“DUMB STARBUCKS” – a fake parody Reply

Did you hear that a “DUMB STARBUCKS COFFEE” shop opened in California recently?  (AND this fake Dumb-Starbucks-Logoparody was a comedian’s publicity stunt)(AND the shop has already been shut down by the LA County health inspectors)?  In addition to branding the pop-up cafe with a mocked-up Starbucks logo that added the word “dumb” into the logo, the cafe also featured a virtually identical menu to Starbucks and added the word “dumb” onto the menu boards.  (For example selling “Dumb Iced Espresso” in a “Dumb Tall” size cup).

How was this permissible?  Short answer, it wasn’t.  Parody was being claimed although this was not a parody.  Folks often think that just because something is FUNNY it is legally a PARODY.  This is a not the case.  FUNNY ≠ PARODY.  Because this is such a common assumption it’s worthwhile to mention it again (and again, and again).  For a terrific analysis of the DUMB STARBUCKS parody claim see on my friend Ron’s blog www.likelihoodofconfusion.com (post written by Matthew David Brozik).

Not surprisingly, a spokeswoman for Starbucks Coffee said that despite the humor, the store cannot use the Starbucks name.

A few other interesting elements raised by this DUMB STARBUCKS parody claim:

  • Dumb Starbucks made a claim that their parody was similar to Weird Al Yankovic’s music.  However, they left out a critical detail – permission.  Weird Al Yankovic ALWAYS gets permission for his music.
  • The fact that the shop was closed down by county health inspectors is an interesting detail in this Dumb saga.  In fact, it’s not uncommon for various local inspection agencies to become involved when counterfeit merchandise is being sold (technically, the Dumb Starbucks scheme was a misappropriation of the Starbucks brand akin to counterfeiting).  If a trademark-infringing business is violating health or building codes in addition to selling counterfeit products, nipping them in the bud for applicable health or building code violations can quickly close the doors.  Hence this was the case with the Dumb Starbucks shop being shut down by health inspectors.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information see, TMEP on trademark parody section 1207.01(b)(x) at http://tmep.uspto.gov/RDMS/detail/manual/TMEP/Oct2012/TMEP-1200d1e5036.xml; another blog post on parody; for other blogs posts on trademarks; @iplegalfreebies and www.kasterlegal.com.

Title Copycats – (Titles are not protected by copyright) Reply

Evidently, Stieg Larsson’s popular trilogy of books The Girl With the Dragon Tattoo, The dollar (2)Girl Who Played With Fire, and The Girl Who Kicked the Hornet’s Nest have inspired a plethora of title copycats.  NINETY-ONE title copycats as per a recent count that have used a similar title since 2010 when The Girl With the Dragon Tattoo became an international sensation.  This raises an interesting and common copyright question regarding the copyright protection vested in the TITLE of a copyrighted work.

Does Copyright Protect The Title of a Work?  In the US the short answer is NO.  US Copyright Law does not protect titles, names, short phrases or expressions.  Even if the title is original or distinctive it cannot be protected by copyright.  Entirely different works can have the same or a similar title.  This may seem counter intuitive; since, US Copyright Law does protect “original works of authorship” in the form of literary, musical, pictorial or graphic expression.  However, titles, names and other short phrases do not meet the requirements for copyright protection.  (Some names and short phrases can be protected by trademark).

Back to the 91 title copycats who have recently published books similar to the titles of Larsson’s popular Girl With the Dragon Tattoo series.  A few of my personal favorites of the copycat titles are: The Girl With the Thistle Tattoo; The Girl With the Sandwich Tattoo; The Girl With the Iron Touch, The Girl with the Golden Parasol; The Girl With the Brave Heart and The Girl With Chipmunk Hands.  (All can be purchased on Amazon… target difference age ranges and cover a wide range of topics).

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information see, Circular 34: Copyright Protection Not Available For Names, Titles and Short Phrases published by the US Copyright Office; The Title With The 91 Imitators by H. O’Neill in New York Magazine; earlier posts “How to Write a © copyright notice and why to use it?” and “Copyright Protection Only Costs $35“; @iplegalfreebies and www.kasterlegal.com.

