There is a popular television show in the United States called American Pickers, which follow the adventures of antique and collectible “pickers” Mike Wolfe and Frank Fritz. Wolfe and Fritz travel around in a van with the logo Antique Archeology to buy, or “pick,” various items for resale, for clients, or for their own personal collections—sometimes with a plan based on background research where destinations and items are predetermined and others by chance when they are “free-styling.” One of the beauties and challenges of an intellectual property practice is how many interesting issues, cases and developments are out there for one to explore. And so, in a legal sense, we “pick” as well, sometimes for clients and sometimes for one’s own personal collections, sometimes while looking for specific items and sometimes while free-styling.
Here are some things that this author has picked since his last post:
An English trinket: As one can see from a recent post, this author has an interest in cease and desist letters, and I picked up along the way the UK Intellectual Property Office’s Guidance on the recently enacted Intellectual Property (Unjustified Threats) Bill. That bill extends from patent law to other IP areas such as trademark and copyright the grounds rules for writing cease and desist letters. The law itself, as the guidance document explains, aims to:
- Protect businesses and individuals against the misuse of threats to intimidate or gain an unfair commercial advantage where there has been no infringement.
- Make it easier for those involved in a dispute over IP infringement to negotiate a settlement and avoid litigation.
- Bring consistency across the law as it applies to patents, trade marks and designs.
It does so by giving causes of action to those receiving unjustified claims, and giving defenses to those making reasonable claims. Though no such enactment exists in most of the jurisdictions in which this author regularly practices, its guidance and lessons can be applied as part of his own analysis of what makes sense in any particular circumstance.
In another matter of interest that likewise shows that “picking” can be about new items and not just antiques, a UK appeals court addressed the issue of whether a candy’s shape was sufficiently distinctive to amount to a protectable trademark/trademark. In a May 17th ruling in Societe des Produits Nestle SA v. Cadbury UK Ltd., the UK Court addressed what it described as the “four-finger” design of the KitKat candy bar:
- This is an appeal by Société des Produits Nestlé S.A. (“Nestlé”) from the judgment of Arnold J given on 20 January 2016 ( EWHC 50 (Ch)) and his consequential order dismissing its appeal against the decision of Mr Allan James, the hearing officer acting for the Registrar of Trade Marks, dated 20 June 2013 (O/257/13).
- The appeal concerns an application made by Nestlé on 8 July 2010 to register as a UK trade mark the three-dimensional sign shown below (the “Trade Mark”) in respect of chocolate and various other goods in class 30:
- The Trade Mark corresponds to the shape of the well-known four-finger product sold by Nestlé under the name Kit Kat in the United Kingdom save that it lacks the Kit Kat logo which is embossed onto each of the fingers of the actual product.
The opinion noted that Kit Kat also had a two-finger version.
Noting that “Kit Kats were not the only four-finger and two-finger products on the market,” that the lower court had held that “there was no evidence, and it was inherently unlikely, that consumers of four-finger Kit Kats relied upon the shape of the product to confirm its authenticity,” and that the lower court had also stated that “the fact that Nestlé ensured that each finger was embossed with the Kit Kat logo amounted to a clear recognition that consumers did not rely upon the shape in that way, and that they in fact relied upon the trade mark Kit Kat,” the appeals court affirmed the lower court’s ruling. Several of the opinions written as part of the affirmance also noted that the shape is not visible to consumers pre-purchase and is not a focus of marketing efforts.
All of the opinions (lower court and appeals court) rested in large part on affirming the original hearing officer’s analysis of the essence of what it means to be a trademark:
108. I respectfully agree with that analysis. As the name indicates, trade marks are intended to permit consumers to make informed choices between the competing goods of different undertakings in the course of trade. Therefore showing that the public know who usually makes goods of a particular shape, without also showing that such recognition plays some part in the trade in such goods, does not show that the shape has become a trade mark for the goods. This conclusion can be validated by considering the position post registration. If the mark is registered the applicant will be entitled to an exclusive right in the registered shape mark. In the case of identical marks/goods, there would be no need to show a likelihood of confusion about the origin of a defendant’s goods because, subject to certain defences, confusion is normally presumed in cases of ‘double identity’. However, if consumers place no reliance on the shape of the goods at any stage of the selection process in order to identify the trade origin of the goods, no one will actually be confused by the defendant’s use of the shape. The protection provided by registration would therefore be unjustified because it would protect a function that the trade mark does not in fact have….”
As one picks through the variety of cases arising in the intellectual property field on a daily basis, case’s with a opinions like this one that go back to some fundamental concepts of what a trademark is and is intended to do are worth collecting—a return to first principles is always a helpful exercise and reminder.
An old cheerleading uniform: Similarly, this author wrote a past post about the Supreme Court of the United States agreeing to hear Star Athletica LLC v. Varsity Brands Inc., a case in which that Court had accepted the challenge of resolving “the single most vexing, unresolved question in all of copyright,” as the petitioner described it. Well, with a March 22, 2017 opinion, the Supreme Court decided that case, though it may not exactly have resolved that question fully.
