It’s tempting to do, but according to the Federal Circuit, use just ain’t use in commerce until it’s a bona fide offer for sale to the actual intended purchasing public. Theoretical ability to provide the service, brochures that never got sent, and business plans showing intent are not sufficient to establish use.

Aycock Engineering, Inc., founded under a previous name in the 1940’s, was created for the purpose of offering a chartered air transportation service under the mark AIRFLITE. The business plan suggested that the company would need at least 300 air taxi operators in the U.S. to make a go of the enterprise.

In March of 1970, through brochures and letters advertising the AIRFLITE service, Aycock invited all FAA certified air taxi operators to join his AIRFLITE service. In August of 1970, Aycock filed a service mark application to register AIRFLITE, and attached as specimens of use the brochures he used to entice pilots to join his network. Ultimately, in 1974 after a lengthy prosecution fight with the examiner, Aycock’s mark was registered on the Supplemental Register for “[a]rranging for individual reservations for flights on airplanes.”

Aycock continued to market his service to the pilots who would charter his planes, but never actually marketed the service to the general public, notwithstanding his establishment of a customer toll-free number listed on the brochure and a collection of 12 pilots (far short of the 300 the business plan said were necessary to run the service). The evidence did not show that Aycock ever arranged a flight for a passenger.

In 2001, Airflite, Inc. (“Petitioner/Appellee”) filed a petition to cancel Aycock’s registration on the ground of nonuse. The TTAB found that Aycock has failed to offer the services listed in the application and on appeal, the Federal Circuit affirmed.

Although the court addressed numerous factors that led it to affirm the TTAB ruling, its primary focus was on the offer of the service listed in the application. It noted the service was simply not offered to those who would ultimately buy it – the purchasing public. It was not enough to establish a toll-free number and collect pilots to ferry people as intended. Neither was it sufficient to use the mark on the brochure that could eventually go to consumers. The fact that Aycock had never marketed the actual service to the intended consumer was sufficient to establish nonuse of the mark for those services, and subsequently, to cancel his registration.

Practice Note: Many practitioners tell their clients that printing business cards and creating stationery is sufficient to show use in commerce. Still others advise that the creation of brochures that contain a price list are sufficient to establish use. This case suggests (and this firm has always maintained) that there is a distinction between use anywhere and actual bona fide use in commerce. Use in commerce, to be above reproach, must be a bona fide offer for sale of the product for which you are claiming use to the target consumer.

If we didn’t learn the Trademark Trial and Appeal Board was prickly when it comes to procedure from the Blue Man case, we just got another lesson. The Board is handing out some more tough love on counsel. In the precedential decision, Syngenta Crop Protection, Inc. v. Bio-Chek, LLC (Opposition No. 91175091, March 12, 2009), the Board tossed out Opposer’s 2(d) claim on the ground that it had improperly submitted its registration. Without considering its registration for AGROMETER, Opposer was unable to produce sufficient evidence at common law to show priority over applicant’s AGMETER mark, and thus was unable to sustain the 2(d) opposition.

Opposer submitted a photocopy of its licensor’s original registration certificate, dated 2004. A photocopy of a registration certificate may not be adequate proof of the current status of a registered mark. Under Trademark Rule 2.122(d)(2), a trademark registration document submitted should be “issued by the Patent and Trademark Office and show both the current status of and current title to the registration.” The 2004 copy did not confirm the status of the mark in 2007 or 2008.

In addition, Opposer, did not properly introduce the registration, as specified in the Trademark Rules. It did not attach the copy to the opposition; neither did it did not introduce it during testimony; and because applicant never admitted or stipulated to the current ownership and validity of the registration, the registration was not authenticated by waiver.

Because the Board did not consider the registration as prima facie evidence of ownership and first use, the Opposer was forced to rely solely on proof of its prior common law rights, which, the Board established, it had not done sufficient to establish priority.

To make matters worse, the Opposer improperly submitted notices of reliance for some of its documents, such as press releases, internet articles, and sales and marketing materials it wanted to produce. The Board noted that notices of reliance are strictly limited and may be used to introduce only discovery deposition, interrogatory responses, admission or written disclosures of an adverse party, and printed publications or official records. Other evidence must be authenticated by testimony. Accordingly, much of Opposer’s evidence common law evidence was not considered.

As a result of the limited evidence Opposer was allowed to submit, the Board found that it has not established priority and dismissed the case.

