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What is Pirate Fight Club®?

Rebecca explains what happens at Pirate Fight Club®.

Join us for our FREE Pirate Fight Club® event every 3rd Tuesday of the month at noon in our offices at 500 Washington Street. You can learn about intellectual property and how to protect yourself and your design, invention or other original work!

RSVP to our Facebook event: Pirate Fight Club on Tuesday, November 21st!

Subscribe to our channel on Youtube: Del Vecchio & Stadler LLP Channel

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Join Us for Pirate Fight Club®!

Do you want to protect your business name or logo, or inventions that you or your company have patented or intend to patent? Perhaps you’re an artist or a writer with copyright concerns? Then join Del Vecchio & Stadler LLP for our FREE event, Pirate Fight Club on Tuesday, November 21st in our offices at 500 Washington Street!

In the Age of the Internet, intellectual property piracy is rampant. That means it’s more important than ever to protect names, logos, and ideas from ill-meaning and unwitting intellectual property pirates in Buffalo and beyond. Learn how to guard your assets from piracy at our free monthly event. We’ll be discussing topics such as intellectual property rights, intellectual property formation, trademark registration, registered trademarks, and copyrights.

Don’t be caught unaware and find that your company may have to change its name because someone filed for a trademark before you did. Don’t let someone appropriate your idea and turn it into the next great invention because you weren’t sure how to patent your work or protect the patents that you already have. Don’t let someone get away with taking your art or written work and claiming it as their own original ideas.

Protect your trademarks. Protect your patents. Protect your copyrights. Join Del Vecchio & Stadler LLP Pirate Fight Club® the third Tuesday of every month at noon, free, because your work isn’t.

RSVP on our Facebook event: Pirate Fight Club on November 21st, 2017!

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The Turtles and the Florida Supreme Court Are Not Happy Together

According to a unanimous decision by the Florida Supreme Court, anything recorded before the year 1972 is in the public domain and can be used freely within the state of Florida.

This strikes a serious blow against members of the oldies rock band, The Turtles.  Howard Kaylan and Mark Volman, aka ‘Flo & Eddie,’ have been arguing in court for payments on their pre-1972 songs for years.

Seeking pre-1972 royalties is a new and rising issue because satellite radio and internet streaming services have become so popular in recent years. Unlike traditional broadcast radio stations which can play music without any fees, satellite and internet music companies have to pay performance royalties each time certain songs are played.

Prior to 1972, artists and labels were required to follow state laws to determine the outcome of copyright suits. Since that point, Congress has continued to leave pre-1972 copyright decisions to the states.  Copyright protection for recordings didn’t exist in Florida at that time.

Kaylan and Volman accused SiriusXM of infringing on their copyright by making “unauthorized public performances” of the duo’s hits, including their most well known song, ‘Happy Together’.

This suit does not apply to the compositions themselves.  Broader copyrights have long applied to the actual publishing of a song, which is comprised of the underlying notes and lyrics.  The recorded version of that composition was not protected until February 15th, 1972.

In 2013, Kaylan and Volman brought suit and the major labels soon followed. In a 2016 settlement, SiriusXM agreed to pay up to $99 million to a group of indie labels and $210 million to the major studios.

A previous decision by the courts stated that Florida law does not address pre-1972 sound recordings. Appealing that decision, Volman and Kaylan were sent to the state’s supreme court, hoping that common law would officially recognize sound recordings as property.  Justice Charles Canady wrote that State Law “has never previously recognized an exclusive right of public performance for sound recordings”, upholding that earlier ruling.

Although Florida’s decision doesn’t directly affect Volman and Kaylan’s cases in New York or California, it may be an indication that copyright protection for older recordings is unlikely.

SOURCES:

Florida Supreme Court Sides With SiriusXM in Royalty Battle Over Pre-1972 Recordings

A Florida Supreme Court Rules That Pre-1972 Recordings Are Public Domain

A Win for Music Listeners in Florida: No Performance Right in Pre-1972 Recordings

Florida Supreme Court Rules That Oldies Recordings are Public Domain

Florida’s top court stops 1960s band from earning pre-1972 copyright royalties

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This Suit is Bananas

While perusing the Halloween aisle at the store, you can see some familiar costumes with unfamiliar names. There is a good reason for that. If a costume is packaged and labeled with a trademarked name, the costume has most likely infringed a registered trademark and/or copyright. However, if the costume does not display these trademarked names, the outcome becomes more complicated.

