Supreme Court Upholds Broad Copyright Protection

On January 18, the Supreme Court decided, in a 6-2 ruling, that the Uruguay Round Agreements Act of 1994 was constitutional. The 1994 law restores U.S. copyright protection to foreign works that had slipped into the public domain in the U.S. due to failure to comply with copyright formalities. Opponents argued that the copyright recapture violates free speech by placing restrictions on works that were once freely available in this country. Restored works include those by J. R. R. Tolkien, Pablo Picasso, M. C. Escher, and Igor Stravinsky, to name only a few. In its decision, the Court signaled its willingness to give Congress broad leeway to expand the scope of copyright protection, as it did in 2003 when it extended the copyright term by 20 years. The named plaintiff in the case, Lawrence Golan, is an orchestra conductor whose repertoire included many works that had been free but that are now subject to copyright protection. Golan v. Holder, Case No. 10-545.

Muscle Cars and Motown Strike Bad Note with TTAB

Beginning in 2006, Mattel Inc. began marketing a new line of toy cars under the MOTOWN METAL mark as part of its Hot Wheels series.  These toy cars included replicas of famous American muscle cars, such as the 1965 Ford Mustang and the 1970 Chevrolet Chevelle.  In light of the launch of this new line, Mattel applied to register the MOTOWN METAL mark in the U.S. under Class 28 for “toys, games, and playthings.” 

However, UMG Recordings Inc., owner of the MOTOWN mark, opposed the application. UMG argued that MOTOWN METAL was likely to cause confusion with its own mark, which it first registered in 1977. Mattel countered by contending that the word Motown primarily refers to the city of Detroit, whereby the word is merely a geographic identifier. Mattel went on to argue that the toy cars it was marketing under the MOTOWN METAL mark were dissimilar from any product that UMG has marketed under the MOTOWN mark.   

The U.S. Trademark Trial and Appeal Board rejected Mattel’s arguments and concluded that its MOTOWN METAL mark was likely to cause confusion with UMG’s MOTOWN mark. In reaching this decision, the Board noted that the record company’s mark has been in use for almost fifty years and has become so famous that it is synonymous with the city of Detroit.  Though third parties do sometimes refer to Detroit as Motown, the Board emphasized that this fact alone does not diminish UMG’s value in the mark because it was the first party to use the term, and in large part all subsequent uses refer to the association between the city and the recording company.  As a result, the Board determined that MOTOWN METAL was likely to cause confusion and dilution because consumers would assume that UMG was somehow connected with MOTOWN METAL.  The Board, in turn, rejected Mattel’s application to register the mark for a line of toy cars.

Click here to view the Board’s decision in full.

Registration of MULTI-TOUCH Remains Out of Reach for Apple

On September 23, 2011, the U.S. Trademark Trial and Appeal Board rebuked Apple’s latest efforts to obtain registration for the mark MULTI-TOUCH covering handheld mobile electronic devices.  The Board determined that Apple’s evidence of acquired distinctiveness was insufficient to overcome the “highly descriptive” nature of the mark, and affirmed the USPTO’s Section 2(e)(1) mere descriptiveness refusal.  In particular, the Board highlighted that Apple had only used the MULTI-TOUCH mark for about two and a half years, and did not appear to have used the mark on goods or related packaging as a distinctive source indicator. 

The Board noted that evidence presented by Apple only demonstrated that the mark had appeared on Apple’s website to describe the operation of iPhone devices.  As a result, given the highly descriptive nature of the mark, the Board concluded that it “would need substantially more evidence (especially in the form of direct evidence from customers)” to find acquired distinctiveness and reverse the Section 2(e)(1) refusal to register. Click here to view the Board’s decision in full. 

However, all is not lost for Apple.  If Apple desires to continue pursuit of registration for the mark, it can seek review of the Board’s decision under 15 USC 1071(b) and submit additional evidence of acquired distinctiveness.  Stay tuned to see if Apple presses this matter further … 

.XXX Sunrise Period Extended to October 31, 2011

Due to a late surge in demand, the sunrise period for the .xxx adult domain has been extended by three days and will now close on October 31, 2011.  The ICM Registry was originally set to close on October 28, 2011, but the ICM cited late interest and difficulties for registrars processing applications as the reasons behind this extension.  Under this new deadline, brand owners will have until midnight, October 31, 2011 to block their marks from being used in association with a .xxx domain.  The ICM Registry recently reported that 42,000 businesses had blocked their marks as of October 24, 2011, although that number is almost sure to increase significantly in light of the late surge of registrations.

Please contact us if you have any questions about this process or would like additional information.

The Curious Case of Picasso, Monet, and Red Stilettos ...

In Christian Louboutin SA v. Yves Saint Laurent America, Inc. 11 Civ. 2381 (August 10, 2011), Judge Victor Marrero of the Southern District of New York has revealed an artistic and poetic streak rare among those sitting on the federal bench. The decision invokes Walt Whitman’s Leaves of Grass, and sets up a hypothetical in which Picasso tries to stop Monet from painting water lilies in a distinctive color of indigo that Picasso had used during his blue period.

The blue analogy was used to refuse a request for a preliminary injunction from Christian Louboutin who has developed the expensive and distinctive red-soled shoes that have captured the fashion and celebrity world’s imagination. Louboutin has a TM registration in the color red on the outersole of a woman’s shoe.

Following Judge Marrero’s decision, it looks like Louboutin’s TM will not survive, in part over a TM claim to the color red where Louboutin only uses a particular shade of red.  Judge Marrero distinguished the fashion industry from industries, like in the Owens-Corning fiberglass case that protected the color pink, where the color is not part of the product. As Judge Marrero observed, fashion is all about color and color choices, unlike a product like fiberglass.

More more information about this case and to view this opinion in full, please click here.