Posts written by Angel Soto

Tilting at Windmills: The Registrability of “Covfefe” and Other Social and Political Catchphrases

By Matthew F. Abbott
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In the age of trending hashtags and rapid news cycles, certain social and political catchphrases succeed in capturing the zeitgeist and streak meteor-like across the cultural landscape.   A common misapprehension of trademark law is that it may be used by a quick acting applicant to lock up exclusive rights in the use of these culturally significant phrases to sell branded merchandise.  While this practice has been consistently rejected by the U.S. Patent & Trademark Office (USPTO), it has continued for years, fueled by a turbulent political landscape and a widespread misunderstanding as to the limits of registrability under the Lanham Act.

On May 31, 2017, President Trump tweeted as follows:

Trump’s inscrutable use of the term “covfefe” sparked immediate widespread speculation and discussion throughout traditional and social media. That same day, John E. Gillard, the first of twenty five similar applicants, applied to register the mark #COVFEFE on the Principal Register for “hats; T-shirts, wristbands as clothing; hoodies; jackets; jerseys; ties as clothing; tops as clothing” in International Class 25.  The Trademark Examining Attorney refused registration of the proposed mark on the basis that #COVFEFE does not function as a trademark for the goods identified in the application.  Gillard thereafter appealed to the Trademark Trial and Appeal Board (TTAB), which affirmed the refusal to register in a recently issued decision.

I. Prior Attempts to Register Social and Political Catchphrases

Mr. Gillard is not the first to attempt to register a trademark for a phrase that has gained widespread notoriety and cultural significance as a result of its prevalence in social and traditional media.

  • In 2011, eleven trademark applications were filed for the phrase “Boston Strong,” a rallying cry for the city of Boston following the Boston Marathon bombing.
  • In 2015, two trademark applications were filed for the phrase “Je Suis Charlie,” words offered in solidarity for the victims of the terrorist attack at the Paris offices of the magazine Charlie Hedbo.
  • In 2017, seven trademark applications were filed for the phrase “Nevertheless, She Persisted,” quoting Senate majority leader Mitch McConnell’s explanation of why he silenced Senator Elizabeth Warren when she attempted to read a letter that the late widow of Dr. Martin Luther King Jr. wrote criticizing Jeff Sessions during his confirmation hearings for Attorney General. The phrase quickly became a feminist rallying cry and hashtag used to support Senator Warren.
  • In October 2016, twenty trademark applications were filed for the phrase “Nasty Woman” following Donald Trump’s use of the phrase in reference to Hilary Clinton during the third presidential debate. The phrase instantaneously became a feminist rallying cry and launched a cottage industry of “Nasty Woman” products
  • The turbulent 2016 presidential election also inspired trademark applications for several other phrases, including “Bad Hombre,” “Alternative Facts,” “Basket of Deplorables” and “Grab Them By The Pussy.”

Each of these applications were refused by the USPTO on the basis that the proposed mark could not function as a trademark by indicating the applicant as the source of goods and services.

II. Registrability of Social and Political Catchphrases under the Applicable Law

While there is a common misapprehension that the prompt registration of a trending catchphrase will grant exclusive rights to the use of that catchphrase, the law is well-settled that in order to register a trademark, the proposed designation must actually function as a trademark by identifying the applicant’s goods and distinguishing them from goods sold by others. 15 U.S.C. § 1127; D.C. One Wholesaler, Inc. v. Chien, 120 U.S.P.Q.2d 1710, 1713 (T.T.A.B. 2016).  The Trademark Manual of Examining Procedure (TMEP) § 1202.04 provides that “merely information matter fails to function as a mark to indicate source and thus is not registrable.” In particular, “if consumers are accustomed to seeing a term or phrase used in connection with goods or services from many different sources, it is likely that consumers would not view the matter as a source indicator for the goods or services.” Id.  The “critical inquiry” in determining whether a phrase functions as a trademark is now the proposed mark is viewed by the relevant public. D.C. One Wholesaler, 120 U.S.P.Q.2d at 1713.  A term or phrase is merely informational where consumers are accustomed to seeing it used in everyday speech by a variety of sources.  TMEP § 1202.04(b).  Such “widely used messages” include “slogans, terms or phrases used by various parties to convey . . . social, political, or similar informational messages that are in common use or are otherwise generally understood.” Id.

