On July 12, Sacha Baron Cohen (“SBC”)—English actor and comedian known best for his roles as Brüno Gehard, Admiral General Aladeen, Ali G, and Borat Sagdiyev—and his company, Please You Can Touch, LLC (“PYCT”) filed suit against Edward Dow III and Solar Therapeutics, Inc. (collectively, the “Defendants”) for, inter alia, copyright infringement of PYCT’s copyright of the Borat character. Specifically, the complaint alleges that Defendants’ use of a billboard with the “portrait, picture, image, likeness, and persona” of SBC and his famous character Borat Sagdiyev was unauthorized and done intentionally to cash in on the character’s fame and falsely represent that SBC had endorsed Defendants’ cannabis products.
The lawsuit was filed almost three months after SBC’s attorneys sent a cease-and-desist letter to Defendants, who promptly took down the billboard. In addition to seeking a permanent injunction enjoining Defendants from using SBC’s “portrait, picture, images, likeness, [and] persona,” the complaint requests relief by way of trebled statutory damages, actual and punitive damages, and disgorgement of profits attributable to the allegedly infringing billboard.
Solar Therapeutics’ Billboard
The case is Cohen v. Solar Therapeutics, Inc. and is pending in the United States District Court for the District of Massachusetts. The image above is provided by SBC in the complaint, which can be found at the following link: https://storage.courtlistener.com/recap/gov.uscourts.mad.236304/gov.uscourts.mad.236304.1.0.pdf
On April 22nd, Black Spot LLC—an entity doing business as The Kraken Bar & Lounge (“The Kraken Bar”) in Washington—filed a complaint in King County Superior Court against Seattle Hockey Partners LLC (“SHP”)—owners of the newest National Hockey League (“NHL”) franchise, the Seattle Kraken—for, inter alia, trademark infringement of its name and marks.
The Kraken Bar decided to file suit after it became aware of SHP’s announcement that it would be opening “The Kraken Bar & Grill,” a 4,600 square foot restaurant which will reside about three miles away from The Kraken Bar & Lounge and directly adjacent to SHP’s training facility.
In its complaint, The Kraken Bar, owners and operators of the popular Seattle University District dive bar established in 2011, argued that the official reveal of the Seattle Kraken in July 2020 has led to and will continue to lead to actual confusion on behalf of customers, who have and will genuinely believe that The Kraken Bar is associated with SHP. Although its marks are not registered with the U.S. Patent and Trademark Office (“USPTO”), The Kraken Bar argued its marks “are entitled to protection because they are inherently distinctive of The Kraken Bar’s goods and services and because they were used by The Kraken Bar before SHP adopted [its] confusingly similar name in July 2020."
Logo for the Seattle Kraken
The present case is Black Spot LLC v. Seattle Hockey Partners LLC in the Superior Court of the State of Washington. The complaint can be found at the following link: https://www.scribd.com/document/504283199/Complaint#from_embed
Donald Glover—also known by his stage name “Childish Gambino”—is an award-winning actor, director, rapper, and writer whose most recent claim to fame is his award-winning song “This is America.” The song was a standout during the 2019 award season, where it secured four Grammy Awards, including awards for both Song and Record of the Year.
On May 6, 2021, Plaintiff, Emelike Nwosuocha, a rapper who goes by the name “Kidd Wes,” filed suit against Donald Glover, some of his collaborators, and multiple corporations in the music industry for copyright infringement of the Plaintiff’s copyrighted song “Made in America.” Specifically, the Plaintiff alleged in its complaint that, inter alia, Glover’s “This is America” shares “substantial similarities [with “Made in America”] includ[ing] . . . nearly-identical unique rhythmic, lyrical, and thematic compositional and performance content contained in the chorus – or “hook” – sections that are the centerpieces of both songs.”
The present case is Nwosuocha v. Glover et al. (Case No. 1:21-CV-04047-VM) in the United States District Court for the Southern District of New York. The complaint can be found at the following link: https://www.digitalmusicnews.com/wp-content/uploads/2021/05/childish-gambino-this-is-america-complaint-donald-glover.pdf
On May 3rd, Wm. Wrigley Jr. Company (“Wrigley”)—owner of popular candy brands Life Savers, Skittles, and Starburst—filed a trio of complaints in federal courts against Terphogz, LLC (“Terphogz”), Packaging Papi, LLC, and 2020Ediblez—producers and/or distributors of cannabis products that allegedly mimic the packaging of Wrigley’s brands—for, inter alia, trademark infringement of its protected marks.
One of the three cases, Wm. Wrigley, Jr., Co. v. Terphogz, LLC, specifically named Terphogz as manufacturer and seller of a variety of cannabis products under the brand name “ZKITTLEZ” and the slogan “Taste the Z Train Bro.” In the official complaint (“Complaint”), Wrigley alleged that by slightly modifying its protected marks “SKITTLES” and “TASTE THE RAINBOW” (among others), Terphogz was able to cash in on the reputation of the Skittles brand and command a 20% premium in the cannabis market for its Zkittlez goods.
