Fashion & Entertainment Law Guide

Fashion & Entertainment Law Guide

Patenting the Sportswear Revolution

Posted in Fashion Law, Intellectual Property Law

For a company that makes yoga clothes, lululemon is less than zen when it comes to its intellectual property.  The athletic wear giant has obtained thirty-nine U.S. patents for its designs of various articles of clothing and exercise accessories and is not afraid to litigate to enforce these patents.

Though lululemon began in 1998 as a small store in Vancouver, the company has grown exponentially since that time, reporting sales of $1.3 billion in 2013.  lululemon has been at the forefront of the current “sportswear revolution,” as described in VOGUE by Topshop creative director Kate Phelan when announcing the launch of the retailer’s collaboration with Adidas.  A February 2014 report from the NPD Group, a market research firm, reported that active wear sales increased 9% in 2013, compared to an increase of just 2% in the apparel market as a whole.

Not surprisingly, the popularity of active wear has led to increased competition in the industry.  Topshop is not the only company to move into athletic wear; retailers from Anthropologie to Tory Burch are launching fitness lines.  Even Karl Lagerfeld designed tweed sneakers for Chanel’s Fall 2014 show.

While not new, lululemon’s aggressive approach to protecting its intellectual property with design patents is somewhat unique in the fashion industry, which has traditionally been trademark driven.  35 U.S.C. § 171 provides for the issuance of a design patent for “any new, original, and ornamental design for an article of manufacture[.]“  Design patents made headlines in 2012 when Apple obtained a judgment against Samsung for its imitation of the patented design of the iPhone and iPad.  Because fashion designs are not protected by copyright law, design patents could become an important way for clothing companies to protect their intellectual property.

lululemon’s design patents cover everything from jackets to duffel bags to pants.  Indeed, in 2012 lululemon brought suit against Calvin Klein and G-III Apparel Group, Ltd., a Calvin Klein manufacturer, for selling pants that infringed on various lululemon design patents.  Specifically, the suit, brought in federal court in Delaware, alleged that Calvin Klein’s “performance compression overlapping waistband pants” infringed lululemon’s patents protecting its Astro Pant.  The parties entered into a confidential settlement agreement a few months after the suit was filed.

The following year, in 2013, Hanes sued lululemon after receiving a cease and desist letter from the company.  lululemon accused Hanes and Target of violating the design patents for its No Limits and Practice Freely tank tops with built-in bras.  lululemon claimed that Hanes’s manufacture and Target’s sale of the “C9 by Champion Women’s Layered Tank with Bra – Assorted Colors” infringed its patent and demanded that they stop manufacturing, advertising, or selling the tank tops, issue a press release admitting infringement, and agree to pay liquidated damages for any future infringement.

In response, Hanes filed a complaint in federal court in North Carolina seeking a declaratory judgment that the C9 tank top did not infringe lululemon’s patents and that the patents were invalid because “material prior art and other information . . . indicates that the [patent] was anticipated or would have been obvious at the time the claimed design was made and . . . the figures of the [patent] are vague and indefinite.”

As with the prior suit, Hanes and lululemon settled the case out of court.  Though the terms of the settlement are not public, it is worth noting that the “C9 by Champion Women’s Layered Tank with Bra – Assorted Colors” is no longer available for sale on Target’s website.

lululemon’s approach represents a continuing trend among fashion designers to protect their creations by patent.  But is that a good thing?  Should fashion be patented?  Is the layering of a sports bra and a tank top worthy of protection or an obvious innovation in workout wear?

Fashion and Entertainment Companies Beware: Unpaid Internship Litigation on the Rise

Posted in Entertainment Law, Fashion Law, Media Law, Movies, Random Thoughts, Television

Roughly a decade ago, I was an unpaid intern for a film company in Hollywood.  I had a great summer internship, filled with excellent hands-on experience and the occasional celebrity visit to the office.  But financially it was a struggle.  Living in Los Angeles for two or three months on a shoestring budget was a challenge of Herculean proportions.

Maybe it’s tough economic times or working countless hours answering phones that’s angered unpaid interns.  Now they’re fighting back in the courtroom.

For countless years, unpaid internships have been a great way for companies to provide learning opportunities for young workers — often college students — while bringing in fresh talent and new ideas.  But unpaid interns may increase a company’s risk of litigation.

