Aug
17

WAS APPLYING FOR A REGISTERED MARK FOR “SMART BEZEL” A SMART APPROACH TO OBTAINING A REGISTERED TRADEMARK?

Introduction

Last week’s blog provided information on the Supplemental Register as part of its discussion on the Trademark Trial & Appeal’s Board’s refusal to register the generic mark FELATI on even the Supplemental Register.  That blog briefly referred to the fact that merely descriptive marks may be registered on the Principal Register if: 1) they are found to be suggestive rather than merely descriptive; or 2) have become distinctive.  Otherwise, merely descriptive marks may be registered on the Supplemental Register.  For registration on either register, the examiner must have concluded that there is no likelihood of confusion with an existing registered mark.

This blog goes into depth as to what constitutes a merely descriptive mark by discussing the Board’s affirmance of the examining attorney’s Section 2(e)(1) refusal to register the proposed word mark SMART BEZEL.  In re Zuma Array Limited, 2020 USPQ2d 736 (TTAB 2022) [precedential]. The opinion is instructive because it is a reminder that a proposed mark that describes the intended use or purpose of the goods may be a merely descriptive mark.  In other words, the definition of a merely descriptive mark is not confined to those marks which merely describe a characteristic of the specified goods or services, e.g., CHUNKY CHOCOLATE for ice cream.

Discussion

 Section 2(e)(1) of the Trademark Act, 15 U.S.C. § 1052(e)(1), prohibits registration on the Principal Register of “a mark which, (1) when used on or in connection with the goods of the applicant is merely descriptive . . . of them,” unless the mark has acquired distinctiveness under Section 2(f) of the Lanham Act, 15 U.S.C. § 1052(f).  A merely descriptive mark which has acquired distinctiveness according to the USPTO’s requirements may file for registration of the mark on the Principal Register under Section 2(f).  If the mark is instead registered on the Supplemental Register, the registrant may later seek registration on the Principal Register if and when the merely descriptive mark acquires the required level of distinctiveness for such registration.

Here the Applicant’s identified goods under IC class 009 were for “electronic sensor modules for controlling and integrating home automation systems, including lighting and thermal control apparatus, energy control devices and household appliances, smart plugs, smart sockets for electric lights, electronic appliances and smart switches, audio and loudspeakers, alarms, and other security control apparatus and home monitoring equipment; electronic sensor modules for controlling and integrating smart lighting systems and smart heating systems; component parts and fittings for the aforesaid goods.”

In rejecting the mark SMART BEZEL on merely descriptive grounds, the examining attorney relied on: 1) the dictionary definition of the adjective “smart” in this context as using a built-in microprocessor for automatic operation, for processing of data, or for achieving greater versatility;” a dictionary definition of the word “bezel” as the “outer frame of a computer screen, mobile phone, or other electronic device;” and an article about a patent held by Apple where the article states the invention enabled Apple to create a “smart bezel.”  Slip opinion @ 2.  The Applicant acknowledged that “smart” is defined as “using a built-in microprocessor” and the word “bezel” refers to “the outer frame of a computer screen, mobile phone or other electronic device.” However, it also asserted, “none of the applied for goods … feature a ‘bezel’ at all.”     The Examining Attorney, on the other hand, maintained that the proposed mark immediately conveys information about the goods because Zuma’s sensors are designed to be incorporated into the bezels of various electronic appliances and lighting and heating systems, “to render the bezels … capable of performing automatic operations for processing data or achieving greater versatility.”

The Board discounted the Applicant’s argument, finding the mark to be descriptive of a use or purpose of the goods’ modules, and thus ineligible for registration without proof of acquired distinctiveness.  In reaching its conclusion, the Board took a somewhat different tack by focusing on the nature of the Applicant’s “electronic sensor modules.”  First, the Board took judicial notice that a “module”  is “a usually packaged functional assembly of electronic components for use with … other assemblies.”  Second, the Board then relied on the wording in the Applicant’s own website to conclude that the proposed mark, by describing the intended use or purpose of the goods with which it is used, is merely descriptive.  For example, the Applicant’s website states that “swap[ping] out a standard bezel for a Smart Bezel (TM)” enables homeowners to access a wide range of built-in sensors to support environmental, presence and life safety operations.”  Slip opinion at 15.  Citing precedent, the Board emphasized that “[P]roof of mere descriptiveness may originate from [the] applicant’s own descriptive use of its proposed mark,  or portions thereof” in its materials and “an applicant’s own website and marketing materials may be  . . . ‘the most damaging evidence’ in indicating how the relevant purchasing public perceives a term.’”  Slip opinion at 14.

