SoCal IP Law Group

The SoCal IP Law Blog

Monthly Archives: August 2013

SoCal IP Institute :: Sept. 9, 2013 :: “Trademark Bully” Facebook Prevails & Craigslist gets no Peace with the TTAB

Our weekly SoCal IP Institute meeting on Monday, September 9, 2013 will be a discussion of two recent TTAB decisions.

In Facebook Inc. v. Think Computer Corporation (TTAB July 23, 2013)  (available here), FACEBOOK prevailed in opposing Applicant’s mark FACEMAIL, a provider of emails and instant messaging services on the grounds of confusion and dilution.   Applicant called FACEBOOK a “trademark bully” and argued that there would be no confusion.   Using the du Pont test as well as survey data, FACEBOOK prevailed based on findings concerning its “fame.”

In In re Craigslist, Inc., (TTAB May 31, 2013) (available here), after years of appeals and briefing, the TTAB refused Craiglist’s request to register a peace symbol mark citing that Craigslist was unable to give this iconic universal symbol any distinctive character with regards to its services.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, September 9, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

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SoCal IP Institute :: August 26, 2013 :: Common Law Rights of Publicity and Machine Readable Storage Medium

Our weekly SoCal IP Institute meeting on Monday, August 26, 2013 will be a discussion of a recent Central District of California decision regarding common law rights of publicity and a precedential case involving the patentability of “machine readable storage medium.” Brief synopses of the cases appear below.

Hebrew University of Jerusalem v. General Motors, Case No. 10-CV-03790 AHM (JCx) (C.D. Cal. Oct. 15, 2012) (available here).  Plaintiff Hebrew University of Jerusalem brought suit for the unauthorized use of Albert Einstein’s image in a General Motors advertisement.

General Motors argued that Mr. Einstein’s image was not protected by California law, but New Jersey law and that any right of publicity, to the extent one existed and to the extent that HUJ was entitled to the right, had ended.  Judge Matz of the Central District, applying New Jersey law, without any clear New Jersey precedent, determined that a 50-year post-mortum right of publicity is more than adequate to accomplish the policy goals of the law.  Accordingly, because Mr. Einstein died almost 60 years before HUJ brought suit, the case was dismissed.

Ex Parte Mewherter et al., Appeal No. 2012-007692 (P.T.A.B. May 8, 2013) (available here). The primary issue on appeal in this patent related to a computer-based system for converting a series of slide show images into raster images was whether “machine readable storage medium” was statutory subject matter.  Specifically, does the term “machine readable storage medium” encompass waveforms, signals and other so-called “transitory” media.  The Board, here, agreed that it does and endorsed the addition of the “non-transitory” language often requested by examiners as resolving the issue.  The Board also affirmed a written description rejection of claims 1-5 for the failure of the specification to support the claimed limitations.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 26, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 19, 2013 ::

Our weekly SoCal IP Institute meeting on Monday, August 19, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Seltzer v. Green Day, Inc., Case No. 11-56573 (9th Cir. August 7, 2013) (available here).  Plaintiff Derek Seltzer sued the band Green Day for using a backdrop having one of Seltzer’s drawings in one of Green Day’s videos. On summary judgment, the district court held that Green Day’s use fair use. The district court then awarded attorney’s fees in favor of Green Day. On appeal, the Federal Circuit affirmed the district court’s finding that the use was fair use, but vacated the award of attorney’s fees.

Monolithic Power Systems v. O2 Micro, Case No. 2012-1221 (Fed. Cir. August 13, 2013) (available here). The parties here are competitors in the integrated circuit industry and have been involved in litigation for over a decade. The district court held the case exceptional and awarded over $9M in attorney’s fees. The Federal Circuit affirmed the district court’s decision.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 19, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 12, 2013 :: Use of Player Likeness in Games and the Morehouse Defense

Our weekly SoCal IP Institute meeting on Monday, August 12, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Keller v. EA, Inc., Case No. 10-15387 (9th Cir. July 31, 2013) (available here).  The district court concluded that the game developer, Electronic Arts (“EA”), had no First Amendment defense against the right-of-publicity claims of the football player, Samuel Keller. The 9th Circuit affirmed. Under the “transformative use” test developed by the California Supreme Court, EA’s use did not qualify for First Amendment protection as a matter of law because it literally recreates Keller in the very setting in which he has achieved renown. The other First Amendment defenses asserted by EA did not defeat Keller’s claims either.

Citadel Federal Credit Union v. KCG IP Holdings LLC, Canc. No. 92/055,228 (T.T.A.B. July 10, 2013) (available here). Citadel filed a petition for cancellation of KCG’s mark on grounds of priority and likelihood of confusion.  KCG IP received numerous extensions of time to answer and, eventually, filed an answer and a motion for summary judgment. KCG asserted the so-called Morehouse defense and argued that the marks were essentially the same and cover essentially the same goods and services.  Citadel countered that KCG applied a more lenient likelihood of confusion test, rather than the required “essentially the same” test.  Because the marks were not “essentially the same” with Citadel’s mark including a crenelated design.  The Board ruled that the Morehouse defense was unavailable to KCG and denied the motion for summary judgment.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 12, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.

SoCal IP Institute :: August 5, 2013 :: Use of Player Likeness in Games and the Morehouse Defense

Our weekly SoCal IP Institute meeting on Monday, August 5, 2013 will be a discussion of a recent 9th Circuit decision regarding player likenesses in games and a non-precedential case at the TTAB involving the Morehouse defense. Brief synopses of the cases appear below.

Brown v. EA, Inc., Case No. 09-56675 (9th Cir. July 31, 2013) (available here).  The 9th Circuit affirmed the district court’s dismissal of retired professional football player Jim’s Brown’s action alleging that Electronic Arts, Inc., violated § 43 of the Lanham Act through the use of his likeness in its Madden NFL series of video games.

The 9th Circuit held that because the video games were expressive works, the district court correctly applied the Rogers test for balancing between trademark and similar rights, on the one hand, and First Amendment rights, on the other. The panel held that neither the “likelihood of confusion” test nor the “alternative means” test was the appropriate framework. Applying the Rogers test, the panel concluded that Brown’s likeness was artistically relevant to the games and that there were no alleged facts to support the claim that Electronic Arts explicitly misled consumers as to Brown’s involvement with the games. Accordingly, the public interest in free expression outweighed the public interest in avoiding consumer confusion.

Citadel Federal Credit Union v. KCG IP Holdings LLC, Canc. No. 92/055,228 (T.T.A.B. July 10, 2013) (available here). Citadel filed a petition for cancellation of KCG’s mark on grounds of priority and likelihood of confusion.  KCG IP received numerous extensions of time to answer and, eventually, filed an answer and a motion for summary judgment. KCG asserted the so-called Morehouse defense and argued that the marks were essentially the same and cover essentially the same goods and services.  Citadel countered that KCG applied a more lenient likelihood of confusion test, rather than the required “essentially the same” test.  Because the marks were not “essentially the same” with Citadel’s mark including a crenelated design.  The Board ruled that the Morehouse defense was unavailable to KCG and denied the motion for summary judgment.

All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, August 5, 2013 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Noelle Smith by 9 am Monday morning.