Practice Note: This case presents a veritable cavalcade of interesting issues and can serve as a laundry list for what not to do. That said, it’s important to note that even good and careful attorneys can get tripped up on the rules regarding submission of documents and evidence in a TTAB proceeding. There but for the grace of a good associate go any of us.

Non-trademark attorneys, more accustomed to fighting in federal court assume (and tell their clients), that the process at the TTAB mirrors that of federal court proceedings. While the basis of that statement is true, there are myriad distinctions that must be taken into account, as this case illustrates. Counsel should learn those distinctions and advise clients that availing itself of TTAB proceedings is no “walk in the park,” and federal court methods cannot simply be cloned. The good news is, failures by parties work both ways. If your opponent has been sloppy in its submission of evidence, the TTAB has shown that it will not consider it. Careful reading of pleadings, discovery, and motions can be a gold mine for a summary judgment motion.

Procedurally, the Opposer in this case can do what Blue Man Group did in its own matter and appeal the decision in district court. In all likelihood, like Blue Man, it will be able to properly introduce its evidence and – at the very least – establish priority in its mark. Then the question will hinge on confusion.

Finally, this case underscores the importance of a valid federal registration for clients’ important marks. When push comes to shove, a registration, properly introduced, saves time and money, because it is prima facie evidence of a first use date. Moreover, after 5 years of continuous use of the mark after a registration is issued, the mark’s registration becomes incontestable, except under limited circumstances (fraud, abandonment, genericness).

The new logo (shown above next to the old one) is representative of the phone company’s radically new “so very Verizon” campaign.

Further images of the clever campaign are available here.

No word yet on whether the old CAN YOU HEAR ME NOW? tagline will be replaced by the VERY awesome: IS IT HOT IN HERE?

Practice Notes: Rebranding efforts can be effective for companies to update their image and gain new consumers (although they can sometimes backfire, as Tropicana learned recently). Clients should involve their trademark counsel in the rebranding and marketing efforts, so as to assess potential risks (such as likelihood of confusion with existing marks, say, in this case, the SKYPE logo) and protect the new marks, including new trade dress, if applicable.

Tsan’s Comment: Naturally, rebranding efforts that take place on April Fool’s Day and are gone the next day should be suspect (unless you’re introducing New Coke).

Following the trend started by Hyundai Motor Co., and even going one better, automakers Ford are offering a bailout of their own: buy any new car from them between April 1st, and April 30th, and if you get pink-slipped GM will pay your car tab for up to 9 months and up to $500.00; Ford will pay up to $700.00.

But wait! There’s more: If you buy a car, drive it, make payments on it, and then bring it back for a trade-in, GM will credit you for what you own on the car, even if the National Automobile Dealers Association says the value is lower. You also get free On-Star service and a host of other little perks (including a low finance rate).

If you’re looking for a catch, there really isn’t one. So long as the buyer is employed at the time of purchase and the lay-off notice does not pre-date the car purchase (and the employee is not self-employed), the companies are ready to deal.

A similar program was offered by Hyundai this February wherein new car buyers could return their vehicles to Hyundai without further payments due in the event they were laid off within the first year of the purchase. Of course, Hyundai was footing the bill for its promotion: (and getting back the car). In the case of Ford and GM, the tax papers appear to be subsidizing the purchases.

Practice Note: Clients who wish to do “big splash” promotions should remember to review carefully all of the terms and conditions of the promotion, to make certain there are no ways for participants to take advantage of the program. Of primary importance is the institution of an “end date,” so that if there is a problem, the promotion has a limited life. Similarly, for a promotion such as this, there should be a limit on the number of cars one person can purchase. Provisions should be placed in the terms and conditions of the promotion that make clear the program will not be offered if, in the sole discretion of the sponsor, a person is trying to deliberately undermine the intent of the promotion.

Inhale, Inc., makers of hookahs and the INHALE vaporizer believes Oglesby & Butler was smoking something other than tobacco when it adopted the name I-INHALE for its vaporizer product, and Inhale put down its own hookah long enough to file suit in the Central District of California for trademark infringement of its name. Inhale has several federal trademark registrations for INHALE for smoking devices “used by individuals to smoke herbs such as tobacco” (not that anyone remembers).

It took less than 10 days for Oglesby & Butler to come out of its fog and change its name to iolite. After all, looks like Inhale had Oglesby head to rights.

