You may think you have done everything to legally protect your company’s trademarks, but what if someone used your trademark as the title of a movie, a book or a song? What if Morgan Spurlock called his documentary “Big Mac®” instead of “Super Size Me”? What if the movie “The Social Network” was called “The Facebook® Movie”? Could the owners of those trademarks have sought legal protection under the Lanham Act and/or obtained an injunction against those producers and promoters from using those trademarks?
You may be surprised to find that there is established precedent on this Lanham Act issue, and your company cannot prevent the use of its trademarks by others for titles of works of art. In Rogers v. Grimaldi, movie star Ginger Rogers lost her Section 43(a) Lanham Act claim against Alberto Grimaldi and MGM/UA Entertainment Co. for use of the name “Ginger and Fred” for a film title. The movie was about two cabaret performers who, according to the fictional story, imitated Ginger Rogers and Fred Astaire in Italy, and they became known in Italy as “Ginger and Fred.”
In the Ginger Rogers’ lawsuit, she argued that the film’s title, “Ginger and Fred,” would make potential consumers believe that she was involved with or endorsed the film, when she did not, which seemed to be a classic violation of Section 43(a) of the Lanham Act. Rogers’ claim also seemed reasonable in light of her fame. However, the defendants argued that Rogers’ claim was precluded by the protections afforded to defendants under the First Amendment. The district court determined that the use of Rogers’ name for the film was primarily for artistic expression and, as such, the prohibitions of the Lanham Act did not apply.
The U.S. Court of Appeals for the Second Circuit stated that there needed to be a balancing test between the protections afforded by the Lanham Act and the First Amendment rights of free expression. The court devised a two-prong test: (1) if the title of the work has some relevance to the subject matter of the work, the Lanham Act will normally not apply—unless (2) the title of the work is explicitly misleading. Applying its new test, the Second Circuit concluded that the title “Ginger and Fred” was relevant to the content of the film and that the title was not explicitly misleading. Therefore, the defendants were entitled to summary judgment based upon the defendants’ First Amendment rights of freedom of expression.
The Rogers case was directed toward the use of a famous person’s name, as opposed to using another party’s registered trademark, but other federal courts have applied the decision to registered trademarks. In Mattel v. MCA Records, the U.S. Court of Appeals for the Ninth Circuit was faced with the question of whether a rock band’s use of the trademark “Barbie” in the title of a song was trademark infringement under Section 43(a) of the Lanham Act. Mattel argued that the song title created the likelihood of confusion, alleging that consumers would believe that Mattel was affiliated with or sponsored the song in some way.
However, the Ninth Circuit, applying the two-prong Rogers test, found that the song’s title, “Barbie Girl,” did have some relationship to the content of the song, which was a critique of what the authors believed the iconic Barbie Doll symbolized. Arguably, the Mattel case fell squarely in the category of satire, which falls within the rights afforded by the First Amendment, but the Ninth Circuit chose to adopt the Rogers test instead.
The Ninth Circuit also may have moved the bar further in favor of “artists” in E.S.S. Entertainment v. Rock Star Videos. In that case, the court refined the Rogers test slightly, holding that in order for someone to use your trademark, there only needs to be “more than zero” relevance between the content of the work of art and the title of the work to be protected by the First Amendment. The single caveat is that the title not be explicitly misleading.
There is a glimmer of hope for trademark owners in the U.S. Court of Appeals for the Sixth Circuit. In Parks v. LaFace Records, the court did something different than other circuits that had applied the Rogers test as “a matter of law.” In Parks, the defendants named one of their songs “Rosa Parks.” The song’s chorus was “move to the back of the bus.” The district court, applying the Rogers test, found that there was at least minimum relevance between the title of the song and the subject matter of the song and, therefore, granted summary judgment in favor of the defendants.
The Sixth Circuit, however, seemed offended by the decision. It discussed the fact that Rosa Parks was a revered and respected person, as well as a national symbol of freedom and integrity. The court seemed to object to the overall content of the song as disparaging to those things that made Rosa Parks famous. It held that the relevance of the subject matter of the song and the title of the song were, contrary to the district court’s decision, subject to “reasonable debate.” Hence, the Sixth Circuit held that the issue of relevance between the subject matter of the work and its title was a “question of fact,” to be determined by a finder of fact, only after an evidentiary hearing. The court held that this prong of the Rogers test was not to be determined by a judge as a matter of law.
