July 2020

Lady Antebellum Sues Over Trademark Rights to “Lady A”

Takeaway: Trademarks are a valuable asset, so register your name, and if you change it for political or social reasons, make sure you first have it protected.

In light of the Black Lives Matter movement and the current social and political climate, the band Lady Antebellum announced it would change its Civil War-referencing band name to its nickname “Lady A,” as it has been called by fans since 2006. (Similarly, the Dixie Chicks band has changed their name to “The Chicks.”) However, a blues singer, who is also a black woman, has been using the stage name “Lady A” for over 20 years.

Both the Grammy winning country band and blues singer initially were in talks of negotiations, yet those negotiations quickly fell apart when the blues singer demanded a $10 million dollar payment. The band has held a trademark registration for “Lady A” since 2011 and were faced with no opposition when filing, even though trademark filings are public. The platinum album selling band then sued the blues singer, seeking protection to use the name “Lady A” and to shield the band from being subject to further litigation. We will keep you posted as to the outcome of the dispute.

Photo Credit: https://slate.com/culture/2020/07/lady-antebellum-lady-a-lawsuit-trademark.html

CA Supreme Court Recommends the CA State Bar Lower The Passage Rate of the Upcoming CA Bar Exam and Will Administer the Exam Online

Takeaway: The Fall CA Bar Exam will be administered online in October, and the passage score will be lowered, which should raise serious questions about professional competency.

The CA Supreme Court announced July 16, 2020 that it is recommending that the CA State Bar lower the passing score of the CA bar examination to 1390 from a previous passing score of 1440.

This announcement comes after the CA State Bar has faced years of scrutiny over its low passage rate. In fact, just this past February 2020, the CA bar exam’s passage rate for exam takers reached an all-time low of just 26.8%. In light of the COVID-19 health crisis, the CA Supreme Court also announced the fall bar exam will also be postponed again to be administered online and will occur in October.

When judging the competency of future lawyers, clients may need to consider when attorneys were admitted to the CA bar.


The Addition of “.com” Can Create a Protectable Trademark

Takeaway: Adding “.com” to a word may entitle you to trademark registration, provided that there is sufficient recognition by the public as to whether the designation represents a single source of origin for goods or services.

The Supreme Court recently held that adding “.com” to a generic term can create a trademark. The Supreme Court’s ruling affirmed the Fourth Circuit’s opinion that an online travel booking agency, Booking.com, was entitled to trademark protection in “Booking.com.” The Supreme Court also found that “Booking.com” was not generic to consumers as it does not represent the entire class of online hotel reservation services.

Noteworthy, the applicants had substantial evidence in the record concerning the public’s view of the designation as a particular source for book accommodation and travel.


The New USMCA Will Govern Trade in North America Replacing NAFTA

Takeway: The USMCA is meant to modernize NAFTA and lead to freer markets and heightened protection for IP holders, and may also provide greater economic stimulus and jobs to the U.S.

President Trump recently announced that as of July 1, 2020, the United States-Mexico-Canada Agreement (USMCA) will govern trade in North America. He stated the “USMCA is a great deal for all three countries, solves the many deficiencies and mistakes in NAFTA, greatly opens markets to our farmers and manufacturers, reduces trade barriers to the U.S. and will bring all three Great Nations together in competition with the rest of the world.”

According to the Office of the United States Trade Representative, some of the key points of the intellectual property chapter of the agreement will:

1. “require full national treatment for copyright and related rights so United States creators are not deprived of the same protections that domestic creators receive in a foreign market;

2. continue to provide strong patent protection for innovators by enshrining patentability standards and patent office best practices to ensure that United States innovators, including small- and medium-sized businesses, are able to protect their inventions with patents, include strong protection for pharmaceutical and agricultural innovators;

3. require strong standards against the circumvention of technological protection measures that often protect works such as digital music, movies, and books;

4. establish appropriate copyright safe harbors to provide protection for IP and predictability for legitimate enterprises that do not directly benefit from the infringement, consistent with United States law; and

5. enhance provisions for protecting trademarks, including well-known marks, to help companies that have invested effort and resources into establishing goodwill for their brands.”