It’s no secret: U.S. and international markets are in deep turmoil. Massive layoffs, historic stock market declines, and institutional failures remind us this no ordinary time. Even while companies look for ways to cut back and streamline institutional costs, now may be the best time to strengthen your intellectual property (IP) portfolio.

Although frequently overlooked, a company’s IP, including its trademarks, copyrights, and patents, is often its most valuable asset. There are several reasons why strengthening an IP portfolio now, even during the recession, not only makes good business sense but may be the key to a company’s future economic growth and recovery:

1. IP Assets May Be A Significant Source Of Revenue During (And After) The Recession.

Licensing or selling of IP assets has always been a way for companies to generate additional revenue. For example, during 2006 Neo-Magic recorded a $3.5 million gain on the sale of its unused patents, representing over 37% of the company’s total yearly revenue. A recent article in the Chicago Tribune reports “amid the recession, a growing number [of companies] are looking to generate cash by selling or licensing their dormant trademarks and patents.” If protected and maintained properly, your IP assets can offer significant revenue now and into the future. In fact, many lending organizations look to a company’s trademark portfolio as a means for determining the foundational strength of the organization.

2. IP Assets Are The Building Blocks To A Flexible Business.

The recession has brought significant restructuring and reorganizing of businesses. Mergers, acquisition, spin-offs, and new business units are a sign of the times, and strong IP portfolios are the building blocks for new business opportunities as companies transform their products and market positions. Perhaps this is why, historically, certain IP filings and litigation tends to increase during times of recessions (click here and here for historical figures). As a business continue to change, adapt and grow, so too must its IP assets.

3. IP Assets Will Set Companies Apart From The Competition.

Brand recognition by consumers not only increases product and service sales, but creates a significant barrier to entry for new competitors. Thus, the strengthening of a brand position in a downturn (through both IP filings and consumer marketing), provides an opportunity for companies to stand out when there is a smaller competitive market. Strong IP assets, such as trademarks, will help ensure brand recognition and differentiate companies from their competition.

4. IP Assets Have A Lifetime That Will Extend Well Beyond The Recession.

Perhaps the only thing we know about this recession is that it will end. Innovation, creation and entrepreneurism will continue to drive our economy forward, and as we emerge into the next profitable market cycle, IP assets will remain one of most valuable company assets. Failure to protect them now may have severe consequences for the future.

Toughlove American LLC (”TLA”) filed suit this month against MTV High Noon Productions, and Drew Barrymore’s Flower Films (”Defendants”) claiming trademark infringement and false designation of origin based upon the production of a new reality show, TOUGH LOVE.

TLA, founded by two therapists, claims to have been using the mark TOUGHLOVE for peer-to-peer, self-help, and psychological counseling programs, along with educational materials about self-help since the last 70’s and gained national acclaim after its services were recommended in an Ann Landers column. It also claims to be in the development process for a television talk show. TLA has registrations for the mark TOUGHLOVE in the appropriate categories.

Notwithstanding the lawsuit, the show TOUGH LOVE aired on March 15, 2009. The show has a romance theme, and centers around several women who have had a bumpy dating life and who, for the most part, blame the opposite sex for it. The host uses a “tough love” approach to address the root of the women’s problems.

author’s note: As luck would have it, I was privy to the pilot episode of this train wreck of a show. Fans of reality dating shows will no doubt salivate over the level of public humiliation doled on these women. Perhaps TLA should add tarnishment to the claim.

Stephen Colbert has won NASA’s International Space Station module naming contest. NASA held a contest allowing the public to decide on the new “living room” module aboard the orbiting outpost of the International Space Station. In keeping with the other modules, called Unity and Harmony, scientists and space employees were urging the name Serenity.

Problem was, the contest allowed write-in suggestions. Leave it to Colbert to game the system. Using his daily faux-news show, he urged his supporters to write-in the name Colbert. According to the Guardian, Colbert received more than 40,000 more votes than the name NASA scientists preferred.

Hedging a little, a NASA spokesperson has stated that the name Colbert will be given the most consideration, but he stated, NASA reserves the right to give the module a more appropriate name.

Practice Pointers:
• Promotion sponsors should always assume that someone is going to “game” their promotion, as Stephen Colbert did, and make adjustments to the rules accordingly.
• In this case, if NASA really didn’t want write-in names, it should not have given voters the option; clients should be advised to only put forth the contest they can tolerate.
• In promotions that involve public voting, such voting should be limited to an intermediate round of voting with the top 5 winners going to a final round, judged by the sponsor.

