In a case filed by the copyright owner (Solid Oak Sketches LLC) against the NBA2k video game maker (Take Two Interactive), the issue is whether NBA players, including Lebron James, can license the image of their own tattoos.  In this digital age, video games such as NBA2K depict lifelike avatars of fans’ favorite professional sports players, complete with mirror image recreations of those players’ physical characteristics, including tattoos.  For Lebron James’ NBA2K avatar, this means that tattoos depicting the phrase “Hold My Own” on James’ left bicep, as well as the “330 Area Code” on his right forearm, are clearly visible and used throughout the video game, triggering the infringement claim.

On one side of the coin, Solid Oak claims that because the actual tattoo artists sold it the copyright to the underlying images, only Solid Oaks owns the rights to reproduce and publicly display those tattooed images, which were infringed by the video game maker.  On the flip side, Take Two asserts that Lebron James (through the NBA), allowed it to use his image, name, and likeness in the NBA2k video game, which necessarily included the subject tattoos.  Take Two also claimed that its depiction of the tattooed images were otherwise protected under the fair use doctrine.  Solid Oaks recently survived Take Two’s motion to dismiss, and future rulings in the case could have significant implications on the NBA and its players, video game companies, and tattoo artists who create the underlying images.  The lawsuit is proceeding before United States District Judge Laura Swain in the Southern District of New York.

Cartier's "LOVE" bracelets, designed in the 1960's, have acheived some reknown due to the locking mechanism that can only be opened with a screwdriver. While Cartier has had success in certain countries protecting the overall look of the bracelet itself, the Intellectual Property Office of Singapore has determined that Cartier can not excercise trademark rights over the word "LOVE." 

Last year, Cartier opposed a trademark application to register the slogan "LOVE GOLD" as a trademark in Singapore. While Cartier owns registrations for its stylized variation of "LOVE," which includes a horizontal line through the "O" to mimic the appearance of the screws adorning its bracelet, the Intellectual Property Office of Singapore has apparently determined that these rights do not extend to the word itself. The opinion states, "'[l]ove' is a word which is commonly used by jewelry traders and should not be monopolized by any trader....The word 'love,' however, should be free for traders to incorporate into their trademarks for jewelry." 

Wednesday, 02 January 2019 21:27

Nirvana Sues Over Smiley Face

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Nirvana L.L.C. has brought suit in the U.S. District Court for the Central District of California against clothing designer Marc Jacobs International, Saks Fifth Avenue, and Neiman Marcus, along with a number of unidentified “Does” over use of the well-known smiley face logo allegedly created by the late Kurt Cobain in 1991. A copy of the Complaint can be found here.

Smiley Tees - Copy

Nirvana L.L.C. includes surviving band members Dave Grohl and Krist Novoselic, and the Kurt Cobain Estate controlled by his widow, Courtney Love.

The Complaint includes counts for Copyright Infringement and False Designation of Origin under the Lanham Act, as well as Trademark Infringement and Unfair Completion under California Common Law based on Marc Jacobs’ “Bootleg Redux Grunge” collection of clothing. For further information, see here.

It will be interesting to see the extent of protection which might be afforded to something as simple as a smiley face. :) 

At issue in the case of Levi Strauss & Co. v. Yves Saint Laurent America, Inc., recently filed in the Northern District of California, is whether Levi’s trademark rights preclude jean manufacturers from stitching a label onto the vertical seam of the jean’s back pocket.  Levi’s claims that its “Tab Trademark” does in fact prohibit such copying (and seemingly regardless of where the tab is placed).  As shown in side-by-side comparison pictures displayed in the complaint, the Levi’s tab is sewn on the left side of the back-right jean pocket, whereas the Yves Saint Laurent (“YSL”) tab is stitched onto the right side of the back-right jean pocket.  See p. 5 at  https://www.scribd.com/document/393676941/Levi-Strauss-v-Yves-Saint-Laurent.  Nevertheless, and despite the generally large disparity in price points between Levi’s and YSL denim, Levi’s alleges that the YSL tab is likely to confuse consumers about the sources of YSL’s products and/or a relationship between YSL and Levi’s. 