Are Sherlock Holmes characters and story elements copyrighted? Reply

A lawsuit over the FREE USE of the Sherlock Holmes characters and story elements prompted the US District Court in the Northern District of Illinoisdollar (2) to do some detective work into the famous, fictional detective to determine whether Holmes, other characters and story elements of Sir Arthur Conan Doyle’s books and stories had entered into the public domain.

The lawsuit, Klinger v. Conan Doyle Estate, raises two interesting copyright questions:  1) what are the copyrightable elements of a literary work; and 2) when do copyrightable elements of a literary work enter the public domain and become available for free public use.

As a bit of background info, Sir Arthur Conan Doyle authored four novels and 56 short stories featuring Sherlock Holmes and Dr. Watson and published these in the US over a span of 30 years (from 1890 – 1926). As one might expect, new characters and plot elements were introduced in the novels and short stories over time.  Hint: these details are critical to the court’s analysis of the copyright questions raised in the case.

QUESTION 1: Copyrightable Elements of a Literary Work.  The court held that copyright protection extends to characters, character traits, and storyline because these are copyrightable “increments of expression.”  By contrast, the court reiterated a general tenant of US copyright law that “ideas, plots, dramatic situations and events” are not elements in a literary work that are protected by copyright.

QUESTION 2: When Do Copyrightable Elements of Sir Author Conan Doyle’s Literary Works Enter the Public Domain and Become Available For Free Public Use?  The short answer is that his works published prior to 1923 are in the public domain.  Since Sir Author Conan Doyle published works featuring Sherlock Holmes and Dr. Watson both before and after 1923, the court analyzed the publication dates of the works and the introduction of various copyrightable “increments of expression” (including characters, character traits and storyline) to determine which were published pre-1923 and post-1923.  Those published pre-1923 are in the public domain and those published post-1923 are still protected by copyright.

Interestingly, some of the post-1923 characters, character traits and storylines that were at issue in the lawsuit and held by the court to be still protected by copyright are: 1) Dr. Watson’s second wife (introduced in 1924); 2) Dr Watson’s background as an athlete (introduced in 1924); 3) and Sherlock Holmes’ retirement from his detective agency (introduced in 1926).

Only 10 of Sir Author Conan Doyle’s works featuring Sherlock Holmes and Dr. Watson were published in the US post-1923 and are still covered by copyright protection.  The 50 earlier works are in the public domain, which means that “increments of expression” including characters, character traits and storyline (most notably Sherlock Holmes and Dr. Watson) are available for the public to use for free without a license.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

This summary is based on the Memorandum Opinion and Order issued by the United States District Court for the Northern District of Illinois in a ruling on the plaintiff, Klinger’s, motion for summary judgment against the Conan Doyle Estate.   See also: earlier blog posts on the topic of “public domain,” https://iplegalfreebies.wordpress.com/category/public-domain/; other copyright and public domain resources, http://www.copyright.gov, http://copyright.cornell.edu/resources/publicdomain.cfm, http://creativecommons.org/publicdomain/; @iplegalfreebies and www.kasterlegal.com.

Benefits of US Copyright Registration Reply

Copyright vests automatically in an original work once it is ‘fixed’ in a tangible dollar (2)form.  While copyright vests automatically, it can also be advantageous to register an original work for copyright registration with the US Copyright Office.  Registering a work with the US Copyright Office is not a requirement but it can be beneficial for the following reasons:

  • Registration with the US Copyright Office establishes a public record of the basic facts including ownership of an original work.
  • Before an lawsuit may be filed against someone infringing your work, registration is necessary with the US Copyright Office for works of US origin.
  • If registration is made within 3 months after publication of the work or prior to an infringement of the work, statutory damages and attorney’s fees will be available to the copyright owner in court actions.  Otherwise, only an award of actual damages and profits is available to the copyright owner.
  • If registration is made within 5 years of publication of the work, registration will establish prima facie evidence in court of the validity of the copyright and of the facts stated in the certificate.
  • Registration with the US Copyright Office allows the owner of the copyright to record the registration with the US Customs Service for protection against importation of infringing copies.

It is possible to file for US Copyright Registration at anytime within the life of the copyrighted work.  Currently, it only costs $35 to file an application with the US Copyright Office for registration.

