National Parks Battle Over Trademark Rights to Souvenirs and T-Shirts

Yosemite Valley, 2013
Tuxyso / Wikimedia Commons / CC

According to USA Today, the National Park Service has become embroiled in a bitter and unusually public trademark dispute with the two private companies that run most of the hotels, restaurants and stores located inside the Grand Canyon and Yosemite National Parks.

At Yosemite National Park in California, longtime concessionare Delaware North is demanding that anyone who takes over the contract pay it tens of millions of dollars to use the names that it has trademarked, including "Yosemite National Park," in connection with souvenirs and clothing.  Delaware North is competing to keep the contracts.

The National Park Service argues that a new concessionaire could simply give those iconic places new names if it wins a new concession contract.  The park itself wouldn't be renamed, but the trademarks apply to any souvenirs and clothing sold to promote the locations.

At the Grand Canyon, concessionaire Xanterra has been similarly competing for the contract rights to run the park's South Rim lodges and restaurants. 

Scott Gediman, a ranger and spokesman for Yosemite National Park, reportedly told USA Today:  "We feel Half Dome and El Capitan and the Ahwahnee Hotel (and other trademarked names at Yosemite) are part of the national park's fabric. We feel those names are inextricably linked with Yosemite … and ultimately belong to the American people."

Delaware North officials say their original contract required them to buy the intellectual property owned by the previous concessionaire, and they're asking for nothing different should they lose out to a competitor.

John Wayne's Heirs Sue Duke University Over Trademark Rights to Alcohol

John Wayne (pictured left) was born Marion Robert Morrison in 1907.  As a boy, the eventual actor owned a dog named "Duke."  Even after the actor later adopted the stage name John Wayne, he was still known to many as "the Duke."

Duke University, another storied American institution that was named after the Duke family established the Duke Endowment, has been attempting for nearly a decade to federally register and protect trademarks for "Duke" in connection with a variety of goods and services, including alcohol and restaurant services.

John Wayne Enterprises, which still controls Wayne's intellectual property rights after his death, has also attempted to register "Duke" for alcoholic beverages.  Duke University objected, citing a likelihood of confusion even though the college does not currently produce, market or sell alcohol, according to a Complaint.

John Wayne Enterprises has apparently now filed a lawsuit in federal court in the Central District of California against the University, hoping to adjudicate the parties' rights once and for all.

Rock Showdown: Queensrÿche Faces Trial Over Trademark Ownership

Queensrÿche with Original Lead Singer Geoff Tate

It appears that hard rock and 1980's "hair bands" are a perennially fertile source of trademark litigation, as well as bar brawls and heady interpersonal drama.

Last year, we reported on the ugly trademark dispute between Ed Kowalczyk and his former band Live as they disputed whether it was appropriate for Ed to continue to bill himself as "Ed Kowalczyk of Live." (According to a recent Rolling Stone interview, that case has been settled).

Now, the original members of progressive heavy metal band Queensrÿche are embroiled in a hotly-contested litigation that is preparing for an imminent trial in a Washington State Court. The band's intellectual property is owned by Tri-Ryche Corporation, which is the company owned by the band's members.

(One legal oddity of this case is that it is an intra-corporate dispute between band members, which is a purely state law matter, whereas the vast majority of trademark cases invoke exclusively federal jurisdiction).

Last year, Rolling Stone reported that fans--and lead singer Geoff Tate himself--were stunned to learn that Queensrÿche had fired its lead singer after nearly thirty years with the band.

For those unfamiliar with Queensrÿche's catalog, it includes such songs as Silent Lucidity and full-length narrative-driven albums Rage for Order and Operation: Mindcrime.

After the 2012 split, two bands were simultaneously using the name and Queensrÿche brand.  They are each identified by their frontman, with one version led by new singer Todd La Torre, with original members Rockenfield, Wilton and Jackson and guitarist Lundgren (who joined in 2009) and the other led by original singer Geoff Tate, with former guitarist Gray, Randy Gane and Robert Sarzo and Simon Wright.

"Queensrÿche" With Lead Singer Todd La Torre

The litigation centers around who should own the rights to control the Queensrÿche brand and related trademarks after an alleged "assault" by Tate on the other band members occurred in Sao Paolo, Brazil early last year.  

