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Since his death in 1981, reggae superstar Bob Marley and his “image” continue to be broadly popular and command millions of dollars each year in merchandising revenue. His children own an entity called Fifth Six Hope Road, Music, Ltd. which was formed to acquire and exploit the assets, rights and commercial interests of their late father. In 1999, Hope Road granted Zion Rootswear, LLC, an exclusive license with regard to the use of Bob Marley’s image on various clothing and other merchandise.

After discovering that several companies had been selling t-shirts and other merchandise with the image of Bob Marley on them, Hope Road and Zion brought a lawsuit against them and included a claim for “false endorsement” under 15 USC §1125(a). (This article does not address the other claims pursued in this lawsuit.)

After trial, a jury found that the Defendants were liable under a false endorsement theory and awarded Plaintiffs almost $800,000 in damages plus their attorney’s fees of approximately $1.5 million. The Defendants appealed the decision to the Ninth Circuit arguing that there was not sufficient evidence to support a finding against them and that Plaintiffs’ use of the false endorsement claim under 15 USC §1125 effectively created a federal “right of privacy,” which Congress had not intended.

The primary issue facing the Ninth Circuit in the case Fifty Six Hope Road, Ltd., et al. v. A.V.E.A., Inc., et al. was “when does the use of the celebrity’s likeness or persona in connection with a product constitute false endorsement that is actionable under the Lanham Act.” The Court began by looking at the text of section 1125(a) which provides in relevant part, “any person who, on or in connection with any goods … uses in commerce any … name, symbol or device or any combination thereof … which … is likely to cause confusion or to cause mistake or to deceive as to … the origin, sponsorship or approval of his or her goods … by another person … shall be liable in a civil action by any person” who has been damaged.

The Defendants first argued that a celebrity’s “persona” was too “amorphous” to constitute a “name, symbol or device” under section 1125(a) to allege a Lanham Act violation. The Ninth Circuit rejected this and found that it had long been recognized that “a celebrity whose endorsement of a product is implied through the imitation of a distinctive attribute of the celebrity’s identity” can sue for such a violation. Given that the Defendants were appealing post-verdict, the Ninth Circuit was bound to construe the evidence in a light most favorable to plaintiffs given that they had won at trial.

The Ninth Circuit began by focusing on the “likelihood of confusion” inquiry which asks “whether a reasonably prudent consumer in the marketplace is likely to be confused” with regard to the goods bearing the marks at issue. In a celebrity case such as this one, the Court ordinarily uses an eight factor test to determine the likelihood of confusion: (1) the celebrity’s level of recognition in the intended market; (2) the link between the celebrity’s fame or success and the defendant’s product; (3) the similarity of the likeness used by defendant’s product to the celebrity; (4) evidence of actual confusion; (5) the marketing channels used by plaintiffs and defendants; (6) the degree of care exercised by the likely purchaser; (7) the intent by defendant to use the celebrity’s likeness; and (8) the likelihood of expansion of product lines. Given that the lawsuit was not brought by Bob Marley, the Court must also consider an additional factor concerning the strength of association of the mark and the Plaintiff. In analyzing these factors, the Ninth Circuit found that it could not conclude as a matter of law that the jury erred in finding a Lanham Act violation for false endorsement.

Factors 1-3. The Ninth Circuit found that evidence on these first three factors was essentially undisputed. Bob Marley’s image had a high level of recognition in the target market and had long been associated with clothing merchandise. In fact, while he was alive Bob Marley sold his own merchandise bearing his image and his heirs continued to do so following his passing. Furthermore, it was undisputed that Defendants were using photos of him on their merchandise.

Factor No. 4. Defendants’ primary argument was on the fourth factor that there was insufficient evidence of actual confusion. In proving their case, Plaintiffs provided data from a survey of interviews they conducted with two groups of people, those who were shown Defendants’ merchandise bearing Bob Marley’s image and a control group who were shown a t-shirt bearing the image of an unknown African American man with dreadlocks. Almost twice as many people in the first group responded that Bob Marley (or his heirs) had granted permission for the t-shirt to be sold as compared to the other group. The Ninth Circuit found that this bore some evidence of actual confusion. To the extent the Defendants contended that there were problems with the data or the survey process, this would have gone the survey’s probative value. Furthermore, the Ninth Circuit noted that while evidence of actual confusion is relevant to likelihood of confusion, it is not required in a false endorsement claim.

Factor No. 5. Plaintiffs produced evidence at trial that showed that Defendants had marketed their products in the same retail stores as Plaintiffs’ and their licensees.

Factor No. 6. The Court again found that Plaintiffs had produced sufficient evidence as to the low degree of purchaser care. In fact, Defendants’ representatives testified that given the cost of their merchandise between $7 and $15, the products were not generally expensive and were typically “a good value” and “an impulse purchase.” Defendants could not dispute the well standing legal principle “that low prices imply correspondingly low consumer care” when purchasing a certain product.

Factor No. 7. Here, the Ninth Circuit clarified that Plaintiffs were not required to prove that the Defendants knew that their actions were unlawful but only that “they intended to `confuse’ consumers concerning the endorsement of their products”. To satisfy this burden, Plaintiffs offered evidence that demonstrated that Defendants’ t-shirts contained a nearly identical photograph of Bob Marley with similar Rastifarian green, yellow and red stripes on a black t-shirt. The Court held that a reasonable jury could “infer that [Defendants] sought to associate their product with Plaintiffs by intentionally creating similar merchandise.”