Accordingly, the Board concluded that the word BEZEL refers to the type of device on which Zuma’s sensors will be used.  The commercial context of Applicant’s use of its proposed mark on its website “demonstrates that a consumer would immediately understand the intended meaning of” SMART BEZEL for electronic sensor modules, namely, that the modules are used to create a “smart bezel.”

The commentator notes that the Applicant should now have the option of seeking registration on the Supplemental Register.

Take Home Points

  1. Trademark law is complex. As this decision demonstrates, a merely descriptive analysis involves an evaluation of whether the proposed mark describes a particular characteristic of the specified goods/services and/or the intended usage of the proposed mark.  Many applicants are focused on a likelihood of analysis rejection and not familiar with other types of registration rejections.  Accordingly, a proposed mark that is not rejected on likelihood of confusion grounds may still be rejected on merely descriptive or generic grounds as the Zuma Array decision demonstrates.
  2. The USPTO may look beyond the Principal Register other registered marks to ascertain whether a mark is merely descriptive. Here, the examining attorney and the Board used dictionary definitions, a patent document, and the Applicant’s own website to find that the mark was merely descriptive.
  3. Interestingly there was no evidence that third parties were descriptively using “smart bezel” for the application’s specified goods. Although such proof can be highly relevant to a merely descriptive analysis, such lack of proof was of no consequence in the Zuma Array decision.  “The fact that Applicant may be the first or only user of a term does not render the term distinctive if, as here, it has been shown to be merely descriptive of the goods identified in the application.”  Slip opinion at 12.  The commentator notes that Applicant may be able to establish distinctiveness in the future by, e.g., by providing satisfactory evidence that the consumer has come to associate the mark with the Applicant as the provider of the goods.

In Need of Legal Counsel on Trademark Matters and Other Intellectual Property Matters?

Contact Susan Troy, the author of this blog and all of the IP law blogs posted at this website, at 305-279-4740.  She will assist you in determining whether your proposed brand is synergistic with the legal requirements for obtaining a registered trademark.

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY AND IS NOT LEGAL ADVICE.


© 2022 by Troy & Schwartz, LLC

 

 

 

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OTHER RECENT POSTS

Aug
08

TRADEMARK REGISTRATION ON THE SUPPLEMENTAL REGISTER AND THE DOCTRINE OF FOREIGN EQUIVALENTS

On July 7, 2022, in In re Lana Grossa mode mit Wolle Handels-und Vertriebs GmbH, the Trademark Trial & Appeal Board (the “Board”) held that a mark utilizing the Italian word for yarn, Filati, could not be registered because the mark is generic and thus incapable of registration.

The opinion is instructive because it covers several matters pertinent to trademark registration that often take a backseat to the far more common likelihood-of-confusion registration issues.  This blog summarizes the take home points from Lana Grossa wherein the Applicant sought registration of the mark FILATI on the Supplement Register as a generic mark.

  1.  Some Background on the Supplemental Register.

The Supplemental Register (“SR”) offers legal protections to a lesser extent than the Principal Register.  SR can thus be a viable alternative to registration on the Principal Register if an applied-for mark is rejected on merely descriptive/generic grounds providing the proposed mark passes a likelihood of confusion analysis by the examining attorney.  Indeed, examining attorneys may recommend that the original application be amended to a “Supplemental Registration” application if the applied-for mark is not rejected on likelihood of confusion grounds. One can also initially apply for registration on the Supplemental Register as did the FILATI mark Applicant but such an application will nevertheless be examined to see if it qualifies for such registration.   Additionally, a “Supplemental Registered” mark may later qualify for registration on the Principal Register if the registrant can establish that the mark has become distinctive in the minds of consumers.

2.  A Mark Comprising a Foreign Word Will Not Overcome Potential Registration Issues.

Over the years, the commentator has encountered clients who mistakenly believe that using a foreign word as a mark for service(s) or good(s) provided in the U.S will eliminate registration problems.   This assumption is a fallacy.  First, trademark applications require the applicant to provide a translation of the foreign word.

