Newsletter Issue 65 - July 2014
In this issue:
Copyrighting short phrases
Trademarking personal names
Supreme Court abstraction
Ask Dr. Copyright ...
Seems to me that us vegetarians don't get no respect in court. I heard that "Lettuce Turnip the Beet" got ripped off by that infamous pirate and parachute flapping no-good Gymboree Corporation, and the judge wouldn't lift a finger to help. What gives?
Rootin' for the Little Guy
Dear Little Root:
Since 2011, Elektra Printz Gorski (wow, say THAT three times fast!) has sold T-shirts bearing the phrase, "lettuce turnip the beet" to people who, it seems, like to confuse small children with homophones (and don't get me started on equal rights, or there's gonna be a rumble...) She sold these clothes in the the SoHo neighborhood of New York, and on line at etsy.com. (By the way, SoHo is a contraction of the terms "So...Hope You Can Afford to Shop Here", but the Doc digresses.) Gorski registered a copyright in her phrase, as well as two trademarks for it. Gorski said that, "Gorski's light grey heather shirt for children is widely considered one of the most popular children's products ever pinned on Pinterest under their 'Popular' heading and has over 120,000 product views on Etsy making it one of the most popular products ever on Etsy." Wow!
Then, quicker than you can sing "Gymbo the Clown Goes Up and Down" 731 times, the Gymboree Corporation starts selling shirts that say, you guessed it, "Lettuce Turnip the Beet". Of course, Gorski sued. Gymbo moved to dismiss claiming that you can't protect an "arrangement of a short phrase".
Judge Lucy Koh, the same judge who has ruled on the giant law suits between Apple and Samsung that have involved over $1 BILLION DOLLARS in damages, ruled, at least in part, for Gymboree. Seems that copyright can't protect just a few words - although how many is enough is not spelled out in her ruling.
On the bright side for Gorski, she also has two registered trademarks, and Judge Koh did not dismiss her trademark claims against Gymboree, finding that any defenses it may have are premature at this stage of the case.
The Doc certainly can sympathize with all the vegetarians out there. In fact, one of the Doc's favorite revolutionary anthems supports vege-civil disobedience. If you, too, have a short phrase that you wrote on a slip of paper and mailed to yourself, thinking that you now have a copyright, be sure to speak to one of the attorneys at LW&H. They will gently tell you that you've wasted a stamp, and help you to get actual legal protection for your products.
Let's "ketchup" next month. Until then, I remain your libertarian, nonsectarian, vegetarian (well, except for the occasional 42 oz. porterhouse) friend.
Trademarks, Personal Names, and Chocolate
A client recently asked whether he could apply to register his
personal name as a trademark. Of course, just ask Lebron James,
Sarah Palin, Arnold Schwarzeneggr, or Elvis (if you catch sight of
him), all of whom registered their names as trademarks. Does that
mean if your name is "Joe," you can register "Joe's Bar" for
restaurant services? Not exactly, there are some rules.
First, your name must be distinctive. That is, when people see your name they have to first think of the goods or services you are branding, not you personally. How does this happen? Well, you use your name as a trademark, you spend a lot of money investing in the branding process, and, if you're successful, it eventually happens. It's called "secondary meaning". We've written about secondary meaning or acquired distinctiveness before.
Second, your name cannot be confusingly similar with other trademarks in use. So, if your name is Joe and you run a bar, imagine how hard its going to be to prevent confusion between your bar and "Joe's Bar" on the other side of town. (Of course, you cannot register a mark with the U.S. Patent and Trademark Office unless you are using it in interstate commerce).
Finally, if the person is still alive, you have to obtain that person's permission to use his or her name as a trademark. If it's your name, you also have to file an affidavit saying so.
Having a famous name but not being famous can also get you into trouble. Take for example the recent news story about Maryland State Senator Steve Hershey. During his recent political campaign, Hershey was sued by Hershey Company for using brown rectangular boxes around his name in white lettering, resembling Hershey Company's famous logo. The Hershey Company didn't object to Hershey's using his name - after all, it's his name - but it did object to his using "Hershey" in a manner that suggested an endorsement or sponsorship by the company. Even stranger is that Hershey had the same dispute with the Hershey Company in previous campaigns. On July 22nd, the federal district court issued an injunction against Hershey, preventing him from using his signs. The court opined that his signage suggested an endorsement where no endorsement existed. We still await a final ruling.
Commentary: An Abstract Fairy Tail
Last month the Supreme Court decided the case of
Alice v. CLS
Bank and wandered around once again in wonderland. Let me explain.
The U.S. Supreme Court, as judge made law, has grafted onto patent law the concepts that one cannot obtain a patent on a law of nature, a natural phenomenon, or an abstract idea. The problem from the perspective of a patent applicant is that the exclusions are relatively undefined. In particular, the definition, or lack thereof, for the term "abstract."
Patent examiners routinely reject applications that seem to have a mathematical expression at their core, and during the past approximately 30 years attorneys at our firm have prosecuted sophisticated computer/software implemented inventions and have frequently had to overcome patent office rejections based upon the notion that software implemented inventions were "abstract." Consequently, court decisions construing that term are of heightened interest to our clients.
There was hope that Alice would clarify the Court's definition of abstract. Alice involved a computerized method for implementing the financial concept of an intermediate financial settlement. Without needing to go into the details of the financial concept, it is sufficient to note that the Court apparently takes a dim view of financial inventions. Alice was found to be no more than a fundamental economic practice and therefore "abstract" and unpatentable. Further, the Court concluded that the mere recitation of a computer cannot transform an abstract idea into a patent-eligible invention.
As for guidance, the Court said: "In any event, we need not labor to delimit the precise contours of the 'abstract ideas' category in this case." Apparently, like pornography, the Court knows something is abstract when they see it. The rest of us are left to wander around looking for a way out of the rabbit hole.