Rina’s Return to Rome

As someone who studied abroad in Rome, I thought I had seen it all.  (Well, truly, I don’t think that’s possible – there’s an unending list of things to see in the Eternal City.)  On my recent return trip to Italy, I was wonderfully surprised and excited by all of the new things I was able to experience this time around.  And all the delicious Italian wine and authentic food we sampled.

Overall, Rome hasn’t changed much since I lived there 12 years ago.  We stayed in my old neighborhood and went to some of my old haunts like Remo’s Pizzeria (the best pizza in Rome).  When I was studying there, Rome was trying to build Metro Line C.  It’s still a work in progress as tunneling under the city has resulted in never-ending excavations as they dig up more history.  The Colosseum, Roman Forum, Sistine Chapel, Pantheon, and the Trevi Fountain – they’re all still there, attracting more visitors than ever, and they are truly amazing sights to behold.  But some of the unexpected and special activities we came across will make this trip most memorable for me:

  • Exploring the Colosseum at night with no crowds and a tour of the underground
  • Experiencing the virtual chariot race at the Circus Maximus
  • Visiting the long-off limits Palatine Hill for an incredible aerial view of the Forum and exploration of the imperial palace ruins
  • Climbing to the top of St. Peter’s dome
  • Descending into the Grottoes under Saint Peter’s Basilica to see the tombs of the Popes
  • Enjoying a glass of prosecco on Castel Sant’Angelo with a view of the Vatican in the distance

Similarly, in our travels south to Pompeii, Capri, and the Amalfi Coast, more new experiences became highlights of our travels:

  • Viewing the unbelievably well-preserved frescoes in the Villa of the Mysteries in Pompeii
  • Boating to the Green (not blue!) Grotto on Capri to see the glowing aqua water
  • Getting sidetracked when driving the Amalfi Coast and discovering the wonderful seaside town of Maiori
  • Watching an unforgettable sunset over Positano on our last evening in Italy

I’m already excited for more new experiences when we make it back to Italy someday (we threw our coins in the Trevi Fountain, after all).  Of course, the thought of all that pasta and gelato doesn’t hurt either….

-Rina Van Orden, Esq.

IP Rights in Halloween Costumes

When I was growing up, I, like many children, wore homemade costumes of my favorite characters for Halloween – saving my parents money versus the store-bought alternatives, but certainly costing my mother time.  With a rise in intellectual property protection efforts by companies large and small in recent years, you may be wondering if your handmade creations might put you at risk for an infringement claim from one of the more over-zealous intellectual property enforcers (here’s looking at you, Disney).  As a lawyer, I am nigh physically incapable of saying “have no fear,” but I think I’m comfortable with a reassuring “have very little fear!”

The four areas of intellectual property protection that could apply to a Halloween costume are publicity rights and trademark, copyright, and patent protection.  I will address each in turn:

Publicity Rights

Should your costume include elements that could be used to identify a particular person, you may be violating such person’s publicity rights.  For example, a costume of Albert Einstein was the subject of a publicity rights lawsuit in 2010.  Publicity rights laws vary from state to state, and typically prevent unauthorized reproduction or use of a person’s likeness (which may include name, image, portrait, picture, signature, or other identifying elements) for commercial or advertising purposes.  The purpose of such laws is to prevent unauthorized parties from trading off the likeness of others without fair compensation.  Therefore, unless you plan on using your homemade costume in an advertising (e.g. in an advertisement for your small business) or commercial (e.g. manufacturing, producing, or selling your costumes) sense, you are likely not at risk for violating your costume subject’s publicity rights.

Trademark

Trademark owners have an affirmative duty to police their marks against unauthorized use by a third party.  However, trademarks by their definition are used as source identifiers for goods or services being sold in commerce.  Like the commercial and advertising aspects discussed above regarding publicity rights, trademark protection seeks to prevent parties from benefiting or trading off the trademarks of others for financial or reputational gain.  Thus, recreating a protected design, logo, image, etc. in a homemade costume that will be used for personal use only (and likely for one night only), presents very minimal risk of liability for trademark infringement.

