Thursday, September 25, 2014

Big Hero 6 Innovator Contest

The XPrize Foundation, Inc. in association with Disney’s new movie “Big Hero 6″ has created it’s own contest for young innovators.  The challenge is for kids 8-17 to describe how they would S.T.E.A.M. (science, technology, engineering, arts, or mathematics) to solve problems out there in the world.  The big winners get to walk the red carpet in Hollywood at the premiere of Big Hero 6.  The United States Patent and Trademark Office is also a sponsor of Xprize.

Wednesday, September 24, 2014

MGM Defends Rocky Trademark From “Philadelphia Fat-Ass Run”

MGM , the film company that owns the rights to ROCKY sent a cease and desist letter to Philadelphia resident, Rebecca Shaefer who planned to launch a “Rocky 50K Fat-Ass Run” inspired by Rocky’s iconic jogging route through the streets of Philadelphia. Philadelphia Magazine columnist Dan McQuade‘s figured out   that the boxer ran 30.61 miles by analyzing running montages in the films.  MGM, which owns rights to the film objected on trademark grounds because they sponsor a Rocky themed 5k/10k run to take place in the city of Philadelphia in November. The “Rocky 50K Fat Ass Run” sparked concern of consumers being confused about source of sponsorship.  The letter states the following:

MGM demands that you and your affiliates immediately remove the Rockyname and any references, images or promotions related to Rocky from any… materials you may be disseminating in connection with the Unauthorized Rocky Event…Please be advised that failure to comply with these demands will cause MGM to take appropriate legal action to protect its rights and interests to seek all injunctions, damages, fees and costs to which it is entitled under law.

It may appear that MGM has a legitimate claim based on the similarity of the events- in which both involve running, and the “Rocky” name.  However, Ms. Schaffer may also have an argument based on fair use, and the first amendment.  Such that, the “Rocky 50K Fat-Ass Run” is satirical in nature, in that no one is actually expected to take it seriously or run 50 kilometers.

Tuesday, September 16, 2014

Food Invention Reality Show

Eyeworks TV, the producers behind Extreme Weight Loss on ABC and Bar Rescue on Spike, THIS WEEK ONLY, is holding an audition in Redondo Beach for entrepreneurs with food related inventions for a new show. The show is just like Shark Tank on ABC, but for food inventions.  If interested contact:

Kelly Klecha

Casting Assistant

Eyeworks TV

Tuesday, August 26, 2014

No Copyright Protection for Iconic Monkey Selfie

In 2011, wildlife photographer David Slater set up a camera on Sulawesi, a small island in Indonesia.  Mr. Slater received an unanticipated gift, a monkey picked up his camera and took hundreds of pictures, including self portraits or “selfies” that have gone viral on the web this past year.  Recently, controversy has erupted over who owns the copyright to the photos.  David Slater has claimed ownership, along with thousands of dollars in unpaid royalties from the photos that went viral.  As reported by the BBC and The Los Angeles Times, “Wikimedia, the nonprofit behind Wikipedia, says the pictures taken by the monkey belong to the public domain and has refused to take them down.  Slater has said that he is missing out on thousands of dollars in royalties and that he played a bigger role in the photos’ creation than he’s receiving credit for. “You could look at it like this: The monkey was my assistant,” he told the BBC.

The U.S. Copyright office addressed this issue recently in a public draft of the Compendium of U.S. Copyright Office Practices, Third Edition — which was released Tuesday.  It says the office will register only works that were created by human beings.  “Works produced by nature, animals or plants” or “purportedly created by divine or supernatural beings” don’t count, it says. The first example in that category is “a photograph taken by a monkey.”  Similarly, the Office will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.”

With some sound legal advice -Mr. Slater could have obtained copyright ownership if he digitally altered the images enough -where his creative choices would have given him ownership of the image under 102a of the US Copyright Act, which states “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device;” however this was not done.  Since the photos were all release unaltered, or without any significant alterations,  the photos are in the public domain according to the U.S. Copyright office.

