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Trademarks, Copyrights & Business Law

‘Oktoberfest’ may join ‘Super Bowl’ and ‘Olympics’ as a Registered Trademark

By David Baker, Esq.

What do you get when you mix beer, folk dancing, bratwurst, giant pretzels, and trademarks? Well, if things go the way the City of Munich would like, you’ll have a registered trademark for ‘Oktoberfest.’

a0fdc_oktoberfestlogo-no-date In case you didn’t know, Oktoberfest is the world’s largest beer and folk festival. Held annually in Munich, Germany since 1810, the festival draws more than 6 million people for 16 days from mid-September to the first weekend in October and it is considered an important part of Bavarian culture.  The festival has become so popular that cities around the world now hold their own Oktoberfest celebrations.

Unfortunately for Munich, the popularity and worldwide renown for the term “Oktoberfest” may have worked against the city when it tried to register the term at the German Patent and Trademark Office. ‘Oktoberfest’ was considered too generic and merely descriptive for registration to issue and the German application was refused.  However, Munich was undaunted and recently applied for trademark protection of the term with the European Union Intellectual Property Office (EUIPO).

The EUIPO application would cover multiple goods and services including items like soap, perfume, sunglasses, photographs and clothing.

Attorneys for the city have expressed hope that a survey accompanying the application will establish that ‘Oktoberfest’ has acquired ‘secondary meaning’ in the minds of consumers and that they associate the term exclusively with Munich. If the survey establishes that the term ‘Oktoberfest’ has gained acquired distinctiveness from the perspective of the relevant public based on Munich’s use of the term as its own mark, then there is a possibility the new application may be successful.

However, it is fairly easy to argue that the term ‘Oktoberfest’ lacks any distinctive character or has become customary in the current language and this would be absolute grounds for refusal of the registration application.

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Why It Matters. Trademarks don’t just exist in the United States. They are used around the world.  And, not surpassingly, they can be registered in countries around the world.

Trademarks are issued by each country in Europe, but many trademark owners opt to use a simplified registration system that takes advantage of the structure of the European Community (EU). EU trade marks are registered through the EUIPO, but it is an all-or-nothing deal — either registration issues for all Member States or it issues for none of them.  Of course, for companies that do business in more than one EU country, an EU trade mark provides protection in all 28 of the Member States with a single registration.  [The UK’s recent vote to leave the European Union has thrown the system into a bit of turmoil as trademark authorities try to sort out what BREXIT means to the unified trademark registration protocol.]

At the moment, Member States of the European Union are Austria, Belgium, Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg, Malta, Netherlands, Poland, Portugal, Romania, Slovak Republic, Slovenia, Spain, Sweden and United Kingdom.

Is Pokémon Go just the beginning?

Technology changes quickly, so quickly that it is often hard to keep up.  And when it comes to the technology being used to lure consumers to spend money through their smart phones, especially in the form of seemingly innocuous online pastimes like Pokémon Go, technology advances in leaps and bounds.

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In fact, by the time you read this post, I wouldn’t be surprised if Pokémon Go isn’t already passé, having been replaced by some new smart phone app that has people running around, spending real money in another virtual world.

Steve Brachman discusses the phenomenon in an article entitled, “Pokémon Go developer Niantic owns three patents on location-based gaming.”

This year’s Consumer Electronics Show in Las Vegas featured a trend towards virtual reality (VR) and augmented reality (AR) consumer gadgetry. It took more than half a year for a consumer hit to develop but the brilliant rise of the mobile game Pokemon Go is proof that 2016 is the year that AR finally made a sizable foray into consumer markets.

Within one week of the Pokemon Go July 6th release date, the digital monster catching game surpassed 10 million downloads, the fastest that this feat has ever been achieved by a mobile platform game. By July 14th, Pokemon Go hit a peak of 25 million daily active users. The game’s base of daily active users surpassed many other popular apps such as Twitter (NYSE:TWTR), Spotify and Pandora (NYSE:P). At the beginning of August, the game had been downloaded 100 million times and was generating $10 million in daily revenues despite the fact that the game is free to play.

At least part of Pokemon Go’s incredible success seems to have something to do with a mixture of novelty and nostalgia. Many players first came into contact with the Pokemon franchise in the late 1990s when the game first became available for the portable Game Boy console. The passage of nearly two decades brings us into the smartphone era and the ability for mobile devices to display detailed graphics and provide Internet connectivity. The novelty mainly resides with the game’s augmented reality overlay. Instead of the fictional realms of Kanto and Johto, players instead roam the real world as the player’s digital avatar follows along on a road map representative of their actual neighborhood. Landmarks in real life, like libraries, historic plaques and statues, are either Pokestops, from which players can receive supplies, or gyms where trainers can battle for neighborhood supremacy.

The massive popularity of Pokemon Go is having some unique side effects. For instance, businesses around the world are using the game as a marketing platform. The Denver Post recently reported on locations like the Denver Zoo which are offering player discounts and setting up lure modules, which attract Pokemon for a short time, in order to get players to show up to retail locations. Elsewhere, the University of Idaho is offering a new course this fall called Pop Culture Games which will incorporate Pokemon Go as part of its curriculum.