Unpaid internship lawsuits in the fashion and entertainment industry have been on the rise since the July 2013 Southern District of New York decision against Fox Searchlight Pictures which held that the company violated state and federal minimum wage laws by failing to pay production interns working on the film Black Swan.  Judge William H. Pauley held that the production interns were entitled to minimum wage because they did the same work as regular employees, provided value to the company, and performed tasks that didn’t require specialized training.  The United States Second Circuit Court of Appeals is reviewing Fox’s appeal and a decision is expected in 2015.

Recent Spike in Unpaid Intern Litigation

The Black Swan decision has sparked an increase in unpaid intern litigation.  In the past eight weeks alone, class action suits involving unpaid interns have been filed against Oscar de la Renta, Calvin Klein, Marc Jacobs, and Lionsgate.  Earlier this year, a former Coach, Inc. intern sued the company for allegedly misclassifying employees as unpaid interns and failing to pay the unpaid interns minimum wage.  In 2013, former interns of Donna Karan, Gawker Media, Warner Music Group, MTV, and Bad Boy Entertainment also filed class action suits against those companies alleging violations of the Fair Labor Standards Act.  Undoubtedly, the recent increase in litigation led Louis Vuitton Moet Hennessey to recently pay its interns.  For companies that cannot afford to pay interns, the spike in recent litigation may have a chilling effect on the number of internship opportunities available to young workers.

Department of Labor Guidelines for Internships

Unpaid internships by for-profit companies are subject to the Fair Labor Standards Act (“FLSA”) and similar state laws, which require the payment of wages and overtime for employees.  For decades, courts have held that FLSA was inapplicable to a “trainee.”  The U.S. Department of Labor has created a six-factor test that must be met for an intern to qualify as a “trainee”:

  1. The training, even though it includes actual operation of the facilities of the employer, is similar to that which would be given in a vocational school;
  2. The training is for the benefit of the trainees or students;
  3. The trainees or students do not displace regular employees, but work under close supervision;
  4. The employer that provides the training receives no immediate advantage from the activities of the trainees or students and, on occasion, his operations may even be impeded;
  5. The trainees or students are not necessarily entitled to a job at the conclusion of the training period; and
  6. The employer and the trainees or students understand that the trainees or students are not entitled to wages for the time spent in training.

Check out the DOL’s internship fact sheet for more information.

Given the sharp increase in the number of class action suits filed, fashion and entertainment companies should make sure that they understand both the realities of their internship programs and ensure that their programs comply with both state and federal wage laws.

 

 

Converse’s Quest to Protect Chuck Taylor All Stars

Posted in Fashion Law, Intellectual Property Law, New Orleans Intellectual Property Law, Trademark Law, Uncategorized

One of New Orleans’ most entertaining events is the Red Dress Run.  Held on a blazingly hot August Saturday, women and men don red dresses and run around the French Quarter (and drink) for charity.  My friend Shawn and I decided to participate this year and wore matching tutus and red Converse Chuck Taylors. 

I bought my Chucks at a Foot Locker.  Shawn bought his at a small mom-and-pop “fashion store.”  Comparing them on the day of the run, my Chucks were authentic, his were not-that-obviously counterfeit.  Other runners also had on what appeared to be “Chuck Taylors” — with a rubber toe front and sole with a black stripe — but if you looked closely, did not have the star or Converse label on the back of the shoe.  

Yesterday, Converse filed multiple lawsuits in the United State District Court for the Eastern District of New York seeking to end the import and sale of knock off Chuck Taylors.  The suits weren’t filed against the mom-and-pop retailers that sell counterfeit shoes.  Instead, Converse sued 31 companies, including major companies like Walmart, Kmart, Sketchers and H&M (or, as Huffington Post put it, “basically everyone”).  The lawsuits claim that these companies sell knock offs of the Chuck Taylor design.   (For a discussion of counterfeit v. knock offs, check out this previous post).  

The lawsuits claim that Converse owns common law and federal trademark rights for the Chuck Taylor design, including U.S. Trademark Registration No. 4,398,753, which protects the double black band on the rubber soles of the shoes, the design of the rubber toe cap, and the diamond patterned bumper at the front of the shoe.  The lawsuits detail the history of the Chuck Taylor design, which originated in 1917.  The present day design has been used since 1932.   Interestingly, however, the trademark was not registered until September 2013.

