White flag raised in Louboutin Red Sole lawsuit Reply

The legal battle between designer shoe makers Christian Louboutin (known for his signature red sole shoes) and Yves Saint Laurent (who started selling a monochromatic red-soled shoe to match an all red outfit) has come to an end with YSL agreeing to dismiss its lawsuit against Louboutin.

After two rounds of trials ending with NY Judges questioning and narrowing the scope of Louboutin’s trademark for ‘red-soled shoes’… YSL has decided to end what was left of the litigation and dismiss the case.

YSL considers the case a victory and YSL’s attorney has reportedly stated the reasoning behind this decision as the following: “[b]y dismissing the case now, Yves Saint Laurent also wishes to ensure that the Court will not make any further rulings that put at risk the ability of fashion designers to trademark color in appropriate cases.”

The Louboutin ‘Red-soled trademark” lives on!

See also: YSL Drops Louboutin Suit at http://www.wwd.com/business-news/legal/ysl-drops-louboutin-suit-6418160 by A. Steigrad; Red Sole USPTO Registration # 3361597 @iplegalfreebies and www.kasterlegal.com

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

vk@kasterlegal.com

Digital royalties waiting? Register before October 15, 2012 1

SoundExchange is the organization that collects and distributes digital royalties to musicians and record labels.  Just last month,dollar sign SoundExchange released a list of over 50,000 recording artist and record label names who are owed tens of millions of dollars in unclaimed digital performance royalty payments.  [Registration with SoundExchange is required in order to collect these unpaid and ongoing digital royalties].  The list released by SoundExchange also includes more than $31 million in royalties that are three or more years old.

**AN IMPORTANT NOTE** Any unclaimed royalties that are over three years old may be forfeited (and lost) if the artists and labels who are entitled to the $$$ do not register with SoundExchange by OCTOBER 15, 2012.

If you think that you, or someone you know may have digital royalties waiting to be collected from SoundExchange CHECK with SoundExchange.  You can check this out by searching through the database of unpaid artists and labels  on the SoundExchange website… or you can email SoundExchange at: connect@soundexchange.com.

Just a note about searching the on-line database, try searching by your full name and also by each part of your name individually.  For some quirky reason, I have found that this can change the search results.  For example, on a whim I decided to search for the Native American Artist, Floyd Red Crow Westerman…. and searching “Westerman” didn’t return any results; however, searching for “Red Crow” found: FLOYD RED CROW WESTERMAN.  (I sent an email to the contact on Mr. Westerman’s website… hopefully they will reach out to SoundExchange asap!)

See also: an earlier post  http://www.soundexchange.com/2012/08/15/soundexchange-releases-list-of-recording-artists-and-record-labels-with-unclaimed-digital-performance-royalties/, http://www.soundexchange.com/2012/08/17/royalties-waiting-find-out-in-our-new-database/, http://www.soundexchange.com/performer-owner/does-sx-have-money-for-you; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

What happens to your photos once posted to Facebook? Reply

Facebook thrives because people want to connect and share photographs and other content. However, connecting and sharing content on Facebook means that Facebook makes the rules for how the content is shared, used, copied and made available to others. (Facebook also has the privilege of changing these terms of use at anytime and is known for making significant policy changes frequently. For the current Terms of Service see –>; http://www.facebook.com/legal/terms).

Here are three significant components of Facebook’s current policy concerning photographs that you post to Facebook (these are the terms as of today… and may change tomorrow):

  1. …you grant us a non-exclusive, transferable, sub-licensable, royalty-free, worldwide license to use any IP content that you post on or in connection with Facebook (IP License). This IP License ends when you delete your IP content or your account unless your content has been shared with others, and they have not deleted it. (Subject to how you set the privacy and application settings on your account).
  2. When you publish content or information using the Public setting, it means that you are allowing everyone, including people off of Facebook, to access and use that information, and to associate it with you (i.e., your name and profile picture).
  3. Facebook respects the intellectual property rights of others and is committed to helping third parties protect their rights. Our Statement of Rights and Responsibilities prohibits users from posting content that violates another party’s intellectual property rights. When we receive a valid notice of IP infringement, we promptly remove or disable access to the allegedly infringing content. We also terminate the accounts of repeat infringers in appropriate circumstances.