With U.S. President Barack Obama in the White House a change in U.S. - Cuba relations may be on the horizon. According to a recent Reuters story, U.S. companies have an estimated 5,000 products trademarked in Cuba, “waiting for the day they might finally land on the island separated from the United States by the Florida Straits and a vast ideological gulf.” Indeed, as recently as December 2008, the Cuban Office of Intellectual Property registered trademarks for new products for Coca-Cola, Google, and Ford Motor Co.

Hasn’t the United States imposed a commercial, economic, and financial embargo against Cuba since the early 1960s? Yes, but under the Clinton administration an exception was enacted exclusively for the protection of trademarks, patents, commercial names, copyrights belonging to U.S. individuals or corporations. Thus, U.S. trademarks and other IP is can be protected under Cuban law. Likewise, U.S. government will protect intellectual property assets belonging to the Cuban government.

While trademark applications filed in Cuba by U.S. companies fell by 36 percent during the George W. Bush administration, under Mr. Obama’s administration U.S. companies are sensing new market opportunities. Mr. Obama is the first U.S. president in half a century who has evidenced a willingness to talk with Cuba’s leaders, and he has promised to ease the trade embargo.

Right now, U.S. trade groups are trying to avoid a repeat of events that occurred in South Africa, following the end of apartheid. There U.S. companies found their trademarks had been registered by someone else. Fortunately, Cuban authorities have honored trademarks and awarded rights to legitimate owners.

For those U.S. companies believing “change” may involve a thawing of economic relations between the governments of Cuba and the U.S., then further discussions with your trademark counsel is warranted.

This is big news in the world of internet domain names. Trademark holders have expressed concerns about ICANN’s decision to soon allow custom Top-Level Domains (e.g., .google, .disney, .newyork, .cars, etc.). Companies and other interested parties now have a bit more time to prepare for the change and decide whether to apply for new Top-Level Domains themselves, including domains that may contain their trademarks. The public will also have an opportunity to make further comments to the proposal this Summer.

Top-Level Domains (TLDs) are the portion of a domain name that is to the right of the dot (e.g., .net, .com, etc.). TLDs that are not country codes (e.g., .cn or .uk), are called generic TLDs (gTLDs). ICANN is the body that approves and recommends new gTLDs.

Currently, TLDs are limited to 21 generic top-level domains (like .net, .com, .org or .info). After allowing a few limited expansions (for example, .mobi), ICANN announced last year that it would dramatically expand this system and allow custom gTLD, subject to an elaborate application and evaluation procedure (and, of course, a fee). The new gTLDs can consist of almost anything, including trademarks, geographic locations and generic terms, as well as non-Roman characters. Applicants will have a limited time period to apply for new gTLDs.

The official launch of the program was originally planned for June 2009. After receiving a number of objections and comments from trademark holders and the business community, ICANN just announced that it will delay the program until at least December 2009. A committee is evaluating, and developing solutions in response to the “overreaching issues” with the program. Some of those concerns include: skyrocketing costs for trademark holders, and increased opportunities for malicious behavior and infringement online.

So what’s next? A further report and draft guidebook are scheduled to be published by ICANN in May and June 2009, at which point a new comment period will open. Under the current schedule, it appears that the publication of the “Final Application Guidebook” is planned for December 2009 or the first quarter of 2010. Applications for new gTLDs will be open for 45 days from that date.

Further information is available on the ICANN web site

The estate of rock legend Jimi Hendrix won a trademark infringement lawsuit against a Seattle, Washington-based businessman who used the star’s name and image to promote his brand of vodka. In Experience Hendrix LLC et al v. Electric Hendrix LLC et al, Case No. 2:07-cv-00338-TSZ (W.D. Wash. 2009). a U.S. District Court judge ruled HENDRIX ELECTRIC VODKA infringes on the estate’s trademarks.

Experience Hendrix and Authentic Hendrix, which owns and licenses Hendrix’s likeness and music won a $3.2 million judgment against Craig Dieffenbach and his Electric Hendrix Spirits. Electric Hendrix Spirits had described the liquor as inspired “by the innovative spirit of legendary musician Jimi Hendrix.”