Based on the foregoing, informational political or social slogans, such as “Nasty Woman” or “Boston Strong,” are highly likely to be ineligible for trademark registration

III. Consideration of “#COFVEVE” By the TTAB

Facing an uphill battle in his proposed registration of “#COFVEVE,” Mr. Gillard argued to the TTAB that “#COFVEVE” was distinguishable from previous cases because the term was a “unique and fanciful wording” that was neither a common slogan nor rallying cry, and would not be confused as originating from Trump because it had no definition or true meaning. Failing to substantively address why consumers would view the proposed mark as an indicator of his goods where numerous other “#COFVEVE” goods were available from a variety of other sources, Mr. Gillard argued only that the issue was something he “would have to deal with on [his] own accord.”

Assessing how the designation would be perceived by the relevant public, the TTAB relied on the substantial evidence of articles, memes and tweets regarding the word “covfefe,” as well as “covfefe” merchandise available from numerous sources including t-shirts, hats, mugs, home décor, wines, ales, bumper stickers and specialty sandwiches. The TTAB ultimately concluded that, although there is no true meaning of “covfefe,” the term “is in the nature of a verbal Rorshach test, in which users and observers of the word can project onto it any meaning they wish,” and had thus been used frequently in a non-trademark context.  The TTAB found further that, because the proposed mark was a hashtag, it had functioned to promote discussion of the word “covfefe” using Twitter and would therefore be unlikely to indicate a source of applicant’s goods to the public.  Finally, the TTAB found that the public was accustomed to seeing “COVFEFE” displayed on many varied goods, from numerous sources, and would not view “COVFEFE” as source indicator specific to the applicant.

IV. Conclusion

By their very nature, trending social and political catchphrases are difficult to trademark because they are inherently informational and are unlikely to function as a source indicator based on their widespread use in a variety of media and trade sources. This does not prevent entrepreneurs from harnessing the sudden popularity of a phrase by manufacturing and selling goods that contain that phrase.  However, such entrepreneurs should be aware that they are unlikely to be able to exclude others from selling goods bearing that phrase, let alone obtain a federal trademark registration for that phrase.

William R. Hansen has joined the Firm as partner

 

We are pleased to announce that William R. Hansen has joined the Firm as a partner. Bill has been practicing IP law since 1978.  In those over 40 years, Bill has been one of the leading IP litigators in the U.S. regularly representing large U.S. and International companies in IP matters including trademark and trade dress infringement, false advertising, copyright infringement, patent and trade secret cases. 

In addition to his intellectual property litigation work, Bill regularly provides counsel on all aspects of trademarks and copyrights, including proceedings before the U.S. Patent and Trademark Office, trademark clearance and protection of copyrighted works.

Bill has been named as one of the leading intellectual property attorneys in New York by Chambers USA (2012, 2013), selected to Super Lawyers (2007-2011) in New York IP litigation, named among the world’s top trademark attorneys by Euromoney International Investor, recognized in the Guide to the World’s Leading Trademark Law Practitioners (2008, 2012) and as one of the “World’s Leading Trademark Law Practitioners” by Managing Intellectual Property magazine. 

Prior to joining Powley & Gibson, P.C., Bill had been a Senior partner at the firm Nims, Howes, Collison, Hansen & Lackert, a highly respected law firm that has been involved in much of the case law that provides the framework of today’s trademark law, and where many of us began the practice of IP law. Since 2002, Bill has been a partner at large general practice AMLAW top 150 law firms often in leadership positions.  Bill made the decision to return to an IP specialty firm to better serve his clients.  Admitted to practice law in the State of New York in 1978, Bill is admitted in the U.S. District Court, Southern District of New York, U.S. District Court, Eastern District of New York, U.S. District Court, Northern District of New York, U.S. Court of Appeals, Federal Circuit, and U.S. Court of Appeals, Second Circuit. 

 wrhansen@powleygibson.com

“Stay with Me”: Copyright Infringement Suit Dismissed When Similarities Are Limited to Common Elements in Love Songs

By David A. Jones
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On April 14, 2014, recording artist Sam Smith released the single, “Stay With Me.” The song became a massive success for Smith, reaching No. 1 on the UK charts and No. 2 on the U.S. Billboard Hot 100 (according to Wikipedia.com).  However, it turns out that not everyone was a fan of the song.  In 2016, without the aid of a lawyer, a Colorado songwriter named Mark Halper filed a complaint against various music companies involved in publishing the song in the Middle District of Tennessee alleging that the Sam Smith song “used and replicated phraseology and significant phrase ‘stay with me’ eight (8) times,” which Halper claimed infringed upon his original, unpublished song entitled “Don’t’ Throw Our Love Away.”  The district court dismissed Halper’s case for failure to state a claim, and he appealed to the Sixth Circuit Court of Appeals. In a recent decision, the Sixth Circuit upheld the dismissal of the case. Halper v. Sony/ATV Music Publishing, LLC, et al., Case No. 18-5915 (6th Cir. Feb. 15, 2019).

