Ironically, "Blurred Lines" of Copyright Law Lead to Litigation

Summer 2013's hottest pop single "Blurred Lines" has become quite a phenomenon.  Its primary vocalist and author, Robin Thicke is the son of Alan Thicke, of the popular family television sitcom Growing Pains.

The song features controversial lyrics about the lack of clear boundaries that have been called "rapey" by feminists, as well as an R-rated music video. The video for the song was released on March 20, 2013, and was made in two versions; the first video features models Emily Ratajkowski, Jessi M'Bengue, and Elle Evans being topless, the second features them covered.



The covered version on YouTube (embedded above) has reached nearly 138 million views. However, the topless, R-rated version of the video was removed from YouTube on March 30, 2013, for violating the site's terms of service regarding nudity.  On Vevo.com, the R-rated version has reached nearly 11 million views.

The song itself has been a worldwide hit, topping the charts in Australia, Canada, New Zealand, Ireland, Germany, the Netherlands, Poland and the United Kingdom, as well as the top ten in Belgium, Denmark, Lithuania, France, Iceland, Italy, Portugal and Switzerland. As of July 17, 2013, it is the second best-selling single of 2013 in the UK.

The song features a catchy beat and chorus, clearly reminiscient of Marvin Gaye's 1977 classic "Got to Give it Up":

Thicke apparently admires Marvin Gaye's style and music, and went so far as to admit that it inspired him in this instance, but denied overtly sampling Gaye's musical compositions when writing Blurred Lines.

When asked by Yahoo! Music's Billy Johnson Jr. about the notable similarities between "Blurred Lines" and Gaye's song, Thicke said "[t]here is no sample." But he admitted, "[d]efinitely inspired by that, yeah.  All of his music ... he's one of my idols."

Sampling is the act of taking a portion, or sample, of one sound recording and reusing it as an instrument or a sound recording in a different song or piece.

Hearing the similarity and likely believing that Gaye's music was sampled without permission, Gaye's family apparently demanded a royalty from Thicke and his co-authors, which they refused to pay.

After reaching an impasse, Thicke and his co-authors pulled the trigger first, suing Gaye's family in federal district court in California this week, seeking a declaratory judgment that the song does not infringe upon Gaye's copyrights.

“There are no similarities between plaintiffs’ composition and those the claimants allege they own, other than commonplace musical elements,” the suit contends. “Plaintiffs created a hit and did it without copying anyone else’s composition.”

Invocation of declaratory judgment jurisdiction is typical when it becomes clear that suit is inevitable, and when an actual case or controversy exists between the parties, based upon the totality of the circumstances.  Assuming Gaye's family asserted a clear claim of copyright infringement and demanded a royalty, and assuming that no ongoing discussions were occurring, Thicke may have been entitled to file a preemptive suit first.

Procedural wrangling aside, in any event, the underlying legal test remains the same. Did Thicke and his co-authors cross the line from inspiration to infringement?

Ironically, that line is rather blurry in this instance.

Sampling an identifiable and substantial portion of Gaye's song would likely lead to a finding of copyright infringement. Thicke has (so far) expressly denied that any form of sampling whatsoever occurred, claiming that the similarities were from simply borrowing "commonplace musical elements."  That distinction is a matter of degree, and will depend upon a close comparison of the two songs.

Can a Valid Trademark Exist in Connection with the Illegal Drug Trade?

Washington State-based Diego Pellicer claims to be the first retail brand in the United States focused exclusively on "legal, premium marijuana for pleasure and creative pursuits."


On its website, Pellicer states:  "It is important for us to emphasize that everything we do, is and always will be, completely legal. While the federal government has not yet weighed in officially on how it will respond to Washington State’s Initiative 502, we are committed to building our business under the assumption that the federal government will permit us to operate in the states of Washington and Colorado, and eventually other states, as they adopt their own specific initiatives.  We believe the writing is on the wall that marijuana will become legal in the entirety of the US in the next decade or so."


However, Pellicer's trademark attorneys may have gone too far, at least if the U.S. Patent and Trademark Office has anything to say about it.