None of the parties addressed the eight factor of likelihood of expanding product line and so the Court turned to the additional factor as to the association between Bob Marley and the Plaintiffs. The Court found that there was sufficient link here because Bob Marley himself sold merchandise bearing his image during his lifetime and his successors had continued to do so after his passing. Furthermore, over the years, Plaintiffs have actively prosecuted similar claims of improper uses of Bob Marley’s likeness and there was testimony offered that even Defendants were aware that Hope Road and Zion held the license to Bob Marley’s image based on “market knowledge.” Thus, the Ninth Circuit concluded that the jury properly found that there was a likelihood of confusion as to Bob Marley’s “endorsement” of Defendants’ products.

Defendants also argued that the claim for a false endorsement should fail because Bob Marley’s image had not been used to endorse some other product. The Court rejected this argument and held that the use of Bob Marley’s image on Defendants’ product itself was sufficient to state a claim under the Lanham Act since it had been “used directly on the Defendants’ goods,” as required by section 1125(a).

Finally, the Defendants argued that allowing Plaintiffs to prevail on their false endorsement claim under 15 USC §1125(a) would essentially create a “federal right of publicity.” The Ninth Circuit rejected this argument as well, recognizing that a claim under the Lanham Act for false endorsement was different than a state right of publicity claim because it added the additional element of likelihood of confusion. The Court found that the inclusion of this additional factor, coupled with the assumption as to Congress’ intent, led to the conclusion that a false endorsement claim under the Lanham Act was sufficiently different from and did not create a federal right of privacy claim.

One issue that permeates the Ninth Circuit’s opinion appears to be the fact that Defendants chose to waive or not pursue certain defenses as to Plaintiffs’ false endorsement claim. These included the aesthetic functionality defense as well as a defense under the Copyright Act that were not developed in the lower court. As a result, the Ninth Circuit was precluded from considering them and thus it is uncertain whether the assertion of these defenses would have led to a different result.

The Supreme Court recently decided a patent case involving a significant procedural issue.  In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S.Ct. 831 (1/20/15), the question before the Court was whether the Federal Circuit Court of Appeals should review a district court’s factfindings in its claim construction decision under a de novo or a “clearly erroneous” standard.   The Court held that the proper standard of review, under Federal Rule of Civil Procedure 52(a)(6), is “clearly erroneous.”  The case establishes a two-part standard of review of a district court’s claim construction decision: a clearly erroneous standard for subsidiary facts and a de novo standard for the question of law.

The case involved Teva Pharmaceuticals’ patent for a method of making a drug to treat multiple sclerosis.  Sandoz began to sell a generic version of the drug.  Teva Pharmaceuticals sued Sandoz for patent infringement.  The claim at issue referred to a polymer having a specific molecular weight.  Sandoz argued that Teva Pharmaceuticals’ patent was invalid because the term “molecular weight” was indefinite.  Sandoz contended that there were three possible meanings of “molecular weight,” and that the patent did not explain which one was to be used.

The district court held that the patent was valid, based on expert testimony, finding that the term “molecular weight” was definite to a person skilled in the art.

Sandoz appealed.  The Federal Circuit Court of Appeals reversed, holding the patent invalid.  The appellate court reviewed the district court’s claim construction decision under a de novo standard of review, including the district court’s findings on the subsidiary facts.

The Supreme Court reversed the Federal Circuit’s decision.  Because the Federal Circuit reviews all district court decisions in patent infringement cases, and because the Federal Circuit has applied the de novostandard of review in all of its decisions, it was necessary for the Supreme Court to address the issue.  The Court explained that Rule 52(a)(6) provides that an appellate court cannot set aside a district court’s findings of fact unless those findings are clearly erroneous.  The Court held that this rule applies to the Federal Circuit’s review of a district court’s decision on subsidiary factual matters in its claim construction decision.  The Court said that there are no exceptions to the Rule – an appellate court cannot review findings of fact de novo.

The Court discussed its landmark claim construction decision, Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996).  There, the Court had held that claim construction was strictly a question of law for the court, reasoning that the construction of written instruments (such as contracts and deeds to real property) is better performed by a judge than a jury.  The Court explained that its holding in Markman that the ultimate issue of claim construction was a question of law did not mean that there was an exception to Rule 52(a)’s requirement that appellate courts should review factual matters under a “clearly erroneous” standard.  In some patent cases, district courts must determine disputes over subsidiary facts, and Rule 52(a) requires that all such findings must be reviewed under the “clearly erroneous” standard.

The Court explained its rationale – the appellate court should employ a “clearly erroneous” standard to subsidiary facts in patent cases because such cases often involve scientific principles and facts and expert witnesses.  The trial judge is in a much better position to evaluate expert testimony, observe the invention, or appoint an expert for the court, and therefore, to resolve disputes over the underlying facts.

Then the court set forth how the appellate court should apply the two standards of review, at 841:

“. . . when the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent’s prosecution history), the judge’s determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo . . . In some cases, however, the district court will need to look beyond the patent’s intrinsic evidence and to consult extrinsic evidence in order to understand, for example, the background science or the meaning of at term in the relevant art during the relevant time period. . . . In cases where those subsidiary facts are in dispute, courts will need to make subsidiary factual findings about that extrinsic evidence.  These are the “evidentiary underpinning” of claim construction that we discussed in Markman, and this subsidiary factfinding must be reviewed for clear error on appeal.”

