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Shape of Dior’s Saddle Bag Denied Trademark Protection in the E.U.

This month, French luxury fashion house Christian Dior was denied trademark protection for the shape of its well-known “Saddle Bag” purse in the European Union. The Saddle Bag, which Dior originally debuted in its Spring/Summer 2000 collection, exploded in popularity after its re-release in 2018. The luxury community quickly dubbed the iconic bag a Dior classic, and it topped the list of hottest women’s fashion products in the third quarter of 2018.[1]

Nevertheless, the European Union Intellectual Property Office (“EUIPO”) refused to register the shape of the Saddle Bag as a trademark. In denying the application, the EUIPO stated that the mark “lack[s] distinctive character” and “does not, as a whole, deviate significantly from the norm or customs of the leather goods sector.”

 In the U.S. Patent and Trademark Office (“USPTO”), Dior has pending Trademark Application Serial No. 90/635,020 which covers the shape of the flap or top portion of the Saddle Bag. The USPTO approved the application for publication in July.

[1] Q3 2018, The Lyst Index (https://www.lyst.com/the-lyst-index/2018/q3/) (last accessed Sept. 28, 2022 at 11:25 AM).

The Battle Over the Banana Ripens: Artist Maurizio Cattelan Answers Artist Joe Morford’s Copyright Infringement Complaint.

Back in January, Miami-based artist Joe Morford filed a lawsuit in the Southern District of Florida alleging Italian artist Maurizio Cattelan’s viral duct-taped banana sculpture, Comedian, is “plagiarized”. In the Complaint, Morford argues that Cattelan’s work is substantially similar to his vertical diptych, Banana & Orange, which has been registered with the U.S. Copyright Office since 2000.

Due to Judge Robert N. Scola Jr. rejection of Cattelan’s Motion to Dismiss the case, Cattelan recently filed an answer and 19 affirmative defenses. In his defense, Cattelan asserts that Morford’s claims for copyright infringement fail because Cattelan created the work “independently” and “without knowledge of or reference to Plaintiff’s work.” Moreover, Cattelan states that if any infringement occurred, it was innocent and not willful. Though, Cattelan largely questions the validity of Morford’s copyright to begin with.

Pursuant to the Joint Interim Status Report filed on September 20, 2022, discovery is ongoing, and the parties will mediate next month.   

Photo via court documents.

The case is 21-cv-20039, Morford v. Cattelan.  

Geno Smith Applies for “I AINT WRITE BACK” Trademark

The Seattle Seahawks are coming off of a big win over the Denver Broncos, where NFL quarterback Geno Smith completed on 23/28 attempts, and connected on his first 13 passes.  In an interview with a reporter after the game – which has now gone viral – Geno commented on those who doubted his abilities, stating:  “They wrote me off, but I ain’t write back.”  Just two days after the win, Smith then filed a trademark application for that same catch-phrase in connection with retail store services, clothing, backpacks, sports equipment, and other related goods and services.  Smith’s quotation is already featured on t-shirts, sweatshirts, and other articles for sale.

Oprah Winfrey’s Company Sues “Oprahdemics” Podcast Creators

On August 9, 2022, Oprah Winfrey’s company, Harpo Inc., filed a lawsuit in New York federal court alleging trademark infringement, dilution, unfair competition, and cybersquatting against co-creators and co-hosts of the “Oprahdemics” podcast. The podcast aims to talk about all things Oprah, which Harpo Inc. alleges confuses listeners into believing it is actually endorsed by Oprah. Harpo Inc. further argues that this false association could cause exponential increases in sales, otherwise known as the “The Oprah Effect” or “The O Factor”. Accordingly, Harpo Inc. has demanded the podcast change its name to avoid further dilution of the Oprah brand.

The case is 1:22-cv-06787, Harpo, Inc. v. Jackson, et al.

Royal Warrants Issued by Queen Elizabeth II Permitting Companies to Use UK’s Royal Coat of Arms Subject to Review in Two Years

In the wake of Queen Elizabeth II’s death, companies that were issued Royal Warrants to use the royal coat of arms of the United Kingdom during her reign may have to reapply. The Royal Arms is used by the UK’s monarch in their official capacity. As explained by the Royal Warrant Holders Association, a Royal Warrant gives its holder the right to display the Royal Arms on their product, packaging, stationary, advertising, premises, and vehicles.

To qualify for a Royal Warrant, a business must provide its products or services to the Royal Household on an ongoing, regular basis for no less than five years out of the past seven. Such businesses must also show that they have sustainability policies upon applying for the right to use the famous symbol.

Queen Elizabeth II was on the throne for nearly 71 years. During her time in power, she granted approximately 686 Royal Warrants to companies including Heinz, Coca-Cola, Tabasco, Schweppes, Nestle, Cadbury, Johnnie Walker, Dewar’s, Kellogg, Veuve Clicquot, and Moet & Chandon. Such companies are only permitted to continue using the Royal Arms for two years following the Queen’s death, which voided her Royal Warrants. Thereafter, the Queen’s Royal Warrants are subject to review by King Charles III, the UK’s new reigning monarch.