There have also been some negative impacts created by Pokemon Go, which point to some of potential hazards of augmented reality. Media reports indicate that some have used the game to lure players into situations where they can be easily robbed, and one player was recently shot to death in a San Francisco park.  There are also those who have brought legal charges against Niantic, Pokemon Go’s developer, because of its success. For instance, one New Jersey homeowner has filed a lawsuit against Niantic over players trespassing on his property to catch Pokemon.

Although Pokemon games have traditionally been released as games developed for consoles made by Japanese consumer electronics developer Nintendo (TYO:7974), Niantic is the lead developer on this version. The firm is formerly a subsidiary of Google which was spun off from the high tech giant last year. Prior to Pokemon Go, Niantic had achieved a much smaller degree of success with Ingress, another mobile game in which players visit real-world landmarks to complete tasks within the game. Analysis of Niantic’s business model indicates that the company profits from selling geolocation data to marketers who are interested in knowing more about locations frequented by players. Niantic also profits from in-app purchases from players looking to buy lure modules and other supplies.

transporting virtual objectsNiantic’s mobile-based gaming business is currently protected by a portfolio of 3 U.S. patents which are directed to what the company refers to as “location-based parallel reality games.” One of these is U.S. Patent No. 8968099, which is titled System and Method for Transporting Virtual Objects in a Parallel Reality Game. It protects a computer-implemented method of transporting virtual objects in a virtual world having a geography that parallels real-world geography. The method involves transferring a virtual object from a first player to the virtual counterpart of the real-world carrier and modifying game data to transport a virtual object through the virtual world without requiring corresponding movement of the first player and transfer ownership of that virtual object to a second player. This system enables players of a parallel reality game to interact without having to meet in the same place at the same time, which can be inconvenient. Pokemon Go players will probably recognize that this technology lays the foundation for the game’s Pokemon gyms where players can battle Pokemon left by other trainers without that trainer being physically present.

filtering communicationPokemon Go does not yet have an in-app messaging service but that could change as a result of the technology protected by U.S. Patent No. 9226106, entitled Systems and Methods for Filtering Communication Within a Location-Based Game. It discloses a computer-implemented method of filtering communications for a location-based game by receiving communication data for a plurality of players, filtering messages between players based on signals associated with each player and adjusting the filtered communication data for each player based on constraints associated with each player. This system addresses shortcomings of communication feeds within a location-based game which can become overcrowded as more players join the game. Diagrams attached to the patent show how the communication feed works with the Ingress game interface.

For the rest of the story, check out Where did Pokemon Go go?

Who should own the trademark?

Most clients simply ask to register their trademarks in their own name.  Others know that it might be more advantageous to register them in the company name.  And still others, oftentimes having learned hard lessons from past mistakes, know to ask questions of their attorneys, accountants, and tax prepares about how best to position themselves relative to their trademarks by selecting the most effective owner of record.

In an interesting article on an often neglected subject, attorneys Karen Feisthamel and Michael Hall recently posted an article titled, Parent or Subsidiary? Think Twice Before Opting Not to Have the Parent Own the Trademark.”

Where a company has a complicated ownership structure – perhaps hundreds or even thousands of legal entities ultimately under a single parent company – the trademark practitioner may colloquially refer to all of these entities collectively as “the client.” But when determining ownership of the trademarks within that corporate structure by the client, careful consideration should be given to exactly which legal entity owns or will own the new mark, especially if the owner is not to be the parent entity within the company’s organizational structure. While the business will naturally have its own thoughts as to which entity should own the mark, the practitioner’s job includes ensuring that decision is formed consistent with the strictures imposed by trademark law.

The Board’s Noble House Decision

Section 5 of the Trademark Act provides in part that “[w]here a registered mark or a mark sought to be registered is or may be used legitimately by related companies, such use shall inure to the benefit of the registrant or applicant for registration, and such use shall not affect the validity of such mark or of its registration…” (emphasis added). While one might believe that a parent company’s use of a trademark owned by a wholly-owned subsidiary is adequate under this provision, the Trademark Trial and Appeal Board’s recent decision in Noble House Home Furnishings, LLC v. Floorco Enterprises, LLC, 118 U.S.P.Q.2d 1413 (T.T.A.B. 2016), illustrates the problem that may arise when a mark is used by the trademark owner’s parent company, and no trademark license or other measure is put into place to control the nature and quality of goods/services on which the mark is used.

Briefly stated, in that case Noble House petitioned to cancel Floorco’s trademark registration for NOBLE HOUSE, for furniture, on the ground that Floorco had abandoned the mark. Noble House made a prima facie showing of abandonment by demonstrating three consecutive years of nonuse, but Floorco sought to rebut that showing by pointing to ongoing marketing efforts involving the mark NOBLE HOUSE. Unfortunately for Floorco, however, the evidence showed that:

  1. it was not Floorco that marketed furniture under the mark during the relevant time period, but rather its parent company, Furnco International Corporation;
  2. Furnco, and not Floorco, was the entity that controlled the nature and quality of the furniture sold under the mark NOBLE HOUSE;
  3. there was no agreement (e.g., trademark license) between Floorco and Furnco concerning the mark; and
  4. Furnco controlled the operations of Floorco and had authority over all major decisions made by Floorco.

In light of these findings, the question to be decided was whether Floorco could rely on use by its parent company, Furnco as use by a “related company”.  While under general corporate principles, a parent and subsidiary are considered related companies, Section 45 of the Trademark Act defines the term “related company” specifically as to trademark law as “any person whose use of a mark is controlled by the owner of the mark with respect to the nature and quality of the goods or services on or in connection with which the mark is used” (emphasis added).

