Copyrights and Trademarks

On January 28, 2020, Paul Bernstein and Carly Trainor published “Inspiration to Infringement: Copyright Issues in Scripted Entertainment Inspired by Song Lyrics” in Music Connection Magazine. The following is an excerpt:

MGM Television is developing Scenes from an Italian Restaurant, a television series based on the lyrics of Billy Joel’s hits. This is the

The complicated relationship between paparazzi, social media, and celebrities continues in the copyright space. We previously wrote about the cases that had emerged related to Gigi Hadid and Victoria Beckham as well as many other celebrities. Both Hadid and Beckham posted photos taken by paparazzi on their social media accounts and were subsequently sued for copyright infringement. These cases have raised interesting legal arguments at the intersection of copyright enforcement and a celebrity’s right of publicity in their own image, including whether a license could be implied when a celebrity poses for a photograph, or whether that pose creates a co-authorship interest.

Liam Hemsworth is the latest celebrity to make headlines for a related scenario. The photograph at issue in Hemsworth’s case was taken as part of a series of photos depicting him on location for production of a film released earlier this year, Isn’t It Romantic. See ECF No. 1, Splash News and Picture Agency, LLC v. Liam Hemsworth, No. 2:19-cv-10584 (C.D. Cal. Dec. 15, 2019). The photo was licensed exclusively to The Daily Mail. On July 15, 2018, the same day that it was posted to The Daily Mail, the photo of Hemsworth also appeared, without its copyright information as produced on The Daily Mail‘s website, on one of Hemsworth’s social media accounts. It also included a “tag” promoting the movie. On June 20, 2019, the photo again appeared on the same social media account, including a feature to encourage viewers to vote for Isn’t It Romantic at the Teen Choice Movie Awards.


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On November 8, 2019, a federal judge denied a motion by Defendant Marc Jacobs International LLC and other Defendants to dismiss Plaintiff Nirvana LLC’s copyright and trademark infringement lawsuit regarding a “smiley face” design and logo Nirvana claims to own. Nirvana’s Complaint alleges that items in Marc Jacobs’ “Bootleg Redux Grunge” clothing collection infringed Nirvana’s

On November 8, 2019, a federal judge denied a motion by Defendant Marc Jacobs International LLC and other defendants to dismiss Plaintiff Nirvana LLC’s copyright and trademark infringement lawsuit regarding a “smiley face” design and logo Nirvana claims to own. Nirvana’s complaint alleges that items in Marc Jacobs’ “Bootleg Redux Grunge” clothing collection infringed Nirvana’s rights to the smiley face design and logo, which its co-founder, Kurt Cobain, created in 1991 and which Nirvana has used continuously since 1992 to identify its music and licensed merchandise.

The clothing items in question – primarily a t-shirt included in the Bootleg Redux Grunge collection – feature what allegedly appears to be a version of Nirvana’s asymmetrical smiley face logo. Whereas Nirvana’s design features X’s for eyes, however, Marc Jacobs’ t-shirt has the letters M and J. Above the smiley face, Marc Jacobs’ t-shirt uses the word “Heaven,” whereas Nirvana’s original design uses the word “Nirvana.” The typeface used in the competing designs is similar, and both designs consist of a yellow smiley face against a black background. Nirvana brought suit against the Defendants in December 2018, accusing them of copyright and trademark infringement, false designation of origin, and unfair competition.


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The makers of popular Peloton stationary indoor cycling equipment successfully defeated trademark infringement claims brought against them because the plaintiff waited too long to file suit, bringing them one step closer to complete domination of the in-home fitness world. A recent ruling in the Central District of California ensures that they can continue to use the Peloton mark to sell their exercise equipment and the dream of the perfect workout solution.

The dispute arose when Move Press, the publisher of cycling publication Peloton Magazine, sued Peloton Interactive, the producer of Peloton cycling equipment and on-demand spin classes, for trademark infringement, federal Lanham Act and California state unfair competition, false advertising, and cancellation of trademark registrations over the use of the term “Peloton.” (“Peloton” refers to the main group or pack of cyclists in a race.) Peloton Interactive countersued for cancellation of Move Press’s trademark registrations and declaratory judgment regarding validity of Move Press’s trademarks, non-dilution, and non-infringing use.


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The United States District Court for the Southern District of New York recently dismissed a claim of copyright infringement against Mic Network, Inc. over its use of a partial screenshot of a New York Post article in a subsequent publication. The screenshot featured a photograph of a man in a bar, with the caption “Why I won’t date hot women anymore” on one side and a selection of the article’s text on the other. The Court found Mic’s use of the screenshot was protected by the fair use defense.

The case arose when photographer Stephen Yang sued Mic for copyright infringement over Mic’s use of the photograph Yang licensed to the New York Post for its April 2017 article, which recounted the dating experience of a man living in New York. The article created a great deal of buzz on social media and provoked heated debate and substantial criticism because of its provocative content.

