Intellectual Property Blog
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 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.
Delhi High Court Views a Competitor’s Use of a Registered Trademark in a Google AdWord as Trademark Infringement
The case M/S DRS Logistics Pvt. Ltd and Anr. v. Google India Pvt Ltd and Ors is the latest addition to the more than 50 lawsuits that have been filed against Google AdWords internationally over the past ten years. India’s Delhi High Court made a preliminary ruling that use of a competitor’s registered trademark as a keyword in Ads creates confusion in the minds of consumers, and thus violates the rights of the trademark owner. Moreover, the Court found that invisible use of a trademark can result in trademark infringement. However , the Court ultimately set aside the interim injunction against Google and instead ordered an investigation into the matter. Nevertheless, this case showcases another nation’s interpretation of the trademark “use” requirement and lends support for trademark owners’ rights in Google AdWords disputes.
New York Southern District Judge Jed Rakoff has rejected artist Mason Rothchild’s motion to dismiss Hermes International S.A.’s lawsuit over his sale of non-fungible tokens called “MetaBirkins”. Judge Rakoff said he would lay out his reasoning in a later opinion. In the meantime, the case continues to be observed for its potential to explain trademark law’s applicability to NFTs. The case is Hermes Int’l v. Rothschild, S.D.N.Y., No. 1:22-cv-00384.
A Philadelphia-based vegan food company recently sued Dunkin Donuts and Beyond Meat in the U.S. District Court for the Middle District of Florida. At issue in the case is Dunkin Donuts’ and Beyond Meat’s alleged used of Vegadelphia’s trademarked slogan: “Where Great Taste is Plant-Based.” In the lawsuit, Vegadelphia alleges that Dunkin and Beyond Meat promoted their breakfast sausage sandwich using the phrase: “Great Taste, Plant-Based.” Vegadelphia further claims that the defendants “knew about this federally registered trademark on information and belief when they adopted the indistinguishable ‘great taste, plant-based’ slogan for a celebrity-laden national advertising campaign supporting their Beyond Sausage meat substitute menu item.” Vegadelphia is seeking an undisclosed amount of damages as well as injunctive relief preventing any further use of the trademark.
For years, buzz has circled around whether Google would enter into the smart watch arena. It appears the wait is now over, as Google recently filed a trademark application for PIXEL WATCH in connection with smartwatches and smartwatch accessories. Although dates have not yet been confirmed, news leaks are reporting that the wearable device from Google may be announced as early as May, and be available for purchase in October.
In November 2021, Vans, Inc. and VF Outdoor, LLC (collectively, “Vans”) filed suit in the U.S. District Court for the Central District of California against Walmart, Inc. (“Walmart”) and two other entities associated with Walmart: The Doll Maker, LLC and Trendy Trading, LLC. In its complaint, Vans alleged, inter alia, that Walmart had infringed on Vans’ trademarks and trade dress rights when Walmart began selling and promoting “over twenty blatant knockoff versions of Vans shoes . . . through [its] own in-house labels, including ‘Time and Tru,’ ‘Wonder Nation,’ and ‘No Boundaries’” in 2018. In filing its complaint, Vans sought a preliminary injunction based on the alleged notion that Walmart “flooded the market with cheap, low-quality, and confusingly similar shoes that harm Vans’ goodwill and reputation.”
At a hearing on January 24, 2022, however, Walmart implored U.S. District Judge David O. Carter not to grant the preliminary impeachment on Vans’ behalf, claiming not only that issuing such an order would cost Walmart “tens of millions of dollars,” but also that “Vans is not losing sales, . . . its reputation is not being diminished . . . [and it] is not suffering any irreparable harm.” In response to Walmart’s plea to the judge for relief, at a hearing the following month, Vans claimed it was facing an “existential crisis” and that Walmart’s copycat designs were putting Vans’ bottom line in “mortal peril.”
This case is Vans, Inc. et al. v. Walmart, Inc. et al., Case No. 8:21-cv-01876. The images above are provided in Vans’ complaint filed in the U.S. District Court for the Central District of California. The Complaint can be found at the following link: https://fingfx.thomsonreuters.com/gfx/legaldocs/zdpxonkoyvx/IP%20VANS%20TRADEMARKS%20complaint-min%20(1).pdf
Asserting claims for dilution and a likelihood of confusion, Sony Pictures Television recently filed a trademark opposition proceeding, seeking to protect the BREAKING BAD television series featuring chemist-teacher-turned-druglord Walter White. The applicant, Thomas Mihill, filed an intent-to-use application in connection with his BAKING BAD brand for use in a cooking show. While the parties share similarity in terms of televisions shows, a question remains as to whether consumers are likely to confuse a cooking show with one of the most popular Netflix series of all time.
After nearly four years of battle with the U.S. Patent and Trademark Office (USPTO), high-end fashion company Off-White secured a trademark registration for its signature red zip tie in connection with footwear, with color claimed as a feature of the mark. Off-White, which became a well-recognized streetwear brand under the direction of American fashion designer Virgil Abloh, began affixing the zip tie to its products in May 2016 and filed to obtain trademark rights in July 2018.
The USPTO Examining Attorney assigned to the application issued four Office Actions over the years, each time refusing Off-White’s attempt to trademark the zip tie for a slew of reasons. Off-White ultimately overcame these rejections, in large part by submitting arguments and evidence that the zip tie is non-functional and communicates to consumers that the shoe is an Off-White product. For example, the fashion company submitted that “[c]elebrities and other consumers do not wear shoes with Applicant’s Mark attached because of how Applicant’s Mark looks, but because of the message it conveys to others: this is a product produced by Applicant.”
The Supreme Court to Decide Whether Andy Warhol’s Artwork is Transformative or Copyright Infringement
This week, the U.S. Supreme Court agreed to hear an appeal filed by the Andy Warhol Foundation to overturn the U.S. Court of Appeals for the Second Circuit’s decision finding that Warhol’s paintings of the musician Prince created in 1984 were not “fair use” of Lynn Goldsmith’s photograph taken in 1981. More specifically, last year the 2nd Circuit held that a “transformative” work must have a “fundamentally different and new artistic purpose and character.” However, Warhol’s paintings were found to be “much closer to presenting the same work in a different form.” Accordingly, the Foundation is now asserting that the Second Circuit‘s ruling “chill[s] artistic expression and undermine[s] First Amendment values” and “casts a cloud of legal uncertainty over an entire genre of visual art” in the hopes that the Supreme Court will recognize that Warhol’s works are fully protected under the law. This impending decision will not only assess what it means to be a transformative work; it will also examine the scope of the fair use defense to copyright infringement.