A legal purple haze has surrounded the deceased guitarist for years. In this case, Hendrix’s sister Janie Hendrix, CEO of Experience Hendrix LLC, alleged trademark infringement and false advertising for its “tasteless promotion” of Hendrix Electric Vodka, sold in purple-tinted bottle. Plaintiffs further alleged that Hendrix’s name and likeness were used without permission. Janie Hendrix, however, isn’t the only Hendrix in this fight. Leon Hendrix, Jimi’s biological brother, who has been engaged in a long-running legal dispute with Janie Hendrix over Jimi’s assets, is a partner in defendants’ venture. Indeed, Mr. Dieffenbach, has helped Leon Hendrix finance his court fight over Jimi’s estate. Here’s a story about the lawsuit and the Hendrix family’s squabbles over who has the right to make money off the late rock star.

In its February 12, 2009 order, the District Court ordered the company to cease using Hendrix products for commercial purposes and ordered the vodka and any related advertising be withdrawn. And the beat goes on . . . .

Don’t forget to check the fine print (with your attorney). If you don’t want to view the entire episode, read below:

Michael Scott wants to sell paper. Borrowing an idea from the Roald Dahl book, Charlie and the Chocolate Factory, he decides to put 5 Golden Tickets in pallets of paper to be randomly shipped to existing clients. The tickets allow a company getting the ticket to receive 10% off its paper order. Problem is, Michael decides to seed them himself and all the tickets end up with the same company. Worse, there are no restrictions: no limit to the number of tickets one company can have; no time restrictions; no restriction on the number of orders to which the ticket applies; no limitation on minimum or maximum orders. There go the Dunder-Mifflin profits (and Jim’s commission).

Like a Curious George book, it all works out in the end, but in difficult economic times, clients often make rookie errors when rolling out a promotion that can be easily dispensed with by first “role playing” the promotion, and then, spending a little time with an attorney, who may know about various state and local laws that could affect the outcome. At a minimum, the client should ask itself these questions before proceeding:

– Does this promotion attract the right clientele?
– If I where the target, would I care?
– Is it impossible to “game” the promotion (take advantage of a loophole)?
– Will this have an overall positive impact on the bottom line?

If a client can answer the foregoing questions affirmatively, it’s taken the first step to a promising promotion.

Kia Motors America, Inc. v. Autoworks Distributing, Civil No. 06-156 (February 26, 2009).

Plaintiff Kia Motors America was none too pleased that Defendant Autoworks was selling “KIA” parts for below dealer net prices. It sued under the Lanham Act, claiming the parts were either gray market goods (parts authorized by Kia but not intended for the U.S. Market) or were counterfeit goods. Defendant filed for Summary Judgment on the grounds that its admittedly gray market goods were substantially identical to the Plaintiff’s goods and thus, their sale in the U.S. did not violate the Lanham Act.

Employing the Nestle test, the court looked at whether the goods being sold by Defendant were (1) not intended for the U.S. Market; and (2) materially different than those that were intended for the U.S. Market. Once both of these are established, the burden shifts to the Defendant to show that the difference is not the kind consumers would consider in purchasing a product.

The parties did not dispute that Defendant’s parts were not intended for the U.S. market; neither did they dispute that there was a difference between the warranties of each party. Defendant pointed out that its warranty covered all parts. Plaintiff’s warranty expressly excluded Defendant’s part. Thus, Defendant argued, the distinction was not one likely to affect the purchasing decision of its product. The court disagreed, finding that such a different (even though in Defendant’s favor) would be relevant to dealers purchasing the products for use in customers cars, and thus denied Defendant’s motion.

Practice Note: There is a distinction between parallel imports and grey market goods, though the terms are used interchangeably. Parallel imports are those goods that – while not intended for the U.S. market – are identical to the goods sold in the U.S. Courts have routinely held that if the goods are identical to those in the U.S. market, their sale in the U.S. will not constitute infringement. If, however, there is a material distinction between the goods sold elsewhere and those sold abroad, sale of those items may constitute trademark infringement because their sale creates a presumption of consumer confusion.

Fairey et al v. The Associated Press, Case No. 1:09-cv-01123-AKH (S.D.N.Y, filed 02/09/2009)

Shepard Fairey is a contemporary visual artist who created the iconic red, white and blue “Hope” poster that became the symbol of Obama’s campaign and, arguably, a cultural phenomenon (have you Obamicon-ed yourself yet?).

Fairey doesn’t dispute that he used a photograph taken by AP photographer Mannie Garcia at a 2006 National Press Club conference as a “visual reference” for creating the series of “Hope” posters and related merchandise. The AP owns a copyright registration in the photograph (Registration No. VA 1-356-885).