So, why are these trademark issues relevant now? Earlier this year, in Eastland v. Lionsgate Entertainment, the U.S. Court of Appeals for the Seventh Circuit was faced with this very issue. In Eastland, the plaintiff had (and has) a registered trademark: PHIFTY-50. Eastland also claimed common law rights in the mark 50/50, which it has been using for more than a decade relating to music and music-related products—and has since been registered. The defendants produced a film called “50/50” and produced and sold DVDs, along with a soundtrack CD, with the “50/50” title. Eastland accused the defendants of infringing its trademark rights, alleging that consumers would likely believe that Eastland was affiliated with, sponsored or otherwise had something to do with the film. Again, this seemed to be a classic claim under Section 43(a) of the Lanham Act.
There’s no doubt that cloud-based computing services are growing in popularity and now according to an entry on Robert Ambrogi’s LawSites, a new survey shows a large number of small firm lawyers are embracing the idea as well, but not without lingering concerns.
Conducted last December by LexisNexis, the survey is made up of attorneys in firms of no more than 20 lawyers. Of those participating, 39.4 percent say they are already using the cloud for legal-related work; for those not yet in the cloud, 50.2 percent say they’re more likely to consider it this year; and 72.4 percent say their firms are more likely to switch in 2014.
Mobility is the top benefit cited, but concerns over security and confidentiality are still the greatest barriers to using the cloud, with 41 percent saying they believe the cloud is secure, nine percent saying it’s not, and about 36 percent still unsure.
Some of the greatest fears mentioned are government or National Security Agency access, hacking and rogue cloud vendor employees. For those already employing cloud-based services, 60 percent say the most common use is document storage and management, followed by backup and disaster recovery, email, file sharing and practice management.
Sherry Karabin is a freelance writer and reporter based in New York City. Email: sherry.karabin@yahoo.com.
Ian Ballon, shareholder, Greenberg TraurigPhoto: Patricia Kutza
2014 may be the year that in-house counsel wishes what happens in America stays in America. Greenberg Traurig Internet law attorney Ian Fallon shared this perception as well as many others at his seminar on digital media and litigation strategy, held at Greenberg’s San Francisco office on January 28, 2014. He told a sold-out audience that the Internet, mobile and cloud-related litigation and legislation enacted in 2013 offers lawyers a mixed bag of challenges and opportunities.
Here are just a few highlights and takeaways from Fallon’s wide-ranging list of predictions.
Highlight: In-house counsel will continue to feel the trickle-down affect of Edward Snowden’s NSA leaks.
Takeaway: U.S. companies are starting to feel the blowback from foreign governments’ displeasure at NSA’s intrusive surveillance. “Companies are nervous about sending data to the States” says Ballon, citing Boeing’s recent failure to secure a Brazilian contract for its F/A-18 fighter jets, largely considered to be a done deal prior to revelations that NSA had monitored the personal communications of Brazil’s president and other goverment officials.
Highlight: Huge expansion of domain-name systems will put downward pressure on domain prices.
Takeaway: 2014 is the launch date for a barrage of top-level domain applications submitted to ICANN in 2013. Expect to see an explosion of new addresses, triggering a host of implications, Ballon says. “For brand owners there will be sunrise periods and the opportunity to object in advance, with all new registrars bound by the Uniform Dispute Resolution Procedure.” This crush of new domain names will also impact the value of individual names. In 2013, such top sellers like IG.com ($4.7M) and KK.com ($2.4M) reaped big bucks. But on the whole, except for certain key names, domain prices are trending lower and likely to continue in 2014.
Highlight: Privacy, text and spam control trolling litigators on the rise.
Takeaway: While there is much talk about patent trolls, class-action lawyers are also going after privacy, text and spam control, trying to find ‘gotcha’ cases that they bring largely to settle or get statutory damages, where there’s not any injury or harm. Defending these claims represents an increasing cost for businesses in the digital economy, he says. Ballon cautions clients: “There are cases that some lawyers are settling and that I personally feel they should have fought. You can win them. And if you settle for a small amount of money, you may still be sued in the next round when the next lawsuit-du-jour comes down. You don’t want to be seen as the company that will roll over easily. These type of companies tend to be sued over and over again.”
Highlight: New California laws offer children more digital forgiveness and leverage.
Takeaway: 2014 ushers in new California statutes that address revenge porn and online tracking policy disclosures. Garnering much publicity is its new “Online Eraser” law (takes effect in 2015) that requires websites to honor the requests of minors (under the age 18) who want to recant their user-generated content, such as social media postings. This is an interesting notion, says Ballon, because under California law minors are incompetent to enter into contracts yet its legislators created a law that assumes that minors are competent enough to enter into relationships with websites. “It really reflects the fact that not only companies but legislatures are dealing with the issue that so much of e-commerce is now engaged by people that are over the age of twelve (and therefore not subject to COPPA regulation) yet under the age of eighteen, making them still minors.”
Ballon recently released 2013 updates to the second edition of his “E-Commerce & Internet Law: Treatise with Forms,” which covers business-to-business and business-to-customer issues, regulatory issues and emerging trends.
