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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).

Firm Attorneys Named “Super Lawyers” and “Rising Stars” in 2022 Florida “Super Lawyers” Magazine

Congratulations to Firm Partners, Jennie Malloy, Peter Matos, Oliver Ruiz, and John Cyril Malloy III on being named to this year’s list of SuperLawyers, and to Firm Senior Associate, W. John Eagan, on being named a Rising Star. Of note, Mr. Matos, Mr. Malloy, and Ms. Malloy, have been named Super Lawyers for more than ten years. Relying on a patented process of nominations, research, peer evaluation, and final selection of less than 5% of all attorneys, this Thompson-Reuters company produces one of the more reliable attorney rankings available.

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).

Seattle Space Needle Sues Local Coffee Spot for Trademark Infringement

In a recently filed trademark infringement lawsuit, the Seattle Space Needle asserts that the Local Coffee Spot is infringing upon its trademarked logo (comparisons shown below).  Embedded within that trademark lawsuit is another dispute as to whether the Local Coffee Spot was willing to re-brand.  While the Seattle Space Needle claims that the Local Coffee Spot did not meaningfully respond to pre-suit demands, the Local Coffee Spot contends that it was willing to engage in next steps to work together regarding graphic design and logo changes (but never heard back from the Space Needle).  The lawsuit is styled Space Needle, LLC v. NRBM LLC, Case No. 22-cv-00708.

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. 

Kendall Jenner’s 818 Tequila Brand Sued for Trademark Infringement

“The Kardashian-Jenner family strikes again,” says ClipBandits, LLC, owner of the brand Tequila 512. On February 16, 2022, ClipBandits filed suit in the Central District of California against K & Soda, LLC, known for doing business as 818 Spirits, for trademark infringement, false designation of origin, and unfair competition. Reality television star and fashion supermodel Kendall Jenner debuted 818 Spirits in May 2021 as her own tequila brand, and it quickly skyrocketed in popularity.

ClipBandits has a federal trademark registration for its “512” mark, which it applied for in 2008 and registered in 2013. Following the launch of Jenner’s brand, however, ClipBandits filed another trademark application for “TEQUILA 512” and Design in an effort to protect the elements featured on the Tequila 512 label.

In its Complaint, ClipBandits accuses 818 Spirits of “simply and blatantly” copying the Tequila 512 logo and color scheme, in addition to similarly choosing a “prominent area code” with “a central 1” as its brand name. ClipBandits further argues that there has been actual consumer confusion in the marketplace, which has damaged the Tequila 512 brand. More specifically, ClipBandits submits that 818 Spirits is not entitled to “steal sales . . . through its deception” or transfer to Tequila 512 the “substantial ill-will” associated with 818 Spirits (due to accusations of “cultural insensitivity”). ClipBandits states that 818 Spirits can “shoot itself in the foot with its own positioning and marketing,” but “cannot be allowed to drag [Tequila 512] down with them.”

This case is ClipBandits, LLC v. K & Soda, LLC, Case No. 2:22-cv-01071, in the Central District of California.

Artwork Made by Artificial Intelligence Denied Copyright Protection

In the face of human authorship and human inventorship requirements, many wonder how and when, if ever, protection for inventions and creative works generated by artificial intelligence (AI) will fit into the intellectual property realm.

On February 14, 2022, a second request for reconsideration in a copyright application for AI-made artwork, entitled A Recent Entrance to Paradise, was rejected because it lacked the required human authorship to receive protection. The Copyright Review Board, which hears final administrative appeals of refusals of copyright registrations at the U.S. Copyright Office, issued the rejection. Applicant Steven Thaler argued throughout the proceedings that “the human authorship requirement is unconstitutional and unsupported by either statute or case law.” In its decision, however, the Board pointed to a robust body of precedent in response, including Supreme Court opinions, as well as sections of the Compendium of U.S. Copyright Office Practices to support its rejection. The Board summarized that copyright law protects only “the fruits of intellectual labor” that “are founded in the creative powers of the human mind.” Irrespective of the type of creative work, the Board emphasized that the U.S. Copyright Office currently “will refuse to register a claim if it determines that a human being did not create the work.”

The denial of protection for A Recent Entrance to Paradise comes on the heels of a U.S. Patent and Trademark Office (“USPTO”) decision from 2020, known as the “DABUS” case. There, the USPTO concluded that AI cannot be considered an inventor under our patent regime. The catalyst in the DABUS case was a petition regarding a patent application, in which the applied-for invention was generated by an AI creativity machine named “DABUS.” Accordingly, the petitioner named DABUS as the inventor on the application, claiming that “it was the machine, not a person, which recognized the novelty and salience of the invention.” In a manner similar to Thaler, the DABUS petitioner argued that inventorship should not be limited to natural persons, but the USPTO fiercely disagreed.

In finding that the patent laws preclude naming an AI as an inventor, the USPTO relied on Title 35 of the U.S. Code (“35 U.S.C.”) and relevant precedent. The opinion noted that 35 U.S.C. “consistently refers to inventors as natural persons” and pointed to § 100(a), under which an “inventor” is defined as an “individual.” The USPTO also emphasized § 101, which states: “Whoever invents or discovers any new and useful process, machine, manufacture or composition of matter . . . may obtain a patent therefor. . . .” From this language, the USPTO reasoned that the term “whoever” suggests a natural person. The Office also described sections of 35 U.S.C. employing “pronouns specific to natural persons” such as “himself” or “herself,” in addition to citing a requirement that an inventor who executes an oath must be a person. All in all, the USPTO decided that “the patent laws require that an inventor be a natural person.” The DABUS application was finally rejected, and the Office declared that “[n]o further requests for reconsideration [would] be entertained.”

A Recent Entrance To Paradise

[1] See, e.g., U.S. Patent Application No. US16/524,350 (filed July 29, 2019) (Dep. Comm’r Pat.

Apr. 27, 2020) (petition denied) (https://www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf)  (inventor listed on patent was a non-human AI machine named DABUS).

[2] COMPENDIUM OF U.S. COPYRIGHT OFFICE PRACTICES ch. 300 § 306 (2021),

https://copyright.gov/comp3/chap300/ch300-copyrightable-authorship.pdf.

[3] A Recent Entrance to Paradise, Copyright Review Board (https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf) (last accessed February 24, 2022 at 2:56 PM).

[4] Id.

[5] See, e.g., Burrow-Giles Lithographic Co. v. Sarony, 111 U.S. 53 (1884) (wherein the Court refers to authors as human).

[6] A Recent Entrance to Paradise, Copyright Review Board (https://www.copyright.gov/rulings-filings/review-board/docs/a-recent-entrance-to-paradise.pdf) (last accessed February 24, 2022 at 2:56 PM) (emphasis added).

[7] Id.

[8] U.S. Patent Application No. US16/524,350 (filed July 29, 2019) (Dep. Comm’r Pat.

Apr. 27, 2020) (petition denied) (https://www.uspto.gov/sites/default/files/documents/16524350_22apr2020.pdf).

[9] Id.

[10] Id.