In a recent "Intent-to-Use" trademark application filed with the U.S. Patent and Trademark Office, Peter M. Lukevich, Esq. of Apex Juris PLLC, filed a sworn statement that Diego Pellicer has the bona fide intent to use the trademark "DOT BONG" in the next six months in interstate commerce, in connection with, among other things, "medicinal herb extracts" in International Class 5 and "retail store services featuring medicinal herb extracts, dried herbs, herbs for smoking, cigarette rolling papers, smoking pipes, lighters for smokers" in International Class 35.

The Trademark Examiner who was assigned to Pellicer's application has initially refused registration.  The Examiner cited various cases and laws providing that, to legally qualify for federal trademark/service mark registration, the use of the proposed mark in commerce must be lawful, and that any goods or services to which the mark is applied must comply with all applicable federal laws.

The Examiner noted that the federal Controlled Substances Act ("CSA") expressly prohibits, among other things, manufacturing, distributing, dispensing, or possessing certain controlled substances, including marijuana and marijuana-based preparations.

In addition, the CSA makes it unlawful to sell, offer for sale, or use any facility of interstate commerce to transport drug paraphernalia, i.e., “any equipment, product, or material of any kind which is primarily intended or designed for use in manufacturing, compounding, converting, concealing, producing, processing, preparing, injecting, ingesting, inhaling, or otherwise introducing into the human body a controlled substance, possession of which is unlawful under [the CSA].”  21 U.S.C. § 863.

Therefore, the Trademark Office initially concluded that, because Pellicer's goods and/or services appear to be expressly prohibited by federal narcotics laws, the applied-for mark, as it is apparently intended to be used, would not be a lawful use in interstate commerce.

When we spoke with Pellicer's lawyer by telephone today, he noted that there are medicinal herb extracts other than illegal narcotics that could conceivably fall within Class 5. The Examiner had cited Pellicer's rather extensive website discussing the company's affinity for, and advocacy of, marijuana.  It is yet to be seen if the Examiner becomes convinced otherwise.

Furthermore, Pellicer's lawyer notes that there are discussions underway between Attorney General Eric Holder and the States of Washington and Colorado regarding how the federal authorities plan on handling the states' respective initiatives to legalize marijuana.  

Notwithstanding these ongoing negotiations, it appears relatively unlikely that the entire United States would witness a complete reversal of the decades-old policies criminalizing marijuana in the next six (6) months.

There is sketchy precedent for the issuance of trademark registrations on otherwise banned narcotics, and those precedents were short-lived. In 2005, the Trademark Office issued a registration for "MAUI WOWIE" in connection with a variety of "smoking articles" in Class 34.

However, in 2012, that trademark registration was apparently cancelled after the Registrant did not file an acceptable statement of use. 

It is worth noting that in 2005, the Trademark Office had apparently accepted a specimen of the applicant's use that looks like a medicinal herb prohibited by the CSA.

Tory Burch Gets Tough On Fakes

Today, Tory Burch got tough on fakes. The designer's company filed four new lawsuits against companies allegedly dealing in counterfeit Tory Burch products.  

WWD reports that four cases all deal with manufacturers and wholesalers of jewelry featuring hardware identical to the brand’s trademarked “TT” logo. 

Their legal team described the four cases as separate but “interconnected”, and chief legal officer Robert Isen emphasized that the designer has “long been vigilant in defending [its] intellectual property, and will continue to take counterfeiting and copyright infringement seriously.”

In all four cases, Burch is seeking “unspecified damages and injunctive relief.”  In other cases previously filed by Tory Burch, the defendants were cybersquatters, primarily based in China, and (as in most cases like it) only a portion of the damages were recovered by seizing PayPal accounts and other assets.

This time, the defendants include a California boutique, two New York-based companies, and a Chinese company with a New York showroom and frequent tradeshow presence, the latter of whom showed the spurious goods to a private investigator.

Online Currency Exchange Indicted By Feds for Laundering Over $6B

The operators of a global currency exchange ran a multi-billion money-laundering operation online, an Internet hub for criminals trafficking in everything from stolen identities to child pornography, federal prosecutors in New York announced today when an indictment was unsealed in federal court.

Liberty Reserve, the currency exchange, allegedly operated beyond United States and international banking regulations in what prosecutors call a shadowy netherworld of virtually anonymous cyberfinance.

Liberty Reserve traded in "virtual currency," and provided anonymous and accessible banking services increasingly sought by criminal networks, including counterfeiters, law enforcement officials claimed.

