Top Trademark and Copyright Stories from Around the Web

Here are your Top IP Stories from around the web for the week of June 24, 2013

 

Brooks Brothers drops trademark lawsuit against small home-based business “Bubble’s by Brooks”. An incident of trademark bullying and local lawyers helping small business. Full Story.

U.S. District Judge Joan Ericksen reopens copyright cases after incidents of fraud revealed in the Copyright Pornography troll saga.  Full Story

Sweet battle in the trademark world as Wendy’s attacks United Dairy Farmers for use of “Frosty” trademark. Now I want a frosty. Full Story

Excellent article highlights the important of Trademark registration for small businesses and start-ups. Full Story

Trademark licensing issues are highlighted in Trademark dispute between Gibson Guitars and Viacom. Sponge Bob Ukulele looks remarkably like flying V Guitar. Full Story

Will.i.am sues Pharrell Williams’ for using “i am OTHER” claiming infringement for the use of “I AM” trademark. Since 2006 Will.i.am has owned the “I AM” mark. Full story

An examination of the effect of the DOMA ruling on copyright law; gay couples will now enjoy the full benefit of copyright statutory succession and renewal rights. Full Story

Artist Roger Dean seeks $50 million in damages against James Cameron and 20th Century Fox claiming the filmmaker infringed on his copyright by using his characters and art in the film “Avatar”. Full Story

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Second Circuit Overturns District Court’s Decision on Marvel’s “Ghost Rider” Character.

In an excruciatingly long forty-eight page decision the second circuit ruled summary judgment was inappropriate as to the issue of ownership of the Ghost Rider copyright. The real question addressed by the court wasn’t who really owned the copyright in Ghost Rider but rather if the original author transferred his renewal rights in the copyright.

The district court granted summary judgment in favor of Marvel because the original author, Gary Friedrich, assigned all his rights to Ghost Rider by signing a work-for-hire agreement six years after the initial publication of the original Ghost Rider Comic.  Friedrich contended that he did not assign his renewal rights in the Ghost Rider copyright and was therefore entitled to the ownership of the copyright.

According to the facts of the case Friedrich was big fan of comic books and motorcycle gang movies, and first imagined of the idea of a superhero that wore black leather and rode a motorcycle. In 1968 he conceived of the hero we know today at Ghost Rider, flaming skull and all; which, apparently, he conceived after seeing his “bony-faced and red-headed” friend riding a motorcycle. After finishing the character’s concept Friedrich presented a synopsis of his story to Marvel comics whose chief editor, Stan Lee, agreed to publish to Ghost Rider story and Friedrich agreed to assign his rights in the character to Marvel. The renewal rights were never discussed.

The comic was finally published in 1972, if you’re a bit of a comic geek you know this was in Marvel Spotlight, Vol. 1, No. 5. The comic identified Marvel as the copyright holder and had a credit box which said “conceived & written by Gary Friedrich”. Ghost Rider later became a commercial success for Marvel and had a series dedicated to the character in 1973.

Work-for-Hire Agreement

In 1978, after congress introduced the Copyright Act of 1976, Marvel required all of its freelance authors to sign work-for-hire agreements. Friedrich signed the agreement on July 1978, which was a confusing mess of legal garbage, and returned it to Marvel.

The question that was raised by the court of appeals, and therefore the reason for vacating summary judgment, revolved around the interpretation of the work for hire agreement. After the court reviewed the work-for-hire agreement it determined it was not specific as to whether the author assigned his renewal rights in his copyright. Under the copyright laws an author is allowed to assign his renewal rights but there “is a strong presumption again the conveyance of renewal rights.” Corcovado Music Corp. v. Hollis Music, Inc., 981 F.2d 679, 684 (2nd Cir. 1993). If there is an express term that says the author agrees to convey his renewal rights, then the court will likely enforce it. In this case there was no express language in the agreement that indicates this intent, furthermore, any language such as “forever” that implied the intent to convey the renewal term should be interpreted by a jury.

After carefully reviewing the contract signed by Friedrich, the Court of Appeals rules that it was in err for the district court to grant summary judgment in favor of Marvel for three reasons.

First, the contract was ambiguous and often illegible. The language was not specific as to whether it covered only the work created for Marvel after contract was signed or the work Friedrich created six years prior. Additionally, there is not specific mention in the contract of the “Ghost Rider” work. Marvel relied heavily on a provision of the contract that says “grant[ing] to MARVEL forever, all rights of any kind and nature in and to the Work”. Regardless, the court stated it was not clear whether the language applied to the work created six years earlier and was not enough to overcome the strong presumption against the conveyance or renewal rights. Extrinsic evidence indicated that when the contract was signed Friedrich was unrepresented by counsel, was told the agreement only covered future work, and that he did not know about the concept a renewal rights until 2005. Finally, there was also no discussion of renewal rights when the parties signed the contract in 1978.

If you would like to read the full opinion click here. Suffice to say, there were enough questions regarding the contract and the renewal rights that the question must be submitted to the fact finder. A reminder that media and publishing companies should not haphazardly sign form work for hire agreements with writers and writers should be represented by counsel with dealing with publishers.

 

Raptorchef

 

This article is for commentary only and nothing herein constitutes legal advice. If you need the legal help please contact an attorney.

Ready for a new Shaq Fighting Game? Shaquille O’Neal Trademarks “Shaqfighter”!