The practical application of the Court’s holding, at id., is that:

“The district judge, after deciding the factual dispute, will then interpret the patent claim in light of the facts as he has found them.  This ultimate interpretation is a legal conclusion.  The appellate court can still review the district court’s ultimate construction of the claim de novo.  But, to overturn the judge’s resolution of an underlying factual dispute, the Court of Appeals must find that the judge, in respect to those factual findings, has made a clear error.”

The Court emphasized that, sometimes, the resolution of subsidiary facts may determine the outcome of the question of law of claim construction, but that, in all cases, the ultimate question of claim construction remains a question of law.

Many of you may be familiar with the pop hit “Blurred Lines” by Robin Thicke, Clifford Harris, more popularly known as T.I., and Pharrell Williams (the “Composers”). If it does not sound familiar by title, perhaps you may recall it for its controversial nudity laden music video, or the fact that it was the song performed by Thicke and Miley Cyrus at the MTV Video Music Awards in 2013 when Miley’s scandalous conduct went viral and shocked the world—including Thicke’s spouse. However, what you may be less familiar with is the fact that the heirs of Motown great Marvin Gaye (the “Heirs”) have been threatening to sue the Composers since at least early 2013. The Heirs claim that “Blurred Lines” infringes their copyright in the Marvin Gaye song “Got to Give it Up.” However, in August 2013, after months of discussion on the issue, the Composers opted to file an action for declaratory relief in the United States District Court for the Central District of California, seeking a judgment that “Blurred Lines” does not infringe “Got to Give it Up.” The justification there was likely that sometimes the best defense is a strong offense. The Heirs then filed a counterclaim for copyright infringement alleging that “Blurred” Lines” does in fact infringe “Got to Give it Up” and also that another song by Robin Thicke and Paula Patton—“Love After War”—infringes Marvin Gaye’s song “After the Dance.” The trial on this matter began on February 24, 2015 and is currently ongoing.

In order to establish a claim for copyright infringement, a party must show that (1) the plaintiff owns a valid copyright in the work that allegedly has been infringed; and (2) the infringing party copied protected elements of the plaintiff’s work. “Because direct evidence of copying is not available in most cases, plaintiff may establish copying by showing that defendant had access to plaintiff’s work and that the two works are ‘substantially similar’ in idea and in expression of the idea.” Smith v. Jackson, 84 F.3d 1213, 1219 (9th Cir. 1996). In determining whether two works are substantially similar, a two-part analysis is employed. Swirsky v. Carey, 376 F.2d 841, 845 (9th Cir. 2004). This includes an objective extrinsic test and a subject intrinsic test. Id. The extrinsic test considers whether the two works share a similarity of ideas and expression of a work and expert testimony. Id. This analysis requires breaking the works down into their constituent elements and comparing those elements for proof of copying as measured by “substantial similarity.” In performing this analysis it is vital to remember that substantial similarity only considers similarity in expression—not ideas. Such elements are not protectable under applicable copyright law. Where the party cannot establish extrinsic similarity, the claim fails because a jury cannot find substantial similarity without evidence on both the extrinsic and intrinsic tests. Sony Pictures, 156 F.Supp.2d at 1157. However, if the extrinsic test is satisfied, then a jury is required to make a determination on the intrinsic test. The intrinsic test is an examination of an ordinary person’s subjective impression of the similarities between the two works. In order to establish infringement, both tests must be satisfied.

The Heirs base their claim on eight alleged similarities between “Got to Give It Up” and “Blurred Lines.” However, the Composers have taken the position that these alleged similarities are based on commonplace elements of Marvin Gaye’s sound recording of “Got to Give It Up” that were not included in the sheet music he submitted to the Copyright Office in 1977 to register his copyright, and thus they are not part of the copyrighted composition that the Heirs claim to own. Sound recordings and their underlying musical compositions are separate works with distinct copyrights. Newton v. Diamond, 204 F.Supp.2d 1244, 1248-1249 (C.D. Cal. 2002). To be clear, sound recording refers to musical elements not contained in the composition such as the sounds of the instruments, or other recording elements including backup vocals and other sound effects. The Composers claim that the Heirs do not own the Marvin Gaye sound recording—only the composition. Thus, the gist of the Composers’ argument is that there are no “substantial similarities” between the songs because the eight alleged similarities consist of unprotectable, commonplace ideas allegedly found in both songs—such as the idea of using a cowbell or the idea of using backup vocals. These are not compositional elements, but rather elements in Marvin Gaye’s sound recording. Copyright law only protects original expression—specific notes, rhythms, and harmonies—not mere ideas, such as the idea to use the aforementioned elements. Thus, Composers take the position that no such expression is remotely similar. Specifically, they claim there is no similarity in the melodies, the harmonies, the sequence of chords, the rhythms, the structures, or the lyrics. Pharrell Williams testified in support of this position earlier today when he took the stand. When the Heirs’ attorney asked whether he effectively captured the feel of the Marvin Gaye era, Pharrell responded, “[F]eel. Not infringed [sic].”