After the AP threatened to sue Fairey for copyright infringement for using the photograph without permission, credit or notice, the artist and his companies filed for declaratory relief. Fairey asserts that his use is protected by the Fair Use Doctrine because: 1) the photograph was used for a “highly transformative purpose;” Fairey “altered the original with new meaning, new expression, and new messages;” 2) the photograph was published “well before” Fairey used it and it is a factual work; 3) Fairey only used a cropped portion of the photograph, and the portion used was reasonable in light of his expressive purpose; and 4) the use not only does not harm the value or market of the photograph or any derivatives, but it has enhanced the photograph’s value “beyond measure.”

In its answer and counterclaim, filed yesterday, the AP asserts that Fairey’s series of posters and merchandise based on the photograph “copy all the distinctive and unequivocally recognizable elements of the [photograph] in their entire detail, retaining the heart and essence of [the photograph], including but not limited to its patriotic theme.” In response to Fairey’s fair use arguments, the counterclaim also alleges that the posters and other merchandise “do not alter any of the distinctive characteristics that make the [photograph] so striking — from the selection of subject matter, to the composition, to the exacting details of the photo.” AP’s counterclaim further points out that licensing of photographs “is an important source of revenue” for news and photo agencies and gives the following as an example of a photograph licensed by the AP for commercial use:

The AP seeks damages and injunctive relief for copyright infringement, contributory infringement and DMCA violation.

To be continued…

Note: Ownership of the copyright in the photograph (and, therefore, the AP’s standing to sue) may become an issue in this case. The AP asserts in its answer that Mannie Garcia was a “full-time salaried staff employee” when he took the 2006 photograph, making the photograph a work-made-for-hire under 17 U.S.C. sec 101. Mr. Garcia, however, claims that he was a freelancer, not an employee.

Textbook cases can get complicated. Those complications generally do not arise in association with the manuscript or first edition, but with the subsequent updates and revisions. This is often the result of the original authors being assisted, or superceded, by other contributing authors. Sometimes the credit and acknowledgement of each contribution is not adequately represented.

The Plaintiff, Vogel, was invited by the Defendant, textbook publisher Wolters Kluwer Health dba Lippincott et al, to author one section of the medical textbook “Pathology” in the Second and Third revisions. Plaintiff was not asked to participate in the Fourth revision; however, the Fourth revision includes portions of Plaintiff’s contributions to the preceding revisions. Plaintiff received no attribution for his earlier, iterative contributions; authorship for the Fourth revision has been credited to a completely new author-physician.

The Court of the Middle District of North Carolina granted the Defendant’s motion to dismiss Plaintiff’s claim of false designations of origin on the grounds that “Section 43(a) does not protect the merely communicative aspects of the goods apart from the goods themselves.” Specifically finding that Plaintiff’s interpretation of Dastar is “incorrect,” the Court held that any claims of false authorship attribution must be pursued under copyright law. The copyright claim survives the motion to dismiss and the case will go forward to trial.

Vogel v. Wolters Kluwer Health, Inc. (12/30/08)

Crane v. Poetic Products Ltd., 2009 U.S. Dist. LEXIS 993 (SDNY January 8, 2009)

Arising from a fondness for the conspiracy theory that the 1978 death of Pope John Paul I was a murder most vile to facilitate a specific succession, both plaintiff and defendant to this action wrote works. Crane wrote a two act play entitled “The Last Confession” and filed a declaratory judgement for a ruling that that play does not infringed copyright claimant, Poetic’s, nonfiction book entitled, “In God’s Name”.

In reviewing the two works, the Southern District of New York held that the play is not substantially similar to the book. The court looked at the elements of both works and found that while the selection, arrangement and organization of the facts constitute protectable copyright in both works, the comparison between the two works revealed that the resulting thin copyright did not extent to the specific historical order of presentation that each used in expressing their thinly protectable copyright. No substantial similarity was found between the two that used different means and devices in expressing the same plot. Crane’s work utilized dialogue and a series of flashbacks while the Poetic work employed historical narrative in chronological order.

The court in granting defendant’s motion for summary judgement, the court instructed the clerk to ‘close the case’.

With the goal of capturing “the most detailed experience of a single moment ever in history,” CNN and Microsoft invite inaugural attendees to send photographs documenting the moment that Barack Obama took the oath.