What can happen to your photographs when you post it to Facebook under these Terms? The short answer – ALMOST ANYTHING… especially if you have left the default settings on your Facebook page to allow public access to the content you post on Facebook.  If however, someone else posts a photograph that you took and own the rights to… then you have a bit more muscle and can request that Facebook remove or disable access to the photograph by reporting a copyright infringement to Facebook.

To report a copyright infringement on Facebook go to –>; https://www.facebook.com/help/?faq=190268144407210 …you will see that there is an online form as well as a contact email [ip@fb.com] and mailing address.

See also: http://www.facebook.com/legal/terms, https://www.facebook.com/help/?faq=190268144407210; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

“I won’t sell my songs for no TV Ad” – Adam Yauch’s will states how his image and music may be used after his death. Reply

I won’t sell my songs for no TV Ad”… not only did The Beastie Boy’s Adam Yauch, also known as MCA, rap these lyrics… but he also showed that he meant it to be true after his death too… by including a similar statement in his will. Evidently, Yauch’s will (which was filed in Manhattan Surrogate court earlier this month) states:

“Notwithstanding anything to the contrary, in no event may my image or name or any music or any artistic property created by me be used for advertising purposes…” (His will also reportedly leaves his estate and rights to his music to his wife and daughter).

This statement in Yauch’s will is one example of how creative works can be accounted for and passed on in a will. Stating who inherits music and other creative works (beneficiaries), how the works may be used, and even passing on instruments to specific family members, friends or charity programs are important components of an artist’s Last Will and Testament.

(While the excerpt from Yauch’s will speaks to his own image and music, it is unclear how this impacts the Beasty Boys’ legal rights to license the group’s music for advertisements.)

See also: http://www.rollingstone.com/music/news/adam-yauchs-will-prohibits-use-of-his-music-in-ads-20120809; http://www.allmusic.com/album/hello-nasty-mw0000598994; http://www.guardian.co.uk/music/2012/aug/10/beastie-boys-adam-yauch-will-advertising; http://www.metrolyrics.com/putting-shame-in-your-game-lyrics-beastie-boys.html; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

MedStartr launches: a health and medical focused crowdfunding platform Reply

The launch of MedStartr aims to fill a gap in the crowdfunding services provided by Kickstarter.com by providing a crowdfunding platform for health and medical-focused projects, products and interventions. The MedStartr platform enables project makers to run customized, fundraising campaigns to raise money from backers for the purpose of funding healthcare related projects. (Currently, the popular Kickstarter crowdfunding service is not available to many health, fitness and medical related projects).

One of the current MedStartr campaigns is for: Avado’s “GPS for Healthcare” which pitches a novel patient-relationship-management-system. With a fundraising goal of $5,000, all levels of contributions are solicited… starting with a $1 contribution to show support for a “tidal wave of innovation.” Take a look: (http://www.medstartr.com/projects/13-avado-patient-relationship-management)

On the MedStartr website, health care forward thinkers including, “patients, entrepreneurs, physicians, researchers, non-profits, artists, filmmakers, musicians, designers, writers, performers, and others” are encouraged to submit projects that could include:

  • New medical devices
  • Killer apps for healthy living
  • Opening a clinic or practice
  • Drug development (if you have a new drug in stage IV clinical trials)
  • Fundraising for research
  • See the complete list of examples at http://beta.medstartr.com/faq

Evidently, MedStartr vets each crowdfunding application and works with applicants to shape their products and projects for optimal success. In return, MedStartr plans to keep 5% of funds raised on the platform. Currently, the amount of capital projects can raise on MedStartr is limited to $40,000.

The inspiration behind MedStartr’s launch came in part by rejection (Alex Fair who founded MedStartr had a healthtech campaign rejected by Kickstarter) and in part by the JOBS Act which legalized funding in start-ups by non-accredited investors. The SEC is still ironing out the specifics of the crowdfunding regulations. As with all medical businesses, the FDA and other regulations provide specific measures and restrictions on health businesses.

See also: http://www.medstartr.com/;http://twitter.com/medstartr; http://www.xconomy.com/new-york/2012/07/11/medstartr-offers-crowdfunding-for-health-it-firms-including-itself/; http://techcrunch.com/2012/07/11/medstartr-launch/; http://www.medstartr.com/terms; http://mobihealthnews.com/17841/medstartr-to-launch-after-kickstarter-rejects-some-health-projects/; @iplegalfreebies and www.kasterlegal.com.