In a statement made after filing the complaints, a representative for Mars, Inc. (Wrigley’s parent company) said the lawsuits are “intended to stop the illegal and dangerous misuse of [Wrigley’s] world-famous trademarks in the marketing and sale of THC-infused edibles, which resemble Mars Wrigley's genuine products such as Skittles and Starburst.” THC (tetrahydrocannabinol) is the psychoactive component of cannabis, a schedule I drug as defined by the Food and Drug Administration (“FDA”) and Drug Enforcement Administration (“DEA”) under the Controlled Substances Act.
The case is Wm. Wrigley, Jr., Co. v. Terphogz, LLC (Case No. 21-CV-2357) in the United States District Court for the Northern District of Illinois, Eastern Division. The images above are provided by Wrigley in the Complaint, which can be found at the following link: https://www.docketalarm.com/cases/Illinois_Northern_District_Court/1--21-cv-02357/WM._Wrigley_Jr._Company_v._Terphogz_LLC_et_al/1/
Last month, Walmart Apollo, LLC (“Walmart”) filed a Notice of Opposition (“Notice”) at the U.S. Patent and Trademark Office (“USPTO”) against Yeezy, LLC (“Yeezy”), famed producer and rapper Kanye Omari West’s fashion brand, on the basis of, inter alia, a likelihood of confusion between Yeezy’s applied-for mark (“Applicant’s Mark”) and Walmart’s registered “spark” mark (“Protected Mark”). Walmart argued that its consumers would likely be confused as to the source or origin of Yeezy’s goods or services when viewing Applicant’s Mark, and this confusion would thus damage Walmart and any goodwill contained within its Protected Mark.
In the summer of 2020—almost a year before Walmart filed its Notice and only months after Yeezy had filed its intent to use application—and again in the early months of 2021, Walmart’s representatives reached out to Yeezy regarding the prospective issue, but the corporation claims it did not receive enough useful feedback to refrain from filing its Notice. Walmart, who has been using its Protected Mark since 2007, “remain[s] hopeful [that it will] . . . hav[e] productive discussions [with Yeezy] around Yeezy’s proposed use of” Applicant’s Mark. Yeezy, recently valued somewhere between $3.2 billion and $4.7 billion and solely owned by Kanye West, has not yet issued a statement.
The images above are provided in Walmart’s Notice filed with the USPTO on April 21, 2021. The Notice can be found at the following link: https://ttabvue.uspto.gov/ttabvue/v?pno=91268856&pty=OPP&eno=1
In 2016, Deckers Outdoor Corporation (“Deckers”), owner of the registered “UGG AUSTRALIA” mark since 1995 and holder of said mark in over 130 countries, brought a trademark infringement suit against a boot-making company based in Australia, Australian Leather Pty. Ltd. (“Australian Leather”), for selling thirteen pairs of so-called “ugg boots” through its website.
In responding to the infringement suit, Australian Leather decided to base its defense on arguing for the genericism of the term “ugg.” This argument stemmed from Australian culture, which has broadly used “ugg” to describe sheepskin-lined boots since the 1930s and whose surfers popularized the clothing item in the 1960s—nearly twenty years prior to Australian entrepreneur Brian Smith using the term as part of his American-based brand in the 1980s. Although unpersuasive to the court, Australian Leather further argued both that the term “ugg” deserved similar protection to the French term “champagne” and that prior to the registration of the “UGG AUSTRALIA” mark, the term “ugg” was used in a generic manner in the United States. As a result, the district court ruled in favor of Deckers—ordering Australian Leather to pay $450,000 in damages—finding that the doctrine of foreign equivalents did not apply and that the genericism of “ugg” in Australia did not support the notion that the term would have the same meaning in the United States. After the ruling was handed down, Australian Leather decided to appeal.
On May 7, 2021, the United States Court of Appeals for the Federal Circuit affirmed the district court’s decision. In doing so, the court declined to give any reasons for affirming the decision and instead implicitly chose to rely on the analysis provided by the lower court. In a conversation shortly after the May 7decision, Australian Leather’s owner Eddie Oygur announced that he has plans to appeal the decision to the U.S. Supreme Court.
The decision is Deckers Outdoor Corp. v. Australian Leather Pty Ltd. (Case No. 2020-2166) in the United States Court of Appeals for the Federal Circuit. The opinion can be found at the following link: http://www.cafc.uscourts.gov/sites/default/files/opinions-orders/20-2166.RULE_36_JUDGMENT.5-7-2021_1774612.pdf. The lower court decision is Deckers Outdoor Corp. v. Australian Leather Pty Ltd. (340 F. Supp. 3d 706) in the United States District Court for the Northern District of Illinois, Eastern Division. The opinion can be found at the following link: https://www.govinfo.gov/content/pkg/USCOURTS-ilnd-1_16-cv-03676/pdf/USCOURTS-ilnd-1_16-cv-03676-1.pdf.
Last month, the United States Patent and Trademark Office (“USPTO”) revealed it would be adding a new category to its Patents for Humanity Program (“Program”)—one that focuses on inventions relating to the ongoing COVID-19 pandemic. Specifically, the category seeks to include innovators who employ cutting edge technologies to “track, prevent, diagnose, or treat COVID-19.”