Copyright

Unlike publicity rights and trademark laws, federal copyright protection extends to any reproduction of a protected work.  However, the Copyright Act specifically carves out exceptions for “fair use” reproductions.  Surprisingly, Halloween costumes are not directly addressed; however, the statutory factors to be considered in determining whether or not a fair use exception applies include “the purpose and character of the use, including whether such use is of a commercial purpose;” and, “the effect of the use on the potential market for or value of the copyrighted work.”  17 U.S.C. § 107(1), (4).  Again, the law focuses on commercial, rather than personal, use of the potentially infringing work.  Also, practically speaking, damages in many copyright claims are based on lost profits to the copyright owner, meaning sales of the infringing work that should be attributed to the rightful copyright holder.  Again, so long as your costume is made and used for your or your family’s personal use only, your use of the copyrighted material is very likely a “fair use.”

Patent

Patents prohibit any recreation of the patented design and, in general, apply to innovative designs.  This may sometimes apply to costumes.  For example, a patent exists for a costume that can be modified for comfort according to the outside temperature.  The U.S. laws concerning patents also consider what are known as “design patents.”  Design patents lack the exception of fair use but are only in effect for fourteen (14) years, and only protect unique and original designs separate and apart from a functional aspect of a costume.  This mains that no one can have a patent on a purple suit, but could have a design patent on a distinctive and ornamental patterned suit.  While it is unlikely that your recreated costume would run afoul of a design patent, the possibility is higher than in the other areas discussed above, particularly as there is no exception or commercial requirement.  The practical risk is even lower, as patent owners are unlikely to be patrolling neighborhoods (outside of their own trick-or-treating efforts) looking for infringers.  Furthermore, design patents are not the preferred method of protection in many cases, as the protection expires after a much shorter period (consider the fact that patent protection for designs is only 14 years, versus the “lifetime of author plus 75 years” protection applied to copyrights).

Conclusion

Avoid the urge to market, mass produce, and sell your wonderful homemade “wears” and devote the energy you may have used worrying about infringing on Marvel’s intellectual property to how many candy corns you can fit in your mouth at one time!  This author is pro-candy corn, but if that offends you to your core, consider Skittles and/or M&Ms instead.  Happy Halloween!

-Fred Freeman, Esq.

Recording Trademark Registrations with U.S. Customs

Every year, U.S. Customs and Border Protection (CBP) processes millions of cargo containers passing through the over 300 ports of entry into the United States.  CBP examines the imports, searching for – among other criminalities – violations of intellectual property rights.  The agency’s inspection process results in the annual seizure of thousands of imported counterfeit and infringing goods.

Trademark owners may not be aware of the major role CBP has in policing the infringement of intellectual property rights by foreign-sourced products.  In order to reap the benefits of the agency’s enforcement actions, trademark owners should consider recording their U.S. trademark registrations with CBP.  The process of recording a trademark is inexpensive and relatively quick, especially in comparison with civil litigation.  Moreover, recording trademarks with CBP may be an effective method of deterring, and discovering, potential infringements.

In order to record a mark with CBP, a trademark owner must have a federal registration for the mark on the U.S. Trademark Office’s (USPTO) principal register.  Trademarks on the USPTO’s supplemental register, common-law marks, or state-registered trademarks may not be recorded with CBP.  In addition to submitting an application and a filing fee ($190 per mark, per class), applicants may provide supplementary information and/or documents to assist CBP with enforcement.  For example, trademark owners have submitted “product guides” with information about identifying legitimate marks or infringing goods.

Trademarks approved for recordation will be added to CBP’s national database of protected marks (and copyrights, which may be recorded with CBP as well).  Having a trademark included in this database is a significant benefit of recordation.  CBP agents refer to the database to enforce intellectual property rights, and inclusion in the database ensures that CBP is aware of a mark.  The public has access the CBP database as well, which may deter potential infringers who can easily check to see which marks are being actively protected.

CBP may seize and detain goods which potentially infringe a trademark owner’s rights and which have been recorded with the agency and included in the database.  If CBP seizes/detains goods which may infringe a recorded trademark, the agency will contact the trademark owner and can send the owner photographs or samples to assist with identifying infringement.  Therefore, while recording a mark with CBP ensures that the agency is aware of a trademark owner’s mark and that the agency will alert the owner of potential infringements, trademark owners themselves are also responsible for assisting CBP with enforcing their rights.