The term of copyright protection for a work created on or after January 1, 1978 is for the life of the author plus 70 years (or if a work is made for hire the term of copyright protection is 95 years from the date of publication or 120 years from the date of creation, whichever expires first.)

Wishing all of you reading this post a Happy New Year!   Starting off the new year with a reminder that all your original creative content that is written down, drawn, painted, recorded, sculpted or otherwise fixed… is automatically vested with copyright feels auspicious.  As detailed above, taking the extra step to register your work with the US Copyright Office can be beneficial.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information see, Circular 1, Copyright Basics; Circular 15A, Duration of Copyright. and all the information circulars and fact sheets available at the US Copyright Office website: http://www.copyright.gov/circs/; and also an earlier post “Copyright Protection Only Costs $35“; @iplegalfreebies and www.kasterlegal.com.

Trademarks as Membership Marks – Hells Angels, Fresno Bulldogs Reply

Trademarks are often used as membership insignia for various organizations, groups and fans… like the Hells Angels and the Fresno State Bulldogs football team.  In fact, one of the primary reasons why a trademark registration is so valuable is because it can create a clear link between brands and their members and fans.  Members and fans generally want to be associated with brands and will wear merchandise bearing their favorite brands.  (The exclusive rights granted to an owner of a trademark registered with the USPTO helps make this happen.  By granting an owner exclusive rights to use a trademark on particular goods or services, then it’s easier to avoid customer confusion as to the source of the goods and services. This in turn often strengthens brands by increasing brand awareness and public recognition).

Using trademarks as Membership Marks can raise some interesting situations regarding trademark use and infringement.  Here are two interesting situations raised by membership marks that are registered USPTO trademarks:

  • Hells Angels, Example #1: The Hells Angels motorcycle club owns registered USPTO Reg No. 1136494  trademarks which are valuable membership insignia and the Hells Angels, like all trademark owners, have the right to pursue folks and businesses who use their trademarks without permission (ie trademark infringers).  In a recent NY Times article, the trademark attorney for the Hells Angels addressed the issue of pursuing trademark infringers by stating that, “[t]he intent is not just to punish the infringers but to educate the public that the Hells Angels marques are well guarded and not generic and that they must not be infringed upon.”  This statement relates to a strategy for dealing with other folks or businesses who use the Hells Angels trademarks without permission or who use confusingly similar trademarks.
  • Fresno State Bulldogs, Example #2: Fresno State University in California owns registered trademarks featuring their bulldog mascot.  Wearing merchandise produced by the University featuring the bulldog mascot and team name displays allegiance to the team – ie “fan membership insignia.”  A recent NY Times arUSPTO Serial No. 86050169ticle reported that it’s not only wholesome football fans who are flocking to buy and wear jerseys, shirts, hats and other merchandise produced and sold by the University bearing the registered bulldog trademark… but that a violent street gang has also adopted the Fresno State Bulldogs trademark and apparel as a gang symbol.  Evidently, the gang is purchasing and using legitimate University shirts, jerseys and other merchandise bearing the registered Bulldogs trademark as a gang symbol indicating gang membership.  Buying legitimate University merchandise is obviously not trademark infringement; although, it will be interesting to see how the University develops a strategy for dealing with upholding its brand image.  Unfortunately, the University’s registered trademark is now playing a double “membership” role… indicating two drastically different types of membership.

These two situations highlight two vastly different circumstances involving membership marks that are registered USPTO trademarks.  Reading NY Times articles on both situations described above that were printed only 20 days apart inspired this blog post on trademarks that are used as membership insignia.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information see, USPTO Registration 1136494 for one of the Hells Angels’ trademark registrations; USPTO Serial Number 86050169 for one of Fresno State’s trademark applications;  Pride and Peril of a Logo, published in the NY Times on 11/9/13 by M. Wollan and Despite Outlaw Image, Hells Angels Sue Often, published in the NY Times on 11/29/13 by S.E. Kovaleski, and the USPTO Trademark Electronic Search System (TESS) which is a tool for searching the USPTO’s database of registered trademarks and prior pending applications at http://tess2.uspto.gov; @iplegalfreebies and www.kasterlegal.com.

