Recent Blog Posts

The Beastie Boys Sued For Copyright Infringement Based On Unauthorized "Sampling"

Grimes & Battersby — Thu, 10 May 2012 20:53:00 GMT

As reported by Reuters, legendary hip-hop and rap artists "The Beastie Boys" were recently sued in federal court in New York by TufAmerica, Inc., the purported exclusive licensee of recordings that were allegedly "sampled" by The Beastie Boys in 1986 and 1989. Generally speaking, "sampling" involves taking a portion of one sound recording and reusing it as an instrument or a rhythm in a different sound recording.

The timing of the lawsuit could hardly have been worse, given that it was filed the day before Adam Yauch, one of the founding members of The Beastie Boys, known to his legion of fans as "MCA," passed away after a long battle with cancer.

The lawsuit alleges that The Beastie Boys engaged in unauthorized sampling of portions of the songs "Say What" and "Drop the Bomb" by R&B and funk band "Trouble Funk." The Beastie Boys' songs at issue include "Hold It Now Hit It," "The New Style," "Car Thief" and "Shadrach," which were originally released in 1986 and 1989. The lawsuit seeks damages for copyright infringement.

One issue in the case will be the length of time that TufAmerica has waited to bring its claims. As a general rule, copyright infringement actions must be brought within three years from the date on which the copyright infringement is discovered, and this time limitation may be extended if the infringement is ongoing. Notably, however, the Southern District of New York (where the instant action was brought), has in recent years applied the "injury rule," rather than the "discovery rule," meaning that the statute of limitations bars claims brought three years after the initial publication of the allegedly infringing sound recordings, regardless of when the plaintiff discovered the alleged infringement. Thus, the applicable statute of limitations may bar TufAmerica's claims in this case.

The Beastie Boys may also have a defense that TufAmerica acquiesced in their use of Trouble Funk's songs by not raising the issue sooner. The Beastie Boys could argue that they relied upon such acquiescence in continuing to sell their sound recordings over the past twenty-plus years, and therefore TufAmerica should be "estopped" from asserting its claims.

Apparently recognizing this possibility, the lawsuit alleges that the sampled portions were "effectively concealed to the casual listener" and that the infringement was only discovered "after conducting a careful audio analysis . . . that included isolating the suspected portion of the recording." This, in turn, begs the question as to whether the portions of the songs at issue are truly "substantially similar" (the standard for copyright infringement), given that such similarity may not have been apparent to an ordinary listener.

It will be interesting to see how this dispute plays out. The case is TufAmerica, Inc. v. Diamond, et al., 12 Civ. 3529 (S.D.N.Y.).

The Best Defense Is A Good Offense: Raid At Baltimore Flea Market Highlights Necessity for Diligent, Proactive Anti-Counterfeiting Methods

Grimes & Battersby — Thu, 10 May 2012 20:46:00 GMT

On the heels of our post concerning luxury jean designer True Religion's anti-counterfeiting strategy, U.S. Immigration and Customs Enforcement (ICE) announced that its Homeland Security Investigations unit seized over $47 million in counterfeit merchandise at the Patapsco Flea Market in Baltimore, Maryland. Counterfeit items were discovered bearing prominent brand names such as Louis Vuitton, National Football League, Gucci, Coach, Lacoste, Tiffany & Co., UGG, Sony and Under Armour.

The raid occurred April 22nd and was reportedly the result of an "ongoing criminal investigation" that had been underway for several years. The press release reports that "special agents, with assistance from law enforcement and industry partners, seized nearly 220,000 counterfeit items including clothing, shoes, jewelry, handbags, DVDs, CDs, perfume, make-up and other personal care items" that would have carried a "suggested retail price" of $47.3 million had the items been legitimate. As a result of the operation, ICE seized $1.5 million in alleged criminal profits.

One of the more notable aspects of the operation is the level of cooperation between federal agencies, local law enforcement and industry partners. ICE announced that a number of entities were involved in the operation, including the Maryland State Police, Baltimore Police Department, Under Armour and Estee Lauder, among others. In previous articles, we have urged brand owners to develop sound and effective anti-counterfeiting strategies by, among other things, working closely with federal and state authorities to detect, investigate and, ultimately, prosecute counterfeiters civilly and criminally. ICE's enforcement action demonstrates the potential benefits of industry and government coordination, i.e., the discovery of substantial counterfeit operations and the seizure of alleged criminal proceeds.

Crowdfunding Raises Important Intellectual Property Concerns -- What You Should Know

Grimes & Battersby — Wed, 02 May 2012 16:05:00 GMT

Venture capitalists move over. CNN Money reports that inventor Eric Migicovsky raised over $7.8 Million through the crowdfunding website Kickstarter, obliterating the previous Kickstarter fundraising record of $3.3 million. According to the article, three weeks ago Migicovsky launched a fundraising campaign touting a prototype for a watch that syncs with iPhone and Android technology -- the Pebble watch. Within hours he had reached his initial $100,000 funding goal. As of the release of this post, Migicovsky had raised $7,960,950 from 53,430 backers with 16 days still to go in his Kickstarter campaign.

Crowdfunding is an increasingly popular alternative to venture capital and other traditional avenues of investment. However, before posting a prototype or invention on a crowdfunding website -- where millions of people can view it 24 hours-a-day -- it is critical to maximize intellectual property protection or risk permanently losing rights.

One way to protect intellectual property is to file a provisional patent application before disclosing it to the public. A provisional patent application gives the applicant one year to commercialize or exploit the invention before filing the non-provisional patent application. During this time, the applicant can use the "patent pending" label which can have a considerable deterrent effect on potential competitors and prevent copying or stealing. However, do not miss the one-year deadline. Failure to file the non-provisional patent application within the one-year period will likely bar the applicant from obtaining patent protection.

Trade secrets, confidential information and other proprietary information should also be carefully considered prior to public disclosure through a crowdfunding campaign. Public disclosure or failure to take steps to adequately preserve trade secrets and confidential information could result in a permanent loss of rights. It should be carefully considered whether there is a way to present the invention without revealing trade secrets or confidential information.

We routinely advise inventors and companies with respect to new products. In our experience, no two products are the same and there are unique intellectual property rights to consider relative to each specific invention. We strongly recommend carefully considering all of the rights associated with a product or invention before releasing it to the public.

Luxury Jeans Designer True Religion Wins $864 Million Judgment Against Chinese Counterfeiters -- But, Was It Worth It?