Second, under the doctrine of equivalents, the foreign equivalent of a registered arbitrary English word mark may result in a finding of likelihood of confusion.  For example, a proposed mark for MANZANA (Spanish for apple) as an arbitrary mark for computers would clearly not be registrable in today’s “Apple Brand” world.

Moreover, a merely descriptive or generic foreign word mark is no more registrable than its English counter-part. As the Lana Grossa opinion states:  “[A] word taken from a well-known foreign modern language, which is, itself, merely descriptive of a product or service will be so considered when it is attempted to be registered as a trademark in the United States for the same product.”   The doctrine is, however, to be applied only when it is likely that the ordinary American purchaser who is knowledgeable in the foreign language would stop and translate the foreign word into its English equivalent.  The FILATI mark applicant had argued that the mark was merely descriptive and eligible for registration on the SR.

As a result of various websites and publications accessible in the U.S. promoting a premier international Italian yarn (as “Filati”) event, the Board concluded that the relevant U.S. consumers, particularly those with knowledge of Italian, will translate the word “Filati” into “yarn.” As such, the word “Filati” is a generic term for yarn and cannot be registered on the Supplemental Register.

As discussed above, a merely descriptive foreign word may be registered on the Supplemental Register.  A merely descriptive mark is one which describes a desirable characteristic of the specified good/service.  For example, In In re Geo. A. Hormel & Co., 227 USPQ 813 (TTAB 1985), the Board held that the applied-for mark SAPORITO, an Italian word meaning “tasty,” was merely descriptive and ineligible for registration on the Principal Register.   Interestingly the SAPORITO mark was originally registered in 1973 on the Supplemental Register by a company other than Hormel.  Reg. no. 952,895.   In 1989, that same company was able to achieve registration on the Principal Registration by showing that the mark had acquired distinctiveness and recognition by the buying public.  Reg. no. 1573637 obtained under Section 2(F) of the Lanham Act.

  1. The Stylized Lettering in FILATI Is Insufficient for Creating a Distinct Commercial Impression Separate and Apart from the Generic Word Itself.

Having found that the mark FILATI is generic, the Board next determined if the Applicant’s stylized drawing of the word mark is so distinctive that it is possible to disclaim the unregistrable components and still have a registrable mark as a whole.  Generic matter within an applied-for mark, whether the mark is to be registered on the Principal Register or the Supplemental Register, must generally be disclaimed. Here, the entire mark itself (i.e. (“Filati”) would need to be disclaimed.  Yet, an entire mark cannot be disclaimed.  TMEP § 1213.06 (2022).   The Board concluded that the FILATI mark does not create a distinct commercial impression separate and apart from the word itself.   As such the mark was not registrable on the Supplemental Register.  To understand the Board’s reasoning, compare the registered mark CONSTRUCT A CLOSET, where the stylistic rendering of the mark was found to be distinctive, with the unregistrable FILATI mark.

  1. Take Home Points.

Trademark law is not as simple as it may seem as this decision shows.   This is why a trademark attorney should be consulted so that the registration risks can be understood and discussed.  Why spend a lot of money on building brand where legal protection may well not even be available?   Contact Susan Troy at 305-279-4740 for a complimentary consultation on your branding legal requirements.

 

 WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE OR ANY  ATTORNEY-CLIENT RELATIONSHIP.

 

©2022

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

 (305) 279-4740

 

 

 

 

 

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Jul
31

AMBIGUOUS PATENT CLAIM WORDING – WHAT’S THE BIG DEAL?

Just because a patent is granted does not mean that it will not be subjected to attempts to have one or more of its claims invalidated during the lifetime of the patent.   Such invalidation attempts by the defendants in a patent infringement lawsuit are not uncommon.  Grounds for invalidation include claim indefiniteness.  The public policy behind trying to prevent indefinite patent claims is that the public is entitled to know what the claim is really about. This blog discusses the recent opinion in University of Massachusetts, Carmel Laboratories, LLC  v. L’Oréal S.S., L’Oréal USA, Inc. by the Court of Appeals for the Federal Circuit (CAFC) where the court held that the patent claims were indefinite.  The opinion provides an excellent discussion of the type of analysis that goes into such a determination.

This is a long blog and hopefully instructive in its approach to explaining what went wrong for the patentee so that a similar mistake can be avoided by others during patent prosecution.