Converse asserts claims for trademark infringement and trademark dilution under the Lanham Act, common law trademark infringement and unfair competition, as well as various New York state unfair trade practices claims.   

Reviewing the lawsuits, the New York Times noted that trademark law does not allow companies to protect functional parts of their fashion designs.  While I don’t disagree with that general statement, I think Converse’s claims have merit. 

First, the double black stripe on the soles of the Chucks does not appear to be functional.  Neither does the rubber toe design.  Second, as we learned in the Louboutin v. Yves St. Laurent red sole battle, a valid U.S. trademark registration provides the trademark owner with the presumption that the registered mark is valid.  That means that the defendants bear the burden of proving that the Chuck Taylor design is primarily functional, rather than serving as an indicia of the producer.  Let’s leave the aesthetic functionality argument for another post… .

One problem that Converse may face — has the Chuck Taylor design become generic so that a person viewing the shoes would not associate the design with Converse?  If so, then the trademark could be invalidated. 

What do you think readers?  When you see a rubber soled, rubber toed shoe, do you think Chuck Taylors made by Converse?  Or do you think of Sketchers, H&M or another manufacturer? 

Post your comments below!  

 

Supreme Court Cuts the Cord on Aereo (For Now)

Posted in Copyright Law, Entertainment Law, Media Law, Television

Have you ever thought about “cutting the cord,” as in the cable cord?

In the past, “cutting the cord” may have been an effort to lead a simpler, less technologically dependent life.  Now, the movement stems from frustration with cable and satellite television providers for rising costs and having to pay for 300+ channels when you maybe watch 10 of them.  An abundance of new technological options involving Internet streaming — from Netflix, Amazon Instant Video and Hulu to Apple TV, Google Chromecast and Roku to Simple.TV, Tablo and…Aereo — have cropped up to make it easier for consumers to “cut the cord,” while still being able to enjoy their favorite television programming.  Last month in American Broadcasting Cos. v. Aereo, Inc., however, the Supreme Court nipped in the bud (or did it?) one such cord-cutting option based on an application of copyright law.  Could others also be impacted?

For as little as $8 a month, Aereo offered its subscribers broadcast television programming over the Internet, almost simultaneously as the program was being broadcast.  It also offered a DVR-like component too, although that feature was not before the Court.  Aereo paid no licensing fees to the copyright holders of the television programming being streamed — enter lawsuit by television producers, marketers, distributors and broadcasters.

For those of you not familiar with copyright law, perhaps a bit of a primer is necessary.  Under copyright law, a copyright owner is given certain exclusive rights.  The exclusive right at issue in Aereo was the right “to perform the copyrighted work publicly.“  17 U.S.C. §106(4) (emphasis added).  To “perform” a work means “to recite, render, play, dance, or act it, either directly or by means of any device or process or, in the case of a motion picture or other audiovisual work, to show its images in any sequence or to make the sounds accompanying it audible.”  §101.

To perform or display a work “publicly” means “(1) to perform or display it at a place open to the public or at any place where a substantial number of persons outside of a normal circle of a family and its social acquaintances is gathered; or (2) to transmit or otherwise communicate a performance or display of the work to a place specified by clause (1) or to the public, by means of any devise or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.”  §101.

Clause (2) cited above is called the “Transmit Clause” and was added to the Copyright Act when it was amended in 1976.  Legislative history indicates that the intent behind the Transmit Clause was to make clear that “a cable television system is performing when it retransmits [a network] broadcast to its subscribers.”  H.R. Rep. No. 94-1476, p. 63 (1976).  The Transmit Clause was seen as Congressional rejection of two Supreme Court cases narrowly construing the Copyright Act with respect to CATV systems (precursors to modern cable), each case holding that the respective CATV providers did not “perform”.  See Fortnightly Corp. v. United Artisits Television, Inc., 392 U.S. 390 (1986); Teleprompter Corp. v. Columbia Broadcasting System, Inc., 415 U.S. 394 (1974).  At the same time, Congress also created the Section 111 compulsory license framework, which sets out the conditions under which cable systems may retransmit broadcasts.

Some of you may see this as a no brainer — Aereo was clearly infringing.  However, the way the Aereo system was technologically set up was arguably to exploit a perceived loophole in the Transmit Clause (although in response to questioning during oral argument, Aereo stated that there were in fact technological reasons for the way it was set up).