Applying Sections 5 and 45 to the factual findings, the Board held that as Floorco could not show it controlled Furnco’s use of the mark with respect to the nature and quality of the goods, it could not rely on Furnco’s use to rebut the claim of abandonment. As a result, the Board granted the petition cancelling Floorco’s registration.

For the rest of the story, check out Who Should Own What?

 

How do you value a dead celebrity?

Dead celebrities are a fact of life.  And, the estates and heirs of dead celebrities, especially those whose public persona while they were alive was worth quite a bit, stand to make even more money from their images and their brand even after the celebrities have passed on.  Even if you’re not David Bowie or Prince (whose song catalogs themselves are worth hundreds of millions of dollars), a celebrity may be worth more in the afterlife than while they were alive.

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In a fascinating article titled, “How do Estates Monetize Images and Intellectual Property of Dead Celebrities?” Derek Handova explores some of the ways those celebrity heirs make money off their dearly departed relatives.

With the deaths of Prince and David Bowie earlier in the year, the process by which celebrity estates monetize the images and other intellectual property (IP) of the dearly departed has come into greater focus. How will they handle the onslaught of business from rights to their images and other non-musical IP?

Unlike recordings and music publishing, which are covered by national law, individual states determine rights of publicity. Specifically, copyrights are federal and can be inherited by heirs such as in the Marvin Gaye case.

Right of Publicity

Rights of publicity enjoy broad protection in nearly every jurisdiction, according to IP attorneys. A major challenge for clients and practitioners arises when the owner of the publicity rights has died, according to Clay M. Townsend, attorney, Trial Group, Morgan & Morgan, P.A., contingency-fee business litigation attorneys.

“The law of the domicile of a deceased rights owner may vary dramatically from one’s expectations,” Townsend says. “For example, Florida’s right of publicity statute prohibits the unauthorized use of the name and likeness of any natural person. And the right may be asserted by a surviving spouse or children.”

Furthermore, Townsend cites that the Eleventh Circuit holds the right of publicity is an intangible personal property right and, therefore, the law of the owner’s domicile applies. “If the law of the domicile of the owner at the time of their death has no right of publicity, or if such rights are not descendible, any claim based on such rights is likely to be dismissed.”

Careful Estate Planning Needed to Protect Publicity Rights

So, for example, although California recognizes a descendible right of publicity, Princess Diana was not entitled to this right because the law of her domicile (i.e., Great Britain) did not recognize this descendible right, according to Townsend. “Monetizing publicity rights of deceased celebrities requires careful advance estate planning with an eye to the law of different jurisdictions,” he says.

For example, the need for careful estate planning vis-à-vis rights of publicity can be seen clearly in the recent case of A.V.E.L.A., Inc. v. The Estate of Marilyn Monroe, LLC, in New York State. “The estate is subject to laws in the states where the person died and was resident, which vary from state to state,” says Roberta Jacobs-Meadway, member, board of directors and executive committee and co-chair, Intellectual Property Group, Eckert Seamans Cherin & Mellott, LLC, a full-service national law firm. “Right of publicity is governed by local state law.”

So only through proper planning and preparation will estates of deceased celebrities be able to properly handle business opportunities that might arise in connection with the celebrities’ rights to their likenesses and other IP, according to P. Betty Tufariello, Intellectulaw, The Law Offices of P.B. Tufariello, P.C. She says that planning should comprise:

  • Determining whether the celebrity had a will or died intestate
  • If there is a will, probating it in a court of appropriate jurisdiction. If there is no will securing letters testamentary. This will give the estates ability to take steps necessary to protect the IP
  • Identifying all the celebrity’s IP—this step may necessitate searching IP databases or even hiring a private investigator
  • Marshaling, taking inventory and cataloguing such IP
  • Conducting due diligence in connection with, and deep analysis of such IP to determine and develop its history
  • Once all IP is identified and marshaled and all due diligence completed, implementing processes that will perfect estates’ IP rights to maximize revenue and protect against infringement

Merchandising Rights

As any student of art and commerce can attest, the modern concept of merchandising rights really took off after director George Lucas asked for a seemingly counterintuitive contract change in his production deal with 20th Century Fox on the first Star Wars film (1977). In exchange for taking a reduced directorial fee, he retained 100 percent of all merchandising rights to the first and all subsequent Star Wars sequels and prequels. By rebating $350,000 of his half-million dollars director’s pay, Lucas took full possession of a merchandising franchise that would gross $27 billion over the next 35 years.

Similarly, estates of dead celebrities can make big bank with their merchandising rights if they play their cards right. But there remain parallel concerns with celebrities and the parts they played or other fictional representations with which they remain inextricably intertwined, according to IP experts.

“One consideration, particularly if the celebrity enjoyed fame briefly or fame attributed to a particular role, is whether the deceased retained any rights to the persona or character with which she was associated,” Jacobs-Meadway says, “or whether merchandising rights were signed away at the beginning of the engagement resulting in public recognition. Merchandising rights separate from the character may have significantly less value.”

Music Sales Virtually ‘Valueless,’ today’s IP Market based on Merchandising

While actor estates can still receive at least a nominal income stream from television residuals from made-for-TV productions and televising of theatrical-release films, music artist estates depend on continued marketing of recordings. Unfortunately, free or virtually free online services have rendered music almost null and void from an economic standpoint in the views of IP experts. This makes merchandising and other imaginative commercial packaging of the artists’ likenesses more important than ever to the ongoing viability of their estates.

