Geekview IP Week(ish) in Review

Posted by | December 11, 2011 | Disputes, Geekview IP recap, General | 5 Comments

The Marleys — as musically talented as they are litigious!

Boy, was this album title prophetic.  I doubt there’s a person on the planet who would challenge Bob Marley’s legendary status, even if you don’t love his music.  His heirs, for one, certainly will not let you forget how legendary he is nor that they own the rights to Bob Marley’s surviving intellectual property rights.  The Marley heirs’ corporation Fifty-Six Hope Road Music has filed 25 trademark (No 840) and copyright (No 820) suits since 1997.  The most recent suit was filed on December 1, 2011 against one if Bob Marley’s sons, Richard Marley Booker (whom the complaint refers to as Richard Booker, apparently downplaying the familial relation) for trademark infringement, and dilution, copyright infringement, violation of Marley’s right of publicity, seeking cancellation of Booker’s pending trademark registration for MAMA MARLEY, which Fifty Six Opposed (here) back in August, 2008.  Though Marley Booker claims MAMA MARLEY does not refer to any living individual, Fifty Six believes otherwise, and it also takes issue with Booker Marley’s use of 9MILE and NINE MILE for music festivals promoted on its <> domain.  I’m left to wonder which party’s tune will resonate most with the federal court.


And in other entertaining entertainment legal battles . . .

Cowboys & Aliens & Litigators, oh my!

It never ceases to amaze me when people file lawsuits claiming that a lackluster film infringed their rights in their own (also lackluster?) work.  Cowboys & Aliens got a 6.3 average user rating on IMDB, which describes the film as, “A spaceship arrives in Arizona, 1873, to take over the Earth, starting with the Wild West region.  A posse of cowboys and natives are all that stand in their way.”  Doesn’t exactly leave you wondering about its rating, does it?  Not even Harrison Ford could save this film from doom.  While cowboys and natives may have stood in the way of the aliens, nothing’s gonna stand in graphic novelist Steven John Butsi’s way of filing a lawsuit against Universal Studios, and Dreamworks for copyright infringement.  Butsi claims the studios ripped off his 1994 Cowboys and Aliens story.  Too bad for Butsi is he’s fighting this case without a full arsenal; having failed to make timely copyright registration, he is unable to seek statutory damages or attorneys’ fees.  The complaint focuses on general commonalities between Butsi’s work and Universals (scènes à faire), so unless Butsi is able to show more detailed similarities, I just don’t see how he’s gonna win this battle. And in a battle of the bands . . .

Blackstreet wants Blackstreet imposters blacklisted.

Blackstreet Entertainment owns the intellectual property rights in the works and marks of the band Blackstreet, a group founded in 1973 by Teddy Riley and Chauncey Hannibal, aka Chauncey Black.  Blackstreet recently sued two of its members, Mark Middleton and Eric Williams (who’s apparently not popular enough to have a Wikipedia entry) for posing as Blackstreet.  According to the lawsuit and preliminary injunction motion filed on December 1, 2011 and the first amended complaint filed on December 6, 2011, then Middleton and Williams joined Blackstreet after their first album was released and have performed with the band since that time under work for hire agreements.  Neither Middleton nor Williams have any rights in the works or marks of Blackstreet.  The complaint alleges that they have posed as the band, booking unauthorized performances and impermissibly using the images of Riley and Black to promote themselves.  Sounds like Middleton and Williams bit the hand that fed them and now that hand’s gonna give them a spanking they won’t soon forget.  While Blackstreet whoops its band members into shape, the Oakland Raiders hope to do the same to Nation’s Giant Hamburgers . . .

NFL bets football fans are dumb enough to confuse Raid A Nation’s marketing campaign with the Oakland Raiders’ RAIDER NATION.

Nation’s Giant Hamburger burger chain has 26 restaurants in California, including the original Nation’s restaurant in Jack London Square in Oakland, CA. The Oakland Raiders are a NFL football team that plays in — you guessed it — Oakland, CA.  The Raiders and the NFL sued Nation’s for the “ambush advertisement” shown above, which the football team and league claim “falsely depicts Nation’s as enjoying some sort of official marketing relationship with the Raiders.”  Nation’s ran this ad on a billboard adjacent to the football arena in which the Raiders play.  The league claims the location of the billboard is evidence of the burger chain’s intent to profit by pretending to have a relationship with the Raiders team without paying for such rights.  RAIDER NATION is federally registered for on-line retail store services and a website featuring statistics (here) and for clothing (here), but are these or any of the Raiders’ 15 registered marks really likely to be confused with Nation’s Burgers’ RAID A NATION’S campaign?  We’ll have to wait and see whether the Court will swallow the Raiders argument or throw a flag at them.  Meanwhile, further down the California coastline another IP sports challenge is being volleyed . . .

