September 2019

LeBron James’ Attempt to Trademark “Taco Tuesday” Gets Denied

Takeaway: The U.S. Patent and Trademark Office refused to grant NBA professional basketball player LeBron James a trademark registration for “Taco Tuesday” referring to the phrase as a “commonplace term” ineligible for trademark protection.

The Los Angeles Lakers star LeBron James applied last month to trademark “Taco Tuesday” refering to his video series on Instagram, which was largely denied by the U.S. Patent and Trademark Office (USPTO). The USPTO examining attorney determined the phrase failed to function as a trademark, calling it a “commonplace term” due to its frequency in being used to express “enthusiasm for tacos by promoting and celebrating them on a dedicated weekday.”

Despite being initially denied, James can make further arguments to the examiner in response to the Office Action. However, James’ attorney has commented on the matter, expressing that James’ interest in trademarking “Taco Tuesday” comes from his concern that he will be subject to possible lawsuits from others claiming ownership of the phrase, not to prevent others from using it. It is not certain at this point whether James and his attorney will continue pursuing a trademark for “Taco Tuesday.”

Photo Credit: https://www.forbes.com

Ariana Grande Sues Forever 21 for Unauthorized Use of her “Likeness”

Takeaway: Ariana Grande files a Complaint against Forever 21 for replicating images from Grande’s “7 Rings” music video, alleging Forever 21 used her likeness to promote its products in addition to claims of Copyright and Trademark infringement.

After negotiations for an endorsement deal between Ariana Grande and Forever 21 fell through due to Forever 21’s refusal to meet Grande’s monetary demand for the collaboration, Forever 21 launched a campaign nonetheless, featuring a Grande look-alike model with aesthetics inspired by her latest music video. The retailer’s campaign featured over 30 images and videos displayed across Forever 21’s website and social platforms “copying” Grande’s unique looks featured throughout her “7 Rings” music video.

The model’s resemblance to Grande was “uncanny,” in addition to the utterly similar hair, makeup, and distinct wardrobe. Based on the campaign’s images, it was clear the retailer’s intent was to mislead the public to believe Grande endorsed Forever 21’s campaign. Despite Grande’s team’s demands for the retailer to take down the “7 Rings” inspired campaign and Forever 21’s assurance it would remove the images, the campaign remained active for 14 weeks. On September 2, Grande filed suit against Forever 21 in the Central District of California demanding relief in the amount of $10 million dollars.
Photo Credit: https://heraldpublicist.com/ariana-grande-sues-forever-21-for-8-million-over-look-alike-model/

Appeals Court Finds the Phrase “Party and Bull[sh*t]” in Notorious B.I.G.’s Hit Song Fair Use

Takeaway: The Second Circuit found Notorious B.I.G.’s “Party and Bull[sh*t]” did not infringe on Oywole’s 1968 poem “When The Revolution Comes” due to copyright law’s fair use doctrine.

Abiodun Oywole, a spoken-word artist, asked the court of appeals to reconsider a ruling determined just last year finding the sample used in Notorious B.I.G.’s, aka Biggie’s, 1993 hit song “Party and Bull[sh*t]” did not infringe on Oywole’s poem “When The Revolution Comes” by borrowing the line “party and bull[sh*t].” The lawsuit, filed in 2016, came more than twenty years after Biggie’s hit song was released. Oywole claims his long delay in pursuing a claim for copyright infringement was because he did not want to burden Biggie’s estate with a lawsuit shortly after the rapper’s murder. However, following Rita Ora’s 2012 single “How We Do (Party),” which used a sample from Biggie’s hit and brought his record back into the spotlight, Oywole decided it was time to take legal action.

Nonetheless, the Second Circuit Court of Appeals affirmed the lower court’s ruling that Biggie and Ora’s works were “transformative” and protected by copyright law’s fair use doctrine. The lower court reasoned that while the phrase “party and bull[sh*t] in Oywole’s poem “When the Revolution Comes” sent a political message expressing disappointment in those not ready to take up arms and join the revolution, the use of the phrase in both Biggie and Ora’s works glorify party culture.

