by Scott Hervey

The rock band No Doubt had serious doubts about the way they were being portrayed in Activision’s video game Band Hero. No Doubt had licensed the likeness of its members for use in the video game but ultimately objected to Activision’s use and claimed that such use was outside of the scope of the license agreement between the Parties.

The agreement between the parties set for the terms upon which No Doubt gave Activision the right to utilize the band members’ name and likeness in the video game. Each band member had the right to approve their likeness as implemented in the game, as well as all other uses of use their name and/or likeness in the marketing and exploitation of the game. After signing the license agreement, the band members participated in a full day photography and data capture session at Activision’s studios so that the band members’ avatars in the video game would accurately reflect their appearances, movements and sounds. No Doubt reviewed the photography and the details related to the appearance and feature of their avatars and ultimately gave their approval.

Continue Reading No Doubt v. Band Hero – A Further Test of Celebrities Right of Publicity

by James Kachmar

United Fabrics International, Inc. (“United Fabrics”) manufactures a collection of fabric designs titled “Ethnic Collection X” to which it holds a copyright. As part of that collection, United Fabrics purchased a fabric design from an Italian design house and then modified the purchase design. It then sued Macy’s (and several others) for infringing on its copyright by selling infringing fabric and garments. Macy’s moved for summary judgment and the court sua sponte dismissed the case claiming that United Fabrics did not have standing to pursue a copyright infringement claim. The court held that United Fabrics had failed to establish the crucial element of ownership of a valid copyright.

Continue Reading United Fabrics v. Macys and the Presumption of Copyright Ownership

by Matt Massari

People often attempt to register the names of public or famous figures as trademarks for use in association with novelty items. Section 2(c) of the Trademark Act “absolutely bars the registration of a designation that identifies a particular living individual absent written consent.”  In determining whether a particular living individual with that “name” would be associated with the mark, the U.S. Trademark Trial and Appeal Board (“TTAB”) must consider “(1) if the person is so well known that the public would reasonably assume the connection, or (2) if the individual is publicly connected with the business in which the mark is being used.” In short, this provision of the Act “is intended to protect the intellectual property right of privacy and publicity that a living person has in his/her identity.” But does the President of the United States need such IP and privacy protection, such that one cannot register his/her name as a trademark for novelty items? Yes, according to the TTAB.

Continue Reading “Obamification”: Barack Obama as a Trademark

by Zachary Wadlé

On July 17, 2008, Apple, Inc. applied to register the trademark “APP STORE” covering the Cupertino based company’s online store where users can buy various software applications for their iPhones, iPads, and/or iPods. Apple eventually completed the trademark examination process, and the mark proceeded to publication in the Trademark Official Gazette on January 5, 2010. On July 6, 2010, Microsoft Corporation filed an Opposition with the Trademark Trials and Appeals Board against Apple’s proposed registration of the APP STORE trademark. Two weeks ago, Microsoft filed a motion for summary judgment requesting that Apple’s trademark application be summarily rejected by the Board. The centerpiece of Microsoft’s motion is the argument that Apple’s proposed APP STORE trademark is “generic” and therefore ineligible for trademark protection. The Trademark Board must therefore decide whether Apple’s proposed APP STORE trademark is “generic” or not.

Continue Reading Microsoft v. Apple In a “Generic” Trademark Dispute

by Audrey Millemann

Patent misuse is a judge-made doctrine (now partly codified in 35 U.S.C. § 271(d)) that provides a defense to patent infringement if the patent owner has used the patent in such a way as to expand the scope of the patent grant. Patent misuse prevents a patent owner from conditioning a license on requirements beyond the scope of the patent. For example, a patentee cannot condition a license on the licensee’s purchase of an unpatented product from the patentee. This would result in the patentee expanding the scope of its monopoly beyond that granted by the patent. Another type of patent misuse occurs when the patentee requires the licensee to pay royalties after the expiration of the patent. 

Continue Reading Patent Misuse Becomes Narrower