An Artist’s LOVE – can extend to COPYRIGHT 1

Have you read that the American Pop Artist Robert Indiana (famous for his “LOVE” with a tilted O) will be featured in a new exhibition at the Whitney Museum in NYC? Have you also read that he missed out on controlling all the rights to his famous “LOVE” work because he didn’t copyright it properly?

In a recent NY Times article, Mr Indiana spoke about being brokenhearted over not properly copyrighting his work:

…because ‘LOVE’ – with its tilted O – wasn’t properly copyrighted, it spread to all sorts of places and products [I] didn’t want. And that broke [my] heart. ‘Rip-offs have done a great harm to my own reputation.’

This is an important reminder to artists and creative folks to copyright your work! For a work to be eligible for copyright registration it must be original and “fixed in a tangible form.” This can include any original work, fixed in virtually any tangible form. For example, original copyrightable works can include: sculptures, drawings, photographs, artwork, music, poetry, graffiti, jewelry designs, motion pictures, video clips, translations, texts, manuscripts, recordings…. etc. And the requirement that the work be “fixed in a tangible form” can include traditional mediums such as paper, canvas, clay, DVDs, CDs… and less traditional mediums such as a napkin… scrap of paper… and probably even peanut butter.

Please take Mr. Indiana’s words to heart and copyright your work. For more information on how to copyright your work see my earlier post titled: “Copyright Protection Only Costs $35.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See, The US Copyright Office Website at: www.copyright.gov; for more information on the upcoming exhibit of Robert Indiana’s work in NYC www.whitney.org/Exhibitions/RobertIndiana, @iplegalfreebies and www.kasterlegal.com.

As a post script, I mentioned peanut butter above as a possible medium for fixing an original copyrightable work, because, there is a contemporary Double Mona Lisa work made out of PB&J – www.artnet.com/usernet/awc/awc_workdetail.

“The Wind Done Gone” a famous parody of “Gone With The Wind” Reply

Criticism of a copyrighted work (which parody is one variety) is often a protected form of free speech. If a parody is challenged as being a copyright infringement, courts will conduct a “fair use” evaluation to determine if the parody is a permissible fair use for the purpose of criticism, commentary and preservation of free speech.

Parody is generally a mocking criticism of another well known work. As you might have guessed, The Wind Done Gone is a parody of the famous American novel, Gone With The Wind. In The Wind Done Gone the plot follows the story line of Gone With The Wind but is told from the viewpoint of Cynara, a mulatto salve on the plantation who is Scarlett’s half sister and Rhett’s mistress. Cynara ends up being freed and continuing her life off the plantation.

When The Wind Done Gone was published, a trustee for Mitchell (the author of Gone With The Wind) filed a law suit claiming copyright infringement and seeking an injunction to prevent the publication and distribution of The Wind Done Gone. The district court granted the injunction, which was appealed. The appellate court issued an order vacating the injunction on the grounds that it was unconstitutional and issued a comprehensive opinion in 2001 which held that The Wind Done Gone was a fair use parody of the novel, Gone With The Wind.

Here a few interesting quotes from the appellate court’s opinion:

[Note that the court uses abbreviations for the titles of both novels. The Wind Done Gone (TWDG) and Gone With The Wind (GWTW)]

It is hard to imagine how Randall [the author of TWDG] could have specifically criticized GWTW without depending heavily upon copyrighted elements of that book. A parody is a work that seeks to comment upon or criticize another work by appropriating elements of the original. “Parody needs to mimic an original to make its point, and so has some claim to use the creation of its victim’s (or collective victims’) imagination.” Campbell, 510 U.S. at 580-81, 114 S. Ct. at 1172. Thus, Randall has fully employed those conscripted elements from GWTW to make war against it. Her work, TWDG, reflects transformative value because it “can provide social benefit, by shedding light on an earlier work, and, in the process, creating a new one.” Campbell, 510 U.S. at 579, 114 S. Ct. at 1171. [**46]

[Note that characters in the two novels have different names which the court references in this next quote. Scarlett is “Other” in TWDG; Rhett is “R.B.” in TWDG; Gerald is “Planter” in TWDG and Pork is “Garlic”]