Babes in bikinis spiking serves over tequila; what more could you ask for?

According to the lawsuit filed by DFA PVA II Partners, LLC (DFA), its predecessors and it have used the MANHATTAN BEACH OPEN service mark “for decades.”  Apparently, the trademark attorney who filed the trademark registration application for MANHATTAN BEACH OPEN wasn’t so good at math, as he listed a first use date of the MANHATTAN BEACH OPEN mark for “entertainment services, namely, arranging, organizing, and conducting athletic competitions, exhibitions, and community festivals and cultural events in the nature of volleyball games, tournaments and competitions, featuring live music concerts, dj’s, visual and audio performances, and dance performances” as 2001, which is only one decade by my calculations.  The defendants in the case include IMG Worldwide, USA Volleyball, Leverage Agency, Jose Cuervo, and the city of Manhattan Beach, each of whom DFA claims infringed on its alleged rights in the MANHATTAN BEACH OPEN service mark by offering an “unofficial” MANHATTAN BEACH OPEN volleyball tournament this past summer.  According to an article on Easy Reader, Manhattan Beach city attorney Roxanne Diaz stated that the city has held the tournament for 51 years and will defend its trademark rights.  The city’s rights appear to be superior (by at least 41 years) to the use claimed by DFA, and since U.S. trademark rights are based on common law, my suspicion is that Manhattan Beach is will win this match after numerous sets of motion practice.

Only an Oyster House could find itself in such a pickle . . .

No, Wintzell’s is not being sued for oyster harassment!  It’s being sued for copyright infringement by Media Partners corporation, which claims that Wintzell infringed its copyright in its Give ’em the Pickle customer service training DVD after having licensed the same product in VHS format in 2005.  Media Partners claims that Wintzell’s made multiple unauthorized copied of the pickle DVD video, which it then distributed to each of its locations.  According to the complaint, Media Partners’ demands that Wintzell’s cease and desist went unanswered.  This got Media Partners in so much of a stew that it sued seeking to enjoin Wintzell’s from continuing to infringe the pickle video.  If the facts of the complaint are true, Wintzell’s going to have to come up with something more substantial than a half-baked argument to avoid big damages for willful copyright infringement.

Not every grievance needs to be aired in court!  If you stand to recover less than you stand to gain, then your lawsuit is likely to only benefit your lawyers, and maybe, just maybe it shouldn’t be pursued.  Just ’cause a law firm agrees to take on your case doesn’t mean they can or will win it.

About Lara

Lara Pearson is a trademark attorney with Exemplar, where she also serves as the firm's Sustainability Steward. Lara's legal practice focuses on trademark and copyright law, including: intellectual property audits; trademark search & clearance; trademark and copyright registration & maintenance; intellectual property transfers; transactional work; and dispute resolution, including litigation when necessary. Lara primarily represents other social enterprises -- those leveraging their businesses and brands as catalysts for positive social and environmental change. Such businesses engage in CSR (Corporate Social Responsibility) to have a positive "triple bottom line" of people, planet and profit. As Exemplar's Sustainability Steward, Lara works with others in her law firm to measure and reduce the firm's carbon emissions and encourage engagement in social responsibility initiatives, including pro bono legal work and volunteering. Lara is a proud member of the Social Venture Network. Brand Geek is a member of 1% for the Planet and a Certified B Corporation, whose Incline Village office is certified under the regional Keep the Sierra Green program. Exemplar Companies is the most innovative professional services firm in the New Economy. Our unique, diversified expertise spans the disciplines of corporate law, business advisory, and capital/investment banking to better meet the needs of our high-potential customers. We have assembled a comprehensive suite of service to meet the complex issues facing companies in today’s challenging business environment. Our unique, holistic approach ensures the growth and success – and greatly increases the competitive advantage - of our customers. The Exemplar team is comprised of knowledgeable, highly skilled experts in a wide range of industries and disciplines. They work closely with our customers to provide trusted advice, incomparable support, expert guidance and the ultimate competitive advantage as they accelerate their businesses and position themselves to transform industries.


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