“Today’s market leader is merchandise sales,” says David L. Woronov corporate attorney, McCarter & English, who works with the Estate of Peter Tosh, the Jamaican reggae singer and songwriter and founding member of the Wailers. “YouTube and streaming render the sale of music virtually valueless. Old merchandise classics like T-shirts remain important, but creative twists are now crucial to maximize revenue and resurrect a brand or buttress its value.”

For example, Woronov cites that JAM Artists has created tie-ins that include pairing Michael Jackson’s music with Cirque de Soleil performances, high-end clothing with the Doors’ logo, a Broadway musical based on Janis Joplin and featuring her music and likeness, and a “Ramones Tour” of the Queens neighborhoods from which the Ramones originated.

“Marketing dead celebrities’ likenesses requires a blend of business acumen, market awareness, legal prowess and objectivity about the value of the asset,” Woronov says.

For the rest of the story, check out The Valuable Dead

Linkedin Fights Data-Scraping Bots

By David Baker, Esq.

If you’re reading this article, then it’s very likely you already have a LinkedIn account. And, if you have a LinkedIn account, it’s almost certain that you often receive invitations to connect with people you don’t know and have never heard of.  Whether you accept these invitations is up to you, but it might be useful to know that at least some of those invitations are coming from automated computer programs that are simply trying to get you to disclose information so that they can compile data about you.  Odds are no one would willingly connect their LinkedIn account to a data collection robot.

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The problem has become so pervasive that LinkedIn has filed suit in a California district court against the creators of these robotic software programs, often referred to simply as bots, that collect the data using thousands of registered but fake profiles on the professional networking site.  LinkedIn intends to uncover the creators behind the fake profiles who have been using them to “scrape” the site for data about its 400 million human users.

Naming the fake users as “John Does,” LinkedIn hopes to stop the activity and hold them accountable for monetary damages under the Computer Fraud and Abuse Act and the Digital Millennium Copyright Act (the “DMCA”). It appears that the mined data is being used as a recruiting product by LinkedIn’s competitors and allegedly has forced the company to expend a great deal of energy and manpower to combat the fake profiles.  According to the federal court complaint, the activity is also compromising LinkedIn’s integrity and reputation.

Why It Matters.  Data Scraping (also known as Web Scraping, Screen Scraping, Web Data Extraction, and Web Harvesting) is a technique employed to extract large amounts of data from websites whereby the data is extracted and saved to a local file in a computer or to a database in table (spreadsheet) format.

Data displayed by most websites can only be viewed using a web browser. Examples are data litsings at yellow pages directories, real estate sites, social networks, industrial inventory, online shopping sites, contact databases etc. Most websites do not offer the functionality to save a copy of the data which they display to a computer. The only option then is to manually copy and paste the data displayed by the website in a browser to a local file in a computer – a very tedious job which can take many hours or sometimes days to complete.

Data Scraping is the technique of automating this process, so that instead of manually copying the data from websites, the software will perform the same task within a fraction of the time.  A data scraping software will interact with websites in the same way as a web browser, but instead of displaying the data served by the website on screen, the software saves the required data from the web page to a local file or database.

At the moment, data scraping itself is not illegal. However, the compilation and use of the data collected may well violate the DMCA as well as other copyright, trade secret and unfair competition statutes.  Further, LinkedIn maintains that the fake, data-collecting accounts constitute a violation of the site’s terms of use.

#TyposMatter

By David Baker, Esq.

Earlier this week, a panel of the U.S. Seventh Circuit Court of Appeal reversed a lower court decision in a copyright infringement case over a painted portrait of Nation of Islam leader Louis Farrakhan that had been published in the group’s official newspaper.  Citing judicial error in the lower court ruling based, in part, on a typographical error,

The Nation of Islam is an African‐American Islamic religious movement founded in 1930 and headquartered in Chicago. After its founder, Wallace D. Fard Muhammad, disappeared in 1934, Elijah Muhammad became its leader and continued in that role until his death in 1975.

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Jesus Muhammad‐Ali is Elijah Muhammad’s grandson and a professional portrait painter. In 1984, Ali painted a portrait of Louis Farrakhan, the current leader of the Nation of Islam and in March 1986, Ali registered and recorded with the U.S. Copyright Office a copyright in the painting, which is entitled “Minister Farrakhan.”

The Final Call, the Nation of Islam’s official newspaper, has a weekly circulation of roughly 70,000 readers and sells various items related to the Nation of Islam, including video recordings, books, and posters. The Final Call has sold posters that are lithographs of Ali’s original paintings, including the copyrighted image of Louis Farrakhan.

In 2013, Ali sued The Final Call, alleging that it had infringed on his copyrights.by selling the posters without his permission and without paying him any royalty. The Final Call admitted that it had sold 115 copies of the lithograph between 2010 and 2013, but argued that Ali had authorized it to produce and sell the copies. It also argued that Ali had waited too long to file suit and had implied allowed the posters to be sold.

Through several law and motion battles and at trial, the two sides presented evidence regarding Ali’s relationship to The Final Call and whether or not he had authorized, expressly or impliedly, the use of the images in the posters.

