Trademark Law

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Let me start with a disclaimer.  This column is not really about intellectual property.  It’s about the unexpected – what happens when people stick to their principles and challenge the way it’s always been done.  Actually, this column is about a horse.  (But I’ll say something about intellectual property along the way.)

I have a second disclaimer.  I do not like horseracing.  It is physically stressful on the horses (who are mostly two and three–year olds) and they frequently get injured.  It is also a sport that often treats horses as disposable commodities; many racehorses are sent to slaughter after failed careers, although that is changing.  But this is a story with so much goodness, it has to be told.

First, the horse.  He is California Chrome.  He’s a three-year-old thoroughbred racehorse.  He now has a large fan club of “chromies” on social media everywhere.  The press calls him the Cinderella horse and the Sacramento Bee’s cartoonist Tom Meyer even portrayed him as a commencement speaker in Tuesday’s paper.  The press didn’t call him anything until he won the Kentucky Derby, the first leg of the Triple Crown, on May 3.  He was definitely under the radar, born and raised in California and starting his racing career here, in a sport dominated by Kentucky-bred horses.  Then there were those who said he couldn’t win the Preakness Stakes, the second leg of the Triple Crown.  On May 17, he won that one too, against a field of mostly fresh horses (horses who had not raced in the Kentucky Derby two weeks earlier and had had longer times to recuperate).

California Chrome is a chestnut colt with a white blaze and four white stockings.  Chestnut is a color like a shiny new copper penny.  The white markings are called “chrome” in horseracing.  His name was picked by a waitress out of several choices provided by the owners.

California Chrome was born in 2011 in Coalinga, California.  California Chrome’s sire (father) was Lucky Pulpit, who won some races in California.  His dam (mother) was Love The Chase, who won one of the six races she ran.  California Chrome was her first foal.

Trainers of other horses have observed that California Chrome has an easy-going personality, doesn’t get overly anxious going into the starting gate, and knows how to control his speed.  I could go on and on about this horse (or any horse for that matter), but I’ll move on.
Continue Reading Best of Luck to California Chrome!

 By: Scott Hervey

From all appearances, it would have been a fight worth watching. In one corner was the Beastie Boys, the Brooklyn bread, 80s powerhouse rap group; they aggressively enforce their intellectual property rights and have never allowed their music to be used in advertisements.  (This commitment was so important to the group that in his will, Adam “MCA” Yauch stated that "in no event may my image or name or any music or any artistic property created by me be used for advertising purposes.") In the other corner was GoldieBlox, an upstart toy company, founded by a Stanford-educated product designer, with a goal to disrupt the current vision of “toys for girls” and inspire the next generation of female engineers.
Continue Reading GoldieBlox v. Beastie Boys – “Girls To Bring A Lawsuit”

 By: Lisa Y. Wang

This month, the Trademark Trial and Appeals Board ruled that Bottega Veneta, a luxury Italian fashion brand, well known for its "weave design" handbags and accessories, could register a trademark for that specific design. Bottega Veneta handbags and accessories do not have obvious logos on the outside, signifying its origin. Instead, the weave patterns, multiple thin strips of leather forming a weave pattern (much like a basket weave) at a 45 degree angle, serves as its "trademark" and source of origin. Bottega Veneta claims that it created this very specific leather weaving technique and pattern, known as intrecciato, in the 1960’s.   Since there is no logo, this easily made weave pattern is constantly copied by fast fashion retailers and other brands, hence Bottega Veneta’s attempt to register a trademark for that specific pattern.

Continue Reading Weaving a Trademark

Very often one of a business’ most valuable assets is its internet domain name. Even in large, well-established companies, a portfolio of well-chosen domains amount to a significant set of assets, often driving sales and advertising. Yet many businesses often make poor choices in connection with these assets.

As the World Wide Web began to mature into a viable business method in the mid-1990’s, businesses began snapping up domain names. A significant number of startup companies began attempting to reinvent various categories of business by running them in an online or “virtual” presence. Most readers will recall failed businesses such as WebVan, pets.com and e-toys.com. Yet these businesses failed largely because of overly ambitious business plans which devoured enormous amounts of startup capital with elaborate advertising campaigns or, in WebVans’s case, an insanely ambitious attempt to build a nationwide grocery delivery logistics system from scratch with seed money.Continue Reading Bad Domain Names

By Dale C. Campbell

On July 31, 2012, the Ninth Circuit issued its ruling protecting the right of privacy held by collegiate athletes against the use of their likeness in connection with video games. (Keller v. Electronic Arts, Inc. (2013) 9th Circuit Court of Appeals 10-15387. This decision joins the Third Circuit’s decision in Ryan Hart v. Electronic Arts, Inc., U.S. App. LEXIS 10171 (3d Cir. 2013), finding that the collegiate athletes’ right to publicity outweighs Electronic Arts’ First Amendment rights. 

Sam Keller was a starting quarterback for Arizona State in 2005, before joining Nebraska in 2007. Electronic Arts ("EA") is the producer of a series of video games known as NCAA Football, in which EA seeks to replicate a school’s entire team as closely as possible. NCAA Football is an interactive game that allows the video gamer a wide range of playing options including modification of a player’s size and abilities as well as for which team he plays. Keller sued EA and the NCAA in a putative class action. EA filed a SLAPP motion ("Strategic Lawsuit Against Public Participation"), claiming that this conduct was protected by the First Amendment. The District Court denied the SLAPP motion, and EA appealed. 

The Ninth Circuit recognized that video games, like books, plays, and movies, are entitled to the full protections of the First Amendment.  (Brown v. Entm’t Merchs. Ass’n, 131 S.Ct. 2729, 2733 (2011). However, the First Amendment rights are not absolute, and states may recognize the right of publicity to a degree consistent with the First Amendment. (Zacchini v. Scripps-Howard Broad Co., 433 U.S. 562, 574-75 (1977).) 

Continue Reading THE NINTH CIRCUIT THROWS A PENALTY FLAG AGAINST ELECTRONIC ARTS