Suppose that you want to register a trademark that incorporates a name of a person to identify the source of goods or services for your business. Should you register your trademark with the U.S. Patent and Trademark Office (USPTO)? What about the right of publicity of the individual? Can you obtain a registration from the U.S. Patent and Trademark Office? The answer may be YES! depending on the specific facts regarding the person.
ILN IP Insider
November 19, 2022
Trademarking a Name and the Right of Publicity
October 18, 2022
FTC Staff Report Brings Dark Patterns to Light
Trick or treat? The Federal Trade Commission (FTC) staff is focused on one “trick” this spooky season: Designing user interfaces to trick or manipulate users into taking actions they would not otherwise approve of, or putting obstacles in place to discourage consumers from exercising certain rights. These so-called “dark patterns” are a continued focus of the FTC, as discussed in a prior alert (regarding online subscriptions and e-commerce practices). Dark patterns were also specifically called out in a number of new state privacy laws. A recently released FTC staff report on dark patterns indicates that this focus is only growing, and that dark patterns can encompass a wide range of common marketing practices – from urgency offers to fee disclosures.
September 21, 2022
High Court of Delhi holds that acquired distinctiveness is necessary for obtaining registration of a shape mark
In today’s age, the importance of brands (and in turn trademarks) cannot be undermined. It is through brands that businesses (be it domestic or international) are able to thrive and flourish in various highly competitive sectors. While the brand promotion, protection, and enforcement strategy has been focused for many decades on conventional marks (such as a word mark or a logo mark), businesses have realised the potential of non-conventional trademarks (including colour, shape, or even smell and scent). Amongst these, shape has the unique status of expressly finding its place in the trademark statutes of most developed nations, yet the number of trademark registrations being granted to shapes remains quite low.
August 31, 2022
Just Humor Them: Jests, Jokes, Satire, and Parody In Infringement and Defamation Cases
Legend has it that shortly after Adam was created, he complained: ‘O, Lord! you have given the lion fierce teeth and claws, and the elephant formidable tusks; you have given the deer swiftness of legs, and the turtle a protective shell; you have given the birds of flight wings, but you have left me altogether defenseless.’ And the Lord said unto Adam: ‘I shall give you an invisible weapon that will serve you and your children better than any weapons of fight or flight, a power that will save you even from yourself. I shall give you the sense of humor.'”
[G. Swaminath, “Jokes a Part: In Defense of Humor,” 48 Indian J Psychiatry 177–180 (2006)]
I thought of that story, and the unique power humor has, literally and legally, to disarm many who might otherwise complain over any number of legal issues and perceived slights. For even though, as one writer noted, some “legal textbook[s like] Gatley on Libel and Slander [are ones where] neither ‘joke’ nor ‘humour’ makes the index” because “[w]ords are defamatory, or they are not” and “intention is irrelevant,” humor remains at the forefront of any codex of responses available to claim of infringement or defamation. While intent may be irrelevant, meaning, understanding, impact, and setting are not. We were reminded of this just recently in the case of Roy Moore v. Sasha Baron Cohen, where the United States Court of Appeals for the Second Circuit affirmed dismissal of a defamation action arising out of a mock comedic interview. Mo[ø]re on that case later (pun perhaps intended).
July 27, 2022
Copyright Infringement before the Copyright Claims Board?
Suppose you have not registered your copyright in a book with the U.S. Copyright Office until someone has infringed your copyright by copying substantial portions of your book. Let’s also suppose you can prove that the alleged infringer has infringed your work and you can prove that the infringement caused you lost sales, lost opportunities to license, or diminution in the value of the copyright in the amount of $20,000. Can you sue the alleged infringer for actual damages for the copyright infringement without going to federal court? The answer to this question is YES!
The U.S. Congress has established the Copyright Alternative in Small-Claims Enforcement Act of 2020 (CASE Act) to provide an alternative forum to federal court before the Copyright Office called the Copyright Claims Board (CCB) for resolving certain copyright disputes that involve up to $30,000 (called “small claims”). The use of the CCB is voluntary and both parties must agree to participate. The CCB provides advantages over federal court because certain copyright disputes may be resolved before a panel of copyright experts as opposed to a jury or a federal judge. The CCB proceeding is a streamlined proceeding and a less-expensive alternative compared to federal court.
July 6, 2022
High Court of Delhi extends statutory deadline for filing response to FER in European Union’s patent applications
Patents files folder
In the recent case of The European Union vs. Union of India and Ors., W.P.(C)-IPD 5/2022 and W.P.(C)-IPD 6/2022, the Petitioner (European Union) filed two writ petitions against two orders passed by the Controller General of Patents for deemed abandonment of its patent applications.