Federal Circuit Refuses to Broaden Scope of Design Patent

Takeaway: The Federal Circuit ruled in a patent lawsuit that the scope of a design patent can be limited by the claim language where the language solely provides the article of manufacture which does not appear in the drawings.

The Federal Circuit, considering this case a matter of first impression, had to determine the scope of a design patent when the patented design drawings lacked the article allegedly infringed. The facts of the case are as such: a household products manufacturer, Curver Luxembourg SARL, brought an infringement action against Home Expressions claiming Home Expressions’ baskets infringed on Curver’s design patent which depicted an overlapping “Y” pattern in the drawings. However, baskets were not mentioned in the claim language, only a chair, and the drawing present in the design patent solely featured the overlapping “Y” pattern.

The U.S. Circuit Judge Raymond Chen refused to interpret the design patent broadly to include any article the patented design would be affixed to, stating that design patents are issued when applied to an article “not a design per se.” The claim language therefore limits the scope of the patent to articles where “the claim language supplies the only instance of an article of manufacture that appears nowhere in the figures.” In this case, baskets were not mentioned in the claim language, nor depicted in the drawing itself. Therefore, the Federal Circuit ruled the “Y” pattern featured on Home Expressions’ baskets did not infringe on Curver’s patented design because it was limited in the application of the accompanying text.

LinkedIn Unable to Prohibit hiQ Labs Inc. from Using Information on LinkedIn’s Member Profiles

Takeaway: HiQ Labs Inc. prevails in obtaining a preliminary injunction against LinkedIn enjoining LinkedIn from denying hiQ access to LinkedIn’s member profiles.

HiQ Labs Inc., a data analytics startup, used automated bots to scrape data from LinkedIn’s public member profiles. In 2017, LinkedIn sent the startup a cease and desist letter demanding that hiQ quit accessing and using the data on its member’s profiles. Following the cease and desist letter, hiQ filed suit against LinkedIn seeking injunctive relief based on the Digital Millenium Copyright Act, Computer Fraud and Abuse Act (“CFAA”), and California Penal Code § 502(c). A California federal court granted hiQ the injunction finding hiQ established a likelihood of irreparable harm because if the injunction did not issue, hiQ’s business model would be significantly jeopardized and it was in the interest of the public for the injunction to issue.

A three-judge panel affirmed the district court’s decision despite LinkedIn’s argument that hiQ’s practice threatened its users’ privacy stating, “[E]ven if some users retain some privacy interests in their information notwithstanding their decision to make their profiles public, we cannot, on the record before us, conclude that those interests … are significant enough to outweigh hiQ’s interest in continuing its business, which depends on accessing, analyzing, and communicating information derived from public LinkedIn profiles.”
 

Cislo & Thomas LLP Spotlight

Kristin B. Kosinski Featured in Two Publications

The Fall 2019 IP Law Section of the Official California Lawyers Association Publication recently featured an article by Cislo & Thomas LLP Attorney Kristin B. Kosinski on Tips and Pitfalls of UDRP Proceedings.

Additionally, Kristin wrote a featured article, Intellectual Property and the Fashion Resale Market: Drawing the Line Between Rights Holders and Resellers, for the New York Law Journal (Fashion Law supplement).

Congratulations Kristin on your published articles!

Cislo & Thomas LLP is a Leader in Filing Trademark Applications

Cislo & Thomas is a proud leader in filing trademark applications in the United States. Within California, Cislo & Thomas is ranked #29 top trademark filer at the USPTO. Additionally, Cislo & Thomas is ranked #37 on the Pacific Coast (Washington, Oregon, California, Hawaii and Alaska) and #266 in all of the United States.

Thank you to all of our incredible clients for helping make this possible! If you are interested in filing a trademark application or pursuing any intellectual property matter, please do not hesitate to call 310-979-9190 or email [email protected].