Behind the technological veil, Aereo owned warehouses in 11 cities across the U.S., with each warehouse containing thousands of dime-sized antennas.  Each antenna was dedicated to one subscriber, and one subscriber alone.  When a subscriber wanted to watch a show that was currently being broadcast, the subscriber would visit the Aereo website and select a show to view from a list of the available local programming.  Then, the Aereo server would select that subscriber’s antenna and tune it to the over-the-air broadcast carrying the show, and the signals received would be translated into data that could be transmitted over the Internet.  The Aereo server would then save the data in a subscriber-specific folder on Aereo’s hard drive (creating a subscriber’s “personal” copy of the program, again, not addressed by the Court), and after several seconds of programming had been saved, begin streaming the saved copy of the show over the Internet to the subscriber’s Internet connected device (e.g., laptop, smart phone, iPad, etc.).

In short, Aereo argued that the “public” requirement was not met — as each transmission from each dime-size antenna was only to one individual.  This argument had previously been successful in a Second Circuit case concerning remote-storage DVRs.  See Cartoon Network LP, LLLP v. CSC Holdings, Inc., 536 F.3d 121 (2d Cir. 2008) (cert. denied) (“Because each RS-DVR playback transmission is made to a single subscriber using a single unique copy produced by that subscriber, we conclude that such transmissions are not performances ‘to the public,’ and therefore do not infringe any exclusive right of public performance.”)  Aereo also argued that it was merely an equipment provider, and was not “performing.”

However, in a 6-3 opinion, the Supreme Court for the most part applied the duck test:  If it looks like cable, acts like cable and sounds like cable, then it falls within the Transmit Clause.  The Court was not impressed by the technological differences, stating bluntly, “Viewed in terms of Congress’ regulatory objectives, why should any of these technological differences matter?  They concern the behind-the-scenes way in which Aereo delivers television programming to its viewers’ screens.  They do not render Aereo’s commercial objectives any different from that of cable companies.  Nor do they significantly alter the viewing experience of Aereo’s subscribers.”

The Court did, however, make a point to respond to all the “cloud is falling” arguments, stating that    “[q]uestions involving cloud computing, [remote storage] DVRs, and other novel issues not before the Court, as to which Congress has not plainly marked [the] course, should await a case in which they are squarely presented,” further referencing that concerned commercial actors could always seek action from Congress.

Overall, the Aereo decision may have stopped one avenue of “cord-cutting,” but probably did not stop the tide of technological innovation aimed at meeting consumer demand for “a la carte” television programming.  Inevitably, there will be more lawsuits to explore the contours of the Aereo decision, and the application of copyright law to other technologies, such as cloud computing and remote-storage DVRs.  One thing to consider, should this be left to the Supreme Court, with justices who refer to “the Dropbox” and “the iCloud” and seem uncomfortable with aspects of modern technology (see oral argument transcript), or should Congress maybe take this as an invitation to update the, now almost 40-year old, Copyright Act of 1976 to squarely address these new technologies?

As a post-script, despite arguing throughout the course of its journey through the courts that it was not a cable company (a point that seemed to be agreed on by both sides), in the aftermath of the decision, Aereo has now done an about face and has argued that it is a cable company and entitled to avail itself of the Section 111 compulsory license.  Time will tell how this approach turns out, but note that the Supreme Court never said that Aereo was in fact a cable company — only that its activities were substantially similar to one.  Plus, does Aereo really want to be a cable company, subject to all the rules and regulations that brings with it, including negotiating with the same broadcasters it was just sued by over retransmission fees?  In the end, the consumer might end up the same place it was before — paying high fees for unwanted channels.

Trademark Trial and Appeal Board Cancels Redskins Marks – Again

Posted in Copyright Law, Entertainment Law, Intellectual Property Law, Trademark Law

It’s like déjà vu all over again.

Last week, the Trademark Trial and Appeal Board canceled six trademark registrations of the Washington Redskins, ruling that those marks are disparaging to Native Americans.  The Board ruled that the REDSKINS marks were inappropriately granted in contravention of Lanham Act section 2(a), 15 U.S.C. § 1052(a), which prohibits registration of a mark “which may disparage . . . persons . . . or bring them into contempt, or disrepute.”  The decision has the potential to cost the franchise untold millions of dollars.  It could make fighting infringement more difficult (and costly), and open the floodgates to counterfeit goods from overseas.