The charges were announced at a news conference by Preet Bharara, the United States Attorney for the Southern District of New York.  The charges detailed a complicated system designed to allow people to move sums of money around the world with virtual anonymity, according to an indictment, which was unsealed in federal court in Manhattan today.

Over a seven year period, Liberty Reserve was allegedly responsible for laundering billions of dollars, having conducted over 55 million transactions that involved customers all over the world, including more than 200,000 in the United States, according to federal prosecutors.

Just as PayPal revolutionized how people shop online, Liberty Reserve sought to create a similarly convenient way for criminals to make financial transactions, law enforcement officials explained.

“As alleged, the only liberty that Liberty Reserve gave many of its users was the freedom to commit crimes — the coin of its realm was anonymity, and it became a popular hub for fraudsters, hackers and traffickers,” Mr. Bharara said at the news conference. 

“The global enforcement action we announce today is an important step toward reining in the ‘Wild West’ of illicit Internet banking. As crime goes increasingly global, the long arm of the law has to get even longer, and in this case, it encircled the earth.”

Liberty Reserve was incorporated in Costa Rica in 2006 by Arthur Budovsky, who renounced his United States citizenship in 2011, and was arrested in Spain on Friday. He was among seven people charged in the case; five of them were under arrest, while two remained at large in Costa Rica.

In addition to the criminal charges, five domain names were seized, including the one used by Liberty Reserve. Officials also seized or restricted the activity of 45 bank accounts.

Prosecutors cited “blatantly criminal monikers” used by Liberty Reserve clients, like “Russia Hackers.” Essentially, all a customer needed to open an account was an e-mail address.

While Liberty Reserve was incorporated outside the United States, federal officials used a provision in the Patriot Act to target the organization and other financial institutions with whom they conducted business. It was the first time the provision had been used to prosecute a virtual currency provider.

Liberty Reserve did not take or make cash payments directly and instead used “third-party ‘exchangers,’ ” according to the indictment. These exchangers would take and make payments, and then credit or debit the Liberty Reserve account, allowing Liberty Reserve to avoid collecting any banking information on its clients and not leave a “centralized financial paper trail,” the indictment also said.

The exchangers, the indictment said, “tended to be unlicensed money-transmitting businesses without significant government oversight or regulation, concentrated in Malaysia, Russia, Nigeria and Vietnam.”

The people who accepted Liberty Reserve’s currency were “overwhelmingly criminal in nature,” according to the indictment.

“They included, for example: traffickers of stolen credit card data and personal identity information; peddlers of various types of online Ponzi and get-rich-quick schemes; computer hackers for hire; unregulated gambling enterprises; and underground drug-dealing Web sites,” according to the indictment.

Online Electric Car Sales May Be Banned in North Carolina: Consumer Protection or Corporate Protectionism?

Tesla Motors Headquarters in Silicon Valley
/ Wikimedia Commons

Fox News is reporting that an effort is underway in the North Carolina legislature to effectively prohibit the Palo Alto, California-based Tesla Motors car company from directly selling its popular electric cars online to consumers located within the Tarheel state.

Consumer protection is the ostensible rationale offered by the state's legislators who have introduced a bill that would effectively require that a franchised local dealership actually sell the electric cars to consumers.

Tesla's Roadster / Wikimedia Commons

Tesla is known for setting up showrooms that display and allow inspection of the sample electric cars, but the actual sale of the car is transacted entirely online.  By cutting out the franchised dealer as the "middleman," Tesla effectively removes local dealerships from the process.  Reportedly, as many as 80 Tesla electric cars have already been sold to North Carolina residents.

Tesla says that its time-intensive customer service model just won't translate well to franchised dealers, and that most consumers would laugh at the notion that they're better served by the existing system, which requires an unnecessary local transaction. Tesla said the dealers' true interest is maintaining total control over the retail auto industry.

Experts note that Tesla could try to lobby for a federal law or seek a ruling from federal courts that would apply across the U.S. That strategy could include making a case based on the U.S. Constitution's Commerce Clause, which says only Congress can regulate interstate commerce.  Courts have also held that the Constitution forbids localities from discriminating against out-of-state companies, solely to protect locals.

However, the car company would need to prove that the legislature was targeting it specifically when it passes the proposed law, and that the consumer protection rationale is a pretext.