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

 

 

Thrifty fashionistas are painting their shoe soles red… (imitating Louboutin while a lawsuit defending his red-sole trademark is on appeal) Reply

IMG_0176While the lawsuit filed by shoe designer Louboutin against fashion house Yves Saint Laurent alleging infringement of his signature (and trademarked) red-sole is being appealed… a surge of thrifty fashionistas have begun painting the soles of their shoes red to imitate the designer look.

Evidently sales of glossy red paint have rocketed in the UK … increasing by 40% for the red shades such as “Flame” and “Show Stopper.” Paint shop keepers are giving tips for painting on leather… and are surprised and happy about this new trend… and spike in red paint sales.

Interestingly, taking a brush in hand and painting shoe soles is exactly how the designer Louboutin claims to have created his first pair of red soles too.

“In 1992 I incorporated the red sole into the design of my shoes. This happened by accident as I felt that the shoes lacked energy so I applied red nail polish to the sold of a shoe. This was such a success that it became a permanent fixture…. I selected the color red because it is engaging, flirtatious, memorable and the color of passion. It attracts men to the women who wear my shoes. The red-soled shoes were an immediate sensation, and clients specifically came in to my stores looking for my red-soled shoes. The red sole quickly became my signature.” – excerpt from a declaration made my Christian Louboutin, in support of the trademark application for his red-sole-design mark

Celebrities and famous actresses are often seen wearing Louboutin shoes which sell for $450 – $4,645 a pair, on the Barney’s website… which is a significant footwear investment.  By comparison, the thrifty fashionistas who are taking a paint brush in hand and painting their soles red… are spending a few dollars on tester-sized pots of red paint.

For more information: The case is Louboutin v. Yves Saint Laurent America, 11- 3303, U.S. Court of Appealsfor the Second Circuit (Manhattan) [click here for Louboutin’s brief and YSL’s brief and Judge Marrero’s 8/10/11 Decision: http://www.nylj.com/nylawyer/adgifs/decisions/081111marrero.pdf]; Red Sole USPTO Registration # 3361597; http://fashion.telegraph.co.uk/news-features/TMG9389255/Cash-strapped-women-are-painting-their-shoe-soles-red-to-get-the-Louboutin-look-for-less.html; http://www.huffingtonpost.com/2012/07/10/louboutin-shoes-red-soles_n_1662364.html; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

Slicing up a copyright violation: Black Keys sues Pizza Hut & Home Depot over unauthorized song use Reply

The Grammy award winning band, Black Keys, has filed lawsuits in California against Pizza Hut and Home Depot for using their music in commercials without permission. Black Keys claims that a Pizza Hut commercial “prominently features significant portions” of their song “Gold on the Ceiling” and that a Home Depot commercial for Ryobi power tools uses parts of their song “Lonely Boy.”

Using portions of an original, copyrighted work requires permission from the copyright owner. Permission is required if part of the original sound recording is used, or if a section of the music is re-recorded. From what I was able to dig up on YouTube …it sounds like Pizza Hut used a recognizable portion of the song “Gold on the Ceiling” …the tempo and groove sound similar… there might be slight variations in the riff… although it certainly sounds like the jingle is trying to mimic the song (Take a listen: the ad http://www.youtube.com/watch?v=YkaGEgjWdNI and the band’s video of the song: http://www.youtube.com/watch?v=6yCIDkFI7ew ). Facts about the portion of the song that has been used will play heavily into the development of this case and a possible settlement. This will include evaluating the originality, amount and specific portion of the misappropriated music. (Black Keys “wins/bargaining power increases” if, the music is original and has been copied). (Pizza Hut “wins/bargaining power increases” if, the music in question is not original or has not been copied).

As I’m sure you can guess, payment is generally a central issue in this type of dispute. Now that these lawsuits have been filed, it is likely that Black Keys and the two corporate brands, Pizza Hut and Home Depot, are already discussing a settlement payment and licensing arrangement for use of the music. (These types of cases often settle).