The Royal Arms Shown on Heinz Ketchup Bottles

TTAB Rules for Prince’s Estate in “PURPLE RAIN” Trademark Opposition Proceeding

In a recent trademark opposition over the mark “PURPLE RAIN”, the Trademark Trial and Appeal Board (“TTAB”) ruled for the estate of famous American musician Prince over energy drink company Bang Energy. Bang’s affiliate filed the trademark application for “PURPLE RAIN” in January 2020 for use in connection with a variety of energy drinks and snacks. An opposition was instituted shortly thereafter.

The TTAB determined that the evidence “shows that PURPLE RAIN is the title of Prince’s ‘most iconic’ album” as well as the title of a motion picture starring the singer. The Board also relied on the results of an expert survey, which found that 66.3% of respondents associated “PURPLE RAIN” with Prince.

(Image used in TTAB Order)

This is Trademark Trial and Appeal Board Opposition No. 91269739, NPG Records, LLC (substituted for NPG Records, Inc.); and Paisley Park Enterprises, LLC (substituted for Comerica Bank & Trust, N.A.) v. JHO Intellectual Property Holdings LLC (TTAB Aug. 23, 2022).

AI Image Generators Raise Ownership Questions

A number of artificial intelligence image generators have seen a rise in popularity lately due in part to the increasing availability of access to various platforms. Their ability to generate images from text prompts raises numerous possibilities and questions, not the least of which is who “owns” the images created by these artificial intelligence platforms? The U.S. Copyright Office has already ruled that these images lack the requisite “human expression” to be eligible for copyright protection, but this decision is subject to review by the courts and could be addressed by the legislature. A few countries, such as Australia and South Africa, have determined that “AI” creations are eligible for patent protection, so it may not be out of the realm of possibility to see a computer treated as an “author” for purposes of a copyright registration. However, in the meanwhile, it may be difficult to assert exclusive rights to an “AI” generated image as any such exclusive rights may depend heavily on the facts of the case.

A cottage industry of “AI Whisperers” has also cropped up via online marketplaces where one may purchase the services of one of these “Whisperers” to write prompts for “AI” image generators, apparently to achieve greater results. Historically, however, the kind of short phrases and descriptions that constitute a typical text prompt for one of these “AI” image generators have not been eligible for copyright protection either. Accordingly, it may be important to ensure that proper contractual obligations are set in place before selling a prompt.

Nicki Minaj’s “BARBIE-QUE” Chips Sued by Barbie Doll Maker Mattel

Toy company Mattel, Inc. – owner of famous toy lines such as Hot Wheels, Fisher Price, and Barbie – recently brought suit against Rap Snacks based on its rollout of “BARBIE-QUE” chips, done in collaboration with rapper Nicki Minaj.  Based on the lawsuit filed in the Central District of California, Mattel alleges that consumers are likely to be confused and to create a false association between Mattel’s BARBIE line of products, and Rap Snacks’s BARBIE-QUE chips, particularly due to stylized BARBIE logo and pink product packaging (shown below).  Mattel asserts causes of action for federal trademark infringement, unfair competition, and dilution, as well as an unfair competition claim under California state law.  Rap Snacks has not yet responded or otherwise entered an appearance in the case.

Paramount Facing Lawsuit Upon the Release of Their “Top Gun: Maverick” Movie

Israeli writer, Ehud Yonay, authored an article in 1983 which inspired the 1986 movie “Top Gun” starring Tom Cruise. In 2018, the Yonays sent Paramount a statutory notice of termination under the Copyright Act, making them the sole owners of the US copyright for the story in 2020. In doing this, the Yonay’s invoked an aspect of the law that allows artists to reclaim transferred copyrights 35 years later. Upon the release of the new “Top Gun: Maverick” movie just last month, Yonay’s family commenced a lawsuit in California alleging that Paramount’s response to their May cease-and-desist letter was a “total denial of the fact that its 2022 sequel was obviously derivative of” Ehud Yonay’s story. Throughout the lawsuit, Paramount has claimed, however, that the “Top Gun: Maverick” movie had been “sufficiently completed” before the effective termination date of its copyrights. The Yonays are alleging that Paramount infringed on their copyright, in addition to seeking declaratory and injunctive relief. The case is Yonay v. Paramount Pictures Corp., 22-cv-03846, US District Court, District of Central California (Los Angeles).

The Deepfakes in Kendrick Lamar’s Latest Music Video Reveal Real Issues in U.S. Copyright Law

The American rapper Kendrick Lamar recently released a music video entitled “The Heart Part 5”. In the video, Lamar transforms into celebrities, including Will Smith and Kobe Bryant, using deepfakes. Deepfakes employ “deep learning” technology to create fake videos and images of people. However, there are no copyright laws specifically addressing the use of deepfakes. Instead, deepfakes arguably fall under the “fair use” exception to copyright infringement. Accordingly, the celebrities who seemingly appear in the video may not have legal recourse under copyright law.