Grimes & Battersby — Mon, 30 Apr 2012 16:27:00 GMT

The Los Angeles Times reported that luxury jeans designer and manufacturer, True Religion, won an $864 million judgment against 282 websites reportedly selling fake True Religion products from China through various websites such as TrueReligion4Cheap.com. None of the defendants appeared in court and the District Court awarded a default judgment to True Religion. In addition to monetary damages, all 282 websites were shut down.

An $864 million judgment certainly sounds impressive, but it seems highly unlikely that True Religion will be able to collect on the judgment or ensure that the counterfeiters do not strike again. As reported by the Los Angeles Times, True Religion's general counsel, Deborah Greaves, noted that, "It's not unusual to give false names and addresses when registering these sites, .... They can hide behind the Internet and open up new accounts somewhere else." Consequently, it appears that True Religion was simply trying to serve a warning to counterfeiters because it could not otherwise shut them down permanently.

It is debatable whether such a "warning" is an effective part of an anti-counterfeiting strategy. While True Religion successfully shut down the counterfeiters' websites, the litigation likely did not reveal any identifying information about the counterfeiters because they never appeared in the case (thus, they truly are able to "hide behind the Internet"). Consequently, it will be difficult, if not impossible, for True Religion to ensure that the counterfeiters do not pick up their operations and move elsewhere. Indeed, True Religion will likely need to take action against these same counterfeiters in the future. Moreover, even if True Religion knew the identity of the counterfeiters, it would likely be prohibitively expensive and difficult to enforce the judgment in China.

As a hugely popular luxury brand, True Religion is no doubt familiar with the tremendous costs and damage caused by counterfeiters and likely employs numerous different methods to combat counterfeiters. Nevertheless, it is difficult to understand the logic behind its case against the 282 Chinese websites as there are other means -- besides potentially expensive federal litigation -- to successfully investigate and stem the flow of infringing merchandise into the U.S. from counterfeiters. Grimes & Battersby's Managing Partner and Founder Chuck Grimes recently published an article discussing the need to develop sound and effective anti-counterfeiting strategies by, among other things, working closely with federal and state authorities to detect, investigate and, ultimately, prosecute counterfeiters civilly and criminally.

Should You Acquire A Vintage Brand For Your New Product?

Grimes & Battersby — Thu, 26 Apr 2012 13:36:00 GMT

As recently reported in The Wall Street Journal, it has become fashionable for businesses seeking to market new products to revive brands that had years ago been ubiquitous but had since become obscure.

An example of this phenomenon is "NATIONAL PREMIUM" beer. The once-iconic mid-Atlantic brand was launched in the 1930's and cultivated a national and international following. It became famous in and around Baltimore, Maryland in the 1960's, in part because its owner also owned the Baltimore Orioles and prominently featured the brands at Orioles' baseball games around this time.

According to the WSJ article, "NATIONAL PREMIUM" beer "disappeared in the mid-1990s after then-owner Stroh Brewing Co. ceased production amid weak sales." But now, an upstart brewing company has acquired rights in the "NATIONAL PREMIUM" trademark at auction for $1,200 and intends to revive the brand.

Reviving a vintage brand makes sense from a trademark perspective on a variety of levels. As a preliminary matter, the new owner acquires a trademark that may still have "goodwill" and "secondary meaning" associated with it (i.e., the consuming public may still have positive feelings about the brand and recognize it as being associated with a specific product). Such "secondary meaning" is difficult to establish, but once it exists, it results in a stronger trademark.

In contrast, when an entirely new trademark is adopted, it may take years before the trademark becomes associated with the goods in the mind of the purchasing public. As a result, the owner of a new brand is likely to spend more on advertising and promotion during start-up.

Another advantage is that the new owner will likely be acquiring a brand that has enjoyed a modicum of success in the past. The odds of success are less certain when one begins with an entirely original brand.

When acquiring rights to a vintage brand, one major concern is that the prior owner may have "abandoned" its rights. In the United States, three consecutive years of non-use of a trademark in commerce constitutes "abandonment" and results in a loss of trademark rights. A third party may then jump in and begin to use the trademark, thus creating independent, and possibly superior, trademark rights.

If a vintage trademark has truly been abandoned, arguably the acquisition of a prior owner's rights would have little value. Instead, a party seeking to adopt the abandoned mark would be better off either: (i) beginning to use the mark in commerce and filing a trademark application based on use; or (ii) filing an "intent-to-use" trademark application based on its intention to use the mark in commerce. In the case of "NATIONAL PREMIUM," an enterprising party saw an opportunity and did just that, i.e., filed an "intent-to-use" application, secured the rights and then sold them at auction.

If your business is in the process of selecting a new brand, we encourage you to contact an Intellectual Property Attorney for advice regarding which trademarks are available to be used, which are good candidates for acquisition and which should be avoided.

HOT OFF THE PRESSES: Popular UK Boy Band 'One Direction' Sued In California for Trademark Infringement

Grimes & Battersby — Wed, 25 Apr 2012 11:15:00 GMT

A California-based band by the same name has filed a lawsuit against popular United Kingdom boy band One Direction. In a complaint filed in the United States District Court for the Central District of California on April 9, 2012, the California band claims it has been using the ONE DIRECTION trademark in connection with musical performances since 2009 and has extensively used the trademark in connection with the band's marketing and sales promotions on various websites since 2010. When the California band released its first album in the United States in February 2011, they also filed an application with the United States Patent & Trademark Office for the ONE DIRECTION trademark.

The UK band -- comprised of members Niall Horan, Zyan Malik, Liam Payne, Harry Styles and Louis Tomlinson -- rose from obscurity just two years ago when a judge on the UK version of the 'X Factor' suggested that the five solo artists unite and form a band. According to the allegations in the complaint, the UK band first performed under the ONE DIRECTION trademark in the UK on October 2, 2010 and released an album in the UK in September 2011. It is alleged that the UK band signed on with Columbia Records (a division of Sony) and introduced a single in the United States around February 2012.

Each member of the UK band is individually named in the complaint, as well as Columbia Record's parent companies, Sony Entertainment and Sony Music Holdings, Syco Entertainment Inc. ('X Factor' judge Simon Cowell's label) and Simco Limited (managers for the UK band). The California band alleges that the defendants were aware of the California band's rights in and to the ONE DIRECTION trademark but "chose to ignore the [California band's] rights and willfully infringed them." Records at the United States Patent & Trademark Office show that the California band's application for the ONE DIRECTION trademark was published on November 29, 2011 and that Simco Limited requested a 90 day extension of time to file an opposition on December 13, 2011 -- approximately two months before the UK band debuted in the United States.

The complaint alleges counts for false designation of origin under 15 U.S.C. § 1125(a) and common law unfair competition. The California band seeks a permanent injunction, the destruction of all infringing materials, an accounting of profits and three times the profits generated by the UK band. The complaint alleges damages exceeding $1 million.