The Sixth Circuit opinion notes that a properly plead claim for copyright infringement requires two elements: “(1) ownership of a valid copyright; and (2) copying by the defendant.” On appeal, neither party challenged the district court’s finding that Mr. Halper owns a valid copyright to “Don’t Throw Our Love Away.”  It is the second factor that would ultimately doom Mr. Halper’s claim to failure.

Defendants did not have access to the song

Halpert’s original complaint stated that cassette demos of his song – written in 1984 – were given to a variety of artists and producers in the music industry at various times in 1986, 1990 and 2013. However, despite this alleged wide-spread dissemination, the Court noted that Halper admitted that “Don’t Throw Our Love Away” was “never published.”

The Sixth Circuit found that Halper’s complaint did not “plead direct evidence of copying.” However, the Court noted that in such situations, an inference of copying may be established by pleading facts that show that the defendants had access to the song; and that a substantial similarity exists between the two songs at issue.  According to the Sixth Circuit, the allegations in Halper’s complaint failed to establish the requisite access.  The Court noted that although Halper alleges that he “widely disseminated” his song within the music industry at various times, he never alleges that any of the defendants were among those who received it.  As such, the allegations in the complaint could not “lead to an inference that any defendant heard, or had a reasonable opportunity to hear” Halper’s song.

No striking similarity between the songs

Without pleading evidence that the defendants copied his song and without establishing that the defendants even had access to his song, Halper’s last hope for allowing his infringement claim to proceed was if the pleadings alleged facts showing a striking similarity between the two songs. However, the totality of Halper’s allegations amounted to the fact that both songs include the phrases “stay with me,” and “lay with me.” While the Court did note that it is possible for a single line to form the basis of a copyright infringement claim, that line has to be “an integral part” or the work and “readily recognizable” (i.e. “E.T. phone home.”).  The Court found that such was not the case here, stating that “the phrases ‘stay with me’ and ‘lay with me’ are the types of words and short phrases that are common in love songs.”  Therefore, the Court held that they are not entitled to copyright protection and that with all of these factors taken together, the district court was correct to dismiss Halper’s copyright infringement claim for failure to state a claim.

While the bar to state a claim for copyright infringement is not incredibly high, one does exist. As this case illustrates, it is important to speak with an experienced attorney before moving forward with an infringement case on your own.  Doing so can help you determine the strength of your case and potentially save you a lot of unnecessary expense.

Thinking Out Loud Copyright Infringement Law Suit

By Fritz Klantschi
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The Southern District of New York recently denied musician Ed Sheeran’s motion for summary judgment in a copyright infringement case over his alleged infringement of the Marvin Gaye song “Let’s Get It On” by Sheeran’s “Thinking Out Loud.” The court held that issues remain for trial on the scope of copyright protection and the similarities between the songs.

In August 2016 Ed Sheeran together with Atlantic Recording Corporation, Sony/ATV Music Publishing, LLC and Warner Music Group Corporation were sued for copyright infringement for Ed Sheeran’s single “Thinking Out Loud” (TOL) by the heirs of Ed Townsend who co-wrote the lyrics to Marvin Gaye’s “Let’s Get it On”(LGO). On January 3, 2019, District Court Judge Louis Stanton from the Southern District of New York ruled on Defendants’ Summary Judgment Motion.  The Defendants had moved that the deposit copy, not the sound recording of LGO defines the scope of the copyright and that the two works are not substantially similar, that any alleged similarities are to unprotectable and commonplace elements and that Plaintiff Kathryn Townsend Griffin lacks standing.  Judge Stanton denied Defendants’ motion because there are material facts in dispute.