By way of background, the Petitioner had initially engaged a European law firm (M/s. Freylinge) which in turn engaged one Mr. Guruswamy Nataraj (“first patent agent”) for filing and prosecuting the patent applications (on their behalf). The first patent agent filed Indian Patent Application No. 11123/DELNP/2012 (on December 21, 2012) and Indian Patent Application No. 3466/DELNP/2013 (on April 18, 2013).
June 22, 2022
Viral Greek Advertisement with LGBTQ+ Representation Ruled Legal by the Advertising Self-Regulation Council
A few months ago, a large shampoo Company advertisement was published in Greek media (both on TV and οn social media), in which members of the Greek LGBTQ+ community starred. Through the campaign, the Company praises diversity and the exceeding of stereotypes and within a few hours, it became a “viral topic of discussion” on social media and news websites, causing a wave of positive as well as negative reactions. In fact, the ad has over 800,000 views on YouTube.
Five queer people (a cis gay man, a cis gay woman, a trans woman, a non-binary person, and a drag queen) are starring in the commercial, sharing their stories and the change in their daily lives when they finally felt free to express themselves as they are – with the help of their hair, too – focusing on the problems, discrimination, and oppression they have faced from their social environment due to their identity. The advertising video closes by referring to a Psychological Support Line for LGBTQ+ people and their families, which is also sponsoring the campaign. It is noteworthy that some of the scenes shown in the commercial are quite rare for Greek TV (such as a kiss between a lesbian couple), which is one of the reasons that the ad gained a lot of attention. In general, LGBTQ+ representation in Greek media and advertisements is not that common.
June 15, 2022
A PORTRAIT OF AN ARTIST AS A YOUNG…CODE(R)?: Why Understanding Artificial Intelligence & Real Creativity Shouldn’t Make The Artist A Dunsel
Art, said Stephen, is the human disposition of sensible or intelligible matter for an esthetic end.”
― James Joyce, A PORTRAIT OF THE ARTIST AS A YOUNG MAN, Chapter V
[T]he application…identified the author of the Work as the ‘Creativity Machine,’ and noted it was ‘Created autonomously by machine.’
—Complaint, paragraph 17 in Thaler v. Perlmutter, Civ. Action No. 22-01564
Wesley [on viewscreen]: Our compliments to the M-5 unit, and regards to Captain Dunsel. Wesley out.
McCoy: Dunsel? Who the blazes is Captain Dunsel? …What does it mean, Jim? (Kirk leaves the bridge) Spock? What does it mean?
Spock: “Dunsel,” Doctor, is a term used by midshipmen at Starfleet Academy. It refers to a part which serves no useful purpose”
—The Ultimate Computer, STAR TREK, THE ORIGINAL SERIES
In my recent attempt at spring cleaning, I mentioned that “the Copyright Office’s ‘refusal to register a two-dimensional artwork claim in the work titled ‘A Recent Entrance to Paradise’ (‘Work’).” I also observed that “[e]ven with Roombas and Creativity Machines doing their jobs well, these issues remain a little messy and will need to be considered further.” I just thought I would have a little longer respite.
June 10, 2022
Why Creators Need to Pay Close Attention to the SCOTUS Andy Warhol Infringement Case
The US Supreme Court in March decided it will revisit a dispute over pop artist Andy Warhol’s images of Prince. In taking up the case, Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, the Court aims to more clearly define the scope of what’s known as “fair use” in US copyright law.
The suit was originally levied by photographer Lynn Goldsmith after a 2016 Vanity Fair issue brought to light a series of images that Warhol produced of Prince based on a photograph taken by Goldsmith. The photographer, who had only been aware of one of the 16 images in the series, argued that Warhol had committed copyright infringement. In 2019, a judge ruled in favor of Warhol; however, New York’s Second Circuit Court of Appeals in 2020 reversed the decision, ruling that Andy Warhol’s licensing company did not engage in fair use when it used Goldsmith’s photograph as the basis for the series.
May 25, 2022
Can a Copyright Registration be Invalidated based on Mistakes in the Copyright Application?
Suppose that you want to register your copyright by preparing and filing a copyright application with the U.S. Copyright Office. What if you were unaware that you made some mistakes in the copyright application and the copyright application issued into a copyright registration? You subsequently find that someone is infringing your copyright registration and you file a lawsuit against them for copyright infringement. During the lawsuit, the accused infringer finds the mistakes in the copyright application and argues that the copyright registration is invalid. Is your copyright registration invalid? The answer is NO if the mistakes were made without knowledge!
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