The decision has been widely lauded.  Sen. Maria Cantwell (D-Wash.) interrupted a debate on the Senate floor to praise the ruling.  Even Senate Majority Leader Harry Reid (D-Nev.) chimed in, proclaiming that “[t]his name will change and justice will be done for the tribes in Nevada and across the nation who care so deeply about this issue.”  Law360 announced that “The End Is In Sight For ‘Redskins.’”

But is it?

The 2-1 decision is a case of “been there done that” for the Board, which cancelled registrations of the same six marks back in 1999, only to have its decision reversed on appeal four years later.  And, while the Board was careful to point out the differences between the two cases in its 99-page opinion (including an 18-page dissent), the similarities cannot be ignored.  According to the Redskins, the similarities render the new decision meaningless.

The most recent case was essentially a relitigation of its predecessor, Harjo v. Pro Football, Inc.  As in Harjo, the Board used the same two-part inquiry to determine whether the marks are disparaging, evaluating: (1) the meaning of the mark in question, as it appears in the marks and as used in commerce and (2) whether the meaning of the marks is one that may disparage Native Americans.   To be deemed disparaging, the marks need to have been offensive not by today’s standards, but when they were registered; thus, both questions must be answered as of the various dates of registration of the challenged marks.   And, as to the second question, the Board looks not to the American public as a whole, but to the views of the referenced group (here, Native Americans).  The views of the referenced group are “reasonably determined by the views of a substantial composite thereof.”

This time around, the Board found that the views of a substantial composite of Native Americans were embodied in a resolution passed by the Executive Council of the National Congress of American Indians in 1993 (and also considered in Harjo), denouncing the use of the term REDSKINS as “pejorative, derogatory, denigrating, offensive, scandalous, contemptuous, disreputable, disparaging and racist . . . and damaging to Native Americans.”  The Board found that “at a minimum, approximately thirty percent of Native Americans found the term REDSKINS used in connection with respondent’s services to be disparaging” at all relevant times, and that the six registrations, accordingly, “must be cancelled.”

The Redskins have sworn to appeal the Board’s ruling.

In a press release issued the day the decision came down, the team stated that “[t]he evidence in the current claim is virtually identical to the evidence a federal judge decided was insufficient more than ten years ago.”  Thus, the Redskins are confident they “will prevail once again, and that the Trademark Trial and Appeal Board’s divided ruling will be overturned on appeal.”

The effect of the cancellation is, at least for the time being, largely symbolic.  While the Redskins’ appeal is pending, all six registrations will remain effective.  The team can continue to sell logo merchandise, license its marks, and otherwise operate as it has since the first of the challenged marks was registered in 1967.

Wednesday’s decision is a positive step for Native Americans and others who oppose the Redskins name.  And, the issue is receiving far more attention than it did when Harjo was ultimately decided more than a decade ago.

However, the only thing certain, now, is that several more years will likely pass before this case concludes, and the fate of the Redskins’ marks is determined with any finality.  Again.

Birkin Bag Battle: Hermès v. Charming Charlie and JustFab.com

Posted in Fashion Law, Intellectual Property Law, New Orleans Intellectual Property Law, Trademark Law, Uncategorized
crave vs save

On May 5, Hermès filed suit for trademark infringement against Emperia, Inc. and its sister company, Top’s Handbag Inc.  The dispute centers around the much-coveted, but elusive (unless you are willing to shell out $6,000 or more) Hermès Birkin Bag.

Created in 1984 and named after French actress, Jane Birkin, the Birkin Bag symbolizes the ultimate in women’s luxury goods.  Some have called the Birkin Bag the “Rolls Royce of handbags.”

As outlined in the complaint filed by Hermès, a Birkin Bag does not have the word “BIRKIN” printed on it or any of its labels.  Instead, the bag’s unique shape and closure design — coupled with the considerable press and celebrity attention given to it — have allowed Hermès to obtain incontestable federal trademark registrations for Birkin’s shape and closire design.  [U.S. Trademark Registration Nos. 3,936,105 and 1,806,107].  Trademarks for design are fairly rare and require proof of secondary meaning identified exclusively with the design’s owner (think of the famous Coca-Cola bottle design).

