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New York Governor Signs Bill Establishing Post-Mortem Publicity Rights

Earlier this month, New York Governor Andrew Cuomo signed a bill establishing post-mortem “Rights of Publicity.” This bill protects deceased individuals from commercial exploitation, or unauthorized use, of their well-known and recognized personal characteristics. This bill protects actors, singers, dancers, musical instrument players, and other performers who lived in New York when they passed away. Additionally, the estate of these individuals can also exercise these rights to protect the likeness of those deceased.1  

The right of publicity is an intellectual property right which protects against the misappropriation of a person’s name, likeness, or other indicia of personal identity, such as, nickname, voice, signature, photograph, likeness, for commercial advantage.2 While no federal statute or case law recognizes the right of publicity in the United States, a majority of states do recognize this right by statute or case law. For example, the state of Florida also recognizes a post-mortem right of publicity for a term of 40 years after death of an individual.3

1. S5959D /A.5605-C,  https://legislation.nysenate.gov/pdf/bills/2019/S5959D. This bill also created new penalities for publishing sexually explicit depictions o individuals, protecting people from revenge porn and “deep fakes” (synthetic media increasingly used in the digital age to create images of fake events).   https://www.governor.ny.gov/news/governor-cuomo-signs-legislation-establishing-right-publicity-deceased-individuals-protect.

 2. https://www.inta.org/topics/right-of-publicity/.

3. Fla. Stat, § 540.08.

Game Time: LeBron James v. Carnival’s “King James” Trademark Application

On November 18, LeBron James, the famous professional Basketball legend who is a key star player for the LA Lakers (and previously the Cleavland Caveliers and Miami Heat), filed a Notice of Opposition at the USPTO Trademark Trial and Appeal Board against Carnival’s “KING JAMES” mark.

 

Why would LeBron James file this opposition for a mark used in connection with “cruise ship services” and filed last year?  Perhaps because the mark is also in connection with Class 41 services: “providing sports facilities; organizing of sports competitions and sports events; providing facilities for recreational activities; . . . providing facilities for recreation” and Class 35 identification: “sport bags, gym bags, sports bags, . . . gymnastics and sporting articles.”  See U.S. Trademark Application No. 88/588,812. 

 

LeBron James’s Complaint has two causes of actions: (1) “False Suggestion of Connection with LeBron James” and (2) “Trademark Consist of a Name Identifying a Living Individual.”  LeBron James alleges that “”King James” has been a well-known nickname of LeBron James for many years, well preceding the date Applicant filed its application. The media and basketball fans consistently refer to LeBron James as “King James”, and LeBron James’ Twitter handle is actually @KingJames. King James has therefore become a popular nickname of LeBron James, and is used interchangeably with LeBron Jame.”  See Opposition No. 91266024 [TTABVUE 1].  It is worth noting that LeBron James does not currently hold a U.S. Trademark Registration for “KING JAMES.” 

On November 26, Carnival withdrew its Application for “KING JAMES” “with prejudice.” This means that Carnival will not be allowed to refile an application for the mark “KING JAMES” in the future.  See Opposition No. 91266024 [TTABVUE 4]. 

Happy Holidays from Congress: Trademark Modernization Act of 2020

On December 21, 2020, Congress passed a $900 billion pandemic relief and government funding package. In the over 5,500-page bill, the lawmakers included the Trademark Modernization Act of 2020 (“TM Act of 2020” or “TMA”)1. On December 27, 2020, the TMA became law, effective a year from the date of the President’s signature. Some of the changes and/or additions are discussed below.
 
Particularly, the TMA clarified and created a uniform standard for obtaining injunctive relief in litigation under the Lanham Act: “A plaintiff seeking any such injunction shall be entitled to a rebuttable presumption of irreparable harm upon a finding of a violation identified in this subsection in the case of a motion for a permanent injunction or upon a finding of likelihood of success on the merits for a violation identified in this subsection in the case of a motion for a preliminary injunction or temporary restraining order.”  Further, the TMA authorized the UPSTO to shorten office action response periods, by regulation, from 6 months to a time period between 60 days and 6 months. Applicants may request extensions of time to reply or amend “aggregating six months from the date of notification,” if the request is filed on or before the date on which a reply or amendment is due. The TMA also created a new mechanism to allow individuals to file petitions to expunge2 or re-examine3 trademark registrations based on an argument that the mark is not currently or has has never been used in commerce in connection with the identification of goods and/or services. The TMA codified the existing letter of protest procedure, permitting third-parties to submit evidence bearing on the registrability of an applied-for mark.  Under this act, the USPTO Director will have two months to review the evidence and determine whether evidence should be included in the record of the applicationFinally, the TMA authorized the USPTO Director to reconsider, modify, or set aside certain decisions made by the Trademark Trial and Appeal Board.
 
1. See H.R. 6196; S. 3449.
2. A registration may be challenged through the expungement proceeding within 3 and 10 years of the registration date. 
3. A registration may be challenged through the reexamination proceeding within 5 years of the registration date.
Sweet and Sour: King’s Hawaiian Bread Co. Sues Over Trade Dress Infringement

Sweet and Sour: King’s Hawaiian Bread Co. Sues Over Trade Dress Infringement

Earlier this month in the U.S. District Court Southern District of Texas (Houston Division), King’s Hawaiian Bread Co., known for its sweet bread rolls wrapped in an orange packaging with a clear window on the front, brought suit against Harlan Bakeries LLC and Southern Bakeries LLC. King’s Hawaiian Bread Co. brought the following causes of action (I) Federal Trade Dress Infringement, due to the respondent’s deceptively similar packaging for its sweet bread rolls; (II) Federal False Designation of Origin and Unfair Competition; (III) State Common Law Trade Dress Infringement; (IV) State Common Law Unfair Competition; and (V) State Common Law Misappropriation.

 

In its complaint, King’s Hawaiian Bread Co. alleged it first started selling sweet rolls and other baked goods in the 1950s in Hilo, Hawaii. King’s Hawaiian Bread Co. further alleged that the first 12-pack of Original Hawaiian Sweet Rolls was introduced in 1983, and that the Packaging Trade Dress (seen below) has been used since at least the early 1980s. King’s Hawaiian Bread Co. described its sweet roll packaging trade dress as follows: (1) the prominent use of the color orange; (2) on the front of the package a clear window, with the color orange as the primary element around such clear window; (3) within the window, a light-colored element with contrasting writing; and (4) on the light-colored element, no word appears in larger font than the word “Hawaiian.” 

 

 

See King’s Hawaiian Holding Co. Inc. et al. v. Southern Bakeries LLC et al., Case No. 4:20-cv-04283.