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By: David Muradyan

 

Restaurants, bars, night clubs and similar establishments who play copyrighted music or have live performers play the compositions from copyrighted music should pay particular attention to a recent Ninth Circuit case, where the court awarded plaintiffs statutory damages as well as substantial attorney’s fees.

In Range Road Music, Inc. et al. v. East Coast Foods, Inc. et al., 10-55691, 2012 WL 502510 (9th Cir. 2012), several music companies (“Music Companies”) who owned copyrights to certain songs and who were members of the American Society of Composers, Authors, and Publishers (“ASCAP”) sued East Coast Foods, Inc. and its principal shareholder and sole officer and director, Herbert Hudson, for copyright infringement arising out of musical performances of eight copyrighted works at one of East Coast’s locations. (ASCAP is a performing rights society that licenses the music of its members and collects royalties whenever that music is performed publicly). East Coast owned and operated the Roscoe’s House of Chicken and Waffles chain of restaurants in Southern California, including the Long Beach, California location. Shortly after the Long Beach location opened and for a period of seven years thereafter, ASCAP contacted East Coast to offer it a license to perform music by ASCAP members, but East Coast refused. As a result, ASCAP engaged Scott Greene, an independent investigator to visit the location and investigate whether copyright infringement was occurring at the venue. Greene visited Roscoe’s and conducted an investigation of the various musical compositions that were performed, and submitted his report to ASCAP, concluding that copyright infringement occurred with respect to eight songs owned by the Music Companies. Continue Reading Restaurants and Bars Beware: Failure to Obtain a License to Play a Copyrighted Music May Expose you to Substantial Damages

So many of us have become hopelessly addicted to our Blackberry smartphones and personal messaging devices that the devices are frequently referred to as “Crackberries.”  Seeking to capitalize on this addiction, beginning in December 2006, Defining Presence Marketing Group (“DPMG”) sought to register four trademarks covering various iterations of the phrase “Crackberry.”  Claiming their use was a parody of the ever popular Blackberry device, DPMG based their trademark registration on use of the Crackberry mark in connection with “Web-based marketing services, computer services, online chat rooms, and apparel.”  All four of the Crackberry marks were published for opposition in late 2007. 

Research in Motion (“RIM”), owner of the Blackberry trademark has been embroiled in patent litigation for most of the 21st century and apparently has not had its fill of intellectual property-related litigation.  Not long after DPMG’s applications were published, RIM initiated opposition proceedings challenging all four of the Crackberry marks.  DPMG defended its applications by asserting that Crackberry was a parody of the Blackberry name, and as such would not cause confusion among consumers.  RIM disagreed, claiming that use of the Crackberry marks was likely to cause confusion and ultimately would cause dilution of the Blackberry trademark. Continue Reading The Blackberry Might be Addictive, but Don’t Call it a Crackberry

By: Jeffrey Pietsch 

Naked licensing is not as fun as the name suggests. Rather it can mark the end of a trademark owner’s exclusive right to their trademark. Naked licensing occurs when the trademark owner fails to exercise adequate quality control over the licensee.  This usually occurs when a trademark owner grants a third party the right to use a trademark with little or no restrictions.  Naked licensing could also occur when a trademark owner fails to enforce quality control provisions in the license agreement.  The failure of the trademark owner to control the use of its trademark by third parties may result in the trademark ceasing to represent the quality of the product or service the consumer has come to expect.   The Ninth Circuit stated that such licensing is “inherently deceptive and constitutes the abandonment of any rights to the trademark by the licensor.” 

In one such case before the Ninth Circuit, a licensee sought declaratory relief against a trademark owner on the grounds that the trademark owner abandoned its rights in the trademark by granting naked licenses to others.  The trademark in question, FREECYCLE, was owned by The Freecycle Network (“TFN”) and used by TFN to identify TFN’s services known as “freecycling.”  Freecycling is the practice of giving an unwanted item to another so that it can continue to be used as intended.Continue Reading Naked Licensing: Trademark Owners Beware

By Audrey A. Millemann 

In patent litigation, the district court has discretion to award attorneys’ fees to the prevailing party if it finds the case exceptional.  35 U.S.C. §285.  In MarcTec, LLC v. Johnson & Johnson and Cordis Corporation, 664 F.3d 907 (Fed. Cir. 2012), the Federal Circuit affirmed a district court’s award of expert witness fees in addition to attorneys’ fees under section 285. 

The patents in suit covered a surgical device that included a polymer bonded by heat to an implant.  The inventor, an orthopedic surgeon, obtained his patents by arguing to the Patent and Trademark Office that his claims did not cover stents and by amending his claims to require heat-bonding. The inventor assigned his patents to his own company, MarcTec. Continue Reading Award of Fees in Exceptional Case Includes Expert Fees

It only took four days, but four days was enough time for New York City fashion designer Joseph Mbeh to file an application with the United States Patent and Trademark Office seeking to register a trademark for “Blue Ivy Carter NYC.” Not coincidentally, “Blue Ivy” is the name chosen by Beyoncé and Jay-Z for the daughter born to them on January 9, 2012. The application is still pending before the United States Patent and Trademark Office, and alleges that Mbeh first used this mark “at least as early as January 9, 2012.”

Similarly, as you may recall, it was nearly a year ago when Governor Sarah Palin filed a trademark application seeking registration of her own name. Although Ms. Palin’s application was the topic of many jokes on late night television programming, as will undoubtedly be the case regarding the “Blue Ivy” mark as well, you may be surprised to learn that the Trademark Act of 1946 contains specific provisions allowing a person to obtain a trademark covering their name. Chapter 1300 of the Trademark Manual of Examining Procedure (“TMEP”) defines the criteria which, if met, permit a person to successfully obtain a trademark covering their name. Not unlike other trademark applications, the application must cover a mark which identifies the goods or services associated with that mark, and must function as an indication as to the source of those goods or services while distinguishing them from others. As a result, any person may seek registration of their name, provided they can demonstrate that their name is so distinctive that the public immediately thinks of them when the name is heard. Continue Reading Is A Trademark Application An Appropriate Gift At A Baby Shower?