See also: The cases: Auerbach v. Pizza Hut, 12-05385, and Auerbach v. Home Depot, 2:12-cv-05386, U.S. District Court, Central District of California (Los Angeles), http://www.theblackkeys.com/, http://www.forbes.com/sites/karstenstrauss/2012/07/02/pizza-hut-home-depot-sued-by-rock-stars/, http://www.bloomberg.com/news/2012-06-22/black-keys-rock-duo-sues-pizza-hut-home-depot-over-songs.html, @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

Newly Discovered Jazz Archive in a Copyright Tangle Reply

You might have heard that an archive of historic jazz recordings was discovered and donated to the National Jazz Museum in Harlem last year. Accompanying the hundreds of donated discs containing recordings of legendary jazz musicians of the late 30’s and 40’s… is a tangle of legal copyright issues.

THE MUSIC – This newly discovered jazz archive exists due to the technical genius of William Savory who was both a jazz aficionado and a technical wizard. Mr. Savory developed ways to make superior, longer and more durable sound recordings and recorded historic jazz performances during the golden era of American Jazz. Among the treasures in his collection are never released recordings of: Benny Goodman, Billie Holiday, Count Basie, Bobby Hackett, Ella Fitzgerald, Louis Armstrong, Coleman Hawkins and Lester Young.

This historic collection is currently being restored and digitized by the National Jazz Museum and can be heard in eight short clips on the museum’s website and by making an appointment to visit the museum’s listening room. (http://www.jazzmuseuminharlem.org/savory/index.php or by calling 212-348-8300).

THE BIG QUESTION – is whether this historic collection will be made available to the public once digitized.

COPYRIGHT ISSUES ABOUND – Copyright law has changed and morphed over the years and the legal protocol for using, distributing, copying and making these digitized recordings (or any copyright protected work) available… requires identifying the musicians and copyright owners of the recordings and getting their permission to use the works. As you might guess, this is no small task. It can be difficult to identify and locate copyright owners especially since decades have passed since the recordings were made. Most of the musicians are no longer living and the business entities and companies that may hold ownership interests in the works have likely morphed and changed too.  (Note that copyright protection lasts for longer than the life of the owner.  The duration of copyright protection has changed over the years.  Currently, copyright protection lasts for the life of the author + 70 years and if owned by a corporation it lasts for 95 years from publication.)  If an organization wishes to use copyrighted works, but the copyright owner cannot be located… the organization has two choices: 1) not to use the work or 2) to use the work without permission, which is a risky gamble.

HOW BIG OF A GAMBLE IS IT TO USE A COPYRIGHTED WORK WITHOUT PERMISSION? The short answer – Big. Using a copyrighted work without permission can put the user at risk of owing treble damages to the owner for willful infringement AND can prevent any further use of the work via an injunction. The risk of potential copyright liability for using works without permission is generally too high for most museums, filmmakers and libraries to take.

WHAT HAPPENS NOW? Evidently the National Jazz Museum in Harlem is in the process of restoring and digitizing the Savory collection. It will be interesting to see how the museum decides to use the works. Hopefully, tracking down the copyright owners and getting permission to use (and make available for distribution) at least some of the works will be possible. (I would like to hear these recordings!) Alternatively, legislation could change the penalty for using the works by reducing the fee from treble damages to ‘a reasonable licensing fee’ payable to the copyright owner retroactively once they resurface and make a demand for payment. These types of legislative changes to the current Copyright Law have been proposed but have not been adopted. For now, making an appointment to visit the National Jazz Museum in Harlem’s listening room is the way to hear these historic jazz recordings.

See also: http://www.jazzmuseuminharlem.org/; http://jazzmuseuminharlem.org/the-museum/collections/the-savory-collection/; http://www.copyright.gov/; Orphaned Treasures: A Trove of Historic Jazz Recordings has Found a Home in Harlem, But You Can’t Hear Them, by S. SeidenbergFor more information on works in the Public Domain, see http://wp.me/p10nNq-ft and http://wp.me/p10nNq-gn; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

Franklin & Marshall – Trademark infringement becomes a creative alliance between a small US college and a hot European Brand Reply

If you are traveling in Europe this summer, you are likely to see a lot of young people wearing collegiate styled Franklin & Marshall shirts and clothing… and you might wonder how the small Franklin & Marshall College in Pennsylvania has generated such a following abroad.