Some background information

A patent application examiner may reject a claim on the basis of indefiniteness.  Amendment of the claim by the applicant is an option to try to overcome the indefiniteness conclusion.  If an allegation of indefiniteness is made by the defendant during a patent infringement lawsuit, the court may engage in a process known as Claim Construction to determine what the claim is “really” saying or “not” saying.  In doing so, the court may refer to the patent’s specification to try and ascertain what the inventors were contemplating, how a particular word was defined, etc. and the prosecution history.  For a previous blog on the importance of the patent’s specification to claim construction, click here.   Generally, the court will rely on the plain reading of the claim.

The Questionable Claim in U Mass

A method for enhancing the condition of unbroken skin of a mammal by reducing one more of wrinkling, roughness, dryness, or laxity of the skin, without increasing dermal cell proliferation, the method comprising [1] topically applying to the skin a composition comprising a concentration of adenosine in [2] an amount effective to enhance the condition of the skin without increasing dermal cell proliferation, [3] wherein the adenosine concentration applied to the dermal cells is 10-4 to 10-7 M.

Can you see the problem with this claim?  First it says that a topical solution containing adenosine is applied to the skin but clause [1] does not recite the concentration of adenosine in this topical solution effective for achieving the result stated in clause [2].  Clause [3] with its “wherein” clause can be interpreted to mean that the amount of adenosine which ends up coming into contact with dermal cell falls in the specified range.  What is the actual adenosine concentration in the topical solution?  If clause [3] is intended to mean the resultant adenosine concentration in the dermis, was this concentration actually measured?  Furthermore, there are 2 objects intended for contact with the adenosine: the skin and the dermal cell.

The dermis is the skin layer under the outer epidermis layer.  Common sense would tell us that the topical solution would have to have an adenosine concentration greater than the amount of adenosine which ends up in a dermis cell for a number of physiological and structural skin reasons based on the topical solution’s absorption properties and the skin’s level of hydration and texture.   For example, the epidermis layer protects the dermis layer.  Anything intended for the dermis layer must first get through the epidermis layer. But what exactly is that concentration and why didn’t the claim just state “a topical solution having an adenosine concentration in the range of X-Y?”  Does clause [3] really refer to adenosine’s concentration in the dermis or is the clause the result of inartful drafting which has caused a big problem for the patent owner?

The CAFC’s Conclusion

The district court had relied on subjective determination precedent to conclude that the claim was indefinite because of clause [2] which focused on the topical solution’s effectiveness: “Indeed, the determination of whether the skin is enhanced provides a paradigmatic example of indefiniteness. Beauty after all, is ‘in the eyes of the beholder.’ ”

The Federal Circuit decided claim construction de novo because of the district court’s wrong approach to finding indefiniteness.  Upon appeal to the CAFC, U Mass contended that the “concentration” in the wherein clause is the concentration of adenosine in the dermis after it has entered the dermis.  In other words, to overcome an indefiniteness finding, U Mass would have to establish exactly what the suspect wording actually meant because the wording was ambiguous and not clear on its face.

The CAFC concluded that the claim was ambiguous about what clause [3] referred to:  “We first conclude that the relevant claim language, especially when viewed in the context of the whole claim, is not plain on its face, much less plain in supporting U Mass’s interpretation of it.”  Slip opinion at 8.  The court went on to emphasize the U Mass’s view of clause [3] is referring to something that has no existence before the application – that it refers to an adenosine concentration of the dermal layer after the adenosine particles per unit of dermal layer, after the adenosine particles have suffused into the dermis and thus already come into contact with the dermal cells.  Slip opinion at 10.   Therefore, the claim cannot be definite.

After the district court’s construction, U Mass had retained an infringement expert to conduct various experiments to assess the concentration as moles of applied adenosine in the dermis over liters of the dermis to “come up” with numbers within the range specified in the claim.  The CAFC emphasized that the expert’s methodology actually revealed an interpretation that would call for a rewrite of the wherein clause to say something like “wherein the adenosine permeating to the dermal layer results in a concentration of adenosine in the dermal layer of 10-4 to 10-7 M.   As such, the need for a departure from the natural meaning confirmed that U Mass’s asserted meaning is not plain.  Slip opinion at 10.

Next the court looked to the specification to see if it supported U Mass’s claim construction.  It did not.  Tellingly, the disclosure never implied that the invention included measuring adenosine concentrations beneath the skin surface after topical application. “U Mass has not shown that, even in this context, the specification makes clear that the inventors contemplated the adenosine concentration after exposure to the cells, rather than in a solution before application in the cells.”  Id. at 12.