The Composers believe that the only reason the Heirs claim infringement is because Composers made certain comments in promoting their record about being inspired by Marvin Gaye. According to the Composers, the Heirs disregarded the fact that the two songs had no similarity in actual notes or phrases because they saw a potential opportunity to get paid. With respect to “Love After War” there is only one note in common with “After The Dance.” Thus, Composers argue that this second infringement claim is even more tenuous.

In contrast to the Composers’ position, the Heirs claim the following similarities:

• Signature phrase in the main vocal melodies;
• Hooks with similar notes;
• Hooks with back up vocals;
• The core theme in “Blurred Lines” and backup hook in “Got To Give It Up” are similar.
• Similar back up hooks;
• Bass melodies have similar rhythmic elements;
• Keyboard similarities;
• Unusual percussion sounds, including cowbell.

Obviously, the Heirs take a different position with respect to whether the foregoing similarities constitute protectable expression or mere ideas. The Heirs also contend that the aforementioned elements taken as a whole constitute a protectable interest. It is true that a combination of unprotectable elements may qualify for copyright protection, but this is only true where those elements are “numerous enough and their election and arrangement original enough that their combination constitutes an original work of authorship.” Satava v. Lowry, 323 F.3d 801, 811 (9th Cir. 2003). Composers contend that the elements are not so numerous as to constitute an original work, but they disagree. Furthermore, it should be noted that such compositions are only entitled to “thin protection” under copyright law. This means that any copying would have to be “virtually identical.”

Composers filed a motion for summary judgment on the grounds stated above, but the motion was denied because both sides proffered their respective expert’s analyses which provided indicia of a sufficient disagreement concerning substantial similarity to present a genuine issue of material fact. The Court found that the experts were in conflict with respect to the similarity of the signature phrases, hooks, bass lines, keyboard chords, harmonic structures, and vocal melodies. As such, the matter could not be decided as a matter of law. Because the matter could not be disposed of through summary judgment, the case proceeded to trial where it recently came out that Blurred Lines made $16,675,690 in profits. This essentially begs the question—will any or all of the Composers have to cough up any of that money to the Heirs? The answer to that question lies with the jury.

By: Labor and Employment Group

On February 25, 2015, the United States Department of Labor issued new rules designed to revise the regulatory definition of “spouse” under the Family and Medical Leave Act of 1993 (“FMLA”).  The new rules amend the regulatory definition of spouse under the FMLA so that it now specifically includes employees in legal same-sex marriages so that such employees will be permitted to take FMLA leave to care for their spouse or family member, regardless of their state of residence. This change will ensure that the FMLA will provide employees in same-sex marriages the same ability as all other employees to fully exercise their FMLA rights.  The new rule will become effective on March 27, 2015.

It is no secret that arbitration agreements may greatly reduce the risks that many employers face in disputes with employees. For example, when used correctly, such agreements can curb exposure to class actions by forcing employees to arbitrate disputes on an individual basis instead of a class basis. See, e.g., Iskanian v. CLS Transportation Los Angeles, LLC, 59 Cal.4th 348 (2014).

However, when such an agreement either contains certain language or fails to include other language, it may result in a class action or a representative action being litigated in front of an arbitrator instead of a court. This can be problematic for many reasons, not the least of which is that an arbitrator’s hourly charges typically are paid by the employer – and those fees can add up quickly in a complicated matter involving numerous parties.

Thus, instead of decreasing the cost of defending a class action or a representative action, a poorly drafted arbitration agreement could result in greatly escalating such costs. A pair of recent decisions from the California Court of Appeal for the Fourth Appellate District (in San Diego) underscore the need for employers to use great care in drafting such agreements to avoid such outcomes.

In Securitas Security Services USA, Inc. v. Superior Court, Cal. Ct. App. Case No. D066873, an employee filed a lawsuit alleging meal-and-rest-breaks violations. The lawsuit was fashioned both as a class action and as a representative action under California’s Private Attorneys General Act of 2004 (“PAGA”) Cal. Labor Code §§ 2698 et seq. The employer, Securitas Security Services USA, Inc. (“Securitas”), asked the trial court to (1) compel the lead plaintiff to arbitrate her individual claims, (2) dismiss and/or sever and stay the lead plaintiff’s class claims, and (3) dismiss and/or stay the PAGA claim.

Nothing out of the ordinary so far. The case took an unusual turn, however, when the trial court granted the motion to compel arbitration. It was a surprising twist not because the trial court granted the motion but because of the way it did so. Specifically, because the arbitration agreement included an invalid waiver of PAGA claims, the trial court ordered the parties to arbitrate the plaintiff’s entire complaint – including her PAGA claims.

This put Securitas in the awkward position of having to ask the appellate court to reverse a decision that granted Securitas’ own motion. Ultimately, California’s Fourth Appellate District reversed the trial court but voided the entire arbitration agreement on the ground that the invalid PAGA waiver could not be severed from the agreement. (Potential problems with clauses that bar the severability of a PAGA waiver are discussed in one of our prior blog posts, The New PAGA-Waiver Trap Door.)

This outcome, which put the parties back at square one and appears to allow the class-action and PAGA claims to proceed in civil court, amounted to an expensive ride on the merry-go-round for Securitas. At the same time, the very language of the arbitration agreement seemingly deprived Securitas of any benefit that it had hoped to gain from that agreement.