We will monitor this case and provide updates on the Grimes & Battersby blog. For additional information please send us an email or call us at (203) 849-8300.

Gideon Sunback - Inventor of the Zipper - Celebrated Today on Google Doodle.

Grimes & Battersby — Tue, 24 Apr 2012 13:24:00 GMT

Today would have been the birthday of Gideon Sunback, the Swedish American engineer who received a patent in 1917 for an invention he called a "Separable Fastener":

http://www.google.com/patents?vid=1219881

Sunback's invention later became better known by the name "Zipper" – a term coined by B.F. Goodrich when it began using Sunback's "Separable Fastener" in connection with its boots and galoshes in 1923.

At the time, Goodrich successfully registered "Zipper" as a trademark, but its efforts to try to stop others from using the name in connection with Sunback's invention came "unzipped" on the grounds that the term was a generic name derived from the word "zip."

While Goodrich was quick to see the benefits of the Zipper, several decades passed before the garment industry embraced the Zipper as a clothing fastener.

Goodrich maintained trademark rights in connection with the "ZIPPER" mark for "CONVEYOR OR TRANSMISSION BELTING COMPOSED CHIEFLY OF FABRIC AND/OR NATURAL RUBBER OR SYNTHETIC COMPOUNDS HAVING THE CHARACTERISTICS OF RUBBER" until 1986, when it gave up its registration (U.S. Reg. No. 399503, Issued January 12, 1943).

Gideon Sunback died in 1954.

Clients Ask About Protecting Trademarks In View Of Impending Issuance Of New gTLD's

Grimes & Battersby — Thu, 29 Mar 2012 19:01:00 GMT

There has been much hype recently about new domain name extensions that will soon become available. Instead of the traditional .com, .net and .org, the less traditional .biz and .info, or the non-traditional .xxx, domain name registrants may soon be able to own an extension of their choice. Such personalized extensions could relate to a registrant's business or industry (e.g., .cigar, .fashion, .wine). The value of such a personalized extension seems inherent, especially for leaders in a given industry.

The new domain name extensions, referred to as gTLD's (Generic Top-Level Domain Names), are being issued by the Internet Corporation for Assigned Names and Numbers ("ICANN"), a California-based "non-profit" that possesses great power to bestow new domain name extensions upon the public (and to charge handsomely for the service).

While the prospect of owning and controlling your very own domain name extension sounds riveting, the details behind the program reveal that it will not be practicable or desirable for many businesses to participate. In fact, we cannot imagine a single client of our firm that would have a genuine interest in participating, given the substantial costs and ongoing requirements of the program.

As a preliminary matter, the application fee is $185,000 per new gTLD. This is the fee for ICANN to evaluate the application, but there is no guarantee that an Applicant will be approved. Moreover, the application fee is not fully refundable (although ICANN does indicate that a partial refund may be available in certain situations). In addition, if more than one Applicant applies for a specific gTLD, the extension will be auctioned off to the highest bidder.

If fortunate enough to make it through the application process with reserves in its coffers, the successful Applicant will be required to enter into a ten year contract with ICANN, under which it will be obligated to pay $6,250 in fees quarterly. This computes to an additional $250,000 in fees over the ten year contractual period.

Perhaps more troubling, the successful Applicant will be charged with operating a fully functional domain name registry and complying with all the technical obligations and reporting requirements which it entails. ICANN indicates that an Applicant is "applying to create and operate a registry business supporting the Internet's domain name system" and "will need to demonstrate the operational, technical and financial capabilities to run a registry."

Clients have been asking what steps they should take to protect their trademarks in view of the issuance of new gTLD's. Trademark and brand owners should be aware that there will be an opportunity to file a formal objection to any applied-for gTLD that: (i) takes advantage of the objector's reputation or trademark; (ii) impairs the distinctive character of such trademark; or (iii) creates a likelihood of confusion with such trademark.

Assuming that the current schedule holds to form, ICANN will publish a list of all applied-for gTLD's in late April 2012. Interested parties will then have approximately seven (7) months to file objections based on several grounds, the most significant of which for brand owners is "legal rights." This means that any party that has valid rights to the string of characters that comprises the gTLD in dispute (such as trademark rights) may object to the application on this ground. The procedures for resolving the objections will likely resemble existing trademark and domain name dispute resolution procedures of which brand owners are likely familiar, including proceedings through the World Intellectual Property Organization (WIPO).

One major "catch" to the objection process is that even assuming that an objecting party has trademark rights in the string of characters that comprises the gTLD in dispute, such party will not be able to prevent an application from being approved if the Applicant has independent rights in the string of characters. Since multiple parties may own rights in the same trademark for different goods and services, it is entirely conceivable that an Applicant will have independent legal rights in the applied-for gTLD, in which case the objecting party will have no recourse to prevent the application from being approved.

Brand owners that are interested in protecting their trademarks should engage an Intellectual Property Attorney and/or Trademark Litigation Attorney to monitor the gTLD applications, evaluate whether an objection is necessary or prudent, and guide them through the objection process.

Brand owners may also want to consider setting up a periodic process to search for new domain names that have been registered in connection with new gTLD's, in order to ensure that such domain names do not violate the trademark rights of the brand owner (e.g., www.infringingmark.newgTLD).

"Blue Ivy Carter": The Importance of Registering Trademarks

Grimes & Battersby — Tue, 13 Mar 2012 22:52:00 GMT

How did international superstars Beyonce and Jay-Z celebrate the birth of their daughter, Blue Ivy Carter, in January? They commemorated the occasion by filing an intent-to-use, multi-class trademark application for her name, of course. Apparently recognizing the caché of the highly anticipated newborn's name, and further anticipating the countless merchandising opportunities that may arise, the proud parents filed an application to register BLUE IVY CARTER merely days after the blessed event.

The BLUE IVY CARTER application covers a host of goods and services in numerous international classes. Such a "multi-class" application is often used by an Applicant to preserve the right to use a mark in connection with a large number of goods and services, even though the Applicant may never commence actual use of the mark in connection with many of those goods and services. To this end, it is difficult to imagine BLUE IVY CARTER "footballs" and "golf balls" making their way into the marketplace anytime soon, although these goods are covered by the application.

As it turns out, the superstar parents were not the first to conjure up the name BLUE IVY. A Boston-based company had been using the mark BLUE IVY in connection with its event planning services since 2009. It did not file for a trademark registration, however, until after the application for BLUE IVY CARTER had been filed and publicized. Apparently feeling a sense of urgency to protect its rights in the mark, the company filed an application for BLUE IVY in February. Importantly, the BLUE IVY CARTER and BLUE IVY applications both cover services in International Classes 35 and 41.