In 2011, SCG Power Rangers LLC, the company that owns the Mighty Morphin Power Rangers franchise and the intellectual property rights therein, filed a suit against the website Underdog Endeavors, owners of mypartyshirt.com for selling costumes similar to the Power Rangers’ outfits. In addition, the company claimed violations of the Lanham Act by alleging the defendant created confusion, making it appear that they were officially endorsed merchandise.

The Copyright Act only provides protection to the elements of the artist’s original work if those elements can be separated from the garment’s utilitarian function. Because of this, most apparel is not eligible for copyright protection, since a costume can serve the utilitarian purpose of being clothing as well.

In the Power Rangers case, both parties agreed to settle, but the question remains whether fashion design and clothing can be given copyright protection. Proposed legislation in 2012, backed by Senator Chuck Schumer, was the latest attempt to amend the Copyright Act to extend protection to fashion design. Because it did not pass, the confusion lingers on.

More recently, a New Jersey company named Rasta Imposta has accused retailer Kmart of ripping off the design of its full-body banana costume by creating its “Totally Ghoul” men’s banana Halloween costume.

Rasta Imposta filed a complaint last week with the federal court in Camden, New Jersey against retailer Kmart and its parent company, Sears Holdings Corp. They are seeking unspecified damages, citing copyright infringement, trade dress infringement, false advertising and unfair competition. The speculated impact could be a substantial amount, since U.S. shoppers are expected to spend over $3 billion on costumes alone this year.

Rasta Imposta claims Kmart’s version of the costume “has the same shape as the Banana Design, the ends of the banana are placed similarly, the vertical lines running down the middle of the banana are placed similarly, the one-piece costume is worn on the body the same way as the Banana Design, and the cut out holes are similar.” In addition, the company alleges they have suffered significant financial harm and “irreparable harm to its reputation as a result of Kmart’s conduct.”

Although still in progress as this Halloween approaches, this case could create an impact on the costume industry for years to come.

SOURCES:

The Halloween Costume Copyright Wars Are Going Bananas

Lawsuit accuses Kmart of copying Halloween banana costume

HALLOWEEN COSTUME COPYRIGHT CASE: POWER RANGERS FIGHT COPYRIGHT AND TRADEMARK INFRINGEMENT

17 U.S. Code Chapter 1 – SUBJECT MATTER AND SCOPE OF COPYRIGHT

Schumer Bill Seeks to Protect Fashion Design

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Trademarking Twins

In a strange turn of events that could only happen to successful celebrities in recent years, it appears that the names of Beyoncé and Jay Z’s twins were originally revealed after paperwork was filed to trademark the babies’ names, Rumi and Sir. Speculation remained until a spokesperson for the family officially confirmed the names of the newest members of the Carter family.

According to some sources, Beyoncé gave birth to the twins around June 18th, although neither parent or their official representatives made any announcements until weeks later.

Applications were filed by Beyoncé and Jay Z’s company BGK Trademark Holdings with the United States Patent and Trademark Office earlier last month to secure rights to the names Rumi Carter and Sir Carter. Rumi is the name of a 13th century Persian poet, but the significance of Sir remains unknown. The trademarks would cover fragrances, cosmetics, key chains, baby gear, mugs, water bottles, playing cards, tote bags, sports balls and other items.

The couple had filed trademark papers for the name Blue Ivy, the couple’s 5-year-old daughter in 2012, seeking to secure rights for use as a brand name for baby-related products, including carriages, diaper bags and baby cosmetics. Their path to success on that subject remains a significant struggle for them. An event-planning company in Boston has the rights to the name Blue Ivy and submitted court documents in an effort to stop Beyoncé from getting ownership of the name “Blue Ivy”.

Reportedly, BGK Trademark Holdings also applied for “Blue Ivy Carter” earlier this year, hoping that adding the last name may secure a trademark for them.

Both Beyoncé and Jay Z have been very successful building brands both within the music industry and beyond, so it is not surprising that they are planning for their children’s future.

According to statista, the global baby care market is presumed to hit $66.8 billion in sales this year and it is not unreasonable to speculate that if Beyoncé and Jay Z are granted trademarks for all three children’s names, they may obtain a substantial amount of that money.

SOURCES:

The Guardian

Toronto Sun

BBC

NME

Billboard

NY Daily News

IP Watchdog

Statista

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“Stick to what you know … lip gloss.”

Sharon Osbourne, threw out a scathing twitter jab to Kendall and Kylie Jenner after the sisters’ brand released a series of shirts online depicting photos of musical icons like Biggie, Tupac Shakur, The Doors, Pink Floyd, Metallica, Led Zeppelin and Sharon’s husband Ozzy.