In response to this debate, Mic published its own article, “Twitter is skewering the ‘New York Post’ for a piece on why a man ‘won’t date hot women,‘” which featured the screenshot, including a portion of Yang’s photograph. Yang sued for copyright infringement over Mic’s use of his photograph. Mic responded with a motion to dismiss Yang’s claim on the grounds its use of the photograph was protected by the fair use doctrine. (As evidenced by its title, Mic’s article discussed and added to the criticism surrounding the original article.)


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Lettuce Turnip the Beet: When puns are “functional”

In LTTB LLC v. Redbubble, Inc., plaintiff LTTB, an online apparel company, contended its success was “largely due to public fascination with its Lettuce Turnip the Beet trademark,” and alleged that defendant Redbubble’s sale of products featuring the phrase “Lettuce Turnip the Beet” infringed its mark, 18-cv-00509-RS. Redbubble, an online marketplace selling products made by independent artists, argued that LTTB was not entitled to preclude others from using the “Lettuce Turnip the Beet” pun absent any evidence of source confusion. On July 12, 2019, the Northern District of California issued its decision granting summary judgment in favor of defendant Redbubble, finding that LTTB did not have an exclusive right to sell products displaying the pun “Lettuce Turnip the Beet,” and that LTTB therefore did not have a viable trademark infringement claim.

The court’s decision turned on its application of the “aesthetic functionality doctrine,” a controversial trademark law principle unevenly applied by federal courts. See McCarthy on Trademarks and Unfair Competition § 7:80 (5th ed.). Under the aesthetic functionality doctrine, when goods are bought largely for their aesthetic value, their features may be functional – if a feature is an important ingredient in the commercial success of the product, the interest in free competition permits its imitation in the absence of a patent or copyright. See Pagliero v. Wallace China Co., 198 F.2d 339 (9th Cir. 1952). The issue in LTTB was whether LTTB had a viable infringement claim where the alleged infringing products merely displayed the pun “Lettuce Turnip the Beet” and did not otherwise include any indication that they were produced by LTTB. In other words, was the pun “Lettuce Turnip the Beet” a functional feature permitting imitation? The LTTB court explained that while the Ninth Circuit’s modern application of the “aesthetic functionality” doctrine has been more limited, the circumstances of the LTTB case “undeniably” called for the application of the aesthetic functionality doctrine.


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Supermodel Jelena Noura “Gigi” Hadid was not the first celebrity to be photographed by paparazzi and then to post the resulting photo to social media, nor was she the first to be subsequently sued for copyright infringement for doing so. Other celebrities, including Jennifer Lopez and, most recently, Victoria Beckham, have made news for the same situation.

This trend falls into an interesting intersection of two significant tenets of law: a celebrity’s right of publicity in their own image and a photographer’s right to copyright their artistic work. The district court dismissed the case due to a lack of a copyright registration. In addition to that defense, though, her attorneys also raised the defenses of fair use and implied license. The second may have begun paving the way for future legal challenges to clarify these issues by raising a novel argument—implied license—alongside the more typical defense of fair use.


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On April 23, 2019, the U.S. Court of Appeals for the Eleventh Circuit affirmed the District Court’s finding that Anastasia, Beverly Hills, Inc., a cosmetics company, established a fair use defense in an infringement action brought by competitor Hard Candy, LLC. Hard Candy originally sued, alleging that Anastasia’s “Gleam Glow Kit” makeup product infringed the Hard Candy trademark. Anastasia’s Gleam Glow Kit is a flip-open makeup palette containing four different shades of facial highlighter, one of which was named “Hard Candy.” The Court of Appeals affirmed the District Court’s finding that (1) there was no likelihood of confusion between Anastasia’s highlighter makeup shade called “hard candy” and the branded makeup of the Hard Candy company; and (2) Anastasia established a descriptive fair use defense against the trademark infringement alleged by Hard Candy.

To prevail on its trademark infringement claim, a plaintiff must establish that a defendant’s use of a mark creates a likelihood of confusion with its trademark. The District Court applied a seven-factor test to determine whether Anastasia’s Gleam Glow Kit created a likelihood of consumer confusion. The Court of Appeals agreed that the “similarity of mark” factor weighed in favor of Anastasia, because while Anastasia uses the same words, all in capital letters (HARD CANDY), the Court must consider the “overall impression created by the use of the mark as a whole, rather than comparing the individual features.”


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Earlier this year, a unanimous Supreme Court held that a copyright owner may not file an infringement lawsuit until the Copyright Office has acted to register the owner’s application.  This decision resolves a long-standing circuit split over when a copyright owner may file an infringement lawsuit – either when the application has been submitted (the “application” approach) or when the Copyright Office registers the copyright (the “registration” approach).  In the wake of this ruling for the “registration” approach, content creators are expected to make greater use of the Copyright Act’s preregistration process as a way of protecting their work before it has been published.
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