In a constantly evolving market and with millions of dollars in play, Levi’s is no stranger to enforcing its intellectual property rights through litigation.  In fact, Levi’s has consistently bumped heads with jeans manufacturers in the past (approximately 100 lawsuits since 2001), alleging infringement either based on the display of a “tag” stitched to a back pocket, or copying Levi’s signature design (two intersecting arcs stitched into the back pockets).  As the denim giant attempts to prove that it owns a monopoly on tabs stitched onto jean back pockets, one of the ultimate questions will be whether the consuming public views the tag as a source identifier, such that it solely relates to Levi’s. 

Monday, 10 December 2018 16:16

When is an invention "on sale?"

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The Supreme Court is currently posed with the question: Does the confidential sale of an invention disqualify that invention from later patenting? Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 138 S.Ct. 2678 (2018).

The patent statute does not directly address this question, but does state that an invention is precluded from patenting if that invention was “on sale” or “in public use” prior to the filing date for that patent application. Years of case law have added to the meanings of these terms. But now there is an additional term, “or otherwise available to the public.”  35 U.S.C. § 102(a)(1).  Under which circumstances does this new term preclude patenting? Circumstances that are applicable to the certified question for the Court?

The Supreme Court has previously ruled that public use of an invention will not preclude patenting if the public use is for experimentation.  Pfaff v. Wells Elecs., 525 U.S. 55, (1998).  That Court qualified the statutory language, reading in the experimentation use.  But that Court did not rule on the “on sale” criteria except to identify a distinction between experimental use and “products sold commercially.” Is there a similar qualification of a commercial sale, supported by precedent and legislative history, that can exempt a confidential sale from being barred from patenting?

And where would “otherwise available to the public” fit in here? Does “otherwise” mean that the previous items in the list, such as “on sale,” are also to be understood as “available to the public?” Or is it a modern catch-all for new patentability conditions that were not contemplated when the provision was written in 1952?

Based upon certain criteria including win rate and the time involved to get to trial, a 2018 study by PricewaterhouseCoopers (“PWC”) suggests that patent owners seeking to enforce their rights should file suit either in the Middle District of Florida (encompassing Jacksonville, Ocala, Orlando, Tampa, and Fort Myers), or the Southern District of Florida (which includes the South Florida metropolitan areas of West Palm Beach, Fort Lauderdale, Miami, and the Florida Keys).  Breaking down those factors using case studies and empirical data, PWC found that a patent owner who tried their case in the Middle District of Florida had a remarkable 50% statistical likelihood of prevailing (ranked 2nd in the United States), with the Southern District of Florida not too far behind (ranked 8th in the country).  In terms of the amount of time it took to get to trial –a significant factor in terms of the overall costs and expenses involved for the patent holder – cases brought in the Middle District of Florida were tried in 1.9 years (3nd in the United States), whereas lawsuits filed in the Southern District were tried in 2.1 years (6th in the United States).  Averaging all of the other underlying criteria involved, the PWC survey found that the Middle District of Florida had an “overall rank” of 6th in the entire United States, with the Southern District of Florida closing the gap at 11th in the country. 

Having focused its practice exclusively on patent law and other intellectual property areas since 1959, Malloy & Malloy, P.L. can assist you in filing a patent application or otherwise enforcing your rights, if necessary, through the litigation process.  Malloy & Malloy has an office in Jacksonville, Florida overseen by firm partner, Jennie S. Malloy, as well as offices in South Florida.  Please click the following for full contact information:   https://malloylaw.com/contact

Link to PWC study:   http://www.ipwatchdog.com/wp-content/uploads/2017/05/2017-Patent-Litigation-Study_PwC.pdf

The United States-Mexico-Canada Agreement, which will take effect after being passed into law and signed by each country, is intended to replace the North American Free Trade Agreement, and includes a wide range of provisions. With respect to intellectual property, two notable provisions are Canada's agreement to increase the term of protection for both copyrights and "biologics" -- new pharmaceuticals derived from biological sources. 

Today the Supreme Court agreed to hear a case concerning how costs are awarded under the Copyright Act.  The Copyright Act provides that a court “in its discretion may allow the recovery of full costs” to a prevailing party under 17 U.S.C. § 505.  Currently, there is a circuit split over what costs are recoverable.  The U.S. Courts of Appeals for the Eighth and Eleventh Circuits have held that the Copyright Act’s allowance of “full costs” is limited to taxable costs under 28 U.S.C. §§ 1920 and 1821.  On the other hand, the U.S. Court of Appeals for the Ninth Circuit has held that the Copyright Act also authorizes non-taxable costs.

The case is Rimini Street Inc. v. Oracle USA Inc., 17-1625, out of the Ninth Circuit.

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