“Girls, you haven’t earned the right to put your face with musical icons. Stick to what you know…lip gloss.”,” she wrote and tagged the sisters.

Soon after the $125 shirts were released, Biggie’s mother, Voletta Wallace, slammed the sisters on Instagram as well:

“The disrespect of these girls to not even reach out to me or anyone connected to the estate baffles me,” she wrote. “I have no idea why they feel they can exploit the deaths of 2pac and my Son Christopher to sell a t-shirt. This is disrespectful , disgusting, and exploitation at its worst!!!”

Another shirt in the collection showed a an Instagram photo of Kylie Jenner in a bikini superimposed over an image of Tupac Shakur with “1996” (the year of his death) written beneath the image.

Biggie’s estate lawyer Julian K. Petty called the clothing line “misappropriation at its finest.”

The Jenner sisters also received a cease and desist letter from lawyers representing The Doors. In their case, the shirt in question featured a well-known photo of Jim Morrison overlaid by a Kendall selfie. The letter states that the t-shirt line tarnishes The Doors trademark because it also features the band’s registered logo and it includes references to three separate possible violations:

1. The Lanham Act provides trademark infringement and false advertising as two points under which a false endorsement claim can be pursued. False endorsement claims that a person sponsors or approves certain products or services and can fall under either trademark infringement or false advertising, though the courts tend to rule characterize false endorsement cases as trademark infringement ones more often. The Jenner sisters’ use of The Doors logo is being challenged with the Lanham Act. There is also concern that usage of Jim Morrison image and the Doors logo imply that the estate is supportive of the products, when in fact, they were unaware of the production.

2. California Business Code 17200, stating unfair competition shall mean and include any unlawful, unfair or fraudulent business act or practice and unfair, deceptive, untrue or misleading advertising.

3. Post-mordem rights of publicity in California allows the the deceased celebrity’s estate to retain legal rights to the celebrity’s likeness for 70 years after their death. Jim Morrison and the Doors are looking for protection from the commercial exploitation of the deceased’s name, photographs, or likeness.

Responding to the backlash, both legal and on social media, Kendall and Kylie Jenner claimed to be “huge fans” of the featured artists in the line and they each issued a statement on Twitter:

“These designs were not well thought out and we deeply apologize to anyone that has been upset and/or offended, especially to the families of the artists. It was not our intention to disrespect these cultural icons.”

Kendall also confirmed that the T-shirts in question have been pulled from their website.

Petty made a statement many have been pondering, “I’m curious to hear the justification. I’m even more curious to hear the proposed resolution.”

The Jenner sisters may have to sell a lot more lip gloss to cover these issues.

SOURCES:

Kendall and Kylie Jenner pull ‘disgusting’ T-shirt line after legal threats

The Doors Issue Cease-and-Desist Letter to Jenners Over T-Shirts

Notorious B.I.G.’s Mom Slams Kendall, Kylie Jenner’s ‘Disgusting’ T-Shirts

Kylie And Kendall Jenner Yank Music Shirts After Biggie Smalls’ Mom Complains Of ‘Exploitation’

Notorious B.I.G. Estate Threatens to Sue Kylie & Kendall Jenner for Using Biggie’s Face to Sell T-Shirts

Kendall and Kylie Jenner’s ‘Biggie’ blunder isn’t a good look

Kendall and Kylie Jenner’s Vintage T-Shirt Line Gets Slammed by Biggie’s Mother Voletta Wallace

Kendall and Kylie Jenner are getting dragged over their new T-shirts, which feature Tupac and Biggie

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Free Speech Rock Stars

“For too long, people of color and the LGBTQ community have been prime targets under Section 2(a) of the Lanham Act, simply because we believe in the deliberate disarmament of toxic language and symbols. We’ve had to endure the Trademark Office working in isolation of our groups to navigate the troubled waters of identity politics and shifting language and culture, without any sense of cultural competency, consistency in enforcement of rules, and only giving the benefit of doubt to the most privileged members of society. Now, Americans can decide who should prevail in the marketplace of ideas rather than a lone examining attorney. Oppressed groups will no longer have their identities shaped the sensibilities of dominant ones.” ~ The Slants

When Simon Tam was looking for a name for his Portland, Oregon-based Asian-American dance rock band, he decided to ask a few friends for advice. He asked one such friend what he thought all Asians have in common and they responded, “slanted eyes.” Although that’s not actually true, Tam thought it would work because they could talk about their perspective or slant on life, as people of color navigating within the entertainment industry, while paying homage to Asian-American activists who had been using the term in an attempt to reclaim it in a self-empowering way. Irony and wit can often times neutralize a racial slur, by shifting those dynamics of power and Tam was determined to succeed with this mission.

