July 31, 2019
The music industry has been in the news a lot recently
regarding intellectual property rights and related disputes. Just this week, a
federal jury determined that Katy Perry was liable for copyright infringement.
This tracks with the ongoing
trademark infringement lawsuit filed by Gibson Brands, Inc., which
continues to fascinate me.
Though in my research of these various topics and the
feedback I have received from writing about these legal issues, I have learned
that the terms “trademark” and “copyright” are being used interchangeably by
the public. This is troubling because they are absolutely not the same thing. I
would therefore like to take the opportunity to explain the differences in
these two legal doctrines. Because not all “infringements” are identical acts.
In May 2019, Gibson Brands,
Inc. sued Armadillo Distribution Enterprises, Inc. for trademark
infringement, unfair competition, and counterfeiting.
Armadillo may not be a well known name, but it is affiliated with the guitar
brands Dean Guitars and Luna Guitars, which compete with Gibson.
Gibson is one of the most prominent names in the electric guitar industry,
alongside Fender. In this lawsuit, Gibson accuses Armadillo/Dean of infringing
at least four “body shapes” of its electric guitar models: the Flying V, the
Explorer, the ES, and the SG, each of which Gibson cites as a registered
This case caught my attention because I am a guitar player
and I often write about music and the music industry as it relates to
trademarks and copyrights. Here
I do not personally own any Gibson-branded guitars (they are too heavy in the
neck), but I do own one acoustic Dean Guitar – though not one of the types that
is accused of infringement in this case. With regard to electric guitars, I
prefer Schecter Guitars. Always a
Armadillo has not yet responded with an Answer to this
lawsuit, but I anticipate Dean Guitars will present a substantial defense to
all of Gibson’s claims. It is important to note that this is not a patent case.
This is not about who “invented” the particular shape or style of an electric
guitar. Any patent rights for these designs would have expired decades ago.
Instead, this dispute concerns trademarks. It essentially seeks to determine
whether a particular shape of a guitar evokes a specific source in the minds of
the relevant consuming public. With regard to the guitar industry, there is a long
history associated with these particular “body shapes” and how they impact pop
culture and the competition between the most popular brands and manufacturers.
Kawhi Leonard sues
Nike over the copyright to a logo
June 4, 2019
On June 3, 2019, Kawhi Leonard, a professional basketball
player currently with the Toronto Raptors, sued Nike over
the rights to a logo.
Leonard contends he personally created the logo and owns the copyright to it,
but that in 2017, without his knowledge or consent, Nike filed an application
to register the copyright to this logo. From
October 2011 through September 30, 2018, Leonard was a sponsored athlete under
the Nike® brand. According to the lawsuit, he signed a standard “Men’s Pro
Basketball Contract” with Nike to be a sponsored athlete. Throughout the duration
of this relationship, Leonard endorsed Nike products and Nike used Kawhi’s name
and image to promote its products.
This is why the purported rights to the “Leonard Logo” are
Leonard’s lawsuit seeks to resolve who owns the copyright
and possible trademark rights in a logo he claims to have designed himself. The
interesting twist is that even if Kawhi created the logo by himself – that fact
alone does not resolve the dispute.
Copyright law is an interesting subsection of the legal
field. Fun fact: the Founding Fathers cared more about protecting copyrights
than any nebulous free speech rights. The right to copyright is established in
the original U.S. Constitution
enacted in September 1787. The Bill of Rights did not exist until 1789.
Additionally, one of the really cool quirks about copyrights
is how they are created. Copyright exists “the moment it is
created and fixed in a tangible form.” Alas, this cool quirk appears to
only be true in form, but not in substance. For the United States Supreme Court
recently ruled that before you can enforce a copyright, you must first go
through the complete administrative process of registering that copyright with the Copyright Office.
While the Court recognized that it is not an ideal situation, it effectively threw its hands up and said “the law is the law” without really addressing the downstream effects. I would now like to take the time to do what the Court would not, and address the direct effects of this new “registration is required” copyright world.
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.
have written about some of these issues before,
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
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
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.
January 2, 2019
On Friday, December 28, 2018, Nirvana, LLC 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. 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.