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.

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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.

Happy 50th, Super Bowl!

Many of us watched the historic 50th anniversary Super BowlTM game Sunday evening, playing in San Francisco, and broadcast globally. You may have had a favorite team (Broncos or Panthers), coach, quarterback, or simply enjoyed the commercials and good times with friends. Now that the 39 year old quarterback Peyton Manning has won his 2nd Super BowlTM ring, everyone’s wondering if he will retire in a blaze of glory or come back for another season.

As you enjoy clips of your favorite commercials, here’s some football law for your inner armchair quarterback. The game has a famous trademark angle – the NFL has trademarked the phrase “Super Bowl” used in connection with the game, so others have to say “the Big Game” or “Souper Bowl,” or other code words to avoid getting sued.

Speaking of football lawsuits, here’s the fascinating story from the NYT of the only known surviving tapes of the first Super BowlTM, between the Green Bay Packers and (my hometown favorite) the Kansas City Chiefs. And here’s some more food for thought: a copyright lawyer’s dissection of the NFL’s copyright claims.

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

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.

A Toast to Champagne™

Happy New Year! As we say so long to 2015 and hello to 2016, many will be toasting with champagne. To celebrate the festivities, we have some wine trivia for your New Year’s Eve party. Champagne has a rich history that’s bubbled up in intellectual property law, and been decanted into a trademark. Champagne is a geographical trademark of the Champagne region of France, so for a wine to be a “champagne,” its grapes must be grown in the Champagne area of France. Trademarks guarantee consumers they are getting a genuine product or service – your favorite brands are likely trademarked. The French call sparkling wines from other regions of France Mousseux or Crémant. Among many other virtues, the French have long been excellent vintners. Many New Year’s Eve revelers enjoy sparkling wines from other countries or from America (especially California). Many sparkling wines are labeled Méthode Champenoise, French for champagne method. Hearkening back to geometry class, just as every square is a rectangle, but not every rectangle is a square, so every bottle of champagne is made in the Method Champenoise, but only bottles from Champagne, France are truly champagne. (Think of Kansas City BBQ vis-a-vis BBQ in the Kansas City style.) What’s your favorite champagne or sparkling wine to celebrate with? Cheers to a happy, healthy, and prosperous 2016! Salut, mon amis!

(c) 2015, Stephen M. Johnson, Esq.

My law firmJohnson Law KC LLC, is experienced counseling individual, corporate, and nonprofit clients on copyright, entertainment law, and IP 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, your business, or nonprofit organization with your copyright and IP questions, please call (913-707-9220) or email us (steve@johnsonlawkc.com) to schedule a free, convenient consultation.