The filing of these applications caused us to think about the importance of registering trademarks and the dilemma in which the owner of the BLUE IVY application may find itself as a result of the filing of the BLUE IVY CARTER application.

As a preliminary matter, it is important to recognize that trademark rights are based on use in commerce. As soon as a trademark is used in commerce in connection with goods or services, trademark rights exist in the mark even if an application for registration has never been filed. The owner of a mark that is used in commerce, but not registered, is said to have "common law" trademark rights.

By virtue of its prior actual use in commerce, the BLUE IVY trademark has superior rights to the BLUE IVY CARTER trademark, which has not yet been used in commerce, as regards services in International Classes 35 and 41. Therefore, assuming for this discussion that both parties desire to use their respective marks for identical services, the BLUE IVY trademark, having superior rights, should ultimately prevail in any such dispute.

However, by not registering the BLUE IVY trademark when use commenced and instead relying on "common law" rights, a procedural dilemma has arisen, the nature of which would likely have been anticipated only by an experienced Trademark Attorney. The BLUE IVY CARTER application was filed earlier than the BLUE IVY application. As a result, the BLUE IVY CARTER application will have priority of prosecution in the Trademark Office, even though the BLUE IVY trademark has superior rights. This means that, when examining the BLUE IVY CARTER application, the Trademark Examiner at the U.S. Patent and Trademark Office will not consider the later-filed BLUE IVY application or any "common law" rights its owner possesses.

If, on the other hand, the Trademark Examiner believes that there is a likelihood of confusion between the two marks, the BLUE IVY CARTER application may well be cited against the BLUE IVY application. In such a scenario, the BLUE IVY application will likely be suspended until a decision is made regarding registration of the BLUE IVY CARTER mark.

The result is that BLUE IVY CARTER may ultimately be approved by the U.S. Patent and Trademark Office for registration. The owner of the BLUE IVY trademark would then need to take affirmative steps to protect its rights, either by commencing an "Opposition" proceeding to oppose registration, or a "Cancellation" proceeding to cancel the mark in the event that it should register. Both of these alternatives can be expensive, time consuming and will delay the ultimate registration of the BLUE IVY trademark. Moreover, both alternatives could have been avoided had the BLUE IVY application been filed on or before the date when the mark was first used in commerce.

Federal registration is also important because it affords the owner several legal presumptions in a dispute with another party, to wit:

1) The presumption that the registered mark is valid;

2) The presumption that the Registrant owns the mark; and

3) The presumption that the Registrant has the exclusive right to use the mark in commerce nationwide in connection with the goods and/or services specified in the registration.

In any dispute with the Registrant, it would be incumbent upon the party adverse to prove that these presumptions should not apply.

More importantly, once a registered mark has been used in commerce continuously for five years after registration and the Registrant files certain documentation, the mark can become "incontestable," in which case it can only be challenged on limited grounds (and not on the most typical ground - namely, likelihood of confusion with another mark). This, in effect, creates a safe harbor for an incontestable mark as used on the goods or services in the registration, subject to only a few defenses.

If you would like more information regarding registration of your "common law" trademarks, or should you have any questions regarding your trademark rights, we recommend that you consult with an experienced Intellectual Property Attorney or Trademark Attorney. If you believe that your trademark rights are being infringed, we recommend that you consult with an experienced Trademark Litigation Attorney as soon as possible.

This Is "Linsanity": Registering Personal Names Of Others As Trademarks

Grimes & Battersby — Fri, 17 Feb 2012 20:46:00 GMT

Jeremy Lin ("Lin") is a professional basketball player with the New York Knicks who, until recently, toiled in obscurity, but has managed to turn an opportunity to start for the Knicks into overnight stardom. Lin attended Harvard University, but was not drafted out of college. He later was a reserve with the Golden State Warriors and Houston Rockets before being waived by both teams. From the time that the Knicks began providing Lin with significant playing time in early February, due in part to the unavailability of other "starters," the Knicks have won seven straight games. Lin has been an integral part of several wins, hitting game-winning shots and providing timely assists. His outstanding play has revived a previously lethargic Knicks franchise and fan base. The fact that Lin came out of nowhere to become an overnight NBA success has caused many in the media to label this unprecedented phenomenon as "Linsanity", a play on words combining Lin's last name and the word "insanity."

Apparently seeking to capitalize on the suddenly vogue term, two individuals who are not connected to Lin have filed trademark applications with the United States Patent & Trademark Office ("PTO") seeking to register "LINSANITY" as a trademark for various types of apparel including caps, t-shirts, athletic uniforms, etc.

The filing of these applications caused us to think about the trademark rights that Lin has in his name, and whether he can prevent two unrelated applicants (who incidentally are not named Lin) from registering a mark that incorporates his name and is a well-known reference to his unexpected, outstanding play.

Arguably, the very fact that "LINSANITY" is a recognized reference to Lin should mean that he alone should have rights in the term as a trademark. In essence, "LINSANITY" is his overnight pseudonym with attendant secondary meaning. It also includes, as its primary focus, his surname. For these reasons, one could make a case that the PTO should not allow anyone else to register the term without Lin's consent.

As a preliminary matter, the law generally frowns upon the adoption of another's name for the purpose of pecuniary gain, whether as a trademark or as part of an Internet domain name. Generally, such conduct is viewed as bad faith adoption, which in trademark cases may often be used to support a finding that the Applicant is not entitled to use the mark.

In this case, there are several grounds upon which the PTO may reject the pending applications. Section 2(a) of the Lanham Act precludes federal registration for matter which may falsely suggest a connection with persons living or dead. 15 U.S.C. § 1052(a). In this case, given the widespread use of "LINSANITY" in the press in reference to Lin, the PTO could certainly conclude that the term falsely suggests a connection with him.

In addition, Section 2(c) of the Lanham Act bars the registration of a trademark that "consists of or comprises a name . . . identifying a particular living individual except by his written consent. . ." 15 U.S.C. § 1052(c). Significantly, the statute has been interpreted to cover composite marks that include a surname along with other matter. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §13.37 n.11 (2010). Given that "LINSANITY" incorporates Lin's surname as its primary focus, the USPTO may well conclude that the mark identifies Lin and therefore his consent would be required before it can be registered.