A different employer, Universal Protection Service, L.P. (“Universal”), suffered a similar fate before the same panel of the Fourth Appellate District. See Universal Protection Service, L.P. v. Superior Court, Case No. D066919. An employee in that case alleged that Universal had engaged in overtime, meal-and-rest-period, and indemnification violations. However, the employee took the unusual step of seeking arbitration of her putative class claims under the employer’s arbitration agreement, instead of filing a civil action in court.

Although the Universal likely would have been eager to arbitrate the employee’s individual claims, it had no taste for class arbitration. Thus, Universal was forced to take the unusual step of filing an action in state court to thwart the arbitration of an employment dispute.

Universal argued that it was for the court, and not the arbitrator, to decide if class claims could be arbitrated (presumably because arbitrators are thought to be far more inclin
ed to find that claims are subject to arbitration). The trial court agreed with the employee and compelled arbitration, finding that it was for the arbitrator to determine “whether the class action claims are arbitrable.”

While initially successful in persuading the Court of Appeal to take the rare step of reviewing the lower court’s decision by way of a writ petition, Universal ultimately was unable to avoid the impact of the trial court’s ruling. The appellate court agreed with Universal that the arbitration agreement did not expressly delegate to the arbitrator the determination of whether the class claims were arbitrable. Nonetheless, the Fourth Appellate District found that the arbitration agreement explicitly referenced the American Arbitration Association rules, “which unambiguously state that the arbitrator is to decide whether the parties’ arbitration agreement permits class arbitration.”

In sum, there are advantages and disadvantages to both having or refraining from using certain language in arbitration agreements. In light of these two new decisions, employers who wish to enhance the likelihood of enforcing their arbitration agreements should consult legal counsel to determine if amendments to their arbitration agreements are advisable.

Just last week, on February 18, 2015, Seattle Seahawks superstar running back Marshawn Lynch (“Lynch”), also known as Beast Mode, filed for a federal trademark with the United States Patent and Trademark Office (“USPTO”) for his now famous quote—“I’M JUST HERE SO I WON’T GET FINED.” For those of you who are not big NFL fans, Lynch coined his now signature phrase during the Super Bowl XLIX Media Day. This did not come as a huge shock to most NFL fans because Lynch has developed a reputation for avoiding the media and refusing to fulfill the media obligations of one of the league’s brightest superstars. However, in the face of the NFL’s threat of a $50,000 fine if he refused to participate in Super Bowl XLIX Media Day, Lynch decided to play ball. In response to over 20 proffered questions, Lynch simply responded, “I’m just here so I won’t get fined.”

This caused quite the outrage from the media and certain sports fans—mostly 49er fans (we all know how they adore the Seahawks), who found Lynch’s conduct unprofessional and disrespectful. But, say what you will about Lynch’s unprofessional conduct and disregard for his obligations as an NFL superstar, the fact is the man knows how to exploit and protect his own intellectual property. Financially speaking, Lynch maximized the utility of the situation by coining a signature phrase and getting it out to millions of viewers during media week. In fact, a renowned sponsorship evaluation firm calculated the value of the total exposure for Lynch’s clothing line during his Super Bowl XLIX appearances to be more than $3 million in equivalent advertising time. Not only that, he prudently followed up by filing a federal trademark application for the mark with the USPTO. Now, this did not strike me as the conduct of an IP novice, so I decided to investigate the matter further. My research revealed my intuition to be true—this was not, as the saying goes, Lynch’s first rodeo.

It turns out that Lynch is the proud owner of several other trademarks. Just last year, Lynch trademarked ABOUT THAT ACTION BOSS after he uttered the phrase to “Prime Time” Deion Sanders of the NFL Network during the lone interview that he did during Super Bowl XVLVIII Media Day. ABOUT THAT ACTION BOSS has been reviewed by the USPTO and will be published in the latter part of March. In addition to the aforementioned mark, Lynch owns four separate BEAST MODE marks and filed for four more. Lynch’s BEAST MODE marks apply to a variety of products ranging from energy drinks to earbuds and sports apparel. Interestingly, these BEAST MODE registrations all include a section for “[O]ther data” where Lynch’s attorneys have included the following: “The name ‘BEAST MODE’ identifies a living individual whose consent is of record.” I find this addition to the registrations even more intriguing in light of the fact that the marks could have been obtained without including such information. Although I cannot be certain, I would be willing to wager that Mr. Lynch, BEAST MODE himself, insisted on its inclusion.

Whatever your personal opinion of BEAST MODE, one thing is clear—he is far more business savy than the media and average sports fan give him credit for. Although Lynch is media-averse, he efficiently maximized his exposure for commercial gain. Unlike the masses of superstars who squander their fortunes and/or fail to develop alternative revenue streams outside of athletics, Lynch exploited the goodwill in his signature phrases and nickname to create what I can only assume is a lucrative side business. If you’re interested, check out the clothing line at http://www.beastmodeonline.com. Otherwise, be sure to stay tuned to the IP Blog and we will keep you apprised of any developments regarding the mark I’M JUST HERE SO I WON’T GET FINED.

By: Intellectual Property Group

On February 5, 2015, Congressman Bob Goodlatte reintroduced the “Innovation Act”; a bill designed to implement several changes to the legal framework governing United States patent law. The law is designed to make it more difficult for non-practicing entities (also known as “patent trolls”) to maintain patent infringement lawsuits. The law appears to have significant support among both houses of Congress, and may soon become law.