The court also looked at the prosecution history, emphasizing that the histories resolve the ambiguity surrounding the meaning of “the adenosine concentration applied to the dermal cells” in the wherein clause. As with most patent applications, the prosecution history involved amendments to the original claims.  To overcome a prior-art rejection, U Mass imported a previous dependent claim which had only referred to an adenosine concentration with no mention of dermal cells into the preceding independent claim to create the problematic claim which now included the wording: formal “wherein the adenosine concentration applied to the dermal cells is …..” Slip opinion at 13.

The accompanying remarks made by the applicant are inconsistent with the “new wording” because they stated: “All [claims] are based on the application of certain concentrations of adenosine to the skin to achieve certain results.”   The applicants also stated that the amendment included no new matter suggesting that the invention was still and always was the topical solution at the specified concentration.  The new wording changed the scope and resulted in an indefinite claim. Interestingly, the examiner made the following comment in writing after accepting the amendment:  “the [i]nstant claims are directed to a method of enhancing the condition of unbroken skin . . . where the method comprises administering adenosine at a concentration of 10-4 M to 10-7 M, to the skin.” Slip opinion at 13.

According to the CAFC, U Mass’s amendments and comments clearly conveyed that U Mass had never veered from its pre-amendment reliance on the adenosine composition in the topical solution which had resulted in its two patents.  During prosecution, no mention had ever been of the materially different, unexplained notion of an adenosine concentration being determined after contact with the object (the dermis) of the topical solution.   Slip opinion at 14.   Even in its response to the examiner’s reasons for allowance, the applicants never communicated a disagreement with the examiner’s clear statement of what the language meant.

The CAFC reversed the district court’s claim construction of the wherein clause and vacated the court’s subsequent summary-judgement determination.  The case has been remanded for further proceedings consistent with the opinion.

Commentator’s Comments

This is a situation which seemingly could have been avoided.  The claims at issue in two related patents were not complicated.  The examiner made very clear that the adenosine was applied to the skin at the concentration range specified but somehow the claims ended up stating that the adenosine was applied to the dermal cells.   It is not clear why U Mass changed the wording in the amendment. Sloppy drafting?  Not carefully reading the new independent claims as whole?  Why didn’t the examiner mention anything about an incongruity between the amended claim and what the concentration range was referring to.  A few simple word changes could have resolved the ambiguity.

Patent prosecution can be a long, tedious process.  This case is a good lesson on how every aspect of the prosecution process must be monitored and the documents read and reread by both the patent attorney and the inventors.  An issued patent is in no way a guarantee that the patent will withstand scrutiny if push comes to shove in a court of law.   And if an amendment is made, make sure that it’s supported by the specification.   Remember, no new matter can be introduced in an amended specification.

                WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE OR ANY ATTORNEY-CLIENT RELATIONSHIP.

 

©2022

Troy & Schwartz, LLC

Serving Entrepreneurs & SMBs Through Conscientious, Rigorous & Empathetic Legal Services

(305) 279-4740

 

 

 

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Posted in Uncategorized on July 31,2022 09:07 PM
Jul
21

BLANDING: THE NEXT ERA OF BRANDING? 4 MARKETING AND TRADEMARK LAW FACTORS TO CONSIDER BEFORE YOU BLAND

As part of a new branding trend, a growing number of companies (e.g., Burberry London England) are trending towards using more austere logos, i.e., logos which are designed to blend in and not stand out.  The trend seems contrary to the very purpose of trademark law where trademarked brands and logos have traditionally derived their value from their ability to enable consumers to readily identify the source of a product sold in brick-and-mortar stores.   Moreover, the display of branded products in brick and mortar stores selling multiple brands is often the luck of the “space” and “shelf” location.  Accordingly, more intricate, readily-identifiable logos brands sold in physical locations such as department stores are often seen as an essential marketing tactic to make the brand standout amongst competing brands.

The blanding trend has largely been attributed to the digital economy wherein goods and services are advertised and increasingly sold across multiple trade channels including social media, websites, and billboards.   Brands viewable on-line are often clearer and immediately recognizable compared to their presentation in a bricks and mortar store where they may be surrounded by competing brands.   Even Google, Inc. has modernized its logo over the years; its current type face makes the logo look clean and modern.  Such brand modernization is viewed by blanding proponents as a way to scale in today’s rapidly changing business climate driven by technology.