Furthermore, Section 2(e) of the Lanham Act bars registration of a "mark which . . . is primarily merely a surname." 15 U.S.C. §1052(e). The determination of whether a mark is "primarily merely as surname" involves the consideration of several factors, including, but not limited to, the rarity of the surname in question and whether the designation has a recognized meaning as other than a surname. 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition §13.30 (2010). In making this determination, the PTO evaluates the mark as a whole. Id. Here, because the mark is comprised of the surname "LIN" together with other non-surname matter, the PTO may well conclude that "LINSANITY" is not primarily as surname. On the other hand, given that the mark is widely recognized as referring specifically to Lin, it is possible, albeit unlikely, that the PTO could deny registration of "LINSANITY" on this basis, as well.

In the unlikely event that a pending trademark application for "LINSANITY" ultimately matures into a registration and use of the mark commences, Lin would appear to have a cause of action for false designation of origin under the Lanham Act. Section 43(a) of the Lanham Act, 15 U.S.C. § 1125(a), provides for a civil action against:

"Any person who, on or in connection with any goods or services, or any container for goods, uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which . . . is likely to cause confusion, or to cause mistake, or to deceive as to the affiliation, connection, or association of such person with another person, or as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person . . ." (emphasis added).

Therefore, to the extent that consumers are likely to associate the mark "LINSANITY" with Lin, the use of the mark on caps, t-shirts, athletic uniforms and other items of clothing may well cause consumer confusion and/or deceive customers into believing that such goods originate with, or are authorized or approved by, Lin. In such a case, Section 43(a) of the Lanham Act provides a vehicle through which Lin could challenge the unauthorized use of "LINSANITY".

In the event that you have questions regarding the adoption and/or registration of trademarks, we recommend that you consult with an experienced trademark attorney prior to adoption, which may save you substantial time and expense in ultimately adopting a proper mark.

"I'm Going to Disney World!" Trademark Protection for Advertising Slogans and Phrases

Grimes & Battersby — Fri, 10 Feb 2012 23:06:00 GMT

Following every National Football League (NFL) Super Bowl since 1987, despite the celebratory chaos and clamor that surrounds the winning team and their fans, the Super Bowl's Most Valuable Player (MVP) has been tracked down and asked this crucial question, "What are you going to do next?" The legendary answer? "I'm going to Disney World!" (or "I'm going to Disneyland!"). Last Sunday, after the New York Giants defeated the New England Patriots in Super Bowl XLVI, Giants quarterback Eli Manning turned to a camera and engaged in the now famous exchange. It must have been deja vu for Eli Manning since he uttered the same words just a few years earlier following his team's win and his receipt of the MVP award in Super Bowl XLII. Coincidentally, it was another Giants' quarterback, Phil Simms, who was the first Super Bowl MVP to say "I'm going to Disney World" in 1987. Since that time, iconic MVPs such as Doug Williams (Washington Redskins), Joe Montana (San Francisco 49ers), Troy Aikman (Dallas Cowboys), and Drew Brees (New Orleans Saints), among others, have exclaimed the famous answer.

Hearing that famous phrase last Sunday reminded us of the importance of understanding how and when slogans and phrases are protectable as trademarks. We note that "I'm going to Disney World" is not a federally registered trademark. There are, however, a number of phrases and slogans registered with the U.S. Patent & Trademark Office. Here are a few examples:

"WHERE'S THE BEEF?" (Wendy's International, Inc.)

"JUST DO IT." (Nike, Inc.)

"MELTS IN YOUR MOUTH NOT IN YOUR HAND" (Mars, Inc.)

"GOT MILK" (The Dairy Association)

Broadly speaking, a slogan or phrase is protectable if it is used in a manner that identifies and distinguishes goods or services from the goods or services of others. Thus the listed examples are protected because, when you see or hear "WHERE'S THE BEEF" - you think of Wendy's (as opposed to McDonalds). When you see or hear "JUST DO IT" - you think of Nike (not Reebok). The same goes for the famous slogans promoting M&M's and milk.

The Lanham Act defines a trademark as "...any word, name, symbol, or device, or any combination thereof--(1) used by a person, or (2) which a person has a bona fide intention to use in commerce and applies to register on the principal register established by this Act, to identify and distinguish his or her goods, including a unique product, from those manufactured or sold by others and to indicate the source of the goods, even if the source is unknown." 15 U.S.C. § 1127. Thus, a slogan or phrase, i.e., any combination of words -- can qualify for protection as a trademark under the federal statute (however, as discussed below, protection is not available if the slogan or phrase is merely informational, laudatory or descriptive, although in the case of a descriptive slogan or phrase it can be protected if it has acquired secondary meaning).

A slogan or phrase that does not identify the source of the goods or services or does not distinguish the goods or services from others is not protectable. Courts examine the nature and context of usage to determine whether a slogan or phrase is entitled to protection. An example arose in MicroStrategy Inc. v. Motorola Inc., 245 F.3d 335 (4th Cir. 2001). In 2000, Motorola sought to register the mark "Intelligence Everywhere" for a variety of products and services. In January 2001, MicroStrategy notified Motorola that it had used "Intelligence Everywhere" as a trademark since "at least as early as 1998." MicroStrategy claimed to possess common law trademark rights to the phrase (it had not yet filed an application for a federal registration) and informed Motorola that its intended use would constitute trademark infringement. Motorola balked at MicroStrategy's demand, forced MicroStrategy to file its own trademark application for "Intelligence Everywhere" and to file an infringement action against Motorola in the U.S. District Court for the Eastern District of Virginia. In the civil action, MicroStrategy alleged not only trademark infringement, but also trademark dilution and cybersquatting. MicroStrategy sought a preliminary injunction to bar Motorola from its intended use of "Intelligence Everywhere." The district court denied the preliminary injunction and MicroStrategy sought an expedited appeal to the U.S. Court of Appeals for the Fourth Circuit.

A three judge panel of the Fourth Circuit upheld the district court's ruling. For purposes of this post, we will not discuss every aspect of the panel's opinion. In relevant part, the panel held that MicroStrategy had "failed to demonstrate" use of the phrase sufficient "to identify MicroStrategy as the source of its goods or services." MicroStrategy's use of the phrase did not utilize a "particular design or sequence," appearing, instead, "sometimes" on the cover and sometimes "in the midst of text." MicroStrategy also did not employ "any 'constant pattern' or design" highlighting or featuring the phrase. In other words, MicroStrategy did not take sufficient steps to use the phrase as a trademark.

The panel also took note of MicroStrategy's portfolio of registered marks. Specifically, MicroStrategy did not use "Intelligence Everywhere" in the same manner as it had used other registered marks, such as "Intelligent Business." MicroStrategy did not use a trademark designation (e.g., TM), or distinctive fonts or colors. Simply put, MicroStrategy did not use "Intelligence Everywhere" in a manner to identify the source of its goods or services or to distinguish its goods or services from others. The phrase simply did not function as a trademark.