If passed, the Innovation Act purportedly will create several disincentives aimed at increasing the risk faced by non-practicing entities when bringing patent infringement lawsuits. First, the Innovation Act would require non-practicing entities to meet a heightened pleading requirement. Non-practicing entities would be required to plead “with detailed specificity” how the accused products allegedly infringed their patents. Additionally, the Innovation Act contains a fee-shifting provision which would allow the court to award attorneys’ fees to the prevailing party. This provision was included in the Act to address the fact that most lawsuits brought by non-practicing entities are settled by the accused party because the defense costs and legal fees associated with defending patent infringement cases often run into the millions of dollars. Accordingly, by including a fee-shifting provision, the supporters of this bill hope to create a greater incentive for accused parties to defend themselves, and to punish non-practicing entities for asserting specious claims. The Innovation Act doubles down on this fee-shifting approach by placing limitations on the discovery that can be propounded during the litigation. First, the Innovation Act would limit discovery to so-called “core documents.” According to the proposed legislation, “core documents” are documents that are most likely to be germane to the litigation, such as documents detailing how an accused product functions. Additionally, the Act would delay most of the discovery in a case until after the relevant portions of the patent asserted by the non-practicing entity had been interpreted by the court. Because the discovery process in litigation represents a significant portion of the expenses incurred by parties to litigation, Congress hopes that these limitations will remove some of the financial pressure associated with defending patent litigation claims, thereby creating an incentive for more parties to defend themselves instead of entering into extorted settlement agreements.

While there are many non-practicing entities bringing baseless patent infringement litigation against innocent third parties, there are myriad legitimate small businesses who have developed intellectual properties, obtained patents, but never have manufactured physical embodiments of their inventions. As a result, many legitimate businesses fall within the reach of laws directed toward curtailing the ability of non-practicing entities to bring and maintain patent litigation matters. As a result, while well intentioned, proposed legislation such as the Innovation Act, while being promoted as a means of protecting small business from the perils of the hordes of patent trolls wandering the small business landscape, may actually inhibit the ability for small intellectual property-based startup companies to bring lawsuits designed to vindicate their own patent rights. Additionally, the Innovation Act also may reward patent trolls who have significant financial resources and can financially support patent litigation, or tolerate the risk associated with the proposed fee-shifting provisions. Therefore, ironically, the Innovation Act could cause legitimate small businesses who own intellectual property to sell or license their patent rights to well-funded non-practicing entities, thereby creating much larger, more diversified “patent trolls.”

What do you get when you take one shark costume, add a confused backup dancer, throw in Katy Perry and the Super Bowl halftime show and top it off with a satirical artist with a 3D printer? First the backstory.

The “Left Shark” in question is a Katy Perry backup dancer who was dressed in a shark costume for Perry’s beach-themed number “Teenage Dream” during the Super Bowl halftime show. The Left Shark (the dancer to Perry’s right) seemed to have forgotten his dance moves — how else could you explain the flailing of fins. The Internet took notice; so did 3D sculptor Fernando Soza.

Soza’s satirical barbs are usually reserved for the politico set, such as Governor Chris Christie wearing a traffic cone and carrying a sign that reads “traffic study”. However, this time he took aim at the Left Shark and created a 3D printed sculpture of one regular shark, one pink shark and one holding a beer bottle.

So what do you get when you take one shark costume, add a confused backup dancer, throw in Katy Perry and the Super Bowl halftime show and top it off with a satirical artist with a 3D printer? You have the makings for a copyright dispute, of course. What else could there be?

Perry’s lawyers sent Soza a cease and desist letter alleging that the shark sculpture infringed certain “intellectual property depicted or embodied in connection with the shark images and costumes portrayed and used” in Perry’s Super Bowl halftime show. The letter insisted that Soza’s sale of the sculpture infringed Perry’s “copyrighted work” and demanded that Soza “cease and desist from all further commercial use or exploitation of unauthorized products bearing the…copyrighted images.”

Perry’s lawyers almost accomplished their goal; Soza was ready to cut bait until an NYU law professor offered to represent him. Soza’s reply challenged Perry’s claim on two grounds: the first was on ownership. Soza’s lawyer quoted a press interview Perry gave wherein she said that she had to go through layers of bureaucracy for approval of, among other things, her costumes. While interesting, the sole fact that Perry had to get NFL approval of her show costumes would not divest her of whatever authorship rights she may otherwise have in the costume. The other ground was on the copyrightability of the costume itself.

Copyright Registrability of Costumes

The United States Copyright Office has generally refused to register claims to copyright costume design on the ground that costumes are useful articles that ordinarily contain no artistic authorship separable from their overall utilitarian shape. However, where a costume design contains a separable pictorial or sculptural authorship, copyright protection is available. The “separable authorship” means that the portion of the costume claimed to be protectable must be physically separable (the work can be physically removed from the costume), or conceptually separable (the work is independently recognizable and capable of existence apart from the overall utilitarian shape of the useful article).

An example of where a costume contains physically separable elements is where the costume contains fanciful elements not related to the functionality of the costume. For example, in the case of Chosun International, Inc. v. Chrisha Creations, Ltd., 214 F.3d 324 (2005), the court determined that the heads of Chosun’s plush sculpted animal costumes are separable from the overall design of the costume, and hence eligible for protection under the Copyright Act. Because the costume “heads” are physically separable from the overall costume, in that they could be removed from the costume without adversely impacting the wearer’s ability to cover his or her body, copyright protection would be available.

