President Obama's "IP Czar" Steps Down After Four Successful Years

Victoria Espinel, President Obama's "IP Czar," has stepped down from her role four years after she was confirmed by the Senate as the U.S. intellectual property enforcement coordinator.

Until the President nominates a successor who is confirmed by the Senate, Howard Shelanski, the administrator of the office of information and regulatory affairs at the Office of Management and Budget, will serve as acting IP coordinator.

Espinel's position had been created by the Pro-IP Act, signed into law by President George W. Bush in 2008.  The position was intended to serve as a liaison and coordinator for the wide variety of federal, state and local agencies involved in intellectual property matters.  

Espinel's efforts to improve coordination of law enforcement efforts and private-public partnerships were uniformly lauded by stakeholders including the U.S. Chamber of Commerce, labor unions and consumer groups.  In the most recent 2013 Joint Strategic Plan on Intellectual Property Enforcement, Espinel had been a proponent of strengthening IP enforcement through international coordination and encouraging "best practices" by intermediaries such as search engines, advertisers and payment processors.

Chinese Car Company Seeks to Trademark "SNOWDEN"

HYLX, a small Chinese electric car technology company has reportedly submitted formal applications to register the name “SNOWDEN” as a commercial trademark in both Chinese and English language characters last week.

Zhu Hefeng, the company’s manager and the trademark applicant, reportedly said that he thought that "Snowden" would be the perfect name for the company’s new top secret technology that is currently in development and will, says the company, change the market for environmentally-friendly cars.  

No word from Edward Snowden on whether he will object to the trademark applications, but Snowden may have his hands full fighting America's intelligence establishment’s attempts to have him extradited to face trial for treason.

The article doesn't report on HYLX's efforts to register the trademark in the United States.  Snowden is already a federally registered trademark in the U.S. for wine.

"Pirate Joe": Innocent Victim or Trader Joe's Nemesis?

An interesting set of legal issues has emerged in a trademark case arising out of conduct occurring in Vancouver, British Columbia. The popular supermarket chain Trader Joe's Company apparently does not operate any retail stores in Canada, but has 390 grocery stores in 30 states, including 14 in the state of Washington.

Consequently, each week, current Vancouver/former San Francisco resident Michael Hallatt drives his van across the international border to Seattle, Washington to purchase several thousand dollars worth of genuine Trader Joe's merchandise.  He then drives back to Vancouver and resells the goods at his own shop "Pirate Joe's", for a profit.

Trader Joe's has now filed suit against Hallatt in federal district court in Seattle, claiming that his conduct amounts to trademark infringement and unfair competition with the supermarket chain there.

Hallatt's lawyer has moved to dismiss the complaint on the basis that the complained-of conduct is occurring entirely outside of the United States, is having no clear impact on U.S. commerce, and is therefore wholly outside of the U.S. federal courts' jurisdiction to regulate.

There are several quirky legal issues here.

Generally speaking, even conduct occurring outside the United States can have some effect on U.S. commerce, and could be lawfully regulated by federal courts.  For example, if some Vancouver residents were ordering online from Trader Joe's, but instead shop at Pirate Joe's, that allegation could have sufficient impact on the supermarket chain to sustain a possible cause of action for trademark infringement.  However, Trader Joe's website does not seem to offer any shipping options to British Columbia.  This threshold issue requires resolution.

Further, there may be an even deeper problem with Trader Joe's allegations of trademark infringement.

Typically, once an authentic item is sold for the first time, the intellectual property owner loses all right to control any further sale or redistribution of that item, regardless of whether the further sales occur within or outside of the U.S.

It is this "first sale" or "exhaustion" doctrine that permits both casual sellers on eBay or Craig's List, as well as secondhand antique shops and used car dealers to exist, without constant fear of being sued for patent, copyright or trademark infringement.

Since trademark laws exist primarily to protect the public from confusion, as long as the consumer is fully aware that he is not purchasing an original item from an authorized retailer, there is generally no trademark infringement or unfair competition occurring.  Hallatt noted in interviews that he posts large, conspicuous disclaimers so that customers in his store are aware that he is not operating a legitimate, authorized "Trader Joe's" establishment.

Matters get even more complicated once you add international borders to the mix.

Authentic items that are sold outside the United States and then imported for resale are often called "gray market" goods.  Gray market goods can present significant problems for those brand owners who have different quality control standards abroad as compared to the United States.  

For example, aspirin packaged and intended for sale in Mexico will be labeled differently (and may even have different dosages) than those bottles which are intended for U.S. markets.

When school text books were at issue, Justice Stephen Breyer writing for a 6-3 majority of the U.S. Supreme Court in March 2013, held that once the school textbooks were sold overseas, they were free and clear to be resold within the U.S., labeling notwithstanding.  This gray market would likely have an impact of lowering the prices of textbooks.

But here, the "gray market" is essentially operating in reverse:  Hallatt is traveling to the U.S. to purchase goods and reselling them in Canada, not vice versa.

In this context, even if Hallatt's sale of Trader Joe's goods to Vancouver residents could conceivably cause some kind of consumer confusion as to source, it is unclear how his conduct is having any appreciable impact on U.S. commerce, in light of the first sale doctrine.  

In other words, how is Trader Joe's actually injured if, instead of a Vancouver resident driving to Seattle, he instead essentially just pays a nominal fee to Hallatt to do it for him?  

In both cases, Trader Joe's is selling the same merchandise:  Hallatt is just an unauthorized middleman.  Assuming there is no confusion, Trader Joe's appears to be unharmed.

It will be very interesting to see how the district court in Seattle ultimately rules.

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.