Hermès alleges that defendants imported look-alike Birkin handbags and sold them to distributors Charming Charlie (a Houston-based brick-and-mortar store) and JustFab.com (an online retailer).  The defendants’ handbags replicate the trademark-protected shape and closure of the Birkin bag.  The bags are made from vinyl but mimic the über-expensive crocodile and ostrich skins used on some Birkin Bags.  While second-hand ostrich skin Birkins have sold for $23,000 and crocodile skin can retail for $100,000, knock-off bags sell at wholesale prices of $15 and $20. Continue Reading

Fake Bags, Real Consequences

Posted in Copyright Law, Fashion Law, Intellectual Property Law, Trademark Law

We’ve all been there.  Whether it’s a fake Gucci bag ordered from eBay or a bootleg Saints jersey bought from a friend’s uncle, odds are we have all been tempted to buy counterfeit goods.  Who wants to pay for the real thing anyway?  Counterfeit goods are everywhere, and many people have owned them at some point.  While the average consumer rarely thinks about the social consequences and legal ramifications of trade in these goods, they are illegal.

The sale of counterfeit goods can be punished with a fine of up to $2,000,000 or imprisonment for up to 10 years for a first offense, or a fine of up to $5,000,000 or imprisonment for up to 20 years for a second offense.  In order to secure a conviction under this statute, the government must demonstrate that the accused “knew the marks used on the goods were counterfeit.”

These harsh penalties for distributors, however, only address the supply side of the counterfeit goods trade.  Demand for counterfeit goods remains high, even though fashion magazines and interest groups have sponsored ad campaigns publicizing the evils of this industry.

New York City Council Member Margaret Chin, representing Manhattan District 1, which includes Canal Street, is working to change that.  New York’s Canal Street is internationally known as the destination for purchasing counterfeit handbags and watches, but Council Member Chin wants to stop the trade by reducing the demand.

To that end, Council Member Chin has introduced a bill that would criminalize the intentional purchase of an item containing a counterfeit trademark. The current version of the bill imposes harsh penalties on buyers of counterfeit goods.  Each violation is punishable by a term of imprisonment not to exceed a year, a fine not to exceed $1000, a civil penalty not to exceed $1000, or any combination thereof.  Further, each counterfeit item purchased qualifies as a separate violation, meaning that the $50 faux Louboutins available on Canal Street might soon cost as much as the real thing.

Critics have argued that the bill cannot be enforced because prosecutors cannot demonstrate that a purchaser knew an item was counterfeit.  The bill attempts to address this concern by allowing knowledge to be attributed to the consumer based on the quality and price of the item and/or the condition of the seller and sale location.  For example, if you buy a Chanel bag for $50 from a dimly lit basement on Canal Street, can you really argue that you thought it was authentic?

Of course, not all counterfeit transactions happen this way, and the debate around the bill poses an interesting issue regarding how to differentiate among various consumers of counterfeit goods.  On one hand, a woman at a jewelry show could purchase a cute bag for her daughter without realizing that it’s actually a knock-off Kate Spade.  On the other hand, people from cities across the country make a living traveling to New York and buying fake Fendi bags and Rolex watches for resale at home.

Do you think a bill such as this is appropriate?  Or is the danger of penalizing an innocent consumer too great?  And either way, do you think such an action would actually reduce the demand for counterfeit goods?  Should other cities or states enact similar laws?

The Houndstooth Mafia/University of Alabama Trademark Dispute

Posted in Entertainment Law, Intellectual Property Law, Trademark Law, Uncategorized

Matt Almon (ace senior associate, Rolling Elvi, and future guest blogger) and I penned an article for the Louisiana Sports Law Association discussing the Trademark Trial and Appeal Board’s (“TTAB”) decision in a dispute between the University of Alabama and a company called the Houndstooth Mafia.

Houndstooth Mafia created clothing and other items featuring a black and white houndstooth pattern reminiscent of famous Alabama football coach Bear Bryant’s patterned fedora.  The company then attempted to register their “Houndstooth Mafia” trademark with the United States Patent and Trademark Office.

The University of Alabama opposed the registration, arguing that use of houndstooth pattern infringed the University’s trademark rights.

Want to know what happened next?

Read our article on the Louisiana Sports Law Association’s website and let us know if you disagree with the TTAB’s decision.

