Newsletter Issue 72 - February 2015
In this issue:
3d printing the Left Shark
Was Aunt Jemima a real person?
Changes to design patent law.
Ask Dr. Copyright ...
Dear Doc:
I watched the Big Game (a/k/a SuperBowl®) and though I enjoyed the
game (I would report the score, but that might make the NFL angry,
since they told us that unauthorized use is strictly prohibited) I
really enjoyed the halftime show. My favorite part was the dancing
sharks behind Katy Perry, and my favorite shark was the left one,
who seemed not to have gotten the memo about what the dance was and
just flopped about. I heard that a guy was selling little "left
shark" figurines that are 3D printed, but that Ms. Perry's lawyers
wrote him a nastygram cease-and-desist letter that said that she
owned the "exclusive rights to reproduce, display, and distribute
its copyrighted images under the United States Copyright Act as set
forth in 17 U.S.C §106."
I heard that the sale was stopped, but then started again a few days
later. What gives?
Signed,
SharkFan
Dear Sharky,
The Doc looked into this legal feeding frenzy, and here's what's
fishy about what he found...
It's true that the lawyers at GreenbergTraurig sent a nastygram to
ShapewaysHQ and its owner, Fernando Sosa, who was selling little
"left shark" figurines, claiming that their sale violated Ms.
Perry's "IP" (which they defined as, "the intellectual property
depicted or embodied in connection with the shark images and
costumes portrayed and used in Katy Perry's Super Bowl 2015
half-time performance.") It's also true that the lawyers said that
selling the figurines violated Katy's rights under 17 U.S.C. §106,
and that they threatened Sosa with, "actual damages, statutory
damages, and punitive damages, as well as immediate and permanent
injunctive relief." (Those lawyers, it seems, are not mere minnows
to be trifled with!)
Enter New York University law professor Christopher Sprigman. He
offered to help Sosa (for free!) and pointed out Katy appears not to
own any IP rights, and that costumes are "useful articles". Under
Copyright law, useful articles are not copyrightable unless there
are elements that are "separable" from the useful article itself.
Check.
Sosa resumed sale of his left shark the next day. He also posted the
3D data file so that anyone may download and print her own left
shark figurine for free (you just need a 3D printer).
Now it's possible that there is something separable about left
shark. It's also possible that left shark may have trademark aspects
that Katy or the NFL could assert. After all, there's blood in the
water, and that's sure to continue to attract circling lawyers as
long as Katy and the NFL have the money to pay them (which means for
a very, very long time.) The Doc, however, thinks that left shark is
already trending into the depths of the Internet. After all, nobody
remembers Janet Jackson's Super Bowl half-time performance!
STOP THE PRESSES! An update: Katy's lawyers must have read the Doc's
alleged mind. They have now filed a trademark application to
register left shark. No followup letter yet, but stay tuned to your
local late news...
Have a question about your useful articles? Talk to the sharks...uh,
attorneys... at LW&H. They just keep on swimming in the IP ocean,
enforcing their clients rights against infringers, and they do it
without remoras.
The "Doc"
Aunt Jemima: Fact or Fiction
It seems like the Aunt Jemima brand of pancakes and syrup has
been around forever. And it almost has. Quaker Oats registered the
U.S. trademark for AUNT JEMIMA in 1937. So, it must have been a
complete surprise when D.W. Hunter and Larnell Evans, claiming they
were
the descendants of Anna Short Harrington (reputedly, Aunt
Jemima), filed a lawsuit in federal court in Illinois alleging that
Quaker Oats and its successor corporations had exploited
Harrington's image rights and recipes for profit. They claimed that
the defendants owed them more than $2 billion in damages!
Now that's a lot of money, but in today's market, it's hardly
unusual for celebrities to profit from their names in and out of
court. Take, for example,
Actress Katherine Heigl ("Knocked Up" and
"Grey's Anatomy") who sued New York pharmacy Duane Reade for using
her name and likeness in an unauthorized tweet and Facebook
advertisement. The complaint alleged that Heigl "is highly
selective and well compensated" when she endorses a product or
service. She claimed damages in excess of 6 million dollars for
unauthorized use of her image! She later withdrew her lawsuit under
a cloak of secrecy and we assume that Duane Reade paid her
something.
Back to Aunt Jemima. Was she a celebrity? Was she even a real
person? In their complaint, Hunter and Evans claimed that their
grandmother, Harrington, was an employee of Quaker Oats and accused
the defendants of intentionally covering up the facts. The two also
accused the defendants of breach of contract, conspiracy, and fraud,
among other charges, "while alleging that Quaker Oats engaged in
"industrial espionage" to procure Harrington's trade secrets before
failing to compensate her estate on an annual basis following her
death." They also asserted that PepsiCo , Pinnacle Foods, and
Quaker Oats engaged in a pattern "of racial discrimination towards
Anna S. Harrington's heirs ... reflecting an innate form of
disrespect towards African American people." Defendants, on the
other hand, claimed that Aunt Jemima was purely a fictional
character.
Too bad for Hunter and Evans when the court dismissed the case
writing that "[T]he only information about plaintiffs' connection to
Harrington ... is an account of how Hunter received a photograph
(now lost) of Harrington from his grandmother and of plaintiffs'
attempt to locate Harrington's grave in Syracuse, New York." That
just was not sufficient to maintain the suit. According to PepsiCo,
"The Aunt Jemima brand is not, and never has been, based on any one
person. We have taken steps to contemporise the 'Aunt Jemima'
trademark to ensure it represents a more modern look and feel, and
today represents a sense of caring, nurturing and comfort that
families have come to know and love." One can't fault the court for
dismissing a two billion dollar lawsuit based upon a lost
photograph. What were the plaintiffs thinking?
Changes to U.S. Design Patent Law
The U.S. Patent and Trademark Office issues both 'utility' and
'design' patents. A 'utility' patent protects how something works
(e.g.,
the better mousetrap). A 'design' patent protects the
appearance of the thing (e.g.,
a mousetrap bait that resembles
cheese).
Design patent law in the U.S. is about to change. The U.S. has
taken the steps required to join the "Hague Agreement Concerning the
International Deposit of Industrial Designs." U.S. PTO regulations
on the subject have not yet been issued, but the program should go
into effect on May 13, 2015. The two major differences from current
practice are (a) a longer life of the design patent of 15 years
rather than 14 years, and (b) a relatively simple mechanism to file
a single design application with a single set of fees addressing
multiple designs and for multiple countries.
For all you conspiracy theorists, the World Intellectual Property
Organization administers the Hague Agreement. North Korea and Syria
have been member states for years. Coincidence?
PTO's Secret SAWS Program
The U.S. Patent and Trademark Office has a secret Sensitive
Application Warning System ('SAWS') program for extra review of
patent applications where action might embarrass the agency. The
problem is how the program functions and which applicants and
applications are subject to SAWS are all secret. We know only the
broadest guidelines for the program and know that if an application
is referred to the SAWS program, then issuance of the patent is
delayed by a substantial period of time. The first evidence of the
program was leaked in 2006 and
the PTO formally acknowledged the
existence of the SAWS program in October, 2014 in response to a
Freedom of Information Act (FOIA) request. The PTO has rebuffed
other FOIA requests for more information about the program.Any secret program, particularly a secret program by which government decisions are made, carries the potential for abuse and arbitrary oppression.