Scope of Protection: The Court stated that it was not necessary to decide whether the deposit copy – the materials filed with the U.S. Copyright Office with the application for copyright registration – defines the scope of protection or if the composition is embodied in the first mechanical reproduction of LGO. According to the court, it is not necessary to decide that issue at this time because the outcome of the motion would be the same under either view.  However, this issue may come into play at trial, as the Court noted that hearing the percussion and bass, which are included in the reproduction but not the deposit copy, increases the perception of similarity between the works.

Commonplace Musical Elements: The Court next addressed commonplace elements that are not unique to LGO, noting that various elements (key, meter, tempo, common song structures, common chord progressions, common melodies, and common percussive rhythms) are not entitled to copyright protection because they are no longer original and already in the public domain. Summary judgment was denied on which elements of the song are commonplace and unprotectable because the experts for the plaintiffs and defendants did not agree as to whether a particular musical element is original, leaving an issue for trial.

Substantial Similarity: For determining substantial similarity, the Court set forth the “ordinary observer test,” asking whether “an average lay observer would recognize the alleged copy as having been appropriated from the copyrighted work.” Knitwaves, Inc. v. Lollytogs Ltd. (Inc.), 71 F.3d 996, 1002 (2d Cir. 1995)(internal quotation marks omitted).  The Court noted that “the issue of substantial similarity is frequently a fact issue for jury resolution.”  Judge Stanton noted that a jury could find several probative similarities between LGO and TOL and that an average lay observer could conclude that parts of TOL were appropriated from LGO.  Still further, an ordinary observer might experience the aesthetic appeal of both works as the same.  Accordingly, the question of whether TOL infringes on LGO should be determined by trial rather than by summary judgment.

Standing: On the final issue raised by Defendants’ motion, Kathryn Townsend Griffin’s standing, Defendants claim that under California law, Ca. Prob. Code § 6451(a) children who have been adopted by others have no right to inherit from their biological parents. In 2008 the Superior Court of California, County of Riverside, Riverside Probate Division ordered that Ms. Griffin was an intestate heir of Ed Townsend.  Defendants contend that Ms. Griffin obtained that order by withholding material information, that she had been adopted as a child by other parents.   Judge Stanton agreed to follow the decision of the Superior Court of California which had ordered that Ms. Griffin was entitled to 30% of the royalties of Ed Townsend.

Epilogue: On March 8, 2019 the Court ordered the trial to start on September 11, 2019.

Court Laughs Off Affirmative Defenses In “Conan” Monologue Joke Theft Action

By Patrick B. Monahan
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After a recent court decision, the comedic minds behind the late-night talk show “Conan”, who are currently facing claims in federal court of monologue joke theft, have two fewer affirmative defenses in their setlist.

On July 22, 2015, Alex Kaseberg (“Kaseberg”) filed a copyright infringement lawsuit in the United States District Court for the Southern District of California, alleging that five of his jokes were used by Conan O’Brien on “Conan” without his permission. Kaseberg alleged that copyright registrations were being sought for each of the five jokes at issue, which were as follows:

 

  Kaseberg’s Joke Joke That Appeared On “Conan”
The UAB Joke The University of Alabama-Birmingham is shutting down its football program. To which the Oakland Raiders said; “Wait, so you can do that?”

 

Big news in sports. University of Alabama-Birmingham has decided to discontinue its football team. Yeah. When they heard the news, New York Jets fans said, “Wait can you do that? It’s something you can do?”

 

The Delta Joke Yesterday, a Delta flight from Cleveland to New York took off with just 2 passengers. Yet somehow, they spent the whole flight fighting over the armrest.

 

A Delta flight this week took off from Cleveland to New York with just two passengers. And they fought over control of the armrest the entire flight.

 

The Brady Joke Tom Brady said he wants to give his MVP truck to the man who won the game for the Patriots. So enjoy that truck, Pete Carroll. Tom Brady said he wants to give the truck that he was given as Super Bowl MVP . . . to the guy who won the Super Bowl for the Patriots. Which is very nice. I think that’s nice. I do. Yes. So Brady’s giving his truck to Seahawks coach Pete Carroll.

 

The Monument Joke The Washington Monument is ten inches shorter than previously thought. You know the winter has been cold when a monument suffers from shrinkage. Yesterday surveyors[] announced that the Washington Monument is ten inches shorter than what’s been previously recorded. Yeah. Of course, the monument is blaming the shrinkage on the cold weather. Penis joke.