Also after adopting the USMCA, Mexico will no longer require recordal of trademark licenses and new remedies for trademark holders will be available. Additionally, patent terms may be adjusted. For example, the 20-year patent term can now be adjusted due to unreasonable delays from the Mexican Patent Office and will provide potential benefits to all applications filed after November 30, 2020.


Instagram Posts Could Trigger Sublicense Provisions That Allows Others to Use Your Posts

Takeaway: Be careful when using Instagram’s embedded application programming interface (API) in any of your online content, as it is undecided if it triggers a sublicense based on a provision in Instagram’s Terms and Conditions, which would allow others to use your content without violating any copyright rights.

In the pending case Sinclair v. Ziff-Davis, it is being decided whether publicly posting a photograph on Instagram triggers a sublicense based on a provision in Instagram’s then-existing Terms and Conditions. This could mean that content posted to a public Instagram account might result in a non-exclusive, transferable license being granted to Instagram. Based on its Terms and Conditions, this provision could allow other Instagram users to access the content and direct a web browser to retrieve the content for incorporation into, for example, an article on the web. In the case, the Court initially ruled against a photographer who posted a photograph on Instagram, which was then re-displayed by a third party on its own website.

Shortly thereafter, however, another judge in the Southern District of New York considered the same issue (a photograph publicly posted on Instagram and then re-used via Instagram’s embedded API), but ruled differently than Judge Wood in the Sinclair case. The distinction appears to be whether the sublicense was actually granted or merely implied to have been granted.

In the Sinclair case, a sublicense appears to have been implied or granted by operation of law. In this case, the Court denied a defendant’s motion to dismiss because, considering the allegations in the complaint in a light most favorable to the plaintiff-photographer, as it must under applicable law, the Court could not assume a sublicense had actually been granted or implied by Instagram to Newsweek. This ruling appears to limit the impact of Sinclair. Also, Instagram may have clarified or modified its rules on this issue as well.

Notably, not long after the second case on this issue, Judge Wood, despite previously ruling against the photographer in the Sinclair case, granted a motion for reconsideration in which she did not change her view that publicly posting a photograph on Instagram gives Instagram a license to further sublicense the photograph. Judge Wood, however, reversed her prior decision because the question of whether Instagram’s Terms and Conditions, in a sense, automatically sublicenses the work to others, or requires additional steps for a sublicense to be granted, was a question of contract interpretation that could not be resolved on a motion to dismiss. Thus, Judge Wood undid her dismissal in Sinclar for further consideration. Her new order, however, seems to suggest that the sublicense may not be automatic.

This is an issue surely to be hotly litigated in the future as to online platforms and postings.


Cislo & Thomas LLP Spotlight

Our Own Kristin Kosinski, Esq. — Role Model to So Many Working IP Professionals

This month’s spotlight features Kristin Kosinski, Esq., certified Patent Attorney and admitted in several states and jurisdictions. Kristin is a successful intellectual property attorney and mom of 3, proving to be an inspiration and role model to so many professionals.She has been with Cislo & Thomas for over 13 years and was previously with Davis Wright Tremaine LLP in Los Angeles and Darby & Darby in New York.

Kristin advises domestic and international clients on various industries such as health and wellness, entertainment, finance and investments, fashion, restaurant services, luxury goods, vitamin and nutritional supplements, cosmetics, toys, new media, computer games, software, and industrial products.

Kristin is a member of the International Trademark Association (INTA) Internet Committee and is a panel member of the INTA Trademark Mediator’s Network. She is also on the panel of neutrals of FORUM, an alternative dispute resolution organization pertaining to domain name disputes.

“Rarely do you find an attorney who is both skilled in patent matters and also other areas of intellectual property who brings such technical skill and business judgment to her clients,” said Daniel M. Cislo, Esq., Managing Partner.

Cislo & Thomas is so thankful to have Kristin on our team. Keep up the great work!


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