Oddly, the district court was unsure which party had the burden of proving that the prints were authorized, but it concluded that this did not matter. Either way, it said, the facts demonstrated that Ali authorized the making of the lithographs.

In order to establish copyright infringement, Ali was required to prove two elements: (1) ownership of a valid copyright, and (2) copying of constituent elements of the work that are original. However, the lower court relied on prior case law that had erroneously included the word “unauthorized” in its definition of copyright infringement, a typographical error that had found its way into the official case reports through a transcription error. This served as the basis, in part, for Ali’s appeal to the 7th Circuit which agreed with Ali and sent the case back to the lower court for a new trial.

Why It Matters. While it may be rare, even judges make mistakes.

In his 15-page written appellate opinion, Chief Judge Wood wrote:

Carpenters have a saying: measure twice, cut once. This litigation might have been averted if that adage had been observed here.

In 1984, Jesus Muhammad‐Ali painted a portrait of the leader of the Nation of Islam, Louis Farrakhan.

In 2013, Ali sued The Final Call, a newspaper that describes itself as the “propagation arm of the Nation of Islam,” for copyright infringement. The Final Call, it turned out, admittedly had sold over a hundred copies of Ali’s Farrakhan portrait. Ali nonetheless lost his case after a bench trial. He now appeals, arguing that the district court misstated the elements of a prima facie copyright infringement claim and erroneously shifted to him the burden of proving that the copies were unauthorized. Ali is correct, and The Final Call proved no defense. We therefore reverse.

What is even rarer is when judges admit their mistakes.

Uber isn’t just about the ride service

Everyone knows Uber is a popular ride service founded in 2008 as a cheaper, easier alternative to tax service. But, how many of you know much about the valuable intellectual property that has contributed to Uber’s market valuation in the billions of dollars?

Uber Technologies Inc. signage stands inside the company's office prior to Senator Marco Rubio, a Republican from Florida, speaking in Washington, D.C., U.S., on Monday, March 24, 2014. Rubio addressed the need to adapt antiquated government regulations to increase economic opportunities for the 21st century and outdated regulations limit consumer choice. Photographer: Andrew Harrer/Bloomberg via Getty Images

Audrey Ogurchak, law student at Syracuse University College of Law who is pursuing a JD/MS in Computer Science, recently authored an article on Uber’s intellectual property portfolio titled, “Uber IP: A primer on the patents, trademarks and copyrights owned by Uber.”

Uber Technologies, Inc. (“UBER”) was founded in San Francisco, CA in 2008. UBER creators, Travis Kalanick and Garret Camp came up with the idea on a snowy evening in Paris in 2008. The two had trouble hailing a cap and came up with the simple idea of tapping a button on their phone in order to get a ride. Camp, the founder of StumbleUpon, an intelligent browsing tool for discovering and sharing websites, sold StumbleUpon to Ebay a few months after that incident and Camp and Kalanick then had the excitement and capital to tackle the taxi problem in San Francisco. By March 2009, Camp had developed the prototype of the app called UberCab.

The app first launched in New York City where three cars took the streets in January 2010, and later in San Francisco in July 2010. By October 2010, UberCab had received $1.25 million in angel financing led by First Round Capital. UberCab received its first Cease and Desist Order from the San Francisco Metro Transit Authority & Public Utilities Commission of California for appearing to operate like a cab company without proper licensing. Soon after, the company changed its name to “Uber.” By Winter 2011, Uber has continued to expand, in the face of competition and regulatory opposition, currently maintaining a valuation of over $62.5 billion, as of December 2015. As of April 12, 2016, Uber is available in over 60 countries and 404 cities worldwide. In June 2016, Uber received a $3.5 billion equity investment from the Saudi Arabian Public Investment Fund. This investment is expected to fund its global expansion against its well-funded competitors, such as the Chinese company, Didi. This fund plans to boost Uber’s share of overseas holdings to approximately 50% by 2020, from its 5% holding now.

It appears that Uber’s main strategy in protecting its intellectual property is through the use of utility patent protection. As Uber currently owns several issued patents, through its own filing and acquisition, it is difficult to determine whether the patents would actually be upheld during any future litigation. The utility patents that Uber currently owns are mainly directed to business methods, which have come under strict scrutiny within the United States Patent and Trademark Office and in patent litigation. As the issued patents are almost exclusively relating towards business method patents, Uber runs the risk that it will lose its protections if faced with a law suit, even after it has disclosed its methods to the public through the patents. If Uber wishes to continue to be the leader in mobile based transportation, Uber may want to consider either filing for patent protection relating to more substantive inventions that are less likely to be invalidated (if possible) or maintain its intellectual property as a trade secret.

Uber has also received extensive protection for its logos, app icons and app designs. This allows Uber to operate its services with little risk of infringement from competitors. Uber has trademarked the logos of the various services it offers as well as several icon designs. Uber has filed for protection on various aspects of its icons. Uber has started out by registering for trademarks for the base of the icon design and then adding various features, such as the actual design of the icon and more detailed designs of the icon, seen in the figures below.

Uber has also registered for trademark protection of the various designs included in the icon, which are seen below.

By registering for this narrowing protection, Uber is maximizing its trademark portfolio by protecting its icon on various levels. This allows for Uber to obtain the maximum amount of protection for its icon because different aspects of the icons are protected, thus, if any competitor or other company attempts to mimic the Uber icon, Uber will have a strong case on various accounts of trademark infringement.