The wait is over “Shaqfighter” a possible sequel to “Shaq-fu” may be on its way as Shaqfighter is Trademarked and Shaq-fu is renewed.

At the height of the 16-bit video game craze crappy video games releases were the norm. In an attempt to get a piece of the monumental success of titles such as Mortal Kombat  and Street Fighter, a small and now defunct software company released a title which many have tried to forget, “Shaq-Fu”. The terrible game featured a cast of characters created exclusively for the game and starred Shaquille O’Neal. For the few that loved the game and have been waiting for a follow-up you may just get your wish.

On May 8th, Mine O’Mine, Inc, company owned by Shquille O’Neal, filed for a Trademark on “Shaq-Fighter”. Exciting news no doubt, does this mean another video game starring Shaq is coming to a store near you? A simple search of the USPTO TESS system reveals that Shaq-Fighter is a trademark which will be used on electronic game software, online gaming software, a website, and printed manuals for electronic games. The applications shows that Mine O’Mine has filed the mark on an “intent to use” basis, which means that they have not filed for full registration but filing for protection in case the company and Shaq decide to go forward with plans selling a video game under the mark.  The application is the only document on file with the USPTO at this time so we don’t know if Shaq Fighter will actually be granted ITU (intent to use) protection.

In addition to Shaq-Fighter, it seems the Shaq-Fu trademark is in the registration process as well. Shaq-fu has also been filed as an ITU application and under the same classes as Shaq-Fighter. Who knows when you will see these titles at your local gaming boutique but at least we can track the application process.  Your probably won’t see Shaq Fighter at this year’s E3. Darn!

Raptorchef

Flea Market Operator vs. Coach Inc. Who do you think won?

In an endless and well justified quest to prevent others from selling knock off bags, Coach, Inc. won a giant settlement against a Flea Market Operator in Tennessee; not just any judgment but a judgment worth over five million USD. The case presented a novel issue for the Six Circuit Court of Appeals. Could an operator of a Flea Market be held liable for contributory trademark infringement when the vendors operating in the market sell counterfeit goods? The answer was a resounding “yes”.

The defendant in this case, Frederick Goodfellow, operates the Southwest Flea Market in Memphis. Goodfellow rented around seventy-five booths to vendors who sold various goods. During operation of the market Goodfellow had ultimate control over operation of the market as well as the power to decide who may sell goods in the market. Apparently several of these vendors made the fatal mistake of selling “Coach” bags, a fact which it appears Goodfellow was well aware.  It is quite obvious that he was aware because Coach sent a letter to Goodfellow notifying him of the sale of Counterfeit Coach products at the market. He received an additional letter from the District Attorney notifying him of the sale of the goods. As if these presumably strongly worded letters were not enough to put him on notice the police conducted two raids on the premises and seized the counterfeit goods. (According to the opinion the second raid involved around 150 law enforcement officers).

Adding to the facts mounting against him, it seems Goodfellow did not do much to rectify the problem. He posted a sign which clearly stated “counterfeit is prohibit”, sporadically distributed pamphlets to vendors, and met with vendors to discuss the problem. However, communication with the vendors was difficult due to language difficulties and the meetings were not well attended.

Coach Inc. moved for summary judgment and Goodfellow failed to respond; even in viewing the record in a light most favorable to him the court held Goodfellow liable for contributory trademark infringement.  When the question of damages was tried in front of a jury; Goodfellow suddenly had a judgment of $5,040,000 looming over his head as well as a permanent injunction and nearly $187,000 in fees and costs. Not fun for Goodfellow.

This is a pretty clear cut example of trademark infringement, as the court said “a party proves trademark infringement by showing (1) that it owns a trademark, (2) that the infringer used the mark in commerce without authorization, and (3) that the use of the alleged infringing trademark ‘is likely to cause confusion among the consumers regarding the origin of the goods offered by the parties.” Leelanau Wine Cellars, Ltd. V. Black & Red, Inc., 502 F.3d 504, 515 (6th Cir. 2007). Goodfellow defended that he could not be held liable for trademark infringement because he was not in a partnership relationship with the vendors, the vendors and Goodfellow did not have power to bind each other and they did not exercise joint ownership or control. The court of appeals agreed with this contention but pointed out that this was the standard required for vicarious liability; in this case the court found that Goodfellow was liable for contributory trademark infringement which is different than the former. The court explained that contributory infringement is where a “distributor intentionally induces another to infringe on a trademark, or if it continues to supply its product to one whom it knows or has reason to know is engaging in trademark infringement, [it] is contributorially responsible for any harm done as a result of that deceit. ” Inwood Laboratories Inc., v. Ives Laboratories Inc., 456 U.S. 844 (1982). This standard has been applied against flea market owners throughout several circuit courts but never in the sixth, that is, until last week.

Goodfellow knew of the activity but continued to allow the counterfeit goods to be sold at this market. While Goodfellow will likely appeal I don’t see any way he could win. People are not allowed to freely sell counterfeit goods and it is obvious owners of strong marks will police their brands with the ruthlessness of the Galactic Empire. It is a good idea for any flea market operator to take note of this case. Pay attention to what is being sold in your market if there are third party vendors present, when one of the biggest names in the fashion industry sends you a letter advising you of infringing activity; heed the warning, and be more diligent about informing vendors what they may and may not sell in your market. For the full opinion check here: Goodfellow v Coach.

This article is a case review and my opinion only and is not intended in any way to be legal advice. If you need legal advice please contract an attorney.