As we discussed in a previous blog, when Tam attempted to trademark the Slants name, he was denied repeatedly. He was able to perform and market the band as The Slants, but he was not granted the usual protections that come with having an officially trademarked name, meaning anyone else could use the name and make money off of merchandise without having to pay or credit the band.

After 8 years of fighting for their right to trademark protections, The Supreme Court ruled 8-0 in favor of the Slants on June 19th.

Justice Samuel A. Alito Jr. wrote, “This provision violates the Free Speech Clause of the First Amendment. It offends a bedrock First Amendment principle: Speech may not be banned on the ground that it expresses ideas that offend.”

It is likely this ruling has paved the way for the Washington Redskins to obtain protection of the trademarks that cover the team’s name. Although the team took the name Redskins almost 80 years ago,  a 2014 decision by a U.S. Patent and Trademark Office canceled its trademarks, stating it is disparaging to Native Americans.  Previously, a lower court had put the Redskins’ dispute on hold, pending the outcome of the Slants case.

Although Tam does not like the comparison between his band’s struggle and that of the Redskins, stating that the difference lies in the fact that the team does not belong to the Native American group they are named after, the courts may not see the legal difference between the Slants and the NFL team.

Although there is concern that this decision has opened the door to the possibility of offensive trademarks, free speech has gained a big win because of the Slants.

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Brexit and IP

Last week, I was in London meeting up with some of our U.K. colleagues. From time to time, our clients have intellectual property needs outside of the U.S., so we have to turn to colleagues in the local jurisdictions.

Our meeting was quite timely as at the same time negotiations for the next steps of Brexit had begun in Brussels.

What I learned during our meeting was that on the patent side of things, Brexit will not really change anything. Patent applications at the European Patent Office will continue as usual because the U.K.’s inclusion in the European Patent Office is by a treaty that is irrespective of the European Union. For businesses that don’t need to go into more than 3 European countries, they can just file national stage applications in the particular target jurisdiction, including the U.K.

For the trademark side, no one really knows how this will play out. It might be the case that the U.K. acknowledges the European Union trademarks that were registered before Brexit was finalized or gives a grace period for some time after Brexit kicks in. In the event that the U.K. does not acknowledge European Union Trademarks after Brexit has occurred, then businesses will be able to file a trademark directly in the U.K.

While there are some unknowns associated with Brexit, I felt much better that my clients will be properly covered in the U.K. even after Brexit.

By:
Rebecca M. Stadler, Esq.

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Who is the Real Cannoli King?

“A Bronx Tale” is actor Chaz Palminteri’s autobiographical story about a young Italian-American teenager in The Bronx named Calogero (or C), as his path in life is guided by two father figures, his biological father Lorenzo and a local mafia boss named Sonny.

Calogero witnesses Sonny commit a murder, but refuses to tell the cops. Because of this, Sonny befriends C and introduces the influenceable youth to the advantages of having mob connections. In contrast, C loves and respects his honorable, bus-driving father. Following an unexpected tragedy, the 17-year-old boy decides his true path in life.

The film has been translated by Palminteri for the stage and has been on Broadway since 2016. In order to set the scene for the Bronx neighborhood, the set designers made a sign for the real life Gino’s Pastry Shop, but added “the Cannoli King” at the bottom.

In 20015, Little Italy pastry shop owner John “Baby John” Delutro, owner of Caffee Palermo on Mulberry Street filed for the trademark “Cannoli King” and was approved by the U.S. Patent and Trademark Office a year later. Although the official filing and approval were both completed within the last two years (and only three months before the play opening), Dilutor has been using the title for decades, along with illustrations of two gold crowns on the storefront.

More recently, Dilutor asked Broadway’s “A Bronx Tale” to remove the sign on its set, dubbing Gino’s “The Cannoli King,”, stating it was infringing on his trademark. The show’s producers agreed and although they are keeping the sign, they painted over the trademarked words. The conflict was relatively cordial in this case.

Dilutor is now going after the actual Gino’s Pastry Shop in the Bronx and owner, Jerome “Gino” Raguso, who has been using “The Cannoli King” since 1997. He attempted to register for an identical trademark, “The Cannoli King,” in January. Despite the fact that Gino’s has been in business since the 1960’s, it’s unlikely he’ll get approved.

SOURCES:
NY Daily News

Tech Dirt

Trademarks and Brands

NY Post

Caffe Palermo

Gino’s Pastry Shop

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