Slogans and phrases are also not protectable, regardless of the manner of use, if they are simply informational, laudatory, or descriptive -- although descriptive slogans and phrases can be protected after they have acquired secondary meaning (discussed below). For example, the phrase THE BEST BEER IN AMERICA (In re Boston Beer Co. L.P., 198 F.3d 1370 (Fed. Cir. 1999)) was held incapable of trademark protection because it was laudatory and descriptive. Other examples of slogans and phrases that have been found not to be protectable include AMERICA'S FRESHEST ICE CREAM (In re Carvel Corp., 223 U.S.P.Q. 65 (T.T.A.B. 1984)), WHY PAY MORE! (In re Wakefern Food Corp., 222 U.S.P.Q. 76 (T.T.A.B. 1984)) and AMERICA'S BEST POPCORN (In re Wileswood, 201 U.S.P.Q. 400 (T.T.A.B. 1978)). As explained in Boston Beer, "Marks that are merely laudatory and descriptive of the alleged merit of a product are also regarded as being descriptive․ Self-laudatory or puffing marks are regarded as a condensed form of describing the character or quality of the goods." Boston Beer, 198 F.3d at 1373 (quoting 2 J. Thomas McCarthy, McCarthy on Trademarks and Unfair Competition § 11:17 (4th ed. 1996) (internal quotations omitted)).

Ordinary slogans and phrases also do not qualify to receive trademark protection. For example, the phrase DRIVE SAFELY was held to be similar to "Have a nice day" or "Don't Worry" and thus not worthy of protection. In re Volvo Cars of North America, Inc., 46 U.S.P.Q.2d 1245 (7th Cir. 2001).

Some descriptive slogans and phrases can be protectableif they have acquired "secondary meaning." "Secondary meaning" is acquired when, in the minds of the public, the slogan or phrase is associated with a single source. For example, THE GREATEST SHOW ON EARTH was held to be protectable because the owner, Ringling Bros.-Barnum & Bailey, had established secondary meaning through extensive advertising (millions of dollars), length of use (over an extended period of time), and scope of use (numerous shows and performances). Ringling Bros.-Barnum & Bailey Combined Shows Inc. v. Celozz-Ettelson Chevrolet Inc., 855 F.2d 480 (7th Cir. 1988). We believe that the different outcomes in the Boston Beer and Ringling Bros. cases is attributable to the fact that the phrase in Ringling Bros. was at least partially suggestive, whereas the phrase in Boston Beer was merely descriptive. In Boston Beer, the court held that the phrase THE BEST BEER IN AMERICA "is so highly laudatory and descriptive of the qualities of its product that the slogan does not and could not function as a trademark to distinguish Boston Beer's goods and serve as an indication of origin."Boston Beer, 198 F.3d at 1373.

Ownership Disputes

Disputes sometimes arise over who owns a slogan or phrase – is it the advertising firm that produced it or the company that hired them to produce it? In the context of trademark protection, the key consideration is the identity of the source that the mark signifies. While an advertising firm may create the slogan or phrase, it is the firm's client that benefits from it and becomes the source signified by the slogan or phrase. See, e.g., American Express Co. v. Goetz and Gardner Design Group, LLC, 515 F.3d 156 (2d Cir. 2008) ("The Patent and Trademark Office's Trademark Trial and Appeal Board has long recognized, in such situations, that the slogans cannot be registered as marks by the advertising agency, even if they would be subject to registration by the end users of the marks."); In re Admark Inc., 214 U.S.P.Q. 302 (T.T.A.B. 1982); In re Adver & Mktg. Dev., Inc., 821 F.2d 614 (Fed. Cir. 1987); In re Local Trademarks, Inc., 220 U.S.P.Q. 728 (T.T.A.B. 1983).

The Benefits of Careful Planning and Strategy

The key to protecting slogans or phrases as trademarks is the manner of their use. The slogan or phrase must be used in a way that identifies the goods in connection with which it is used as being the goods of the user and the phrase or slogan must be used in a manner that distinguishes the user's goods from the goods of others. In other words, the slogan or phrase should be used in a distinctive manner, utilizing uniform and distinctive fonts, colors or typesetting, and it should be prominently incorporated in marketing and advertising materials.

As with any other trademark, we recommend involving trademark counsel at the earliest possible stage when considering adopting a slogan or phrase as a trademark. Trademark counsel can evaluate the proposed slogan or phrase (e.g., to determine whether it is possible to protect as a trademark) and recommend uses that may be beneficial in securing common law trademark protection and a registration with the U.S. Patent & Trademark Office.

Hot Off The Presses: Newt Gingrich Is Sued For Copyright Infringement Over Playing Of "Eye Of The Tiger" Song Recording

Grimes & Battersby — Wed, 01 Feb 2012 04:11:00 GMT

Rude Music, Inc. filed a lawsuit in the U.S. District Court for the Northern District of Illinois yesterday claiming that presidential hopeful Newt Gingrich, Newt 2012, Inc. and the American Conservative Union violated U.S. copyright laws by making public performances and distribution of Rude Music's "Eye of the Tiger" song recording in connection with Gingrich's campaign without authorization. Rude Music's "Eye of the Tiger" song recording is particularly well-known – having been used as the principal theme song for the Rocky III motion picture, and having received widespread recognition and awards, including an Academy Award nomination for best original song.

In the lawsuit, Rude Music -- a company solely owned by SURVIVOR co-founder and "Eye of the Tiger" co-author Frankie Sullivan -- alleges that, since at least 2009, Gingrich has taken "the stage at political conferences and similar public events as a recording of 'Eye of the Tiger' was played over the public address system." As examples, Rude Music alleges that "Eye of the Tiger" was "featured" at the "Conservative Political Action Conference ("CPAC") [held] in 2009, 2010 and 2011, and the Southern Republican Leadership Conference in 2010." Moreover, Rude Music alleges "Eye of the Tiger" has been regularly used at "numerous campaign appearances" this year in advance of the presidential election in November. The lawsuit also alleges that defendant American Conservative Union (which hosts CPAC) "posted on the internet video recordings of at least the 2010 and 2011 conferences, featuring Mr. Gingrich and 'Eye of the Tiger.'"

Had Mr. Gingrich secured the necessary public performance license, he could have simply played the "Eye of the Tiger" song recording at his campaign events. The problem for Mr. Gingrich is that he allegedly went further – making the song into his "theme song" – in essence suggesting that the song's creator and performers were "backers" of Mr. Gingrich, and wrapping it into his campaign materials.