Participants are instructed to:

“1. Take one photo of the moment when Obama takes the oath. If you have a digital camera with a zoom lens, take three photos (wide-angle, mid-zoom, full-zoom).

2. E-mail each photo as soon as possible to themoment@cnn.com (one photo per message, 10MB size limit). Please only send in photos you took yourself.

3. Go to cnn.com/themoment to see all of the photos in our photosynth.”

And what is a “photosynth” exactly? Photosynth is technology developed by Microsoft and the University of Washington that creates a collage, a derivative work. Specifically, photosynth takes multiple shots of the same scene and reconstructs the 2D photos into 3D space. According to the web site, “depending on the number of photos, their resolution and the computing iron thrown at the project we should have a fully explorable virtual environment. It is a technology in its infancy. This is the first time a mass audience has been asked to participate. The technology takes all the submitted images from thousands of sources and angles to create a 360 degree visual image that can be viewed from different angles.”

And what about the copyright in those photographs by the amateur photographers? It is governed by pretty complicated and professional sounding terms of use.

After granting CNN and its affiliates a perpetual, irrevocable, royalty-free, worldwide license to which the submitter retains only personal use rights (which some would call an illusory license, and indeed much more akin to an assignment than a license at all), that photographer “warrants” that he or she, the amateur submitter, has “the written consent of each and every identifiable natural person in any submission to use such persons name or likeness in the manner contemplated by iReport.com, and each such person has released you from any liability that may arise in relation to such use.” Which is a bit of a trick as there is no chance of the amateur having obtained such “written consent” on the Mall on January 20th; and that amateur just also agreed earlier in the terms of use that CNN does not have to inform what “use” will be made of the submission.

And yet, people seem to have blithely blown past all those words and have made their submissions nevertheless.

It’ll be interesting to see the copyright application for registration at the United States Copyright Office that CNN will be making. A daunting task, it will be to draft that application.

A U.S. District Court in California recently granted summary judgment in favor of Boy Scouts of America (“BSA”) in a trademark infringement suit concerning the mark YOUTHSCOUTS. In Wrenn v. Boy Scouts of America, 2008 U.S. Dist. LEXIS 91913 (N.D. Cal. Oct. 28, 2008), the Court found BSA’s Congressional Charter provides special protection to its exclusive use of “emblems, badges, descriptive or designating marks, and words or phrases.” In addition, the protection afforded by congress provides BSA “need not demonstrate” that the mark YOUTHSCOUTS is likely to cause confusion with BSA’s CUB SCOUTS, EAGLE SCOUT, BOY SCOUTS OF AMERICA, and SEA SCOUTS trademarks. While the Court, “for the sake of completeness,” undertook a traditional trademark infringement analysis under Ninth Circuit precedent, this case was ultimately decided in BSA’s favor through application of the “special protection[s]” afforded by Congress whereby specific trademarks are removed from the general trademark process.

Mr. Wrenn, the plaintiff, is the founder of the National Counsel of Youthscouts, a non-profit founded in 2002 when plaintiff’s daughter was denied the right to become a member of her twin brother’s Cub Scout troop. Mr. Wrenn filed a trademark application for YOUTHSCOUTS with the USPTO. Thereafter, BSA filed a notice of opposition to the YOUTHSCOUTS application with the Trademark Trial and Appeal Board (“TTAB”) (Opp. No. 91157313). In response to the TTAB action, Mr. Wrenn sought to cancel or amend numerous BSA marks on the grounds that the terms “Scouts” and “Scouting” are generic. The TTAB issued a ruling that BSA had valid and incontestable rights to marks CUB SCOUTS, EAGLE SCOUT, and BOY SCOUTS OF AMERICA. Plaintiff also filed a declaratory judgment action in the District Court.

The District Court reviewed the history of BSA and its Congressional Charter. In 1916, Congress passed a charter providing special protections for BSA. The original Congressional Charter provided: “The corporation shall have the sole and exclusive right to use, in carrying out its purposes, all emblems and badges, descriptive or designation marks, and words or phrases now or heretofore used by the Boy Scout of America in carrying out its program.” In 1998, the charter was changed slightly and now provides: “The corporation has the exclusive right to use emblems, badges, descriptive or designating marks, and words or phrases the corporation adopts.”