The band's core legal argument is that Tate's alleged assault justified his firing as a form 'corporate action' to address his breach of duty to the other members of the entity.

Tate's court papers allege that "[t]he cut-and-thrust of Defendants' motion is that the alleged 'assault' in Sao Paulo, Brazil justifies all of their 'corporate' action under the Business Judgment Rule and leaves Geoff Tate with no defense."

First, Tate argues that there is a genuine issue of material fact demanding a trial regarding what happened in Brazil. Second, Tate substantively disputes the facts and circumstances surrounding the incident in Brazil and does not 'admit' he 'assaulted' anyone.

In his Declaration in Support of the Tates' Motion for a Preliminary Injunction, Geoff Tate swears that Mr. Rockenfield taunted him, saying, 'I fired your wife, I fired your daughter and your son-in-law, and you're next.' Angry, Geoff Tate admits that he 'went after' Mr. Rockenfield, but never touched him."

The Court apparently agreed that a trial was necessary to sort out the mess. According to music blog Blabbermouth, the trial will start in January 2014.

Sounds like a trademark trial worth following.  Stay tuned.

Starbucks Loses Big Against CHARBUCKS in the Court of Appeals

Starbucks lost a significant trademark appeal before a panel of three judges of the U.S. Court of Appeals for the Second Circuit in a case that it had brought against a small coffee shop that had named itself "CHARBUCKS".

Starbucks had filed a trademark infringement and dilution suit in federal court in New York against Black Bear Micro Roastery, which is operating a "CHARBUCKS"-named coffee shop in Tuftsboro, New Hampshire.

Starbucks' legal claim rested almost entirely on the theory that the play on the word STARBUCKS by  Black Bear constituted dilution by blurring.

Blurring is a species of trademark dilution that does not require that consumers are confused into thinking that the Plaintiff makes, endorses or sponsors the Defendant's products or services, but merely that the unauthorized use is likely to "blur" the mark's distinctive quality.

Blurring is distinct from the tarnishment theory of dilution, which seeks to determine if the famous mark is being called into disrepute by association with unsavory themes or words.

After a two day bench trial, the District Court rejected Starbucks' evidence, and found that the Defendant's use was not likely to blur the fame or distinctiveness of the famous Seattle coffee brand.

Starbucks subsequently appealed, and this week, a panel of three judges unanimously agreed that Starbucks had failed to carry its burden of proof at trial.  Starbucks has said that it respects but disagrees with the panel's decision.  Starbucks may seek review by the entire Circuit Court, in a rare but not unprecedented legal maneuver.

The Selfie Trademark: Struggling to Own the New Slang

In the modern world of interactive social media, new words are invented, used and discarded at lightning speed.

Indeed, the lexicon of online social media is replete with an entirely new vocabulary composed of Internet "slang."  There are thousands of examples percolating on the Internet, with dictionaries and even online translators devoted to these emerging linguistic trends.

Some examples of words that started as Internet slang and which are now mainstream are: "cookies" (a small piece of data embedded in an Internet browser), "photoshopped" (referring to the popular software graphics program that allows for visual 'touching up' of digital photographs) and "spam," (those annoying bulk e-mail messages that clog up our inboxes).

But some entrepreneurs are hoping that such slang terms are capable of functioning as trademarks. For example, the word "selfie" means a photograph taken of oneself (usually with a smartphone) that is planned to be uploaded to Facebook, Instagram, Imgur or another social media networking website.

But several brand owners are trying to monopolize this term, even before it fully enters the mainstream lexicon.  

Thinkboks LLC, an Illinois based software development company, has filed a formal trademark application for "SELFIE" in connection with "computer application software for allowing hands free photographs on portable electronic devices."  Thinkboks claims that it first used the term in commerce in 2012.

Screenshot of Thinkboks.com

The Trademark Office was not persuaded and recently denied the application on the basis that “SELFIE” is defined as “a slang term used to describe a photo that is taken of oneself for the purpose of uploading it to social networking sites  and image sharing websites, such as Facebook, Instagram or Imgur”.