The Program is an awards competition that has existed since 2012 as the USPTO’s “top honor for patent applicants devising game-changing innovations to address long-standing development challenges.” Prior to the USPTO’s decision to add a category for inventions specifically relating to COVID-19, the Program encompassed five categories: medicine, nutrition, sanitation, household energy, and living standards. Winners of the Patents for Humanity Award receive public recognition of their work as well as a certificate entitling the winner to accelerate a single USPTO proceeding for an eligible matter—a patent application, an ex parte reexamination, or an ex parte appeal to the Patent Trial and Appeal Board (PTAB). With the enactment of the Patents for Humanity Program Improvement Act (“The Act”) on January 1, however, winners are now allowed to transfer these certificates to third parties and may do so for a profit.
As of April 5, the application period for the COVID-19 category of the Program officially opened. The Program is open to all types of licensees, patent applicants, and patent holders.
USPTO announces special Patents for Humanity COVID-19 category, United States Patent and Trademark Office ( https://www.uspto.gov/about-us/news-updates/uspto-announces-special-patents-humanity-covid-19-category) (Apr. 5, 2021).
Patents for Humanity, United States Patent and Trademark Office ( https://www.uspto.gov/ip-policy/patent-policy/patents-humanity).
In Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith (Case No. 19-2420), the United States Court of Appeals for the Second Circuit clarified how to determine whether a copyrightable work is “transformative” such that use of the work is deemed fair under the Copyright Act of 1976. The Second Circuit rejected the bright-line rule proposed by the district court that “any secondary work is necessarily transformative as a matter of law ‘[i]f looking at the works side-by-side, the secondary work has a different character, a new expression, and employs new aesthetics with [distinct] creative and communicative results.’” Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, No. 19-2420-cv, 2021 U.S. App. LEXIS 8806, at *17 (2d Cir. Mar. 26, 2021) (quoting Andy Warhol Found. for the Visual Arts, Inc. v. Goldsmith, 382 F. Supp. 3d at 325-26 (S.D.N.Y. 2019)).
In rejecting the district court’s proposed bright-line rule, the Second Circuit stated the analysis for transformative works in the context of fair use cannot simply rely on the “stated or perceived intent of the artist or the meaning or impression that a critic—or for that matter, a judge—draws from the work.” Warhol, 2021 U.S. App. LEXIS 8806, at *25. Instead, a judge must determine whether a secondary work “stands apart from the ‘raw material’ used to create it” by examining “whether the secondary work's use of its source material is in service of a "fundamentally different and new" artistic purpose and character . . . .” Id. at *26.
Additionally, the Second Circuit issued a warning to future courts, cautioning them not to “assume the role of art critic . . . to ascertain the intent behind or meaning of the works at issue” when engaging in fair use analyses. See id. at *25. With the case currently on remand, the district court will have another opportunity to determine whether the use of Goldsmith’s photograph in preparation of Andy Warhol’s Prince Series constitutes a fair use.
The images above are provided in the Complaint filed by The Andy Warhol Foundation for the Visual Arts, Inc. (“AWF”). The decision can be found at the following link: https://www.ca2.uscourts.gov/decisions/isysquery/68f30721-3c0f-4864-8d2c-e5186beae10b/2/doc/19-2420_complete_opn.pdf
On February 25, 2021, the United States Court of Appeals for the Sixth Circuit handed down a ruling that effectively clarified how the Lanham Act can be applied to direct infringement cases in the context of online marketplaces. In its decision, the Sixth Circuit broadened the scope of its test for direct infringement, holding “use in commerce,” a prerequisite for trademark infringement, can occur in its classic form—through actual product sales—and also through alternative forms such as distribution, advertisement, and the offering of a product for sale. See Ohio State Univ. v. Redbubble, Inc., No. 19-3388, 2021 U.S. App. LEXIS 5610, at *22-24 (6th Cir. Feb. 25, 2021).
The Sixth Circuit’s decision arose out of a March 2019 lawsuit where The Ohio State University (“OSU”) sued Redbubble, alleging, inter alia, Redbubble directly infringed on a number of OSU’s trademarks by selling a variety of products containing OSU’s iconic insignias and school mascot. Ohio State Univ. v. Redbubble, Inc., No. 2:17-cv-1092, 2019 U.S. Dist. LEXIS 53695, at *1 (S.D. Ohio Mar. 29, 2019). Redbubble, a so-called “print-on-demand” online marketplace whose products exhibit user-submitted designs, offers products ranging from tapestries to tank tops, from phone cases to couch cushions, and to many other items in between.
While other online global marketplaces, such as Amazon and eBay, have been able to avoid being held liable for direct trademark infringement due to their hands-off business approaches, the Sixth Circuit has left the door open for Redbubble to be liable for direct infringement due to the amount of oversight it exercises.
The case is Ohio State University v. Redbubble, Inc. (Case No. 19-3388) in the United States Court of Appeals for the Sixth Circuit. The decision can be found at the following link: https://www.opn.ca6.uscourts.gov/opinions.pdf/21a0050p-06.pdf