The following is an illustration of blanding.

     !YAZOW!    YAZOW

If you are in the process of developing a new brand or considering updating your brand to a bland, what are the factors you should consider before you jump on the bland bandwagon?

  1. For a new brand, would it be preferable to utilize a logo which stands out from the competition? Do you want to use a logo that looks a lot like the logos of other companies in your industry?
  2. For an existing brand, is your brand associated with goodwill and immediate recognition in the relevant market? That is, have you demonstrated your commitment to building the original brand by your actions which made your brand stand out from the competition?  If yes, the time may be opportune to bland by dialing back on your brand’s uniqueness to better encompass your company’s current direction.  You should have a good understanding of the potential response to a change in a previously-held logo recognized and beloved by consumers.  Will the change inadvertently suggest that you’ve changed the nature of the good/service and not for the better?
  3. If your brand is a registered trademark, will the bland still reflect the commercial impression of the brand as it was trademarked and used in interstate commerce? If not, the registered trademark status could be in jeopardy.   The brand owner may be able to rely on the legal doctrine of “tacking” in a later registered trademark procurement matter or infringement matter which allows the mark owner to “ ‘clothe a new mark with the priority position of an older mark’ ” providing the original brand and the bland are legally equivalent.  Click here for a previous blog on tacking.   The establishment of legal equivalency requires that the brand and bland marks “ ‘create the same, continuing commercial impression such that the consumer would consider them both to be the same mark.’ ”
  4. For trademark registration maintenance purposes, will the bland mark meet the requirements for maintaining the mark’s status as a previously registered mark because they are legally equivalent?

Take-Home Points

  1. Don’t rush into a bland brand without understanding the consequences. Be careful in particular about the potential loss of registered trademark rights in a prior logo or a stylized word mark.
  2. Unless there is a commercial/marketing purpose for not doing so,  initially register the brand at least as a plain word mark with no stylistic elements claimed. The marks distinctiveness will thus rest on the word itself rather than any stylization of the word(s) or a logo. Changes, made in e.g., the font should not defeat the distinctiveness of the plain word mark from a trademark law perspective.  Many of the commentator’s clients file 2 applications – one for the plain word mark and one for a design mark which may incorporate the word mark.

 

WE THANK YOU READING THIS BLOG AND HOPE YOU FOUND IT INFORMATIVE.  HOWEVER, THE CONTENT IS PROVIDED FOR INFORMATION ONLY AND DOES NOT CONSTITUTE LEGAL ADVICE OR ANY ATTORNEY-CLIENT RELATIONSHIP.

 

©2022

Troy & Schwartz, LLC

Where Legal Meets Entrepreneurship™

(305) 279-4740

 

 

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Posted in Business Law, Trademark Law - Current Issues, Uncategorized on July 21,2022 01:07 PM
Jun
23

POP CULTURE GOES TO COURT: THE TOP GUN MAVERICK COPYRIGHT INFRINGEMENT LAWSUIT

On June 6, 2022 a copyright infringement lawsuit was filed in the U.S. District Court for the Central District of California over the new blockbuster film Top Gun Maverick by the heirs of deceased Israeli author Ehud Yonay.  The lawsuit involves a relatively unknown area of copyright law – the recapture doctrine – codified in § 203 of the Copyright Act.  This law gives authors and their heirs the right to recapture ownership of valuable copyrights by “terminating” past assignments and licenses of copyrighted works starting at the end of the 35th year from the date of the grant and for five years thereafter.  The process is complex and requires a notice to the copyright holder as well as the filing of documents with the U.S. Copyright Office.   Recapture is available even if the original grant was for the entire life of the copyright.  The doctrine is attended to provide the copyright owner and heirs with the right to seek new opportunities to receive financial compensation for their copyrighted works.  Such an option is particularly desirable where the copyrighted work’s value has increased over time as is the case here.  The Top Gun Maverick plaintiffs are seeking an injunction and compensation.

Paramount, the movie’s producer and distributor, allegedly secured the exclusive motion picture rights to the author’s copyrighted story which resulted in the release of the first Top Gun film in 1986.  The plaintiffs assert that Paramount knowingly failed to re-acquire the rights to the requisite film and ancillary rights to the author’s copyrighted story prior to the completion and release of the 2022 sequel as a derivative work.  That is, Paramount knew it didn’t have the rights to the sequel but moved ahead with production and distribution anyway.

