October 2020

Cub Club Investment, LLC, Recently Filed a Copyright and Trade Dress Infringement Complaint Against Apple

Takeaway: Apple’s attempt to diversify its emoji’s finds the tech mogul in court.

Just weeks ago in the Western District of Texas, Cub Club Investment (“CCI”) filed suit against Apple for copyright and trade dress infringement in addition to other claims. The complaint alleges Apple, without permission or license, copied the five skin tones for its emojis which are “digital images or icons used to express an idea or emotion to the sender.” CCI is the owner of more than 20 copyrights in the diverse emoji, has three pending patent applications, and launched the app “iDiversicons.”

CCI claims throughout 2013-2015 that it pitched its ethnically diverse emoji idea to the Unicode Consortium, the trade organization in charge of emoji standards, which Apple is also a member of. CCI further claims it even pitched its idea to Apple to discuss a partnership, which was unsuccessful. Instead, Apple continued to pursue developing its own diverse emojis and designs. CCI is seeking an accounting of profits and damages as a result of Apple’s alleged actions.

Photo Credit: www.idiversicons.com

A New Supreme Court Justice Takes the Bench

Takeaway: Amy Coney Barrett is confirmed and sworn in to the U.S. Supreme Court.

Monday night, the United States Senate voted 52-48 to confirm Amy Coney Barrett to the Supreme Court. Barrett, 7th Circuit Court of Appeals judge and Notre Dame law school professor, is President Trump’s third appointment during his presidency and the 115th Supreme Court Justice. On Monday, October 26th, she was sworn in on the South Lawn at the White House with Justice Clarence Thomas administering the oath.

Although Amy Coney Barrett’s caseload while serving as a judge in the 7th Circuit has not included a multitude of intellectual property lawsuits, a few of her noteworthy rulings include Ariel Investments, LLC v. Ariel Capital Advisors LLC, a trademark case, and J.S.T. Corp. v. Foxconn Interconnect Technology, a trade secrets case. Both of these cases involved the issue of personal jurisdiction, in which she found no basis for personal jurisdiction on appeal.

In 2019, she also decided a copyright case involving the resolution of the definition of “one work” and whether a compilation qualifies as “one work” or a set of works for purposes of determining statutory damages. Barrett, for the 7th Circuit, along with the 1st, 9th, 11th, and D.C. circuits, joined the majority and ruled that weight should be afforded to the text of Section 504(c) and that a compilation only qualifies as “one work,” limiting statutory damages accordingly.

Photo Credit: wikipedia .org/wiki/Amy_Coney_Barrett


Nike Successfully Defends Its JUST DO IT Trademark

Takeaway: The TTAB agreed with Nike that a trademark application for JUST BELIEVE IT. created a likelihood of confusion with Nike’s JUST DO IT mark.

Another recent win for Nike in protecting its famous JUST DO IT trademark. The Trademark Trial and Appeal Board (TTAB) agreed with Nike’s opposition against an applicant’s attempt to trademark JUST BELIEVE IT. for “Business consultation services for others in the field of fundraising; business consultation services to assist businesses, organizations and individuals in the planning, management and conducting of fundraising activities via the sale of new and recycled products, namely, apparel, pens, decals, stickers, home goods, and other fundraising products.” The TTAB’s decision to sustain Nike’s opposition was based on Nike’s fame in its JUST DO IT mark and that the applicant’s goods for the JUST BELIEVE IT. mark were related to Nike’s in that the core of the applicant’s mark was to render “assist[ance] [to] others in raising funds through the sale of clothing and other products bearing the JUST BELIEVE IT. mark,” weighing heavily in favor of finding a likelihood of confusion.

Regarding the similarity of the marks themselves, the TTAB found that Nike’s JUST DO IT mark and applicant’s JUST BELIEVE IT. mark “each consist of three words, beginning with JUST and ending with IT” and “both take the form of hortatory commands.” Furthermore, even though DO and BELIEVE are different words with distinct meanings, “action and belief are intertwined concepts, particularly in sports and religion.” In sum, the TTAB found the marks to be similar for likelihood of confusion purposes and refused the applicant’s registration for JUST BELIEVE IT.


Eddie Van Halen, American Rocker and Patent Owner

Takeaway: Eddie Van Halen was not only a guitar god on stage but off stage and is the owner and inventor of an ingenious U.S. patent to prove it.

Eddie Van Halen, lead guitarist of Van Halen and widely considered one of the greatest guitar players of all time, passed away this month after a long battle with cancer. Van Halen was one of the top 20 bestselling artists ever in music and was inducted into the Rock and Roll Hall of Fame in 2007. Eddie Van Halen was known as a “guitar god” and was said to have “reinvented guitar playing just like Jimi Hendrix had done a generation earlier.”

Eddie Van Halen’s musical achievements were present both on and off stage. Eddie Van Halen was also the owner and inventor of US Patent. No. 4,656,917 issued in 1987 called “Musical Instrument Support.” The patented device functions with “a plate which rests upon the player’s leg leaving both hands free to explore the musical instrument as never before” which “permit[s] total freedom of the player’s hands to play the instrument in a completely new way, thus allowing the player to create new techniques and sounds previously unknown to any player.” Eddie Van Halen will forever be remembered as an innovative guitarist and gifted performer.


Cislo & Thomas LLP Spotlight

Cislo & Thomas LLP Senior Managing Paralegal: Tara Richen

Since starting at Cislo & Thomas in March of 2001, Tara has been committed to providing each client, whether individual entrepreneur or large company, with the utmost client care, quality, and professionalism. As the Senior Managing Paralegal and with nearly 20 years at the firm, Tara is an expert in all things trademark law. She is also the firm’s Protocol Officer, ensuring we maintain quality and consistency through all client matters.

On Tara’s desk stands a plaque similar to the one that stood on Ronald Reagan’s, stating, “There is no limit to what a man can do or where he can go if he does not mind who gets the credit.” Tara strives to live by those words, as her favorite part of working at Cislo & Thomas is the firm’s culture of quality care for its clients and its employees.

Outside of work, Tara and her husband enjoy being parents of an active 15 year old and an energetic golden retriever, which includes lots of travel softball and dog-walks.

Thank you Tara for all you do at Cislo & Thomas!


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