To illustrate his point, the Examiner attached screenshots of websites (italicized emphasis added) in which the term was used by third parties descriptively:  “With our face detection and timer modes, you will love taking selfies at home or on the go!” and "It’s simple and easy and it helps with taking selfies! . . .”

The Examiner found that as shown by the Internet evidence, the wording “SELFIE” and/or its inflected forms is used to describe a feature, subject matter, use, and/or the nature of selfie software, i.e., software for taking pictures of oneself.   

Material obtained from the Internet is generally accepted as competent evidence to determine if a mark is being used widely as a descriptive term.  Accordingly, Thinkboks' trademark application was rejected on grounds of descriptiveness under Trademark Act Section 2(e)(1).

In addition to or in the alternative to submitting evidence and arguments in support of registration, Thinkboks can amend the application to seek registration on the Supplemental Register.

However, that approach means that Thinkboks would need to wait as long as five years to renew its attempt to receive a trademark registration, and would need to swear under oath that, during the interim five years, it alone made "substantially exclusive use" of that mark in commerce.

Therefore, if Thinkboks cannot successfully monopolize usage using legal means, it can only succeed by convincing the marketplace generally that "SELFIE" is associated exclusively with it.  And that's likely an uphill endeavor.

In the meantime, others are trying a similar strategy.

Selfie Social, a New Jersey-based company, is seeking to register the trademark for "Selfie Social" in connection with computer applications used for the collection of photographs.  The Examiner rejected this application on the same "descriptiveness" grounds.

Further, an unidentified person or company currently cloaked with privacy protection services has apparently registered the domain name "SELFIE.COM" and is accepting requests for new screen names.

If this isn't Thinkboks' domain name, they may face an even steeper uphill climb than they bargained for.

Van Halen Sues Drummer's Ex-Wife for Commercializing Her Married Name

Van Halen was formed in California in 1972, and named after lead guitarist Eddie Van Halen and his brother, drummer Alex Van Halen. Other members of the band have included Wolfgang Van Halen (Eddie's son) on bass guitar, as well as David Lee Roth, Sammy Hagar, and Michael Anthony.

In 1984, drummer Alex Van Halen married Kelly Carter, who legally changed her name to Kelly Van Halen. Twelve years later, the couple divorced, but Kelly kept her married name.

More recently, Kelly started a construction and interior design company under her married name. Kelly applied for several federal trademark registrations for "KELLY VAN HALEN" on products such as chairs, children's blankets, bathing suits, building construction and interior design.

ELVH, Inc., the holding company that owns the band's intellectual property, has now sued her in federal district court in California, alleging that her use of the name "VAN HALEN" as a trade name is likely to cause confusion, dilute the fame of the VAN HALEN trademarks, and unfairly compete with the band.

It also alleges that Kelly Van Halen's use of the trade name is on goods and services that are "either identical to or closely related to the goods sold by" the band.  (It is unclear when the band ever sold furniture or offered any form of construction or interior design services, but I suspect that they have not and this is only a matter of posturing).

The Hollywood Reporter notes correctly that the legal question here is whether senior family name users like Eddie and Alex can permanently enjoin junior family name users like Kelly from using "Van Halen" in a commercial enterprise. 

Courts are often reluctant to enjoin individuals from using their own legal names to identify themselves in trade or commerce, unless the use was clearly likely to cause confusion, or if the junior family member had previously agreed to cease such use.

For example, in 2007, design house Paul Frank Industries, Inc. had sued its namesake and former designer Paul Frank Sunich after he had left the company and began to use his full name to sell competing products.

In that case, the court held that "under trademark law, there is no absolute right to use one's own personal name where that use would be confusingly similar to an established use of a famous mark that the public has come to associate with another source...Mr. Sunich...has no absolute right to make use of his name in a manner that would be confusingly similar..."

However, the Court went on to clarify that "Mr. Sunich, however, is entitled under trademark law to use his name in other contexts, commercial and otherwise, to identify himself 

and inform others about his work.  [There is] no right to prevent Mr. Sunich and the other Defendants from using Mr. Sunich's full name in contexts were such use will not result in any confusion with PFI's use of the Paul Frank mark."