Uber has also obtained design patent protection for its user interfaces. The user interfaces would not be eligible for protection under trademark law, therefore, design patent protection is the strongest form of protection available. This protection prevents competitors or other companies from mimicking the Uber app interfaces, thus eliminating customer confusion. As the term of any design patent only lasts for 15 years, Uber will not be able to maintain the protection of the interfaces indefinitely. However, Uber will possibly be able to invoke common law trade dress protection after the expiration of design patents. Trade dress protection is invoked when a company’s customers have become familiar with the design of company’s product, such as the Coca Cola bottle. After the expiration of the design patents, Uber may be able to sue any competitors attempting to utilize Uber’s user interfaces under a trade dress method of protection. However, as Uber is continually filing utility and design patent applications, it is likely that, by the end of the current design patent term, Uber will have changed the design of its user interfaces and will file for design protection for newer versions of the interface.

It is not explicitly apparent that Uber has filed for copyright protection for any of its intellectual property. Uber has issued several videos online. These videos and other ads produced by Uber would be protectable under common law copyright protection if they are not registered with the United States Copyright Office. Uber could also potentially register its source codes with the Copyright Office, however, it is unlikely that it has done so because Uber does not release its software to the public.

Audrey is planning a future, more detailed article on Uber’s patent portfolio.

For the rest of the story, check out Uber’s IP Portfolio

Stay International Classy, San Diego

When I was in San Diego for Comic-Con a couple of weeks ago, I saw a guy wearing a t-shirt with Ron Burgundy’s face on the front and the words “Stay Nerdy, San Diego.”  Ron, as you probably recall, was the buffoonish TV news anchor played by comedian Will Ferrell in the 2004 DreamWorks comedy “Anchorman – The Legend of Ron Burgundy.”

But, aside from the silly memories the t-shirt evoked, I was reminded of how so much of San Diego Comic-Con International, as it is officially known, depends on the trademarks of companies like DC Comics, Marvel Entertainment, Sony Pictures, Mattel Toys, and the like to even exist.  And yet, the average attendee has little knowledge or understanding about trademarks or how they work.

In fact, when I meet with new trademark clients, few of them have ever heard of the Nice System of International Classification of trademarks, a system that serves as the basis for registration and enforcement of trademarks worldwide.

The Nice Classification system, also known as the Nice Classification of Goods and Services, is a system adopted under the Nice Agreement of 1957 whereby all applicable classes of goods and services represented by trademarks are listed with a unique serial number for the purpose of trademark registration. The classification of the goods or services for the purpose of trademark registration must be clearly specified in the initial stages of the application procedure.

Without such a system, it would be much harder to register trademarks, particularly those that cause consumers little or no confusion despite being the same or even identical to one another (think of Delta Airlines and Delta Faucets).  Every time you register a trademark, you must designate one or more of the International Classes, as they’re known, in relation to the trademark (and pay a fee for each such classification).

If you’ve wondered what the full list looks like, here it is:

Complete List of Trademark International Classes

Goods

 

