Generic Fair Use

... where pop culture meets intellectual property law

Put Your Name On It! President Trump and IP Ownership

What does President Trump own?

April 5, 2019

If there is one singular, defining character trait of Donald J. Trump, it is this: he really, really likes putting the TRUMP name on things. Hotels, casinos, residential towers, television shows, books, golf courses, beauty pageants, steaks, universities, business plans, and on and on. It is kind of his thing. And he is exceptionally good at marketing the Trump name when he uses it.

The moment Donald Trump ran for president, and was subsequently elected – the ways he could use market that TRUMP brand grew exponentially. And I do not use the term “brand” lightly. Because for someone like me, the underlying question is this: what IP rights in his name and likeness does Donald Trump still own? Most recently, Trump has put the TRUMP brand on images of the White House. These images are now subsequently being sold online and at his various hotels.

I have written about some of these issues before,[1] and once again, I will not try to address any issues with the emoluments clause of the Constitution. Nor will this article be about the purported morality of such things, but instead an analysis of what IP rights are available for protection. Can President Trump own copyrights of his image? Can President Trump use the TRUMP name as a trademark and protect it like a private citizen? Can President Trump use White House and U.S. government imagery in tandem with his name and assert personal rights in these products? It is not such an easy answer.

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Someone should petition to cancel the SUPER BOWL® trademark registration

Last night, the Los Angeles Rams and the New England Patriots played Super Bowl LIII. It was one of the worst exhibitions of professional football in a long time, and certainly the most boring Super Bowl to date. Enough people will be writing about that game today, but I see it as an opportunity to further discuss the NFL’s SUPER BOWL® trademark. And this is why:

The NFL is a known trademark bully. Someone should petition to cancel its SUPER BOWL® trademark registration. And I think I have found a way for this petition to be successful. The NFL fraudulently acquired the registration and it should be canceled.

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Pay to Play: Nirvana sues Marc Jacobs over clothing line

January 2, 2019

On Friday, December 28, 2018, Nirvana, LLC[1] sued Marc Jacobs International, Saks Fifth Avenue, and Nieman Marcus for copyright infringement, trademark infringement, unfair competition, and false designation of origin under the Lanham Act.[2] The crux of the dispute is over a new line of clothing being introduced by Marc Jacobs dubbed “Bootleg Redux Grunge” that he intends to sell to the public at Saks Fifth Avenue and Nieman Marcus stores. In short, these “grunge” clothes are being marketed to a high-end socioeconomic demographic that is antithetical to everything Kurt Cobain and Nirvana stood for. Because of course they are.

The real dispute is over the appropriation of the iconic Nirvana “smiley face” logo and what Nirvana contends is a derivative, non-transformative use by Marc Jacobs. I will not go too in-depth on the specific claims other than to say: yes, this is an infringement and Marc Jacobs is most certainly trying to associate this clothing line with famous Nirvana trademarks and copyrighted works. It is shameless. Everyone involved should be embarrassed. Yes, including Nirvana’s own lawyers – for reasons I will address.

Of course, I am biased. Nirvana is my favorite musical group of all-time and hearing “Smells Like Teen Spirit” for the first time when I was 14 years old was nothing short of a life-changing experience. Like millions of others, I also own one of the famous “smiley face” t-shirts and other merchandise bearing that image. This is a blog about trademark and copyright law, meanwhile – so let us break down the claims made against Marc Jacobs.

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An “Unusual” Publicity Rights Claim

Alfonso Ribeiro sues video game makers over the “Carlton Dance”

December 19, 2018

On Monday, December 17, 2018, Alfonso Ribeiro, an actor best known for roles on “Silver Spoons” and “The Fresh Prince of Bel-Air,” filed two separate lawsuits regarding copyright and publicity rights associated with what is colloquially known as the “Carlton Dance.”[1] Ribeiro sued the makers of the popular Fortnite and NBA2K games for their allegedly unauthorized uses of this dance choreography. His causes of action are based on copyright infringement, violation of publicity rights (California state law), and state and federal unfair competition claims.

The lawsuit(s) begin by asserting that Ribeiro is “an internationally famous Hollywood star, known for his starring role as Carlton Banks from the hit television series The Fresh Prince of Bel-Air and as host of America’s Funniest Home Videos. Ribeiro created his highly recognizable “Dance,” that has also been referred to by the public as “The Carlton Dance,” which exploded in popularity and became highly recognizable as Ribeiro’s signature dance internationally. The Dance is now inextricably linked to Ribeiro and has continued to be a part of his celebrity persona.” The lawsuits later allege that “The Dance has become synonymous with Ribeiro.” In short, these assertions are wildly debatable. Given the national attention this case has received, I would like to look at some of the legal issues raised by these lawsuits and address the possible and likely defenses to Ribeiro’s claims and contentions.

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Be Prepared… to be sued for trademark infringement

The Girls Scouts sue the Boy Scouts for trademark infringement and dilution

The Boy Scouts of America was founded in 1910 and has operated under the shorthand name of the “Boy Scouts” from the outset. On May 2, 2018, however, the Boy Scouts of America announced a new name for the association: “Scouts BSA.” Lost in the cultural dispute over whether the Boy Scouts should have included girls and what this means for the Boy Scouts as an organization – a trademark battle emerged.

On November 6, 2018, the Girl Scouts of the United States of America sued the Boy Scouts of America in federal court[1] for trademark infringement, unfair competition, federal trademark dilution, and tortious interference with prospective economic advantage, along with a request to cancel or modify the registration of the SCOUTS® trademark which the Boy Scouts previously acquired from an unaffiliated university.