An example of where a costume contains conceptually separable works is where the costume incorporates a protectable character. For example, The U.S. District Court for the Central District of California handed a big victory to Warner Bros. when it ruled that Gotham Garage violated Warner Bros.’ intellectual property rights in the iconic Batmobile when Gotham Garage manufactured a car based on the 1966 and 1989 Batmobile. Although an automobile is a useful article, the court held that the Batmobile was a protectable character and conceptually separable from the useful article. Generally, characters that are sufficiently delineated or “constitute the story being told” are entitled to receive protection apart from the work in which the character appears. However, where the character is “only a chessman in the game of telling the story” or is a stock character, no protection is warranted.

Is the Left Shark costume protectable under copyright law? In order for the Left Shark costume to be protectable under the copyright law, Perry’s team would have to claim that a portion of the costume is physically separable or conceptually separable. In Soza’s reply letter, he essentially challenged Perry’s lawyer to identify the elements of the shark costume that are protectable. Perry’s team has yet to respond. Soza, it is reported, continues to sell the Left Shark sculptures. Ernest Hemingway’s quote from “The Old Man and the Sea” comes to mind: “‘Fish,’ he said softly, aloud, ‘I’ll stay with you until I am dead.’” (Or at least until sales go flat.)

By Anthony Daye

Recently, my Alma Mater, The University of Southern California, was sued by a former member of the Trojan football team. Former cornerback Brian Baucham filed a lawsuit against USC and former coach Lane Kiffin, alleging he suffered permanent injuries after being forced to play in a game while he was ill. Baucham’s lawsuit claimed that he was “forced by Coach Kiffin to play a home game even though Mr. Baucham was very ill and diagnosed by the USC Health Clinic with an influenza-like illness, viral pharyngitis and dehydration.” After playing in a game against Berkeley, “Baucham suffered from cardiopulmonary damage, as well as brain injury with neurocognitive deficits,” according to the lawsuit. Baucham alleges that USC and Kiffin violated both the NCAA and USC injury protocol programs when they forced him to play.

This got me to thinking: Now that the National Labor Relations Board has found that scholarship football players are employees under the NLRA, what if Mr. Baucham filed suit against USC as an employee?

What causes of action could an employee have against an employer that forces them to work when they are injured or seriously ill?

Failure to Reasonably Accommodate a Disability: The Americans with Disabilities Act (ADA) and the California Fair Employment and Housing Act require that most employers provide qualified individuals with disabilities with reasonable accommodations. Whether or not the employee has a qualifying disability should always be carefully analyzed. For example, an employee’s bad back or sprained knee can be a disability; telling them to “tough it out” is not a reasonable accommodation. Keep in mind that time off of work may be considered a “reasonable accommodation” depending on the circumstances.

Workers’ Compensation – Aggravation of Pre-Existing Injuries: Even if an employee has a pre-existing injury that is bothering him/her at work (i.e. a skiing injury), forcing an employee to “fight through the pain” may cause the employee to aggravate the pre-existing injury. This essentially means that the employee’s injury is now worse than it was before, which will likely lead to a workers’ compensation claim. This is similar to what Baucham alleges in his law suit against USC.

FMLA Violation: The Family and Medical Leave Act (FMLA) provides for job protected leave and benefits coverage entitlements to employees who meet FMLA eligibility requirements. FMLA regulations define a “serious health condition” as an illness, injury, impairment, or physical or mental condition that requires the employee to be away from work. For example, if an employee comes to his/her employer with a doctor’s note for a Crossfit injury and needs a week off during the busiest time of the year, the employer has to allow the leave if the employee has:

(a) worked for the employer for at least 12 months;

(b) has worked at least 1,250 hours during the 12 months prior to the start of the FMLA leave; and

(c) works at a location where at least 50 employees are employed at the location or within 75 miles of the location.

Because this employee is an avid Crossfitter, he/she repeatedly shows up injured to work needing days off at a time. This means the employer must repeatedly allow the employee to take time off for qualifying injuries, up to 12 weeks per year.

In addition to the traditional employment claims, there is nothing to stop and employee from tacking on non-traditional claims such as negligence, intentional infliction of emotional distress, and negligent infliction of emotional distress to name a few. Moreover, both injured employees and their coworkers may have claims against employers based on general negligence (similar to negligent hiring) and OSHA regulations.

Suffice it to say, employers should think twice before requiring injured employees to “take one for the team” and work through pain as a condition of continued employment.

A few years ago, I wrote a column addressing a case in which Pom Wonderful LLC sued Coca Cola Company in connection with the marketing of one of its pomegranate-blueberry juice products. That case dealt with whether one of Pom Wonderful’s claims were barred by the Federal Drug and Cosmetic Act with regard to labeling issues.

Ever protective of its brand, Pom Wonderful was recently successful before the Ninth Circuit in a trademark infringement case. Pom Wonderful sued a competing pomegranate beverage maker doing business under the name Pur Beverages for trademark infringement. After the district court denied Pom Wonderful’s motion for preliminary injunction barring the defendant from selling its competing beverage, Pom Wonderful appealed to the Ninth Circuit.

Pom Wonderful owns numerous trademark registrations that make up its “Pom” brand family. Pom Wonderful spends significant sums in marketing its products and policing against other companies’ uses that may infringe on its trademarks. In connection with these efforts, Pom Wonderful discovered that Pur was selling a pomegranate flavored energy drink that it called “Pŏm”. When Pur refused to change its marking, Pom Wonderful sued it for trademark infringement and moved for an injunction.

