There are Few Trademark-Free Alternatives for Advertisers at Super Bowl Time

February 2, 2012 articles Comments Off on There are Few Trademark-Free Alternatives for Advertisers at Super Bowl Time

Every commercial advertiser and broadcaster, as well as members of the public, are aware by now that the term “Super Bowl” is a trademark owned by the National Football League, and can only be used by those who pay for the privilege. “Super Sunday” is also part of the NFL’s intellectual property, and both are registered in the Patent and Trademark Office – “Super Bowl” in December 1967, and “Super Sunday” in August 1986. Even though both phrases are made up of merely descriptive or “generic” words, they now are “famous marks” possessing “secondary meaning”, making them incontestable under the Trademark laws.

The Trademark laws are codified as part of the federal Lanham Act, 15 U.S.C. Chapter 22. The system is based on use of words, phrases and images in commerce to identify the source of goods or services. Since trademarks are perpetual as long as they are used in this way, the laws have strict requirements to be able to be used exclusively by an owner to distinguish their goods from those of others. Trademarks, to be registered and protected on the Principal Register (15 U.S.C. § 1051) must be distinctive, and have a strong identification with the goods or services they represent. Protection can be given to trademarks in a range from weak (generic) to strong (fanciful). The weakest marks are words that are merely descriptive, and these cannot be protected because it would prevent their general use in the language. However, weak marks with generic-leaning words can be protected after a period of five years of exclusive and continuous use as a mark if they have become distinctive in connection with the applicant’s goods. Weak trademarks may be placed on the supplemental register (15 U.S.C. § 1091) if they are capable of distinguishing the applicant’s goods but are not distinctive enough to be registrable on the Principal Register. Then if, as a result of its use after five years with no successful contest by others, the mark is so strongly associated with a product or service that it becomes distinctive and acquires secondary meaning, it will be able to be registered on the PTO’s Principal Register and become incontestable by others attempting to register the mark. The NFL registered the term “Super Bowl” on the Principal Register in 1967. It was first filed as the name of a board game in 1966 on the Supplemental Register, assigned by the NFL to another party, and has been renewed twice since then. Super Sunday was first registered on the Supplemental Register as a service mark for the football game itself in 1986, and it is still on the Supplemental Register today, having been renewed by the NFL twice.

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When Can a Picture in the Public Domain Be Protected As Intellectual Property? The Velvet Underground vs. The Andy Warhol Foundation for The Visual Arts, Inc.

February 1, 2012 articles Comments Off on When Can a Picture in the Public Domain Be Protected As Intellectual Property? The Velvet Underground vs. The Andy Warhol Foundation for The Visual Arts, Inc.

The Andy Warhol Foundation for the Visual Arts owns many copyrights on the deceased artists’ works, and in keeping with Andy Warhol’s own statement that he would “endorse anything for money”, the Foundation has licensed many Warhol creations for commercial products. However, when the Foundation agreed to license the iconic banana image from the Velvet Underground’s 1967 first album, “The Velvet Underground and Nico” to Apple to use on iPhone and iPad cases, sleeves and bags, The Velvet Underground, which licenses the banana image as its trademark, protested. The Foundation, after receiving a cease and desist letter from the Velvet Underground’s lawyers, responded that the Foundation “may have” a copyright interest in the image that gave them a right to reproduce and license the image. The Foundation lawyer in 2009 even went as far as to claim that the Velvet Underground’s licensing activities infringed its copyright in the banana image, although there is no copyright registration by the Foundation for the image. The Foundation’s intellectual property counsel in 2011 boldly admitted in its correspondence with the Velvet Underground that “the banana design has been a consistent and prominent part of the [Warhol] Foundation’s licensing program for a number of years.” The Velvet Underground then sued the Foundation in New York federal court after it refused to stop licensing the banana image, claiming they should prevail because the banana is not copyrightable as being in the public domain, but is their trademark, and the Foundation is infringing their intellectual property.

The original image was taken from an advertisement and used by Warhol and the members of the band as part of their collaboration together at the time to create the album cover. The band split its $3000 advance from MGM for the rights to the recording with Warhol, in part as consideration for his furnishing the illustration for the album. No copyright symbol was included on the image when it was published on the album cover, and there was no deposit of it into the Copyright Office made by Warhol or anyone else. After its release, the album was withdrawn and rereleased with some changes to the back cover, which ironically contained a photograph furnished by Warhol that was infringing. Again no copyright symbol was affixed to the banana image, which, along with the deposit, was a prerequisite to copyright protection at that time under the 1909 Copyright Act. Therefore, the banana image immediately went into the public domain and was never able to be the subject of a copyright claim by Warhol or the Velvet Underground. The Velvet Underground’s first claim for relief urges the court to declare that the banana image is in the public domain and there are no copyright rights in the design. The VU then claims that it has used the iconic image in its licensed merchandising activity since at least 1993, it is immediately recognizable as a symbol of the VU, and that it has attained secondary and distinctive meaning under the trademark law to purchasers of goods bearing the design.

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Golan v. Holder, 565 U.S. __ (2012), decided January 18, 2012 – The Supreme Court Allows Equal Copyright Treatment of Foreign Authors

January 25, 2012 articles Comments Off on Golan v. Holder, 565 U.S. __ (2012), decided January 18, 2012 – The Supreme Court Allows Equal Copyright Treatment of Foreign Authors

 

Against the backdrop of legislative activity in the Congress aimed at curbing online piracy of copyrighted works, the Supreme Court has ruled in favor of an existing law that strengthens the protection of U.S. copyright works overseas by adherence to global treaties. In affirming the constitutionality of  §514 of the 1994 Uruguay Round Agreements, which codified the extension of copyright coverage to works still protected in their own countries but not in the United States, the Court ruled against the petitioners, including orchestra conductors, musicians, publishers and others who formerly enjoyed free access to works that §514 removed from the public domain. These parties asserted that a work that has entered the public domain, for whatever reason, must forever remain there.

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