Monthly Archives: December, 2012

Can A Color Be A Trademark?

Among the most interesting classes of possible trademarks are color trademarks.  In its seminal 1995 decision in Qualitex Co. v. Jacobsen Products Co., 514 US 162, the United States Supreme Court held that a color could be a protectable trademark where the color has acquired what is known in trademark law parlance as “secondary meaning” (which simply means that the color distinguishes one brand from others and indicates the source of a particular product or service).

Over the years, several well-known colors have successfully attained protected trademark status.  For example, most consumers are familiar with the distinctive light blue color used to distinguish the products sold by Tiffany’s.  Likewise, due to a very clever marketing campaign by Corning using the Pink Panther character, the color pink has become a protectable trademark for Corning’s insulation and other building products.  And most consumers also are familiar with the brown color that serves as UPS’ trademark for transportation and delivery services and the yellow color that serves as 3M’s trademark for Post-It notes and like products.

Two recent matters highlight how valuable and powerful color trademarks can be.  In the recent decision of the Second Circuit Court of Appeals out of New York, the court found that the distinctive red lacquered color used by Christian Louboutin on the soles of its shoes was a protectable trademark.  This was a major victory for the fashion industry and all businesses that use a color as a trademark to distinguish their products and services.

A lawsuit recently filed by Rawlings Sporting Goods Company against Wilson Sporting Goods Company illustrates an interesting application of the color trademark law.  Although most baseball fans probably do not realize it, Rawlings owns a trademark registration for the mark “Rawlings Gold Glove” award (which is the formal, official name of the award).  Wilson gave a Wilson-brand baseball glove with metallic gold-colored webbing, stitching and lettering to Brandon Phillips, who endorses Wilson products, in honor of Gold Gloves he has won.  Rawlings contends the glove with the gold coloring infringes its Gold Glove trademark and sued Wilson in federal court in St. Louis.  This case presents an interesting question whether a word mark featuring a color word (i.e. gold) can be infringed by a product that features the color itself.  Should be an interesting one!

As seen, color trademarks can present interesting (and challenging) issues regarding protection, use and infringement.  A business that plans to use a color trademark would be well-advised to consult with experienced trademark counsel to consider and address such issues.

Don’t Sleep On Your Rights – You Must Act Promptly Where Infringement Is Known Or Suspected!

A recent decision by the Ninth Circuit Court of Appeals makes clear that intellectual property owners cannot sleep on their rights for years and then expect the courts to enforce their rights against infringers. In 2009, an individual named Paula Petrella filed an action for copyright infringement against MGM and 20th Century Fox, claiming they had infringed her rights in a book and two screenplays that supposedly formed the basis for the motion picture “Raging Bull.” Readers may remember that Raging Bull came out in 1980, so Ms. Petrella delayed for 19 years before filing suit. Not surprisingly, the Ninth Circuit found that Ms. Petrella’s suit was barred by a legal doctrine known as laches (which is a fancy way of saying Ms. Petrella’s lawsuit was thrown out because she slept on her rights).

We ourselves have been very successful in getting trademark and copyright lawsuits dismissed because the plaintiff waited too long before suing. So, we caution intellectual property owners in the strongest possible way they must act promptly and consult with experienced intellectual property litigation counsel as soon as they know or suspect their rights are being infringed

How Much Are You Willing To Pay To Download A Song?

Two recent decisions should cause anyone who plans to download music from the Internet to be extremely careful and to think twice before doing so.

By way of background, the Copyright Act gives the copyright owner the option of recovering either actual damages or what are known as “statutory damages” when its copyright has been infringed.  Statutory damages do not have to have any relationship to the actual damages suffered, and are more in the nature of a penalty than traditional damages.  The Copyright Act provides for statutory damages of between $750 and $30,000 for each act of non-willful infringement and statutory damages of between $750 and $150,000 for each act of willful infringement.

In Sony BMG Music Entertainment v. Tenenbaum, the defendant used well-known file-sharing services like Napster, Morpheus, Kazaa and LimeWire to download and distribute 30 separate songs.  After a 5-day trial, the jury found the defendant liable for 30 separate acts of copyright infringement (one for each song) and assessed statutory damages of $22,500 for each song.  In total, the defendant was found liable for statutory damages of $675,000, which damage award was upheld on appeal.

In another case, several music companies sued an individual who downloaded 1,700 songs using the Kazaa file-sharing service.  The defendant was found liable for copyright infringement and ordered to pay $220,000 in statutory damages.

We know from our experience and work in the music and film industries that the music companies (and many film companies) employ sophisticated software and investigative techniques to identify individuals who they believe are illegally downloading their copyrighted works, and they will not hesitate to sue the offenders once identified.  So one must ask – is it really worth risking a penalty of $22,500 (or possibly even more) just to download a song?

Our best advice is the old adage – what seems too good to be true probably is.  Always assume that a song, video or other work available for download is protected by copyright and that you need permission (and usually will have to pay some kind of fee) to download it.  Always use a recognized and legal service (like iTunes and the like) to download your music and videos and you won’t run into the same problems as the defendants in the cases discussed above.

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