The Ninth Circuit concluded that the district court erred in denying Pom Wonderful’s motion for preliminary injunction. While a preliminary injunction is “an extraordinary and drastic remedy,” an injunction should issue where the moving party, such as Pom Wonderful, can establish that “(1) it is likely to succeed on the merits; (2) it is likely to suffer irreparable harm in the absence of preliminary relief; (3) the balance of equities tips in its favor; and (4) an injunction is in the public interest.” The primary issue facing the Ninth Circuit was whether the lower court had erred in determining that Pom Wonderful had not demonstrated the likelihood of success on the merits.

The Court began by recognizing that Pom Wonderful, to prevail on a claim of trademark infringement, would have to show that: “(1) it has a protected ownership interest in the `Pom’ mark; and (2) Pur’s use of the word ‘Pŏm’ is likely to cause consumer confusion thereby infringing upon Pom Wonderful’s rights.” The Court did not have to spend much time on the first factor because Pom Wonderful’s registration of its trademarks was “prima facie evidence of the validity of the mark”. This registration provided Pom Wonderful the “exclusive right to use the ‘Pom’ mark [and] covers all design variations of the word because ‘Pom’ was registered as a standard character mark,” i.e., a mark that makes no claim to any particular font, style, color or display size.

Turning to the issue of likelihood of consumer confusion, the Ninth Circuit stated that it had to use the factors from AMF, Inc. v. Sleekcraft Boats, 5999 F.2d 341 9th Cir. 1979) (“the Sleekcraft Factors”) in assessing the likelihood of consumer confusion. These factors are as follows: “(1) strength of the protected mark; (2) proximity and relatedness of the goods; (3) type of goods and the degree of consumer care; (4) similarity of the protected mark and the allegedly infringing mark; (5) marketing channel convergence; (6) evidence of actual consumer confusion; (7) defendant’s intent in selecting the allegedly infringing mark; and (8) likelihood of product expansion.” The Ninth Circuit turned to each of these factors in turn to determine that the lower court had erred.

Strength of the Protected Mark: The Ninth Circuit found that the lower court had correctly found that this factor favored Pom Wonderful. Although the mark “Pom” does not necessarily mean pomegranate by resorting to conventional dictionaries, it requires customers to use some additional imagination and perception to attribute the mark to Pom Wonderful’s goods. Given its substantial investment in its sales and marketing efforts, the Court held that “Pom Wonderful enjoys sufficient marketplace recognition to render its `Pom’ mark commercially strong.”

Relatedness of Goods: The Ninth Circuit found that the lower court had also correctly found that this second factor favored Pom Wonderful and that Pom Wonderful’s juice beverages were related to Pur’s “Pŏm” energy drink. This factor addresses “related goods … are those `which would be reasonably thought by the buying public to come from the same source if sold under the same mark’.” The Court concluded that a fruit juice beverage and a fruit flavored energy drink are sufficiently complimentary that a reasonable consumer would connect them.

Degree of Consumer Care: This was another factor that the Ninth Circuit concluded had been properly found by the lower court to be in Pom Wonderful’s favor. Given the nature of the beverage market whereby customers typically by single unit beverages at low cost, a “consumer [would] exercise a low degree of care and sophistication” in making such purchases

Similarity of Marks: Here, the Ninth Circuit found that the lower court erred in concluding that there was not a similarity of marks. The Ninth Circuit compared the product labeling and noted that they had “many obvious visual similarities,” including each containing three letters with a stylized second letter. The Ninth Circuit further went beyond the mere look of the labeling and found that because the marks were pronounced in precisely the same manner, “the marks are aurally identical.” Finally, the Ninth Circuit concluded that the two marks had the same meaning in that they both referred to pomegranate flavoring and/or ingredients. Given the visual, aural and semantic similarities, and having to weigh similarities more heavily than dissimilarities between the marks, the Ninth Circuit concluded that the lower court erred in not finding the marks to be similar for purposes of the injunction motion.

Marketing Channel Convergence: The Ninth Circuit concluded that the lower court again erred in concluding that this factor did not favor Pom Wonderful. This factor concerns “whether the parties’ customer basis overlap” and “how the parties advertise and market their products.” The Ninth Circuit concluded that Pom Wonderful would likely be able to establish that “both companies use parallel market channels” and that they both sell their products through supermarkets throughout the country, with at least one overlapping state and one overlapping supermarket chain. The Ninth Circuit also concluded that both products were similar in that they were “inexpensive and marketed to health conscience consumers.” Therefore, the Ninth Circuit held that this factor should have been weighed in Pom Wonderful’s favor.

Turning to the three remaining factors: actual confusion, defendant’s intent and product expansion, the Court held that the record before the lower court indicated that these factors did not favor one side or the other. Thus, in looking at the totality of the circumstances, the Ninth Circuit found that five of the Sleekcraft factors favored Pom Wonderful and the other three were neutral. Thus, the Ninth Circuit held that the lower court erred in not finding that Pom Wonderful had established the likelihood of success on the merits to warrant injunctive relief. The Ninth Circuit remanded the case back to the lower court to consider whether Pom Wonderful had established the other factors necessary for injunctive relief in light of its ruling.