Will magician David Copperfield make DC Comics disappear?

Attorney Tim Sitzmann of Minneapolis law firm Winthrop & Weinstine noticed that magician David Copperfield, well-known for making things like jet airplanes and Orient Express rail cars seemingly disappear into thin air, has recently filed an application for registration of several "DC" trademarks with the U.S.P.T.O.  Given that Mr. Copperfield's initials are "D" and "C" this probably isn't very surprising. 

 

 

But what is surprising is that there are a number of established companies who already hold registered trademarks for the "DC" initials, including entertainment behemoth DC Comics, which has held a registered mark for those letters since 1940.  The truly astonishing part of the story is the fact that the PTO did not refuse the Copperfield registration applications based on any likelihood of confusion.  TO the contrary, they have been accepted.

 

Did David Copperfield use slight of hand to pull the proverbial trademark rabbit out of the PTO's hat?  Perhaps.  Now, we'll have to see if he can work his magic to avoid opposition from DC Comics, DC Shoes, and a myriad of others with preexisting trademark registrations.

 

For Mr. Sitzmann's original article, check it out at Copperfield Trademark Magic.

 

 

Hell's Angels Are Dangerous.....Inside and Outside the Courtroom



 

Why are the Hell's Angels so protective of their intellectual property?  Because it's valuable, that's why.  See the full New York Times article here.

California Court Holds That "Sophisticated User" Defense Does Not Apply To An Unsophisticated Employee 

On November 27, 2013, the California Court of Appeal for the Second District in Pfeifer v. John Crane, Inc. [B232315] refused to extend the "sophisticated user" defense to unsophisticated employees.  The plaintiff in Pfeifer contracted mesotheliamo allegedly as a result of having been exposed to asbestos during the time he was in the Navy and working for the U.S. government.  Typically, the manufacturer of a hazardous product is not obligated to warn a user if the user knew or should have known of the risk of harm or danger associated with the product, i.e., is a "sophisticated user."  There is a split of authority in other jurisdictions as to whether the defense applies to an employee of a sophisticated intermediate user.  In some jurisdictions the employer's "sophistication" is imputed to its employees.  The court in Pfeifer held that in California the focus is on the plaintiff's knowledge, not his employer's level of sophistication.  Accordingly, the mere fact the employer is sophisticated is not enough as a matter of law to avoid liability under the defense.

A complete copy of the Pfeifer decision can be found at courts.ca.gov.

By Todd A. Picker

California Judge Derails Bullet Train

Yesterday a Sacramento Superior Court judge ruled that California's High-Speed Rail Authority could not access funds to start construction on the Los Angeles to San Francisco bullet train because it had failed to comply with the law approved by voters in 2008.  The 2008 law required state authorities to have in place a valid financing plan before tapping more bond money.  Under the law, among other things the state needed to present a funding plan that is self-sustaining, which it has thus far completely failed to do.

Apparently pols in Sacramento assumed that if they started construction taxpayers would have to pay to finish it even though the project had "jumped" the track laid down by voters. Fortunately the court was not willing to play along.

Additional information about this ruling can be found at http://fw.to/uBdbvvj.

By Todd A. Picker, Senior Counsel

Can you copyright a building? The answer may surprise you.

By DAVID CHRISTOPHER BAKER, ESQ.

A November 8, 2013 decision by the United States Circuit Court of Appeals for the Fifth Circuit affirmed a $3.2 million damages award for copyright infringement in favor of an architectural firm against a home-building firm in which a jury determined that Design Homes, L.P had infringed the copyrighted architectural drawings of Kipp Flores Architects, L.L.C.

 

For more on the ruling, check out attorney Harriet Thomas Ivy’s article on JDSupra Law News at http://www.jdsupra.com/legalnews/builder-beware-does-your-project-infrin-66896/?utm_source=LU_Emails.

Mr. Baker is head of the Intellectual Property Law Department and a partner at Hart, King & Coldren, a full service law firm located in Orange County, California.  If you would like to contact him, send an e-mail to dbaker@hkclaw.com or call him at (714) 432-8700.

Lance Armstrong And A Sure Fire Way To Avoid A Deposition--Settle.  What About The Confidentiality Of His Settlement Agreement?

In the wake of admitting to doping and being stripped of his Tour de France titles, among other things, Lance Armstrong is now a defendant in multiple lawsuits.  Hardly a surprise.  One such lawsuit filed by Acceptance Insurance in Texas just settled.  Acceptance Insurance was seeking to recover $3.0 million paid to Armstrong in connection with some of his Tour de France "triumphs."  Details about the settlement agreement were not disclosed.  The terms of the agreement and information exchanged during the lawsuit may be (and probably are) subject to a confidentiality agreement.  The case settled one day before Armstrong was scheduled to be deposed.  Needless to say Armstrong and his lawyers concluded that testifying under oath and confessing to Oprah are two very different things.

The confidentiality of private settlement agreements raises some interesting issues.   In any civil case both sides may have good reasons for not wanting the terms of a settlement or information exchanged during discovery disclosed to third parties.  The use of confidentiality provisions in settlement agreements is common.  Public policy strongly favors encouraging settlement of civil cases.  If keeping the terms of a deal a secret helps settle a case, and it often does, then there is a solid basis for a court to respect the litigants desire for privacy.