The moment the Boy Scouts of America adopted the SCOUTS or SCOUTS BSA marks to include girls into their ranks, this conflicted with the pre-existing and concurrent uses of the Girl Scouts’ own GIRL SCOUTS® trademark registration(s) and related marks.

An interesting trademark dispute therefore presents itself to us for analysis.

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This is not how trademarks work

Colin Kaepernick’s “Intent to Use” trademark filing explained

ESPN once again published another article about an athlete seeking to protect his trademark rights in the United States. I have written about this topic before. More than a few times – to be precise. I still maintain that these “athlete trademarks” are getting absurd. Colin Kaepernick, however, is a substantially different athlete in terms of branding and awareness and overall newsworthiness. Kaepernick’s company filed a series of new applications to register a particular mark on October 5, 2018 with the United States Patent and Trademark Office. This provides another good opportunity for an analysis of what trademarks are and how trademark registrations work.

More importantly, it allows for continued discussion on how “trademark” and “trademark registration” are entirely different things. Plus, another reminder of the fact that there is no such thing as a “trademark application.”

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Betting on the Coin Flip: Football returns to a new gambling landscape

Football is back. College football season begins this week, with the NFL season opening with the traditional Thursday kickoff on September 6th, when the Philadelphia Eagles host the Atlanta Falcons. Every football season brings with it new rule changes and storylines. But this year brings a potential paradigm shift to how to the game is covered, discussed, and regulated. All because the Supreme Court struck down a 1992 law the prohibited most states from allowing sports betting.[1]

I would be remiss in not emphatically stating here the following: sports betting is probably not legal in your state. Yes, the Supreme Court struck down the prior law, but this holding cannot be summarized as “SCOTUS legalized sports betting.” That would be dangerously inaccurate. Instead, the important takeaway from Murphy v. National Collegiate Athletic Association, 138 S. Ct. 1461 (U.S. May 14, 2018) is that the federal government cannot regulate gambling nationwide. This is an issue to be determined on a state-by-state basis. Tenth Amendment. States’ Rights. That kind of thing.

What does this mean for you, the typical football fan watching the game from the comforts of home or at a sports bar with friends?

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No Skipping Steps? The Burdens of Artistry

SCOTUS to hear case on copyright registration requirements

July 10, 2018

Copyright law is quirky. On one hand, you have a copyright the instant you fix your work in a tangible medium of expression.[1] You do not need to do anything else. Copyright protection attaches right away. Yet to actually enforce that copyright against potential infringement requires that the copyright owner take steps to register the copyrighted work with the Copyright Office.[2] That is right – a prerequisite to any lawsuit is registration. This is an added step which requires lawyers and application filing fees. The legal system always seems to be set up to make sure it gets paid first. Funny how that works.

Some states and circuits, however, have operated under a “if the application to register is on file; that is good enough” policy. The Fifth Circuit, which includes Texas, is an example of this policy.[3] Strictly speaking, the Fifth Circuit “requires only that the Copyright Office actually receive the application, deposit, and fee before a plaintiff files an infringement action.”[4] For now.

Why is this important? Well, on June 28, 2018, the United States Supreme Court granted certiorari in the case Fourth Estate Public Benefit Corp. v. Wall-Street.com, to resolve this perceived “split” amongst the circuit courts for what is required to file a copyright infringement lawsuit in the United States. This issue will be heard by SCOTUS during the next term. The result will likely impact the strategies of copyright lawyers, including me.

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Something in the Way: Online Guitar Tabs and Copyright Law

Americans buy millions of new guitars every year.[1] Many of these are “entry-level” guitars intended for those trying to learn a new instrument. Yet somewhere in the range of 90% of new guitar players quit trying within the first year. When the electric guitar first became popular in the 1950s and 1960s, there were few ways to accelerate the learning curve. By the late 1990s, along with the advent of the internet, a tool for learning guitar and how to play popular songs reached the masses: guitar tablature or “tab” for short. The concept of tablature was not new, but the ability for an individual to read and acquire tabs through the internet was groundbreaking.

Guitar tab is essentially a shorthand method for transcribing the specific notes and chords of a song in a format that mimics the finger positions on a guitar’s fretboard. Instead of having to learn to read and translate formal sheet music, tablature is simplified. Each note is represented by a number that corresponds to a particular string and location on the fretboard. The beauty of guitar tab is that most anyone who plays guitar can transcribe a song into this format and share it with others as a teaching tool.

Naturally, it did not take long for the internet to respond in kind. Sites with collections of thousands of tabs populated the web seemingly overnight. To the surprise of no one, this also caught the attention of the music publishing industry. And their lawyers. Copyright law concerns threatened to shut down online guitar tab publishing in its entirety.

My question today is simple: while guitar tablature is likely a “derivative work” restricted by copyright law – should it be? Or should there be some sort of expressed fair use exception for guitar tablature? And if not, why not?

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On Copyright Limits: MLK, Mickey Mouse, and Sonny Bono

Today marks the 50th anniversary of the assassination of Martin Luther King, Jr. The most famous individual from the American civil rights movement left behind a impactful, while often misunderstood legacy, which still resonates across the world today. From an IP perspective, he also left behind a sizable amount of popular copyrighted works. Yes, the “I Have a Dream” speech is still protected by U.S. Copyright law today.

You still need to acquire permission from the King estate to use his works, including his speeches. While the estate has made some questionable decisions about who to license these works to, the fact remains that the estate maintains control over his name, his likeness, and his copyrighted works today.

But did you know that if not for Mickey Mouse and Sonny Bono, that the MLK estate would be losing the rights to these copyrighted works to the public domain this year? It’s true.

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