Owners of international trademark registrations may record their marks with foreign countries as well.  For example, owners of Chinese trademark registrations may record their mark with the General Administration of Customs in China, which examines imports and exports for potentially infringing goods.

In summary, recording a trademark with CBP establishes a partnership between trademark owners and the agency that may help owners discover and reduce foreign infringements.  Please contact us with any questions regarding the recordation of your registered trademarks and/or copyrights with CBP.

-Courtney Reigel, Esq.

Historic Names Restored to Yosemite Lodging Icons

There’s no better way to celebrate old friends than to visit them on their birthday.  So when the National Park Service’s birthday rolled around on August 25, Kat decided to fly to Yosemite.  Pictured here is her visit to Mariposa Grove to admire the majestic sequoias.

Happily, the National Parks had even more to celebrate.  Yosemite National Park, by the time of Kat’s visit, was able to restore the signage of several properties to their historic names.  Those properties include the Ahwahnee Hotel, the Wawona Hotel, Camp Curry, and the Badger Pass Ski Area.

Wait, what?  Why were their names changed in the first place?

In 2014, the National Park Service started looking for a new concessionaire company.  The winning company Aramark signed a contract purchasing all the furniture, equipment, and other physical assets of the previous concessionaire Delaware North, who had been providing their services to the National Park Service from 1993-2014.  Yosemite had used the above-mentioned names for the respective hotels, lodges, and resorts long before 1993; however, Delaware North registered trademarks for such names on its own despite such prior use by the Park Service.  As Aramark’s contract did not explicitly discuss any transfer of intellectual property, Delaware North argued that Aramark was unable to use “their” trademarks.

In response to Delaware North’s claims, the Park Service was forced to rename many properties as of March 1, 2016, when Aramark’s contract began.  The Ahwahnee Hotel was renamed the Majestic Yosemite Hotel, Camp Curry was renamed Half-Dome Village, the Wawona Hotel became Big Tree Lodge, and so onTo long time visitors, these changes were hard to stomach.  While Delaware North offered to license the National Park Service “their” trademarks while the dispute was resolved, the Park Service refused, not wanting to acknowledge Delaware North’s rights as legitimate.

After a long negotiation process, Delaware North and the Park Service ultimately settled the resulting lawsuit in 2019.  The government ended up paying $3.84 million to Delaware North, while Aramark paid $8.16 million, and at the end of Aramark’s contract, Aramark will transfer ownership of the trademarks to the National Park Service at no cost.

While we are happy to see the matter resolved, what can be done to make sure such situations don’t happen in the future?  First, always read your contracts with specificity about intellectual property assets.  You need to make sure it is clear who owns and/or has rights in an particular asset.  You don’t want to build a brand around an intellectual property asset to which you don’t have all necessary rights. 

Alternatively, could there be some public policy exemption where the National Parks Service can own any and all trademarks regarding park areas and lodges?  Such a concept is not unheard of.  Congress has in the past granted statutory trademarks to a number of organizationsIn such a case, an organization does not file a trademark application with the federal authorities, but rather, Congress grants special protection to that organization through a statute within the U.S. Code itself.  Some organizations with such protection include Boy Scouts of America, the U.S. Olympic Committee, and maybe less familiar, the National Tropical Botanical Garden.  So what do you think?  Doesn’t the National Parks Service merit this special attention from our lawmakers?

– Kat Gavin, Esq.

Decorative, Ornamental, and Aesthetically Functional – A Cautionary Tale

Decorative, Ornamental, and Aesthetically Functional – A Cautionary Tale

They can be seen everywhere: funny phrases, beautiful works of art, and hip logos adorning hats, shirts, and apparel of all sizes and shapes.  But no matter how cool the design, catchy the slogan, or hilarious the pun, take caution before expending time and money trying to trademark or market your creative trademark.  Unfortunately, trademark law takes the on mantle of the grumpy old man whose yard swallowed many a Frisbee® and baseball of our youth, his catchphrase no longer the classic and effective “Get off my lawn,” but the much dryer “That’s decorative, ornamental, or aesthetically functional!”