In an ironic twist, in its complaint Rude Music seeks to preclude Mr. Gingrich from being able to avail himself of an "innocent" infringer defense by making reference to: (i) extensive amendments to the Copyright Act by Congress during his tenure in the United States House of Representatives; (ii) his own efforts to secure – and profit from – copyrighted works; and (iii) last, but by no means least, his now legendary performance during the South Carolina debate, when he proclaimed – while criticizing the proposed Stop Online Piracy Act: "We have a patent office, we have copyright law. If a company finds that it has genuinely been infringed upon, it has the right to sue…."

Unfortunately for Mr. Gingrich, Rude Music took his advice to heart and did just that – seeking in their lawsuit an injunction, actual damages, profits, statutory damages, enhanced to reflect Mr. Gingrich's willful infringement, and reasonable attorneys' fees, disbursements and costs.

Copyright infringement allegations concerning the unauthorized uses of songs in political campaigns are not a new issue. As long ago as the 1996 campaign of Bob Dole, Mr. Dole ran into trouble for morphing the legendary "Soul Man" recording into "Dole Man." In 2008, it was widely reported that several musical groups, including HEART and John Mellencamp, asked the John McCain-Sarah Palin campaign to stop using their copyrighted works. In 2009, Mr. McCain settled a lawsuit brought by Jackson Browne concerning unauthorized use of the song "Running on Empty" in an advertisement. Just last year, Tom Petty demanded that Michele Bachmann stop using his work "American Girl" at campaign events.

Copyrights are a valuable asset to musical groups and artists. Musical groups and artists should - and understandably do - take prompt, immediate action to address and prevent any unauthorized use of their copyrighted works.

For a copy of the complaint please send us an email with the subject line "Rude Music, Inc. Complaint." If you have any questions about copyright infringement or Rude Music, Inc. v. Newt 2012, Inc., et al please send us an email or call us at (203) 849-8300.

Don't Forget About Intellectual Property Markings

Grimes & Battersby — Mon, 30 Jan 2012 14:38:00 GMT

One of the most frequently asked questions directed to intellectual property attorneys is: what are the legal marking requirements for patents, trademarks and copyrights? In this post, we will provide an overview of the legal marking requirements in the United States, the advantages of complying with these requirements and the disadvantages of ignoring them.

The bottom line is that the failure to use markings appropriately and correctly can (and probably will) negatively impact your intellectual property rights and the value of your patents, trademarks and copyrights.

Patent Marking

This time last year, federal courts were in the midst of a flood of actions alleging that defendants had engaged in "false marking" by marking products with expired patent numbers. At that time, any individual was permitted to bring a "qui tam" action under 35 U.S.C. § 292(a) alleging that products had been incorrectly marked with patent numbers. In most cases, plaintiffs scoured the marketplace for any product with an expired patent number and then sought salutatory fines --- $500 per alleged violation. Hundreds of companies were sued and, in some cases, plaintiffs sought billions in damages. The U.S. Government put a stop to these lawsuits when it passed the America Invents Act last year. While the America Invents Act represented the first overhaul of the U.S. Patent System in decades, for purposes of this post, the Act limited the class of potential plaintiffs under 35 U.S.C. § 292(a). Now, only the United States is permitted to sue for statutory damages. Private individuals may only file suit if they have suffered a "competitive injury" as a result of the alleged false marking. Additionally, merely marking a product with an "expired patent" number is no longer a violation of 35 U.S.C. § 292(a).

Classic patent marking is a statement that the item in question is patented followed by an identification of the applicable patent number. For example, the typical patent notice takes this form: "U.S. Patent No. X,XXX,XXX." During the pendency of the application in the United States Patent and Trademark Office, many patent applicants frequently use the designation "Pat. Pending" or "Patent Pending" on their products, packaging and advertising or promotional material.

The patent laws (35 U.S.C. § 287) provide that a patent owner may give notice to the public through the use of an appropriate patent notice that a product is patented. Failure to mark a product or its appropriate packaging may result in an inability to recover damages against an infringer absent proof that the patent owner had otherwise notified the infringer of such infringement and the infringer continued to infringe thereafter. Thus, failure to mark such a product or its appropriate packaging can result in the loss of the ability to recover damages against an infringer who immediately ceased selling the infringing products upon notification from the patent owner. There is an exception to the general marking rule with respect to "method" patents. Where a patent is exclusively covered by method claims no such marking is required. However, where the patent covers method and apparatus or device claims then marking is required.

While the patent laws afford specific advantages to patent owners who place patent notices on their products, there are no such advantages afforded to individuals who indicate that their products are covered by a pending patent application. Nevertheless, it is widely accepted that there is a commercial advantage that results from warning a competitor that a product is the subject of a patent application. The belief is that a competitor, who might otherwise be inclined to copy or knock-off the product, might be reluctant to copy a product which might be patented in the future. The hope is that the competitor will reason: "Why make a major investment in tooling and promotion only to be enjoined from selling the product when the patent issues?"

The America Invents Act also includes a provision for so-called "virtual marking." Patent owners may satisfy the "notice" requirements of the patent laws by marking a product with the term "patent" or "pat." together with a website address (or "URL") "that associates the patented article with the number of the patent." The implication of this marking rule is that patent owners can list patents and products on a website instead of marking the individual products.

Trademark Marking

The difference between a trademark and a service mark resides in how the mark is being used. If the mark is used in conjunction with a particular product, e.g., a sweatshirt, it is a trademark. If, however, it is used in conjunction with a service, e.g., providing educational services, it is a service mark.

In most instances, the designations TM or SM are used prior to obtaining a federal registration for the mark. Frequently, trademark counsel will advise a client to use the designations TM or SM immediately upon commencement of the use of the mark. The designations are typically placed as a superscript at the upper right of the mark. There is no particular legal necessity to use the TM or SM designation with the mark other than to indicate to the public at large that the user considers the particular mark to be a trademark or service mark. Practically speaking, however, inclusion of a designation is highly recommended. For example, use of a designation can help persuade a federal court in subsequent enforcement action that the particular mark should be afforded protection. Conversely, if a designation is not used, the owner may have trouble explaining why there should be trademark protection when no notice had been given previously.

When the mark becomes registered with the United States Patent and Trademark Office, the designation TM or SM should be changed to ®. Just like TM and SM, the ® symbol should be placed as a superscript at the upper right of the mark. Some property owners prefer to use the designations "Registered in the U.S. Patent and Trademark Office" or "Reg. U.S. Pat. & TM Off." This is purely a matter of preference. The tag line "Registered Trademark" is not a statutory notice and may actually be misleading because it does not indicate where the mark was registered.