In that case, Sunich's websites had prominently displayed disclaimers informing customers that the products were not affiliated with, sponsored by, or endorsed by PFI.  However, his further sale of T-shirts was prohibited by the Court.

Courts are therefore often willing to draw difficult lines in order to be fair to both parties, and will put the burden on the trademark owner to actually prove that there is a likelihood of consumer confusion.  If confusion can be demonstrated, the accused may be held in contempt of Court for violating the Court's order.

Further, the Hollywood Reporter astutely notes that "the outcome might depend on whether it can be shown that Kelly had intent to trade upon the goodwill or reputation of the famous band's moniker."

While that fact would not be dispositive, if it can be show that Kelly was deliberately attempting to benefit from the band's fame, that could present a problem for her continued use.

Pinterest Sues Travel Planning Startup PinTrips

Social media service Pinterest has filed a federal trademark infringement lawsuit in California against travel startup PinTrips.

Pinterest is a pinboard-style photo-sharing website that allows users to create and manage theme-based image collections such as events, interests, and hobbies.  

Users can browse other pinboards for images, "re-pin" images to their own pinboards, or "like" photos.  The popular site was founded by Ben Silbermann, Paul Sciarra, and Evan Sharp.  It is managed by Cold Brew Labs and funded by a small group of entrepreneurs and investors.

Founded in 2011, PinTrips.com is a Santa Clara, California-based startup.  PinTrips claims that it turns the tedious task of planning and coordinating travel into a seamless experience by allowing a user to "bookmark" specific flights from all travel sites you already use, track and compare results on a main dashboard, and collaborate with others.

According to Pinterest, the startup was faced with a challenging business environment, so it deliberately adopted a name to cause confusion with its popular service.  Further, Pinterest alleges that PinTrips deliberately uses a "Pin" button that Pinterest alleges is a knockoff of its "Pin It" button.

The full Complaint is embedded below:

Can "ObamaCare" Be Legally Trademarked?

President Obama Signs "ObamaCare" Into Law in 2010

In the last several months, numerous formal trademark applications have been filed with the U.S. Patent and Trademark to attempt to own the term "ObamaCare."

Some were applications filed by insurers or HR professionals, whereas others were filed by opponents of the Patient Protection and Affordable Care Act, which has been dubbed "ObamaCare" ever since its passage in 2010.

For example, the "ObamaCare Calculator" trademark application was filed in August 2013 by Trendsetter, a Texas-based human resources firm.  Meanwhile, "ObamaCare.  Run for your Life," a proposed trademark for sports clothing was also filed, but quickly abandoned.

As reported today by the Wall Street Journal, one of the more controversial applications was filed in July of this year for "Destroy ObamaCare" t-shirts, being sold by a New Orleans-based attorney.  In an interview, the lawyer said that he doesn't "really have a particular desire to see ObamaCare destroyed or saved."  In fact, he has been busy applying for a trademark for "Save ObamaCare" for t-shirts.

The legal problem with all of these trademarks is that they use a living person's name (namely, the sitting President's) without his express written consent.  In recent years, the Trademark Trial and Appeal Board has blocked a number of registrations featuring the President's name, including "Obama Pajama", on this basis.

Therefore, it appears highly unlikely that anyone will be able to legally trademark "ObamaCare," at least in the United States.

When Does Copyright Law Cease Protecting a Fictional Character? (Part III)

Movie Poster for Van Helsing

The tagline for the 2004 movie Van Helsing was "Adventure Lives Forever." From an intellectual property perspective, it would appear that some fictional characters may try to live forever.

Trademark protection of a fictional character provides the owner with the exclusive right to use that character in connection with goods and services, as well as the right to prevent the unauthorized use of the character in connection with goods and services of infringing third parties.

The notion is that US trademark law serves to protect the public from confusion arising from confusingly similar marks.

But what about trademark law protecting the characteristics of fictional characters that are in the public domain as a matter of copyright law (e.g., Count Dracula or Sherlock Holmes)?  Theoretically, it would seem like trademark protection should not be available for any characters that are fully described in the public domain work. The reality is not that simple.

If a derivative character is developed, based upon the character described in public domain materials and is used in commerce, it is protectable as a trademark in its own right.