 

The Jenner Joke Three towns, two in Texas, one in Tennessee, have streets named after Bruce Jenner and now they have to consider changing them to Caitlyn. And one will have to change from a Cul-De-Sac to a Cul-De-Sackless.

 

Some cities that have streets named after Bruce Jenner are trying to change the streets’ names to Caitlyn Jenner. If you live on Bruce Jenner cul-de-sac it will now be cul-de-no-sack.

 

While Kaseberg’s pending copyright applications were sufficient basis for his copyright infringement claims at the time he filed his lawsuit, it’s worth noting that, as a result of the Supreme Court’s recent decision in Fourth Estate Public Benefit Corp. v. Wall-Street.com, which held that copyright holders must receive a registration from the Copyright Office prior to filing a lawsuit claiming copyright infringement, to file a similar suit today, Kaseberg would have had to wait. At the time Kaseberg filed his suit, law in the Ninth Circuit, of which the United States District Court for the Southern District of California was a part, was that a copyright holder need only file an application to have grounds for an infringement suit.

In May of 2017, the court partially granted the Defendants’ motion for summary judgment and dismissed counts relating to the UAB Joke and the Delta Joke, but it determined that the Brady Joke, the Monument Joke and the Jenner Joke were entitled to “thin” copyright protection and counts relating to those jokes could proceed. In May of 2018, shortly after the Defendants were permitted to amend their Answer to include the affirmative defenses of fraud on the Copyright Office and unclean hands, Kaseberg filed a motion for judgment on the pleadings or partial summary judgment, seeking to eliminate those two defenses. For the reasons discussed below, the court granted the motion and dismissed both defenses.

Fraud on the Copyright Office

This defense only concerns Kaseberg’s attempts to obtain a copyright registration for the Brady Joke, and thus only applies to that joke. In September of 2015, shortly after the Complaint was filed, Kaseberg (through counsel) filed an application to register the Brady Joke with the Copyright Office, which was denied due to lack of original authorship, that is, because the Copyright Office found that the joke did not possess a minimal degree of creativity. Kaseberg filed a request for reconsideration of the refusal to register the Brady Joke, but that request was denied in July of 2016.

In August of 2016, Kaseberg’s counsel filed another application to register several jokes published in February of 2015, including the Brady Joke, without mentioning the Copyright Office’s refusal of the earlier attempt to register the Brady Joke. In May of 2017, Kaseberg filed a second request for reconsideration of the refusal to register the Brady Joke, citing the court’s decision in which the Brady Joke survived summary judgment, enclosing a copy of the court’s order denying summary judgment as to the Brady Joke but not specifically noting in the request that the Brady Joke was only entitled to “thin” copyright protection.

The Copyright Office granted registration to the works in the August 2016 application, including the Brady Joke. Following that, in July of 2017, the Copyright Office granted the second request for reconsideration of the September 2015 application for the Brady Joke, but noted that the Brady Joke would have to be removed from the registration resulting from the August 2016 application.

The Defendants argued that Kaseberg committed fraud by omission in his communications with the Copyright Office, both of the fact that the Copyright Office previously refused to register the Brady Joke, and of the court’s opinion that the Brady Joke was only entitled to “thin” protection.

The court found that, while Kaseberg could have been more forthcoming with the Copyright Office, his omissions did not rise to the level of fraud on the Copyright Office, and dismissed the defense. The court apparently found some humor in the Defendant’s claims, stating that there was no obligation for Kaseberg to have disclosed to the Copyright Office everything related to the Brady Joke, such as “the geographical coordinates for where he composed the work, what he ate for breakfast that morning, or what color underwear he was wearing.”

Unclean Hands

The unclean hands defense, a catch-all defense in which a defendant argues that the plaintiff’s inequitable conduct relating to the lawsuit injured the defendant, was based upon Kaseberg’s alleged failure to provide the Defendants with requested documents and information relating to the validity of the copyrights he asserted. The Court found that, unless Kaseberg was attempting to conceal evidence of fraud on the Copyright Office, the appropriate way for the Defendants to seek relief would be through discovery motions, such as a motion to compel and/or motion for sanctions. Because the Court found that Kaseberg’s actions did not rise to the level of fraud on the Copyright Office, the Defendants’ only recourse for Kaseberg’s discovery failings was through discovery motion practice, so the unclean hands defense was dismissed.

The case is set for a jury trial in May, so it remains to be seen whether Conan can win over one of his toughest audiences yet.

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