John Quinn, Quinn Emanuel Urquhart & SullivanJason Doiy
SAN JOSE — Quinn Emanuel Urquhart & Sullivan escaped the most severe sanctions sought by its adversaries for a discovery leak that placed details of Apple's licensing deal with Nokia in the hands of client Samsung. But the firm, known for its swagger, emerges from a bruising six-month sanctions fight with a chink in its reputation as a lean fighting machine.
Quinn's famously spare structure, where associates work with minimal supervision, opened the door to a breach that went unremedied for more than a year and exposed Apple's confidential business information to hundreds of unauthorized individuals, U.S. Magistrate Judge Paul Grewal concluded in a 19-page order sanctioning both the firm and Samsung for violating a court protective order.
The San Jose-based judge ordered Quinn to cover the expenses that Apple, Nokia and their lawyers ran up litigating the matter. Grewal also laid new ground rules for Apple and Samsung's long-running patent brawl, requiring lawyers for each company to exchange redacted documents for approval before distributing them more widely.
The discovery breach arose in March 2012 when a Quinn Emanuel associate failed to omit confidential licensing terms from a lengthy expert report while working late one night.
"A junior associate missing one redaction among many in an expert report is not exactly a historical event in the annals of big-ticket patent litigation," Grewal opened his order. "But when such an inadvertent mistake is permitted to go unchecked, unaddressed and propagated hundreds and hundreds of times by conscious—and indeed strategic—choices by that associate's firm and client alike, more significant and blameworthy flaws are revealed."
After Quinn Emanuel shared the improperly redacted expert report with Samsung, it reached more than 200 people, many of whom had little involvement in the Apple case, Grewal wrote. In late 2012, another junior associate detected the redaction error and reported it to a senior associate, but the firm took no further action.
For that, Grewal placed blame on Quinn Emanuel's lean structure, which firm founder John Quinn has described as "650 lawyers wide and one lawyer deep."
"In cases of this complexity, relying on such a structure to manage highly confidential information from both parties and non-parties is akin to a trapeze artist flying high without a net," Grewal wrote.
The sanctions fell short of the penalties requested by Apple and Nokia, which included an injunction against Samsung in the South Korean company's upcoming patent trial with Apple and an order barring Quinn Emanuel from representing parties going up against Nokia. Grewal wrote that many of those proposals were "ludicrously overbroad."
The leak came to light after a Samsung executive referenced the confidential licensing figures in negotiations with Nokia. According to a declaration filed in the case, the Samsung executive admitted he had received the information through his attorneys.
SACRAMENTO — A state senator said she will resurrect privacy legislation on Thursday to limit what information online retailers such as Apple Inc. can collect and store about their customers.
Senate Bill 383 stalled in the Legislature last summer amid heavy opposition from tech groups and the retail lobby. But author Hannah-Beth Jackson, D-Santa Barbara, said Wednesday that she's bringing a narrowed version of the bill to the full Senate with the hope that a recent wave of highly publicized data breaches will motivate fellow legislators to pass it before a procedural deadline on Friday.
"Those kinds of breaches remind us, from all socioeconomic levels, just how vulnerable we can be to theft and privacy violations unless we remain vigilant and make privacy a priority," Jackson told reporters.
The bill stems from a 2013 ruling by the California Supreme Court in Apple Inc. v. Superior Court (Krescent). A four-justice majority found that a state law limiting what data brick-and-mortar stores can do with customers' personal information obtained during credit card transactions does not apply to online retailers.
"This has left millions of Californians exposed to the risk of having their information sold for marketing purposes without their permission, frequently without their knowledge and consent, and have made them increasingly vulnerable to fraud, identity theft and other criminal activity," Jackson said.
SB 383 would still allow online merchants to collect consumer data, but only if that information is necessary to combat fraud or identity theft. The information cannot be sold or used for marketing purposes, and the e-retailer must dispose of it when it's no longer needed.
Jackson amended the bill this week so it now applies only to businesses, like Apple's iTunes, that sell "downloadable" products such as music and e-books. It would also specifically allow a company to store that information while an investigation into possible fraud takes place. And it would allow customers to opt-in to sharing their personal data with the company.
But the changes have not attracted new support from tech and business groups. Representatives of the California Chamber of Commerce, TechAmerica and TechNet confirmed Wednesday that those lobbies still oppose SB 383.
John Doherty, TechNet's vice president of state policy and politics, said that the bill would still make it more difficult for companies to combat fraud and that it unfairly singles out a particular consumer transaction.
SB 383 is supported by the Privacy Rights Clearinghouse, the Consumer Federation of California and Consumer Action.
If approved by the Senate, SB 383 will move to the Assembly for consideration.