A concrete example is that the general features of Count Dracula are free to emulate because they are in the public domain, as the character was contained within Bram Stoker’s novel from 1897.  Stoker's book was loosely based upon the historical character of Vlad the Impaler.

Innumerable commercial variants of Stoker's Count Dracula were spawned in the century that followed, leading to a complex legal landscape.

General Mills' Count Chocula Cereal

For example, Count Chocula is a well-known, trademarked character developed by General Mills in 1971, in connection with breakfast cereals. Count Chocula is a highly stylized caricature of Count Dracula, made suitable for children. General Mills saw fit to register a federal trademark on the name and character, asserting that the design was for a character in the category of” supernatural, fictional or legendary characters; Paul Bunyan; Pied Piper; Robin Hood; Sherlock Holmes…etc.”

Consequently, a conundrum arises. If a third party were to develop a new design for a cereal that included a fictional character based entirely on the Count Dracula described in Bram Stoker’s public domain book, he may still be likely to cause consumer confusion with Count Chocula, and in doing so, violate General Mills' trademark. The strange outcome is that a character that should be free under copyright law to use, may not be so free under trademark law.

Along the same lines, Abraham Van Helsing was described in Stoker's Dracula novel. In 1994, actor Hugh Jackman played Van Helsing in a major motion picture.  In 2007, the United States Patent and Trademark Office officially allowed "VAN HELSING" to become eligible for a trademark on a wide variety of action figures, toys and games, and published that mark for opposition.

Yet another example is the Pied Piper of Hamelin. The Pied Piper has been a character fully described as far back as the 14th and 15th centuries. The legendary figure had become fodder for nearly a dozen short stories written by the Brothers Grimm in the 19th Century.  Every one of these works has passed into the public domain, as a matter of US copyright law.

The Pied Piper Throughout History

Yet, Dell Publishing Company was able to successfully register "Pied Piper" for "a series of childrens' books" in 1981, a registration that continues to be in full force and effect on the Principal Register of the US Patent and Trademark Office.

  

Further complicating matters, as long as trademarks are used in commerce, they can be valid and enforced in perpetuity. That result means that hundreds of years after the text describing a fictional character has passed into the public domain, a company that develops a commercial character based on the public domain work, could still claim a successful monopoly.

Six hundred years after the Pied Piper was first described in published poems and books, an author could not write about him in a children's book today, as the Dell Publishing Company was able to receive a perpetual, federally registered trademark on his name for children's books.

As discussed in previous posts, it is not entirely clear that once a copyrighted work passes into the public domain, the fictional characters developed therein become entirely free for public consumption without legal controversy.

Indeed, related and derivative intellectual property rights can continue to muddy the waters, leading to complex and strange consequences. This situation occurs because the landscape of US intellectual property law is complex, and different regimes are designed to serve different purposes.

US copyright law protects the expression of ideas, but not the underlying ideas themselves. The notion is that a limited monopoly is granted on a tangible expression of an idea, in order to foster a robust environment for authors, painters and other creative endeavors in which they (and their heirs) are appropriately rewarded. Once that monopoly has lapsed, the underlying texts pass into the public domain, giving the public an opportunity to utilize a catalog of freely available works. For example, Mozart or Beethoven's music can generally be played by anyone without fear of a lawsuit by their heirs. William Shakespeare's plays can be reproduced or performed, without fear of paying a royalty.

Further, in literature, fictional characters within a literary work are presumed to be simply ideas unless they are sufficiently developed to legally constitute elements of expression protectable under copyright law.

However, US trademark law may protect the names, physical appearance, catchphrases, and certain other elements of fictional characters, provided that they are used on goods or services, identify and distinguish the source of the goods or services from those of others, and are either inherently distinctive or have acquired secondary meaning (i.e., meaning in the consuming public’s mind as a source identifier for the relevant goods or services).

In conclusion, as we have seen, just because a fictional character was once described in a text that has passed into the public domain as a matter of copyright law, does not end the inquiry. In fact, it is only the beginning, as related rights and derivative works, as well as trademark usage can affect the public's right to freely borrow from, adapt or use those fictional characters.