Ultimately, the District Court granted Defendant BSA’s Motions for Summary Judgment and Judgment on the Pleadings. In doing so, the Court found that “BSA need not demonstrate the likelihood of confusion because it has been granted special protection by Congressional charter,” citing The Last Best Beef, LLC v. Dudas, 506 F. 3d 333, 339 (4th Cir. 2007) and S.F. Arts & Athletics, Inc. v. U.S. Olympic Committee, 483 U.S. 522, 531 (1987).

PRACTICE POINTER: A list of Patriotic and National Organizations recognized by Congress can be found here. If your client is on this list, its Congressional Charter may serve it well in a trademark infringement action.

This week, Apple announced that Digital Rights Management (DRM) would not attach to any single song from the iTunes store. This is huge confirmation of what most music fans have noticed: DRM doesn’t work and may never work. The details of this change include a price change. A tiered spectrum of prices will be the tariff card with the most ‘popular’ (read: hot and new) costing $1.29; the usual .99 cents for the chestnuts and perennial favorites; and then .69 cents for the sentimental and slow demand ones.

That music downloaded necessarily involves a ‘codec’ (which means that only a fraction of the full fidelity is made available) seems to continue to elude the consumer. But as anyone who has tried to play iTunes music on a full fidelity, fancy speaker knows, the quality of music is definitely strained…. and thin sounding.

For those of us who have been watching the DRM life cycle over the last decade, this is more confirmation that technological control efforts have far less to do with piracy than with an effort to control the design of consumer electronics, digital broadcasting and the evolving distribution models. Content owners are about out of tricks for how to slice and dice the accessing of content (regional codes, restrictions on porting lawfully made copies and pricing).

Washington D.C. is full of original works of art in the form of sculptures. One description of D.C. made by a young friend is that D.C. is a sculpture garden disguised as a town. A score of years ago, the Supreme Court issued a copyright opinion on another sculpture case, The Community for Creative NonViolence (CCNV). This opinion, Gaylord v. U.S., which issued on December 16, 2008, is consistent with CCNV.

The title of the work at issue, “The Column”, refers to a public sculpture depicting 19 Korean War soldiers in a ‘column’ formation. This sculpture forms the core of the larger Korean War Veterans Memorial (KWVM) in Washington, D.C. Frank C. Gaylord, the acknowledged artist who authored “The Column”, objected when the United States Postal Service commissioned a freelance photographer for $1,500.00 and then used that image on a commemorative stamp. The USPS sold 86.8 million 37-cent stamps bearing the image before retiring the stamp in 1998. The photographer pocketed his $1,500. Gaylord got nothing, not even a free stamp.

Gaylord sued; alleged copyright infringement; and demanded as damage 10% of the revenue of the USPS stamp sales.

The tangled facts surrounding the creation of the sculpture are pivotal in understanding this case. It is a fact pattern that reads like a nested Russian doll. An architectural firm won the contract from the American Battle Monuments Commission (ABMC) to create and install the KWVM; and, that architectural firm subcontracted the sculpture of the soldiers (19 in all) to Frank Gaylord, a self employed and well known artist. In the documentation regarding the creation of the sculpture, Gaylord demanded; was refused; and then succeeded in unimpeded ownership to the copyright in his works. Gaylord obtained numerous copyright registrations covering the sculptures of the poncho wearing foot soldiers both individually as a grouped column.

After the KWVM was installed, an amateur photographer visited the KWVM during a snowstorm and took photographs. The snow frosted images of trudging soldiers in column was licensed to the United States Postal Service for $1,500. The photographer notified the Postal Service that the permission of the artist of the sculpture would also be needed for reproduction of the image. The Postal Service contacted the ABMC who represented that it had the rights to the sculptures. No one contacted Mr. Gaylord; Mr. Gaylord did not consent.

Upon learning of the use of his work, Gaylord tried negotiating a ten percent license on the revenue of the stamp sales, and when that was refused, he sued the United States.

The United States defended stating that the Gaylord sculpture was a joint work. In reviewing the facts and logic, which were reminiscent of those of the Community for Creative Nonviolence (1988), the Court of Federal Claims found no joint authorship and that Gaylord is the sole owner of the sculptures. However, in reviewing the defense of fair use, the Court of Federal Claims found that United States Postal Service stamp was a fair use of Mr. Gaylord’s solely owned sculpture as the stamp is a transformative work, having a new and different character and expression from that of Mr. Gaylord’s sculpture. Gaylord for all his effort and for his tenacity in taking the matter to court; still gets nothing.