Tuesday, July 8, 2014


For anyone in the food and beverage industry or involved in business marketing, Michael Cohen will be moderating a seminar on July 14, 2014 at 1PM entitled LANHAM ACT: ISSUES AFTER LEXMARK AND POM WONDERFUL.

Thursday, June 19, 2014

Redskins' Cancellation of Disparaging Trademark Interview

As a follow up to yesterday’s blogpost regarding the landmark decision by the TTAB to cancel the Redskins’ trademarks, I did an interview on KFI 640 AM with Bryan Suits.  Enjoy!

Wednesday, June 18, 2014

Redskins Trademark Cancelled by the Trademark Office

Today, the Trademark Trial and Appeal Board (TTAB), cancelled six registered trademarks, that include the term “Redskins” for the Washington Redskins, owned by the NFL.  The plaintiffs in the matter were able to prove by a preponderance of the evidence that the term Redskins is “disparaging” to a substantial composite of the Native American population.

Under Section 2(a) of the Trademark Act, words that “may disparage” individuals or groups or “bring them into contempt or disrepute” are not permitted as trademarks. The ruling pertains to six different trademarks associated with the team, each containing the word “Redskin.” When it comes to showing that a trademark is disparaging, the plaintiffs must meet a two-part test: (1) the likely meaning of the mark and (2) if that meaning refers to an identifiable group, that the meaning is disparaging to a substantial composite of that group.

After hearing both sides argue the meaning of the term “Redskins,” the Administrative Trademark Judge Kuhlke concluded in her opinion, that the meaning of the term “Redskins” retains the meaning to identify Native Americans even when it is also used for an NFL team. To argue the second prong about “disparagement,” both sides presented experts to prove whether the term “Redskins” was considered disparaging. Judge Kuhlke agreed with the Plaintiff’s expert, Dr. Barnhart, that the term refers to Native American’s skin color, as well as negative portrayals in the media, and also dictionary definitions that include “it is not a preferred term.”

To prove that the mark is disparaging, Judge Kuhlke pointed out that that only a substantial composite of Native Americans needed to be disparaged by the term at the time of the filing, not a majority. The Plaintiff used evidence of a resolution passed by the NCAI, one of the oldest organizations in the United States that represents various Native American tribes. It passed a resolution in 1993 where it corroborated a 1972 meeting with the President of the NCAI and the then Owner of the Washington Redskins. The NCAI President told the owner that “Redskin” was a racial slur. In 1972, NCAI represented approximately 30% of the Native American population. According to Judge Kuhlke, 30% satisfies the “substantial composite” requirement. Simply put:

“The ultimate decision is based on whether the evidence shows that a substantial composite of the Native American population found the term “Redskins” to be disparaging when the respective registrations issued. Heeb Media LLC, 89 USPQ2d at 1077. Therefore, once a substantial composite has been found, the mere existence of differing opinions cannot change the conclusion.”

As such, the TTAB held that the Plaintiff’s proved by the preponderance of evidence that the term “Redskin” is disparaging to a substantial composite of the Native American population and that the federal trademark for the Washington Redskins will be cancelled.

The NFL will certainly appeal in the federal courts primarily to flesh out the issue of their affirmative defense of laches, which is somewhat similar to a statute of limitations defense. The NFL may argue that the term “Redskins” has been used for so long that the unreasonable delay in seeking relief bars the Plaintiff recovery. However, Judge here pointed out that the laches defense should not apply in cases dealing with a term of disparagement.

“It is difficult to justify a balancing of equities where a registrant’s financial interest is weighed against human dignity. To apply laches to this type of claim contemplates the retention on the register of a mark determined by the Board to be a racial slur, in blatant violation of the Trademark Act’s prohibition against registration of such matter, merely because an individual plaintiff “unreasonably delayed” in filing a petition to cancel.”

The opinion bolstered its holding by using various examples where public policy concerns trumps a laches defense. Although the opinion shot down the NFL’s laches defense based upon a greater need of public policy, the TTAB reserved this issue for appeals and specifically stated that the issue can be revisited because of the more recent passage of the American Invents Act.

Redskins 640am