Author: Kristen Tojo

For ‘The Slants,’ an appellate trademark coda

Call this a surprising coda for an Asian-American dance rock band involved in a long-running effort to secure a federal trademark registration for its name:  The Slants. A federal appellate court has taken it on its own accord to reconsider en banc the three-judge ruling that just recently reafirmed the Trademark Trial and Appeals Board decision to deny mark registration to the founder of the Asian-American band. While a certain pro football team can take the field in the nation’s capital and give wide offense, many say, to Native Americans, Simon Tam, the dance rock band’s founder,  twice was refused mark registration for his group’s name. On both occasions, the examining attorney refused to register it, finding it “disparaging to Asian Americans.” The case went up on appeal, here’s how it came down, then turned around–a little like watching a Washington linebacker running in circles in downfield. The disparagement clause On appeal, Tam argued that the board erred in finding the mark disparaging under Section 2(a) of the Lanham Act and challenged the constitutionality of this proviso that lets the U.S. Patent and Trademarks Office refuse to register a mark with matter that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs or national symbols or bring them into contempt or disrepute.” The primary test to determine if a mark is disparaging is (1) what is...

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For musicians, tax credits a new part of score

Musicians in the Golden and Empire states may be whistling a happier tune these days. That’s because lawmakers in both California and New York have looked at the value that entertainment enterprises add to their states’ economies, and, in accord with what many governments have done to support filmmakers, they’ve put in place or are pushing for tax credits for tunesmiths and their ilk. Let’s take note:   The Golden State In California, a bill recently introduced in the state Assembly, and backed by several musician unions, aims to alter how Sacramento supports the film industry by requiring that a percentage of music, post-production, occur in the Golden State for movies to qualify for tax rebates. AB 1199, its sponsors say, seeks to “close loopholes ” in the California Film and Television Job Retention Act.” It offers film makers a twenty percent tax credit on qualified expenses, up to $100 million, for feature films and television shows and a twenty-five tax percent credit for relocated TV series and independent films. While existing law allows for an addition five percent tax credit back for qualified expenditures, the law does not specify what part film or TV music scoring or music-track recording must be done in California to qualify. At issue are productions that receive California tax credits for music scoring that may be done almost exclusively outside the state. AB 1199 proposes...

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Court harpoons ‘Shark’s bid for ‘safe harbor’

Grooveshark could not groove it way out of a recent New York federal district court decision granting EMI summary judgment against the music streaming service operated by Escape Media group. The court found Grooveshark liable for copyright infringement and unable to claim safe harbor protection under the Digital Millennium Copyright Act. In the latest case development, U.S. District Judge Alison Nathan adopted the report and recommendation of U.S. Magistrate Judge Sarah Netburn. Her recommendations included: 1) granting EMI music’s motion for summary judgment on its infringement claim and the exception of its claim for direct infringement of its right of reproduction and 2) granting summary judgment to EMI on Escape’s affirmative defense under the DMCA. The district court more specifically affirmed Netburn’s decision that Escape directly infringes EMI’s right of public performance but that it does not directly infringe its right of reproduction. The judge in that decision also concluded that ” Grooveshark users directly infringe EMI’s rights of reproduction and distribution and that Escape is secondarily liable” under vicarious and contributory theories. Of particular importance in the R&R’s finding was that: Escape directly infringed EMI’s copyrighted work; Escape did not make any specific objections to Netburn’s conclusions of direct and secondary infringement. Instead, the streamer contended there was no evidence from which infringement could be found, as the key declaration claiming to show this should have been excluded. The declaration analyzed the...

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Uncle Sam adds new tactic to ‘notorious’ list

The U.S. Trade Representative recently released its annual Notorious Market List, which calls out markets where the infringing of intellectual property is most problematic and where markets themselves enable “substantial copyright piracy and trademark counterfeiting.” While pinpointing China, Russia, Argentina and India as hotbeds of IP infringement, Uncle Sam also listed nations like Mexico and Thailand where “IPR holders face a difficult environment due to the large number of markets offering counterfeit and pirated goods and services, and a relative lack of enforcement.” Although the trade rep’s work up to now primarily has focused on online and offline markets where infringing goods proliferate, the latest USTR list for the first time also identifies domain-name registrars that American officials deem of concern. The USTR hopes to hold internet registrars accountable for  infringement by its users and says these services are “playing a role in supporting counterfeiting and piracy online.” As a domestic legal tactic to crackdown on IP infringement, such a move hasn’t gone over well–and such a move may not play well across the Atlantic or Pacific, either. Attention grabbing report The USTR report, while it gets lots of attention, especially from supportive American interest groups in the movie and recording industry, isn’t  legally binding, though it makes a convincing case about many real issues with Internet infringement. But as the EFF points out, the agreement that registrars sign with ICANN, the net’s online, international regulatory agency,...

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Walmart rears up against cartoonist’s site

When a cartoonist decides to horse around, must a mammoth corporation react as if an online site is a horse of a different color, and whinny to the jest, nay, nay, neigh? With the Entertainment industry seeking to protect its intellectual property, especially in response to lucrative merchandising issues, it’s worth seeing that copyright and trademark issues create legal issues for other enterprises, too–and that the cyber chatter can be just as robust over the online world’s perception that corporations may feel their oats too much and might consider a wee bit more horse sense about aggressive protection of brand. Today’s publicity-attracting incident involves Walmart, from which Jeph Jacques, creator of the comic strip Questionable Content, received a recent cease and desist letter  after he launched his Walmart.horse website via the Tumblr photo-sharing and blogging software. Jacques insists his is a protectable fair use of Walmart’s trademark. In the C&D notice, Walmart, the nation’s largest retailer, says the site, among other mark infringement claims, particularly “weakens the ability of the Walmart mark and domain name to identify a single source… [and] tarnishes the goodwill and reputation of Walmart’s products, services, and trademarks.” What legal issues will prevail, so one of these conflicting parties happily and triumphantly rides off into the sunset? While parody is generally a protected form of speech, there is no definite legal definition of what separates legitimate parody from trademark...

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