 

Copyright’s Public Domain and TV’s Sleepy Hollow, Dracula, and Sherlock Holmes

Posted in Art Law, Copyright Law, Entertainment Law, Intellectual Property Law, Media Law, Movies, Television, Uncategorized

After spending the holidays binge-watching Netflix and Hulu, I am now currently obsessed with three television shows: Fox’s “Sleepy Hollow“, NBC’s “Dracula” and BBC’s “Sherlock“. “Sleepy Hollow” and “Dracula” are new this television season. The third season of “Sherlock” starts later this month.

Interestingly, all three shows are based on characters in novels published more than a hundred years ago.

In 1820, Washington Irving first published The Legend of Sleepy Hollow and emblazoned onto the American psyche the image of the creepy Headless Horseman chasing down the hapless Ichabod Crane.  More than sixty years later, in 1887, the bromance between Sherlock Holmes and Dr. Watson began with Sir Arthur Conan Doyle’s publication of A Study in Scarlet.  And in 1897, Bram Stoker (literally) immortalized the irresistibly doomed Count Dracula.

Why have these characters made resurgence? There have been interesting studies about the social reasons for the entertainment industry’s obsession with vampires, monsters, witches and zombies.

But from an intellectual property standpoint, the short answer is that none of these characters (with the arguable exception of Sherlock and dear Watson) are protected by U.S. Copyright Law.  So resurrecting these characters for current television is CHEAP.

Under the Copyright Act, the creator of an original work of authorship is granted the exclusive right to publish, distribute, and make derivatives of the creative work. So, for example, if Bram Stoker published Dracula in 2013, only he would be entitled to authorize the publication and distribution of the novel. More importantly, our modern-day Stoker would have to approve (and be paid for) the creation of derivative television shows and movies incorporating his storyline and characters.

Works published (domestically and abroad) before 1923, however, are in the public domain. That means that anyone can take the original work and distribute it, publish it, and make derivative works from it — without permission or payment to the original copyright owner. Because Dracula and The Legend of Sleepy Hollow were published well-before 1923, NBC owes nothing to Bram Stoker’s heirs for “Dracula” and Fox owes nothing to Washington Irving’s estate for “Sleepy Hollow.” Continue Reading

Catch Me At the Louisiana State Bar Association’s New York, New York CLE

Posted in Copyright Law, Entertainment Law, Intellectual Property Law, New Orleans Intellectual Property Law, Uncategorized

When I was a just a baby lawyer, I attended the Louisiana State Bar Association’s New York, New York CLE.  It was a great event and provided not only good information, but also fantastic networking opportunities with fellow Louisiana (and non-Louisiana) lawyers and judges.

I was super-excited when I was asked to speak at the LSBA’s New York CLE this year.  My topic:  Breaking Up (The Band) Is Hard to Do:  Intellectual Property Disputes in the Music Industry.

So what will I discuss?  One of the biggest issues in music right now is Copyright Reversion Act of 1976 (17 U.S.C. § 203).  This provision allows authors of copyrighted works to reclaim previously-transferred rights 35 years after the initial transfer.  The provision went into effect in 1978.  In 2013, many musicians are taking advantage of the reversion of rights provisions, including Victor Willis of The Village People.  Will we discuss YMCA and Macho Man at the CLE?  Absolutely!

Another recent musical dispute centers around the Robin Thicke/Pharrell Williams hit Blurred Lines.  You can’t turn the radio on without hearing the song, and some people (me included) hear the influence (some would argue copying) of Marvin Gaye’s song Got to Give It Up. In August, Pharrell and Thicke filed a preemptive lawsuit against Gaye’s heirs and others seeking a declaration that Blurred Lines does not infringe the copyrights of other songs.  Responding to the complaint in October, Gaye’s heirs filed a copyright infringement counterclaim and pointed to various interviews in which Thicke basically admitted that Blurred Lines was “inspired” by Gaye’s hit song.   It will be interesting to see how the dispute is resolved and whether settlement is in the future.  (I predict it will).

Other topics I plan to discuss — The Doors v.s. The Doors, the unending trademark/right of publicity/copyright litigation saga between the members of the Beach Boys, and the dramatic and diva-rific break up of Destiny’s Child!

So, if you find yourself in New York, come for the CLE and stay for the name-that-tune contest!  There will be prizes!

 

 

 

 

.