-9220) or email (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2016, Stephen M. Johnson, Esq.

Substantial Similarity and Copyright Law

In copyright law, when a person claims someone else stole (or “infringed”) their work, they have to prove substantial similarity between the two works. In Los Angeles, a trial is underway about the Led Zeppelin song, “Stairway to Heaven.” (The band’s Jimmy Page talks about writing the iconic song here.) Since its 1971 release, the band has made well over $562 million in song royalties. But some other musicians claim the song is too similar to an earlier song, “Taurus” (1968), infringing the Spirit band’s prior art. As the parties battle the case out in court, both sides are calling expert witnesses to evaluate how similar the songs are (or aren’t), and whether copyright infringement occurred. What do you think – are the songs too similar, does Stairway infringe on Taurus? Whatever the court’s decision, this case may reverberate through the music and copyright law worlds for some time.

P.S. – The Dark Horse copyright infringement case that we discussed some time ago was dismissed from St Louis court, but no news on whether it was refiled in California, which the St Louis judge suggested was the proper venue.

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on entertainment law, copyright, trademark, and IP litigation issues. We work with authors, musicians, artists, photographers, bloggers, songwriters, filmmakers, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you with your entertainment law, copyright, or IP questions, please call (913-707-9220) or email (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2016, Stephen M. Johnson, Esq.

Copyright Attorney’s Fees

Thursday morning the U.S. Supreme Court unanimously decided Kirtsaeng v. John Wiley & Sons, Inc., per Justice Elena Kagan, the latest salvo in a fascinating copyright saga over John Wiley’s textbook business (see Slip, 1-2, where Justice Kagan tells the story of the plaintiff’s international entrepreneurial flair). The textbook company sued Kirtsaeng for copyright infringement, for illegally distributing their textbooks overseas (Copyright Act, §§106(3), 602(a)(1)), but he said the first sale doctrine applied in his defense. The case made  its way through the courts, and several years ago, the U.S. Supreme Court agreed that the first sale doctrine applied to allow the resale of foreign-made or domestically-made books (Slip, 2).

The Copyright Act (§505) allows a court to award attorney’s fees to the winning party in a copyright case. Having won, the plaintiff Mr Kirtsaeng had racked up about $2 million of legal bills, fighting his way through the courts and winning. The Court took up his case again to resolve a lower court split over how to calculate a reasonable attorney’s fee – give substantial weight to objective reasonableness (2nd Cir), look at the totality of circumstances (4th Cir), or simply presuming the winning party got its legal bill paid (5th Cir). The Supreme Court sent the legal bill back to the trial court for review, instructing them to effectively blend the lower court approaches and “giv[e] substantial weight to the reasonableness of Wiley’s litigating position, but also taking into account all other relevant factors” (Slip, 12) and noting “courts must view all the circumstances of a case on their own terms, in light of the Copyright Act’s essential goals” (Slip, 11).

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on entertainment law, copyright, trademark, and IP litigation issues. We work with authors, musicians, artists, photographers, bloggers, songwriters, filmmakers, and others to provide cutting edge, reliable expertise on IP. We can help you answer these questions with confidence and friendly expertise. If we can serve you with your entertainment law, copyright, or IP questions, please call (913-707-9220) or email (steve@johnsonlawkc.com) to schedule a free, convenient consultation.

(c) 2016, Stephen M. Johnson, Esq.