In that case, the majority created a new standard rather than picking from the numerous varying tests that lower courts had used. The new test focused on the statutory language of Section 101, and said: “[A] feature incorporated into the design of a useful article is eligible for copyright protection … if the feature (1) can be perceived as a two-or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic or sculptural work — either on its own or fixed in some other tangible medium of expression — if it were imagined separately from the useful article into which it is incorporated.” In doing so, the majority “abandon[ed] the distinction between ‘physical’ and ‘conceptual’ separability” in favor of a separability analysis that “is a conceptual undertaking.” In other words, one must now perform an “imaginary extraction” of the item’s artistic features to view them standing alone or incorporated — to think of them either as standing alone or transposed into another form. The dissent, and various commentators since the decision, have said that such a standard is ambiguous and difficult to apply consistently. Perhaps. But this one of those items “picked” fro good reasons—it is a conversation piece.
A French Horn: While le droit moral, or moral rights, are not generally openly acknowledged as a part of the American legal landscape, such notions have been creeping into American law for some time. As defined in Carter v. Helmsley-Spear, Inc., 71 F. 3d 77, 81-82 (2nd Cir. 1995), these rights protect an artist’s right to attribution and integrity:
While the rubric of moral rights encompasses many varieties of rights, two are protected in nearly every jurisdiction recognizing their existence: attribution and integrity. The right of attribution generally consists of the right of an artist to be recognized by name as the author of his work or to publish anonymously or pseudonymously, the right to prevent the author’s work from being attributed to someone else, and to prevent the use of the author’s name on works created by others, including distorted editions of the author’s original work. The right of integrity allows the author to prevent any deforming or mutilating changes to his work, even after title in the work has been transferred.
In some jurisdictions the integrity right also protects artwork from destruction.
Recently, in two matters in New York and one in California, these concepts have been trumpeted more loudly than is usual in American matters, principally through the Visual Artists Rights Act (VARA)— an amendment to copyright law that allows artists to shield their well-known works from destruction.
In the more famous of the two New York matters, as reported in the New York Times and elsewhere, Arturo di Modica, the sculptor of the iconic “Charging Bull” of Wall Street lashed out when the “Fearless Girl” statute was placed right in front of the bull. According to the Times, di Modica argued that the juxtaposition altered his art:
But on Wednesday, Mr. Siegel[, di Modica’s attorney,] said, ‘Principle trumps popularity, and there are principles here.’
For his part, Mr. Di Modica became emotional, explaining later that when he had heard about ‘Fearless Girl,’ his reaction was to go to the site in Lower Manhattan and try to do something to end the face-off between the two statues. ‘I said, “Now I’m going to turn around the bull myself,”‘ he recalled.
The lawyers said that ‘Fearless Girl’ had subverted the bull’s meaning, which Mr. Di Modica defined as ‘freedom in the world, peace, strength, power and love.’
Because of ‘Fearless Girl,’ Mr. Siegel said, ‘”Charging Bull” no longer carries a positive, optimistic message,’ adding that Mr. Di Modica’s work ‘has been transformed into a negative force and a threat.'”
Interestingly, these very same principles of integrity and attribution were recently applied by a federal court in New York to recognize the potential rights of graffiti artists to have their works preserved. In Cohen et al. v. G&M Realty LP et al., the U.S. District Court for the Eastern District of New York held, in a March 31st opinion, that a group of graffiti artists were entitled to a trial on their claims that the 2013 destruction of their art on the New York City mural space known as 5Pointz violated VARA. Of particular note, one must understand that these graffiti artists were originally “uninvited” creators of these artistic works, and later were expressly allowed by defendant property owners to create additional works on the site, which was later destroyed in favor of a high rise development.
Then, in yet another echo to a previous post by this author, this post notes that Monte Thrasher brought suit April 24th, claiming that the 2014 destruction of his “Six Heads” mural violated VARA, destroying “a beloved contribution to the Los Feliz neighborhood” when it was painted over “in broad daylight.” Though the mural itself was not a classic Star Trek piece, Thrasher is well known to Trekkies as the artist who designed the Romulan Star Empire insignia as well as the Romulan alphabet for Star Trek: The Next Generation.
It is important that IP lawyers, especially those in the United States, “pick” up this trend.
Vintage film: Finally, the author “picked” the petition to the United States Supreme Court concerning the iconic “Who’s On First” comedy routine by Abbott and Costello. The case (TCA Television v. McCollum, Docket 16-1258) involved an alleged infringement of the routine by the play Hand to God. The routine itself was not separately copyrighted, but had been originally copyrighted as part of the 1940 movie One Night in The Tropics. The Second Circuit ruled in October that the copyright to the routine was long expired, and had not been renewed when the movie copyright was renewed because the routine had not been created for that movie. The plaintiffs sought Supreme Court review, arguing in their petition for certiorari that “a renewal of a unitary movie copyright necessarily renews federal copyright in all previously unpublished material incorporated in it with the consent of the common law copyright owner, because the movie copyright (unlike the copyright in a composite work, such as a periodical) is a unitary copyright covering all material not previously protected by federal copyright.” On Monday, May 22nd, the Supreme Court denied that petition.
While one might suspect it was the focus of this case on a “Who” that interested this author of the recent Seuss post, the matter is of greater interest than that. The Second Circuit announced a new standard for copyright renewal of pre-1978 works that conflicts with other Circuits and the Copyright Office policy, and the Supreme Court has left that in place, at least for now. That could mean that disputes will arise over control of numerous properties that owners believed they had protected long ago, as we have seen over time all manner of disputes about films in the copyright context and even the “nuances of renewal” under the 1909 Act.
The basic concept of American Pickers is the buy low and sell high. Since “picks” like these only really cost a small investment of the author’s or the readers’ time, it is easy to “sell high.” Hope they help, and looking forward to continuing a life time of picking.