The Trademark Office will refuse to register marks that are merely “decorative or ornamental.”  Meaning that if an applied-for mark is not being used as a source or brand identifier, but is rather a flashy design merely adorning the products being sold, such mark is ineligible for trademark registration.  Such objections usually arise if the mark is displayed only on the goods themselves, such as on the front of a tee shirt, and not in a manner that identifies the maker of such goods.  Thus, a decorative or ornamental objection can be overcome, or avoided altogether, if an applicant properly uses the mark in commerce as a source-identifier.  Trademark counsel will be able to advise regarding proper filing strategy for your mark.  However, once a mark is registered, it may still face an aesthetic functionality claim, if not properly utilized.

Aesthetic functionality is a murky area of trademark law that traces its roots to a comment in the 1938 Restatement of Torts: “When goods are bought largely for their aesthetic value, their features may be functional because they definitely contribute to that value and thus aid the performance of an object for which the goods are intended.”  Essentially, a mark is aesthetically functional if consumers are purchasing products for the mark itself, and such mark is not acting as a source-identifier.  This is not to say that a mark cannot act as both the reason a consumer purchases a particular product and a source identifier.  Consider the Nike swoosh.  Consumers buy all manner of goods prominently bearing the iconic swoosh, and we can reasonably infer that at least some of these consumers are buying these goods because of the design.  However, Nike has spent considerable effort in establishing itself as a brand, and consumers are not simply buying products because they like the swoosh design aesthetically, but also because they have brand loyalty to Nike and/or like Nike as a company.

Problems arise when consumers purchase products because of “interest in the specific names, independent of the reputation the companies developed when selling the products” LTTB LLC v. Redbubble, Inc., Case No. 18-cv-00509-RS, at *6 (N.D. Cal. Jul. 12, 2019).  A recent case in California, LTTB LLC v. Redbubble, Inc., highlights this distinction.  In LTTB, plaintiff LTTB brought suit against Redbubble, Inc. regarding numerous products featuring LTTB’s registered trademarks for LETTUCE TURNIP THE BEET (the “Marks”) for sale on Redbubble’s website.  LTTB LLC, at *2.  Redbubble successfully sought summary judgment claiming, in part, that the Marks were aesthetically functional.  Id.  The court held that LTTB was selling the pun, “Lettuce Turnip the Beet,” itself, stating:

The products are simply the vehicle for distributing the claimed “trademark,” rather than the other way around, where a trademark is used to identify the source of the goods. While companies that have already established s famous mark for selling a product—for instance Coca-Cola, Volkswagon, Audi, or Nike—may thereafter be able also to exploit consumer interest in the mark by selling t-shirts or other products emblazoned with such marks, and preclude others from doing so—that simply does not present an equivalent issue.

Id. at *7.

LTTB’s Marks could serve simultaneously as a functional component of a product and a trademark, if the typical consumer not only purchased the goods for its aesthetic appeal, but also inferred from the Marks that the goods were produced, sponsored, or endorsed by LTTB.  LTTB LLC, at *8 (citations omitted).  However, the court held that LTTB presented no evidence that a purchaser of “Lettuce Turnip the Beet” products could infer from the use of the pun that such products were “produced, sponsored, or endorsed by any particular person or entity.”  Id. at *8.  Thus, consumers bought these products not because they originated from a specific producer, but because of the pun itself, which is a clear example of aesthetic functionality.  Additionally, even though LTTB’s marks had achieved “incontestability” on the Federal Trademark Register, statutory incontestability “does not preclude challenges based on arguments that the marks are ‘functional.’”  Id. (citing 15 U.S.C.§ 1115(b)(8)).

To avoid claims of aesthetic functionality, trademark owners must ensure their marks act as source identifiers.  In order to best protect your designs and slogans, we always recommend you consult a licensed trademark attorney.  Counsel can help you to develop a comprehensive strategy to ensure maximum protection.

 

– Fred Freeman, Esq.