There is a significant legal reason for indicating that a mark is registered with the United States Patent and Trademark Office. 15 U.S.C. § 1111 provides that if a trademark owner commences suit against an infringer and has not indicated that it mark was registered, the owner is precluded from recovering profits and damages unless it can be established that the defendant had actual notice of the registration.

Copyright Marking

The Copyright Act defines copyright as: "original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device. Works of authorship include the following categories: (1) literary works; (2) musical works, including any accompanying words; (3) dramatic works, including any accompanying music; (4) pantomimes and choreographic works; (5) pictorial, graphic, and sculptural works; (6) motion pictures and other audiovisual works; (7) sound recordings; and (8) architectural works." 17 U.S.C. § 102

In many licensing situations, copyright protection is used in conjunction with trademark protection to secure the broadest rights in a particular logo or symbol, (e.g., the UCLA Bruin, which can be protected under both the trademark and copyright laws) or to protect advertising or packaging copy. The copyright notice is usually included directly on the product or the hangtag or label and typically takes the form: © XYZ, INC. 2012. Instead of the © symbol the word "Copyright" or the abbreviation "Copr." can be used.

Prior to 1989 when the U.S. enacted the Berne Convention Implementation Act, amending the 1976 Copyright Act to conform to most of the provisions of the Berne Convention, failure to include a copyright notice could be fatal to the owner's rights. Since then, however, failure to include the notice can no longer result in a loss of rights in the U.S. It is nevertheless still good practice to include the traditional copyright notice where applicable because of the benefits provided by statute. The failure to use a copyright notice may allow infringers to rely upon an "innocent infringer" defense. This defense can prevent a copyright owner from collecting statutory or actual damages for acts of infringement that occurred prior to the infringer receiving actual notice of the copyright.

The inclusion of the appropriate legal notice is important to make sure that the public (and your competitors) are aware that your products and property are covered by copyright protection. Copyright notices should be placed in such a manner and location as to give reasonable notice of the claim of copyright. While you may be tempted to eliminate the legal notice to make advertising copy or product packaging look "cleaner," you should resist that temptation.

Conduct Marking Reviews and Audits

Far too often individuals and companies do not have a cohesive, defined strategy to ensure intellectual property markings are used correctly. This can lead to irrevocable loss of rights and value. Moreover, intellectual property markings that are used falsely (such as, representing that a product is covered by the claims of a patent when it is not or representing that a trademark is registered when it is not) can result in liability.

We recommend conducting regular reviews and audits of all intellectual property, including markings. This is the only sound method to protect rights and value and prevent liability.

The Unfortunate Phases Often Followed In Developing A Licensing Agreement

Grimes & Battersby — Tue, 24 Jan 2012 15:33:00 GMT

Even with our own clients, whom we caution against blind use of checklist composed agreements or "boilerplate" form agreements, we are not always immediately successful in getting them to work with us in developing and using a good licensing agreement. Over the years, we have found that our clients often go through phases in developing a license agreement that they are comfortable with:

Phase 1 is when they first come to us and we work with them to develop an agreement that suits their licensing program's needs. We tell clients that each situation is different and that we need to work with them to develop an agreement that meets their special needs. We also try to educate them as to the intent of each clause. Unfortunately, more often than not, clients assure us that they are familiar with licensing and ask us to send them a license agreement we draft based on the limited information they provide. They then go out into their industry, armed with that agreement, to line up licensees.

Phase 2 is when they encounter questions from prospective contracting parties which they cannot readily answer, because they are not yet comfortable with the license agreement and all its terms. At this point they come back and ask us if we can't eliminate the "sticking points" from the agreement. In general, they want it shorter. As a rule, our agreements probably contain less legalese and more plain English than most. Nevertheless, sometimes despite our protests, clients will insist upon changes (i.e., shortening, often wholesale deletion, of clauses).

Phase 3 is when the clients who have concluded licenses based on the Phase 2 ''revised'' agreement encounter problems, problems which would have been handled by their license agreement had revisions not been made. Unfortunately, because of the revisions, the problems have to be worked out without the benefit of preset terms - often in a manner unsatisfactory to the clients.

Phase 4 is when the clients, now fully immersed in licensing and rather sophisticated as to all its nuances, recognize the importance of a thorough license agreement. So they come back to us and together we work out a final agreement that is both all-encompassing and fully understood and every clause of which they are prepared to fight for in their negotiations. Quite frankly, there are times during this fourth phase when we almost have role reversal because we find that we need to restrain clients so that they are not so adamant and pedantic about a particular clause or its wording that they become what attorneys are often accused of being: "deal-killers."

Phase 5 is when the client realizes and accepts that each licensing situation is unique, and must be approached as such. When they understand that checklists and ''boilerplate'' agreements are only starting points, and that knowledgeable legal counsel can assist in determining what clauses can be revised and even deleted and what appropriate additional clauses can be constructed that will allow them to confidently go forward with a licensing arrangement that will fully protect their legal interests.

Video Game Developer Claims First Amendment Right To Use Trademarks In Video Games

Grimes & Battersby — Tue, 24 Jan 2012 15:26:00 GMT

Electronic Arts, developers of a variety of hugely successful and popular video games including The Sims and Madden NFL, filed a federal action in the Northern District of California on January 6, 2012, seeking a declaration that it has the right to depict several of Bell Helicopter's military helicopters in its Battlefield video games. Electronic Arts claims that its uses of the helicopters "are protected by the First Amendment and the doctrine of nominative fair use."

Electronic Arts' complaint specifically alleges that Bell Helicopter's parent corporation, Textron, sent a cease and desist letter demanding Electronic Arts discontinue use of the depictions. In the complaint, Electronic Arts states that "the Bell-manufactured helicopters depicted in Battlefield 3 are just a few of countless creative video, audio, plot and programming elements that make up EA's expressive work, a first-person military combat simulation." Moreover, Electronic Arts claims that the packaging for Battlefield 3 includes a disclaimer that the appearance of real weapons and vehicles does not constitute endorsement by the manufacturer and that the "helicopters are not highlighted or given greater prominence than any of the other vehicles within the game."

Electronic Art's declaratory judgment comes less than a year after the U.S. Supreme Court's ruling that video games are a form of expression entitled to protection under the U.S. Constitution through the First Amendment. Following the Supreme Court's ruling, other federal courts have ruled similarly. In one instance, Hart v. Electronic Arts, Inc., using the First Amendment, Electronic Arts defeated a former college quarterback's claim that his depiction could not be used without permission. A copy of that decision can be found here.

We will update the Grimes & Battersby blog as this case progresses.