THE ANSWER: it’s because of a creative trademark deal.  After a pair of Italian designers were inspired by a Franklin & Marshall College sweatshirt… they created and launched an Italian brand based on the “American varsity style” and started selling a clothing line using the Franklin & Marshall name.  Since Franklin & Marshall is a registered trademark in the US, the College could potentially have a trademark infringement claim against the brand including a challenge to the brand’s domain name (www.franklinandmarshall.com) which infringes on the College’s trademarks.  (Franklin & Marshall College has three USPTO trademark registrations that incorporate the college’s name “Franklin & Marshall” – USPTO Registration Numbers: 2739509, 3536380, 2812109)

THE NEGOTIATION:  the College and the Italian brand decided to negotiate a mutually beneficial deal.  The Italian brand is able to continue selling varsity style gear abroad using the Franklin & Marshall trademarks and in return, it has 1) reportedly paid a licensing fee for use of the college’s trademarks; 2) includes information about the college on clothing hang tags; 3) made a donation to the college’s scholarship fund; and 4) allows the college to review clothing designs and ad campaigns.

With over 200 stores in Italy, the Italian, Franklin & Marshall brand can be a stylish way for the small Franklin & Marshall College in Pennsylvania to get its name out there!  (an Italian brand is just about the hippest form of marketing available!)  The clothes look great… see for yourself at http://www.franklinandmarshall.com/en/Collection/Man/Jackets.

(NOTE: Domain names that infringe a USPTO registered trademark can be challenged with a WIPO Domain Name Dispute.  See, http://www.wipo.int/amc/en/domains/.  A WIPO Domain Name Dispute is a powerful tool available to USPTO trademark owners that enables them to challenge domain names that are based anywhere in the world).

See also: A  great article by Paul Lukas at: http://espn.go.com/blog/playbook/fandom/post/_/id/2608/the-two-identities-of-franklin-marshall, http://www.fandm.edu/, www.uspto.gov, frequently asked questions about Internet Domains and WIPO domain name disputes: http://www.wipo.int/amc/en/center/faq/domains.html, @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com

 

Tory Burch vs her Ex – a Fashionable Trademark Dispute Reply

Evidently a “fashionable” trademark dispute is brewing between Tory Burch and her Ex-husband, Christopher Burch, over the launch of his C Wonder store and brand. Gossipers are saying that C Wonder is a cheap knockoff of the Tory Burch brand… and potentially infringes Tory Burch trademarks. (gotta love trademark gossip!)

The C Wonder store is down in Soho on Spring Street and much like its website, http://www.cwonder.com/ (which features a $44 top on the homepage)… the store is filled with fun items that are much less expensive than Tory Burch merchandise. By comparison… if you click on the Tory Burch website, http://www.toryburch.com, its homepage features a $375 dress, $250 pants and a $225 cardigan.

Do these price differentials matter? Yes… price always matters… even in the evaluation of a potential trademark claim. Interestingly, the evaluation of a potential trademark claim, like this Burch/Burch issue, includes an analysis of how likely consumers are to be confused as to the source or maker of the products and the PRICE of the items factor into the analysis. Generally speaking, consumers pay more attention to what they are buying when they purchase an expensive item. (Don’t you pay more attention when making larger purchases? Would you confuse a $44 C Wonder shirt with a $225 Tory Burch shirt?)

A trademark case that exaggerates this point regarding price and consumers LACK of confusion regarding the maker of products, involves dog toys called Chewy Vuiton (made by Haute Diggity Dog) which sell for under $20 and Louis Vuitton handbags which sell for over $900. The court noted the price differential between the items in its decision which held that there was no trademark infringement in the case. (Clearly there were other obvious differences between a squeaky dog toy in the shape of a handbag and an original, Louis Vuitton bag and the court held that the Chewy Vuitons were a successful parody of the Louis Vuitton bags).

Back to a possible trademark infringement claim between the Ex-Burches… and their brands… it will be interesting to see if and how this possible trademark infringement claim develops. Currently, as far as I know, this issue is merely a murmur of frustration that has sparked trademark gossip about a possible trademark claim. Stay tuned for more on this “fashionable” trademark dispute.

See also: Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, 507 F.3d 252 (4th Cir. 2007); Jessica Pressler’s article, “His.Hers.” at http://nymag.com/fashion/12/spring/christopher-tory-burch-2012-2/; @iplegalfreebies and www.kasterlegal.com.

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

vk@kasterlegal.com