There are numerous instances in which TWDG appropriates elements of GWTW and then transforms them for the purpose of commentary. TWDG uses several of GWTW’s most famous lines, but vests them with a completely new significance. For example, the final lines of GWTW, “Tomorrow, I’ll think of some way to get him back. After all, tomorrow is another day,” are transformed in TWDG into “For all those we love for whom tomorrow will not be another day, we send the sweet prayer of resting in peace.” Another such recasting is Rhett’s famous quip to Scarlett as he left her in GWTW, “My dear, I don’t give a damn.” In TWDG, the repetition of this line (which is paraphrased) changes the reader’s perception of Rhett/R.B.–and of black-white relations–because he has left Scarlett/Other for Cynara, a former slave. Another clear instance in which a memorable scene from GWTW is taken primarily for the purpose of parody is Gerald/Planter’s acquisition of Pork/Garlic. In GWTW, Gerald won Pork in a card game with a man from St. Simons Island. In TWDG, Planter wins Garlic in a card game with a man from St. Simons Island, but Garlic, far from being the passive “chattel” in GWTW, is portrayed as being smarter than either white character by orchestrating the outcome of the card game and determining his own fate. There are many more such transformative uses of elements of GWTW in TWDG. [**46-47]

The concurring opinion sums it up by stating that The Wind Done Gone is a “book that seeks to rebut a classic novel’s particular perspective on the Civil War and slavery…. its main aim being to shatter Gone With the Wind‘s window on life in the antebellum and Civil War South.”

Arguably exposure to the perspective offered on Civil War and slavery by The Wind Done Gone is a benefit of the First Amendment. Parody and the fair use exception are interesting components of US Copyright Law that highlight the balancing of a copyright owner’s exclusive rights and freedom of speech.

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

See, Suntrust v. Houghton Mifflin Co., 268 F.3d 1257 (U.S. App. 2001) and Suntrust v. Houghton Mifflin Co.,252 F.3d 1165 (11th Cir. 2001); US Copyright Act § 107 on Fair Use at http://www.copyright.gov/title17/92chap1.html#107 and http://www.copyright.gov/fls/fl102.html; The Wind Done Gone at http://www.amazon.com/dp/B0015MLOYI and Gone With The Wind at http://www.amazon.com/Gone-Wind-Margaret-Mitchell/dp/1416548947; @iplegalfreebies and www.kasterlegal.com.

An interesting fact mentioned in the court’s opinion issued in 2001 is that, “since its publication in 1936, Gone With The Wind has become one of the best-selling books in the world, second in sales only to the Bible.”

AT&T revises the process for Mobile Device Opt-Out of Data Sharing Reply

Many of you may already know that AT&T has made changes to their Privacy Policy to allow them to share more of your personal data (gathered on each of your devices) with advertisers and external marketing folks. (I posted a blog about this in July <click here to read it>).

This is a FOLLOW UP post regarding changes that AT&T has made to the Opt-Out process to simplify it and iron out the kinks.  AT&T has acknowledged that some of its customers (including me and maybe you too) had difficulty completing the Opt-Out process on their mobile devices and as a consequence AT&T has revised the process for Opting-Out on a mobile device.

Here are the new revised instructions that were emailed out by AT&T:

  • From your AT&T mobile device you want to opt out, go to adworks.att.com/mobileoptout
  • Make sure you are on the AT&T wireless network, and not on any Wi-Fi
  • Choose the blue Opt-Out button. You should receive the following message: “Thank you. This device will not be receiving AT&T AdWorks Relevant Advertising”

I just went through these steps on my iPhone and received the promised confirmation message.  Simplifying this Opt-Out process and providing a confirmation message was a good move.  All AT&T customers should have received an email from AT&T giving notice of this revised Opt-Out process for mobile devices.  (THANKS to all of you who contacted AT&T to let them know that you were having difficulty with the initial Opt-Out process.  I have a hunch that this new revised Opt-Out was launched in response to the feedback we all provided).

BY: Vanessa Kaster, Esq., LL.M.

vk@kasterlegal.com

For more information on privacy policies see: http://wp.me/p10nNq-tf; http://wp.me/p10nNq-bL; http://wp.me/p10nNq-ni; and for more information on Opt-Out policies see: http://wp.me/p10nNq-6j ; @iplegalfreebies and www.kasterlegal.com.