Protection. Hot Issues in IP. Presented by: Steve Wadyka. September 11, 2018 Stockholm, Sweden

Transcription

1 Hot Issues in IP Protection September 11, 2018 Stockholm, Sweden Presented by: Steve Wadyka G R E E N B E R G T R A U R I G, L L P A T T O R N E Y S A T L A W W W W. G T L A W. C O M

2 Love Made LLC, v. Victoria s Secret Stores, Inc. Love Made, an all-female fashion and lifestyle brand that has achieved success and acclaim, alleges in its trademark and copyright infringement suit that it has been using the Love Made Me Do It trademarks since It has a trademark registration for Love Made Me Do It for use on Baby bodysuits; Baby bottoms; Baby tops; Hats; Bottoms; Hoods; Jackets; Jerseys; Sports caps and hats; Stocking hats; Tops since December Victoria s Secret allegedly uses Love Made Me Do It on tote bags and promotional items as a source identifier in promotional efforts for a new fragrance. Love Made claims this is a source identifier. 2

3 Love Made LLC, v. Victoria s Secret Stores, Inc. The use of big, bold letters on the front of a shirt is considered merely ornamental use, rather than use as a trademark. But there's a fairly easy workaround for this: the producer can also print the phrase on a tag inside the shirt, and that qualifies as trademark use, as Love Made has done. VS Defense: Since it would be difficult for Love Made to establish strong trademark rights if it is using the trademark in a decorative way, VS claims it is also using it as an ornamental use, therefore arguing that it is making fair descriptive use of the term. TO BE DECIDED 3

4 Can Celebrities Post Photos of Themselves on Instagram? 4

5 Maybe not! It Could Be Copyright Infringement. A London-based celebrity photo firm sued Khloe Kardashian for copyright infringement for posting photo of herself without licensing the photo from Xposure, the copyright holder Photo was licensed for limited use to The Daily Mail and displayed copyright notice Khloe posted photo on her Instagram account and removed the copyright notice The photo was highly valuable due in part to Khloe s celebrity status 5

6 Unless You Own the Copyright, You Can t Use the Photo Without Permission It is not sufficient simply to give credit to the photographer or copyright holder Khloe now licenses the photos of herself that she posts on Instagram Fan accounts are being disabled by Instagram due to copyright violations Can fan accounts claim fair use? Probably not. Applies to criticism, comment, news reporting, teaching, scholarship, and research Non-profit educational and non-commercial uses 6

7 The Right of Publicity A person (does not need to be a celebrity) owns the right to commercially exploit his or her name and likeness Gives individuals the ability to prevent others from exploitng their name and/or likeness without permission 7

8 The Best Defense is a Good Offense! 8

9 Odell Beckham v. Splash News and Picture Agency Beckham sued Splash News and photographer for violating his right of publicity exploiting his image for financial gain Claims they attempted to extort him to pay USD 40,000 after he posted photo of himself on his Instagram account The only reason that the photos have any value is because they depict Beckham Suit is pending Outcome uncertain due to newsworthiness and public interest, and that Beckham benefits from paparazzi coverage 9

10 Lululemon case Lululemon applied to register its yoga mat shape as a trademark Lululemon argued that its single rounded corner was distinctive of its brand of yoga mat. Lululemon submitted evidence of tremendous sales, high product ratings, and substantial advertising expenditures. The TTAB (Trademark Trial and Appeal Board) said there was inadequate evidence that the single rounded corner was distinctive 10

11 Lululemon case TTAB found that such evidence was more indicative of the mats popularity than the customer association of the one rounded corner with the Lululemon brand The comment was that the company did not use look for advertising Look for advertising which directs the consumer in no uncertain terms to look for a certain feature to know that it is from that source. This will created a level of consumer recognition of the product feature with the brand. 11

12 Questions? 12