Showing posts with label likelihood of confusion. Show all posts
Showing posts with label likelihood of confusion. Show all posts

Sunday, December 2, 2012

When "Wants" and "Likes" Collide


Facebook is being sued by a Michigan company that claims that its "WANT" button is being infringed upon by the social media giant.

CVG-SAB, based in Farmington Hills, Michigan, owns the website wantbutton.com, and claims that it began marketing its button in September 2010, to allow consumers to keep a list of desired products and services online.  Tommy Bahama, Burlington Coat Factory and others are current customers of CVG-SAB.  

Facebook began using a "WANT" button that takes users to non-Facebook sites where they can purchase merchandise.  

The lawsuit claims that CVG-SAB has already experienced instances of actual consumer confusion, having allegedly received inquiries into whether the new Facebook platform is related to it.

In response, Facebook filed a counterclaim, alleging that the "want" button uses a common, everyday term that cannot be protected -- a difficult legal strategy to press, considering Facebook claims monopoly ownership of the "LIKE" button. 

Saturday, September 8, 2012

Legal Threats Over Use of Music at Political Events Escalate


Music has been played throughout American history during political events, to rouse emotion and stir patriotism.

However, as intellectual property laws evolve along with the culture of politics, several issues have risen to the forefront along with the ongoing rancor between the permanent residents of Hollywood/Nashville and Washington D.C.  As we have previously discussed, Presidential candidates are frequent targets of musicians' ire for using their songs at political rallies.

Most recently, R.E.M. objected to Fox News' use of "Losing My Religion" during coverage of the 2012 Democratic National Convention.  The pro-Democratic band argues that the use of the song falsely conveyed that it agreed with the conservative networks' critique of the DNC as secularist, stating:

REM in Concert / Wikimedia Commons / Flickr user Stark (Stefano Andreoli)
"R.E.M.'s "Losing My Religion" was used in the Fox News coverage of the Democratic National Convention last night. R.E.M. today, through its music publisher, Warner-Tamerlane Music, demanded that Fox News cease and desist from continuing its unlicensed and unauthorized use of the song." 

Michael Stipe added, "We have little or no respect for their puff adder brand of reportage. Our music does not belong there."

The intellectual property issues break down along relatively clear legal lines.

Copyright:  A songwriter possesses copyright to the lyrics and melody of a song. Additionally, performers of the song possess independent copyrights in their recordings of those songs. Both of these copyrights are licensed to the public through performance rights organizations, such as ASCAP and BMI. Most large public venues, such as sports arenas and convention halls, purchase "blanket" licenses from ASCAP and BMI, that permit them to publicly perform any of the songs contained in their catalogs.  (The songwriters and performers each get a cut of the revenue collected through a separate agreement with the performance rights organizations).

For example, at a baseball game, you may hear the choruses of Queen's "We Will Rock You," Twisted Sisters' "We're Not Gonna Take It" and other rousing anthems repeatedly.  The stadium or sports arena has typically paid a recurring license fee to publicly perform these and other songs within their arenas during events, without many restrictions. Twisted Sister then regularly gets a check from ASCAP/BMI.

However, occasionally, there is a technical copyright violation. For example, if the baseball game is broadcast on national television and the song is heard in the background, the musicians may argue that the license agreement did not cover the "synchronization rights" required for television broadcast (although other license agreements may cover this contingency).

Trademark/Right of Publicity/Implied Endorsement:  In the context of political conventions that occur within the licensed arenas, however, things get trickier.  While a public arena may possess a paid-up license to publicly perform the music under their ASCAP/BMI terms without violating songwriters' or performers' copyrights, some musicians object to their songs' use during political events on separate legal grounds.  Specifically, they argue that the politicians' use of the songs during political events in those arenas nonetheless falsely implies endorsement and sponsorship.

As previously noted, there have been a number of lawsuits filed on these grounds against candidates in both political parties.

ASCAP has issued a helpful summary of the law warning politicians to be aware that their public performance licenses do NOT guard against the Trademark/Right of Publicity/Implied Endorsement theories.

It is this authors' personal view that such alternative theories may have legal merit, depending on the facts.

For example, let's assume that a musician can prove in court that consumers (a/k/a voters) recognize a particular song as a form of source identification.

That is, if we assume that a performer can prove that the public immediately perceives a song as having direct associations with the composer and/or the band that performed the song (especially ones that are politically active and highly visible), then the song may be able to function as a trademark.

Further, if a plaintiff can then prove that a politicians' use of that song is likely to confuse a sufficient percentage of the public into believing that the songwriter/band has endorsed that politician or his/her political party's views, then that plaintiff can demonstrate all that he needs to satisfy a court that there is a likelihood of confusion and irreparable harm to his brand.

On the other hand, if the public is savvy enough to assume that the use of a song during a political event does not necessarily reflect the endorsement or approval of the songs' writers or performers and is not likely to be confused, the Plaintiff would not be able to satisfy his burden of proof, and would lose in court.

Finally, the defendant would presumably assert a "fair use" defense, claiming that the First Amendment's guarantee of free speech immunizes it from the accused intellectual property violations.  

Such a defense would probably fizzle out, if the plaintiff could demonstrate palpable harm from consumer confusion as described above.

Wednesday, July 25, 2012

Court Finds Infringement No Laughing Matter, Doubles Damages to $4.6M

After a jury found a likelihood of confusion in a case involving the trademark GRANDMA SYCAMORE'S HOME MAID BREAD, U.S. District Court Judge Dale A. Kimball doubled the jury's damages award to $4.6M.

Leland Sycamore, the Utah entrepreneur who originally created Grandma Sycamore’s Home Maid Bread, was ordered to pay the hefty damages to the company to whom he sold the name in 1998.

The Court ruled that the damages awarded to the plaintiff by the jury were inadequate given the lost sales and damage to the goodwill of the plaintiff.  The Court also noted there was evidence of willfulness, as the defendant had apparently joked about ignoring the plaintiff's cease and desist letters.

In 1998, the Defendant had sold the Grandma Sycamore’s trademark, business goodwill and trade secrets to Metz Baking Company, which was later acquired by the Sara Lee Corporation.

Leland subsequently started the Sycamore Family Bakery and began marketing a variety of breads identical to those marketed under the Grandma Sycamore’s brand. 

As part of the deal, Sycamore was given an exclusive license to use the Grandma Sycamore trademark in a limited number of areas outside Utah, only if given written approval from Metz.

A decade later in 2008, Sara Lee sent Leland a letter demanding that he refrain from using "Sycamore" or any other component of the trademark for any bread or bakery products, but Sara Lee received no response to that or three subsequent demand letters.

The Court noted that, on the defendant's bread packages, the name "Sycamore Family Bakery, Inc." was repeated 24 times above an image of a teddy bear holding hearts — similar to the hearts incorporated in the Grandma Sycamore’s packaging. The new business also marketed the bread as the "original granny bread" and "original version" of Grandma Sycamore’s.

Judge Kimball had granted the plaintiff's motion for a preliminary injunction in October 2009.  The judge had found that instances of actual confusion among both consumers and food distributors constituted persuasive evidence that consumers would likely believe that the "Sycamore family" was making both bread products, and that the defendants deliberately adopted the similar trademark to unlawfully benefit from its reputation.