Mr. Yonay owned the original copyright in the story “Top Guns” which was published in a 1983 issue of California magazine.   The magazine piece described the high-adrenaline world of jet pilots at the US Navy’s “Top Gun” fighter training school. Yonay also later wrote a book, “NO MARGIN FOR ERROR: The Making of the Israeli Air Force.”

Paramount acquired the copyright to Yonay’s story immediately following its 1983 publication which resulted in the release of the 1986 film.  The copyright’s termination of the copyright became effective on January 24, 2020 or within the 5-year window from 2018, the 35th year following the story’s publication.  The copyright claimant for Yonay’s story was not, however, the author himself but “California Magazine.”  The registration listed in the complaint is for a copyright in a “serial publication,” with California Magazine seemingly claiming authorship under the work-made-for-hire doctrine according to the registration.  See copyright registration no. TX0001213463.

It is unclear whether this underlying registration helps the plaintiffs.  Copyright laws are applied according to the territory in which the lawsuit is filed.  Registration of a work in the U.S. is a prerequisite for the commencement of a copyright infringement lawsuit since the U.S. Supreme’s decision in Fourth Estate Pub. Ben. Corp. v. Wall-Street.com.  Plaintiffs, who are not U.S citizens, may argue that U.S. registration of Mr. Yonay’s underlying story which resulted in the California article is not necessary for foreign nationals and the lawsuit should proceed.  Even if this assertion is found to be a valid basis for proceeding with the lawsuit without registration, the Plaintiff’s will likely need to allege as such under U.S. law.

Also, many of the complaint’s allegations appear to involve the expression of ideas that would fully be expect to be present in any story or film about combat military pilots, in this case navy pilots.  Copyright law does not protect common themes which appear across different works, e.g., romantic themes, works involving detectives, love songs, impressionism in art, etc.  Thus, even if the Plaintiffs pass the “copyright registration” threshold issue, they may have a very difficult time proving actual copyright infringement.

One of the more interesting allegations in the Complaint suggests that the famous scene in the original Top Gun movie where Maverick and Goose’s F14 plane is inverted over a Russian MiG was the author’s original expression. The 1983 California magazine article does reportedly show a photograph with one F-14 plane inverted atop another plane but the article credits a C.J. Heatley as the photographer.  The Complaint makes no mention of Heatley or the photograph and it is not clear from the story whether the “inverted plane orientation” is the author’s original expression and the photograph is a secondary expression which captures the literary expression to add “color” to the story.

This case will either be thrown out early on due to the registration issue without addressing “copying” issues or it will be drawn out.   Dates will be critical since Paramount is maintaining that the sequel was “sufficiently completed” prior to the copyright termination date of January 24, 2020.  Work on the sequel began in 2018.  The plaintiffs allege that the movie was completed in 2021 or well after the copyright’s 2020 termination date. “Big screen” release was postponed until May 27, 2022 after the movie was completed in 2021 because of the pandemic. Mr. Yonay passed away in 2021 or after termination of the copyright.

Plaintiffs contend that they originally sent Paramount a “termination of rights notice” in 2018 based on the 1983 magazine’s publication date.  However, Paramount allegedly ignored the letter apparently believing that the termination was ineffective because they had acquired the rights from the California magazine and not Mr. Yonay himself.  Instead, Paramount moved ahead with the very lucrative sequel.  It’s not clear who advised Paramount on the potential seriousness of this matter in 2018 but that this lawsuit has now been filed should have come as no big surprise.  The heirs now surprisingly are seeking to share in the financial bounty of a terrific movie which may owe its existence to a story written by their loved one almost 40 years ago under a legal doctrine that allows such redress.  Whether or not their claim of copyright infringement will pass muster remains to be seen.

The lawsuit will also likely call into question the underlying contracts between Paramount and California Magazine and California Magazine and Mr. Yonay.  It is noted that if a contract includes a waiver of termination rights by the copyright owner, such a waiver is generally unenforceable.

Stay tuned for periodic updates as the case progresses.

 

THANK YOU FOR YOUR INTEREST IN THIS BLOG.  AS USUAL THE CONTENT IS FOR INFORMATIONAL PURPOSES ONLY                    AND IS NOT LEGAL ADVICE.

 

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