Class # Class Description
1 Chemicals used in industry, science and photography, as well as in agriculture, horticulture and forestry; unprocessed artificial resins; unprocessed plastics; manures; fire extinguishing compositions; tempering and soldering preparations; chemical substances for preserving foodstuffs; tanning substances; adhesives used in industry.
2 Paints, varnishes, lacquers; preservatives against rust and against deterioration of wood; colorants; mordants; raw natural resins; metals in foil and powder form for painters, decorators, printers and artists.
3 Bleaching preparations and other substances for laundry use; cleaning, polishing, scouring and abrasive preparations; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices.
4 Industrial oils and greases; lubricants; dust absorbing, wetting and binding compositions; fuels (including motor spirit) and illuminants; candles and wicks for lighting.
5 Pharmaceutical and veterinary preparations; sanitary preparations for medical purposes; dietetic substances adapted for medical use, food for babies; plasters, materials for dressings; material for stopping teeth, dental wax; disinfectants; preparations for destroying vermin; fungicides, herbicides.
6 Common metals and their alloys; metal building materials; transportable buildings of metal; materials of metal for railway tracks; nonelectric cables and wires of common metal; ironmongery, small items of metal hardware; pipes and tubes of metal; safes; goods of common metal not included in other classes; ores.
7 Machines and machine tools; motors and engines (except for land vehicles); machine coupling and transmission components (except for land vehicles); agricultural implements other than hand-operated; incubators for eggs.
8 Hand tools and implements (hand-operated); cutlery; side arms; razors.
9 Scientific, nautical, surveying, photographic, cinematographic, optical, weighing, measuring, signalling, checking (supervision), life-saving and teaching apparatus and instruments; apparatus and instruments for conducting, switching, transforming, accumulating, regulating or controlling electricity; apparatus for recording, transmission or reproduction of sound or images; magnetic data carriers, recording discs; automatic vending machines and mechanisms for coin operated apparatus; cash registers, calculating machines, data processing equipment and computers; fire extinguishing apparatus.
10 Surgical, medical, dental, and veterinary apparatus and instruments, artificial limbs, eyes, and teeth; orthopedic articles; suture materials.
11 Apparatus for lighting, heating, steam generating, cooking, refrigerating, drying, ventilating, water supply, and sanitary purposes.
12 Vehicles; apparatus for locomotion by land, air, or water.
13 Firearms; ammunition and projectiles; explosives; fireworks.
14 Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewelry, precious stones; horological and chronometric instruments.
15 Musical instruments.
16 Paper, cardboard and goods made from these materials, not included in other classes; printed matter; bookbinding material; photographs; stationery; adhesives for stationery or household purposes; artists’ materials; paint brushes; typewriters and office requisites (except furniture); instructional and teaching material (except apparatus); plastic materials for packaging (not included in other classes); printers’ type; printing blocks.
17 Rubber, gutta-percha, gum, asbestos, mica and goods made from these materials and not included in other classes; plastics in extruded form for use in manufacture; packing, stopping and insulating materials; flexible pipes, not of metal.
18 Leather and imitations of leather, and goods made of these materials and not included in other classes; animal skins, hides; trunks and travelling bags; umbrellas, parasols and walking sticks; whips, harness and saddlery.
19 Building materials (non-metallic); nonmetallic rigid pipes for building; asphalt, pitch and bitumen; nonmetallic transportable buildings; monuments, not of metal.
20 Furniture, mirrors, picture frames; goods (not included in other classes) of wood, cork, reed, cane, wicker, horn, bone, ivory, whalebone, shell, amber, mother-of-pearl, meerschaum and substitutes for all these materials, or of plastics.
21 Household or kitchen utensils and containers; combs and sponges; brushes (except paint brushes); brush-making materials; articles for cleaning purposes; steel-wool; unworked or semi-worked glass (except glass used in building); glassware, porcelain and earthenware not included in other classes.
22 Ropes, string, nets, tents, awnings, tarpaulins, sails, sacks and bags (not included in other classes); padding and stuffing materials (except of rubber or plastics); raw fibrous textile materials.
23 Yarns and threads, for textile use.
24 Textiles and textile goods, not included in other classes; beds and table covers.
25 Clothing, footwear, headgear.
26 Lace and embroidery, ribbons and braid; buttons, hooks and eyes, pins and needles; artificial flowers.
27 Carpets, rugs, mats and matting, linoleum and other materials for covering existing floors; wall hangings (non-textile).
28 Games and playthings; gymnastic and sporting articles not included in other classes; decorations for Christmas trees.
29 Meat, fish, poultry and game; meat extracts; preserved, frozen, dried and cooked fruits and vegetables; jellies, jams, compotes; eggs, milk and milk products; edible oils and fats.
30 Coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee; flour and preparations made from cereals, bread, pastry and confectionery, ices; honey, treacle; yeast, baking powder; salt, mustard; vinegar, sauces (condiments); spices; ice.
31 Agricultural, horticultural and forestry products and grains not included in other classes; live animals; fresh fruits and vegetables; seeds, natural plants and flowers; foodstuffs for animals; malt.
32 Beers; mineral and aerated waters and other nonalcoholic drinks; fruit drinks and fruit juices; syrups and other preparations for making beverages.
33 Alcoholic beverages (except beers).
34 Tobacco; smokers’ articles; matches.

 

Services

 

Class # Class Description
35 Advertising; business management; business administration; office functions.
36 Insurance; financial affairs; monetary affairs; real estate affairs.
37 Building construction; repair; installation services.
38 Telecommunications.
39 Transport; packaging and storage of goods; travel arrangement
40 Treatment of materials.
41 Education; providing of training; entertainment; sporting and cultural activities.
42 Scientific and technological services and research and design relating thereto; industrial analysis and research services; design and development of computer hardware and software.
43 Services for providing food and drink; temporary accommodations.
44 Medical services; veterinary services; hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services.
45 Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals.

SDCC2016 – How Far Will Pokemon Go Go?

By David Baker, Esq.

On Saturday afternoon, I was sitting near the front of the line for Hall H at San Diego Comic-Con International when a murmur went through the crowd.  Many times, the sighting of a celebrity such as William Shatner or Nicholas Cage will cause such a stir, but in this instance the celebrity was not of the human variety. It was a Charmander.

For those of you not playing Pokemon Go, a Charmander is a bipedal, reptilian Pokémon with a primarily orange body, a cream colored underside, two small fangs visible in both its upper and lower jaws, blue eyes, and a fire burning at the tip of its slender tail.  Apparently, the fire has blazed there since the Charmander’s birth and can be used as an indication of a Charmander’s health and mood.  I only know this because the guy next to me in line caught one on his smartphone while playing Pokemon Go and then explained why it was so important to him.

Pokemon_GO_logo

Pokemon Go was a big thing at Comic-Con this year and nearly everyone (but me) appeared to be playing it.  Of course, I couldn’t help myself in asking random players if they knew that Nintendo Co. and Niantic Inc., the companies behind the app, had accessed their personal data and information stored on their smartphones and in “the Cloud” when they downloaded.  Of the 20 or so people I spoke to, no one had actually read the End User License Agreement (also knowns as an “EULA”) that came with the free donload and none of them had any idea of the controversy that ensued when it was revealed that the EULA gave Nintendo incredibly broad rights to access such information.

Most of the controversy has centered around the provision in the EULA that concedes to Nintendo and Niantic “all access” to users Google accounts.  In fact, there has been so much concern about the provision that Senator Al Franken even has made repeated demands to Niantic for a plausible explanation of the EULA language and has threatened to scheduled public hearings to vette the issue.  Nintendo and Niantic explained away the language as “clumsy” and “poorly written,” but still has not explained why or how it ended up being included in the popular game app and, more importantly, whether or not the authorized access was used by either company to obtain user information.

Why It Matters.  Not to sound like an alarmist old fuddy duddy (arguably, I just did by using the words “fuddy duddy”), but there was a time in the not so distant past when Americans tooks their privacy much more seriously than they do now.  Before we shopped online and Tweeted or Snapchatted and routinely agreed to EULA’s we never bother reading, most of us very carefully guarded things like our Social Security numbers, banking information, lists of friends and contacts, and anything else that companies might like to obtain so they could better market things to us.  Now, with so much information freely available online and so many bad actors looking to use it for their own devices it is more important than ever to safeguard as much of your personal information as possible.

I know EULA’s are boring to read and hard to understand.  I also realize that when your friends, family members and coworkers are seemingly all engaged in using the latest app, it’s hard to be the one to opt out or, at the very least, to try and be the voice of reason.  Not to knock Nintendo CO., but when someone finally did read the EULA and discovered just how much information was being mined from smartphones where Pokemon Go had been installed and they tried to publicize it, Nintendo’s response that it was all an “accident” rang hollow.  I find it remarkable that Nintendo would claim that their team of highly paid, very experienced IP attorneys, the very ones who drafted the EULA, accidentally drafted it so broadly that it allowed the app to obtain access to so much personal data.

So, the next time everyone is downloading a hot app and running around capturing VR creatures, take a second before you do the same and read the contract you’re signing.  If it makes you uncomfortable or causes you concern, don’t download it.  Play something else.

SDCC2016 – Star Trek Keeps Boldly Going

By David Baker, Esq.

SDCC2016 – Star Trek Keeps Boldly Going

Last week, the new movie Star Trek Beyond opened at San Diego Comic-Con in a special limited access event that also featured the cast (Chris Pine, Zachary Quinto, et al.) and the director and producers (J.J. Abrams, et al.) and, by most accounts, it was very well received.  Admittedly, it would be hard to believe that just about anything related to Star Trek would be well-received at Comic-Con, but the subsequent U.S. opening seemed to justify those early fan reviews. In all honesty, I was too lazy to stand in line for hours on Wednesday afternoon just for the randomized chance my wife and I might be lucky enough to score a couple of tickets.  Nevertheless, I will certainly be paying my twelve dollars this weekend to catch up with the crew of the Starship Enterprise.

But, I doubt that I will see Axanar anytime soon.

If you’re not a diehard Trekker, then you may not know that Axanar is an ambitious, independently produced film set in the Star Trek universe that was crowdfunded to the tune of a million dollars through Kickstarter.  It tells the story of Garth of Izar, the legendary Starfleet captain who is Captain Kirk’s hero, and his crew during the Four Years War, the war with the Klingon Empire that almost tore the Federation apart.  Obviously, Axanar features many well-known (and copyrighted) elements of Star Trek and while this is what makes it appealing to Trekkers it also has drawn the ire of Paramount and CBS, the owners of the Star Trek franchise.

star_trek_logo_20090511_750w

Back in January, the two studios filed a lawsuit in California federal court for copyright infringement seeking to stop production and prevent the release of the film.  The suit is also seeking unspecified monetary damages because, according to the complaint, “The Axanar Works infringe Plaintiffs’ works by using innumerable copyrighted elements of Star Trek, including its settings, characters, species, and themes.”  Producers of Axanar argue that the film will be of the highest quality, but Paramount and CBS contend that even crowdfunded, professional-quality films that use “elements” like Vulcans and Klingons, Federation starships, phasers and stuff like the “look and feel of the planet, the characters’ costumes, their pointy ears and their distinctive hairstyle” constitute impermissible and actionable copyright infringement.

To its credit, Axanar Productions hasn’t let the lawsuit get in the way of production and has even released a teaser featuring impressive special effects while a voiceover  promises to fight on against the “scourge of Klingon aggression.”  The teaser did end with a disclaimer that the production is “not endorsed, or sponsored by, or affiliated with CBS/Paramount Pictures or the STAR TREK franchise.”

Earlier this year, producer J.J. Abrams and Star Trek: Beyond director Justin Lin lobbied hard for the movie studios to drop their lawsuit against Axanar, but Paramount and CBS have told the federal judge in the case that they intend to move forward with the lawsuit in order to protect the valuable Star Trek intellectual property.  Of course, the studios are well aware of the value of the Star Trek franchise, especially with the new film being released and an upcoming new television series that will be available and it is easy to speculate that if the two sides are able to reach an agreement regarding the money and the establishment of guidelines for future independent ventures the lawsuit may well boldly go away.

Why It Matters.  Anyone with a video camera (or even a smartphone) and a dream can make a film and, by posting it to YouTube or somewhere else on the Internet, gain a modicum of fame from viewers around the world.  Many IP owners recognize the importance of their fan base (think of George Lucas, Walt Disney Co., and the Star Wars IP) and allow some amount of fan based creativity.  Still, there are limits to what can be tolerated, especially when a project is as successful as Axanar even before it has been released.  So, if your fan film generates a million dollars or more of advance crowdfunding while you promise a professional quality production of a treasured franchise like Star Trek or Star Wars, then you should probably be prepared to share in the future profits or, at the very least, try to license the rights before the lawyers set their phasers on “stun” and aim them in your direction.

 

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