Which brings us back to Armstrong.  Can someone in his position, i.e., involved in multiple lawsuits and whose reasons for wanting confidentiality may not be compelling, keep information about the Acceptance Insurance case from other litigants who are suing him and in so doing potentially impede the progress of those litigants' lawsuits?  In some jurisdictions, like Texas where Acceptance Insurance filed its lawsuit, the answer is no even if he had a good reason for wanting privacy.  See Newby v. Enron Corp., 623 F.Supp.2d 798 (U.S. Dist. Ct. Tex. 2009).   In other jurisdictions a balancing test is applied to resolve the issue. See Hinshaw v. Winkler, Draa, Marsh & Still v. Superior Court, 51 Cal.App.4th 233 (1996).  In those jurisdictions the answer is maybe.   The confidentiality of information about the settlement and lawsuit would turn on the needs of the party seeking disclosure, the relevance and sensitivity of the information, and the settling parties' privacy rights.  In Armstrong's case we suspect that a court using a balancing test is not going to do him any favors.

For more information about the Acceptance Insurance lawsuit, go to USATODAY.com: http://usat.ly/188GTLH  

Todd A. Picker, Senior Counsel.

U.S. Government Seeks Comments on Copyright Policy

By DAVID CHRISTOPHER BAKER, ESQ.

The U.S. Department of Commerce has announced that its Internet Policy Task Force (IPTF) will hold a series of public meetings to discuss copyright policy issues raised in a recently released green paper, “Copyright Policy, Creativity, and Innovation in the Digital Economy” (“Copyright Policy Green Paper”).  The IPTF issued its proposed digital copyright policy in July 2013 and is now soliciting public comments as part of its efforts to continue a dialogue on how to improve the current copyright framework for stakeholders, consumers, and national economic goals.

Specifically in the Copyright Policy Green Paper, the IPTF proposes five copyright policy issues to address.  The five issues include:

(1) establishing a multi-stakeholder dialogue on improving the operation of the notice and takedown system for removing infringing content from the Internet under the Digital Millennium Copyright Act (DMCA);

(2) the legal framework for the creation of remixes;

(3) the relevance and scope of the first sale doctrine in the digital environment;

(4) the application of statutory damages in the contexts of individual file sharers and of secondary liability for large-scale infringement; and

(5) the appropriate role for the government, if any, to help improve the online licensing environment, including access to comprehensive databases of rights information.

Then-Secretary of Commerce Gary Locke launched the IPTF in April 2010, to conduct a comprehensive review of privacy policy, copyright, global free flow of information, cybersecurity, and their respective relationships to innovation in the Internet economy.

The next public meeting will be held on December 12, 2013 from 8:30 a.m. to 5:30 p.m. ET at the USPTO headquarters in Alexandria, VA and the period for post-meeting comments has been extended.  For further information regarding the meeting, please contact Hollis Robinson (hollis.robinson@uspto.gov) or Ben Golant (Benjamin.golant@uspto.gov) in the Office of Policy and External Affairs, or call (571) 272-9300.

And, if you would like a digital copy of the Copyright Policy Green paper, please contact Mr. Baker.

Mr. Baker is head of the Intellectual Property Law Department and a partner at Hart, King & Coldren, a full service law firm located in Orange County, California.  If you would like to contact him, send an e-mail to dbaker@hkclaw.com or call him at (714) 432-8700.

50-Year James Bond Copyright Dispute Ends with MGM Deal for Rights

By DAVID CHRISTOPHER BAKER, ESQ.

Even debonair super-spy James Bond (aka Agent 007) would have to admit being worn out as more than 50 years of litigation and business disputes came to an end when Bond film franchise producers Danjaq LLC (“Danjaq”) and Metro-Goldwyn-Mayer (“MGM”) agreed to purchase terms for all of the rights to the franchise owned by the estate of the late screenwriter Kevin McClory.

MGM has been the longtime distributor of the Bond movies and Danjaq has long been the franchise's producer, but the two movie powerhouses have been locked in legal battles with screenwriter Kevin McClory (now deceased) who collaborated with 007 author Ian Fleming on the script for the movie "Thunderball." Although the precise terms of the settlement were not disclosed, the companies announced that the deal brought the copyright saga to an "amicable conclusion."

 

The legal saga began when Fleming turned the first James Bond script for the movie “Thunderball” into a novel by the same name and McClory filed suit in 1961 over ownership rights. The parties eventually settled their differences and McClory was produced the movie version "Thunderball" and released it in 1965 and as the fourth 007 film.

Almost twenty years later, in 1983, a London court held that McClory had the right to produce all future James Bond movies and the franchise brought back Sean Connery, albeit for the last time, in the title role in "Never Say Never Again." which brought Sean Connery back as the dashing spy for the last time.

Then, when McClory sought to recover royalties from the other Bond films, a California court ruled against him in 2001 based on a finding that he had waited too long to make his case. Five years later, McClory died in 2006 at the age of 80, and his estate took up the fight. 

In total, James Bond has been seen onscreen in 24 films (if you include "Never Say Never Again") and have grossed almost $2 billion domestically.  The latest film, 2012’s “Skyfall,” is reported to have taken in more than $304 million.

Mr. Baker is head of the Intellectual Property Law Department and a partner at Hart, King & Coldren, a full service law firm located in Orange County, California.  If you would like to contact him, send an e-mail to dbaker@hkclaw.com or call him at (714) 432-8700.

Private Attorney General? Not Without Showing A Benefit To The Public At-Large.

On November 18, 2013, the California Court of Appeal for the Fourth District in Norberg v. California Coastal Commission [G047522] reversed an award of attorney’s fees against the State holding the plaintiff, who established that the California Coastal Commission disregarded the Coastal Act by forcing the plaintiff to waive certain rights, could not recover private attorney general fees under California Code of Civil Procedure 1021.5 because the action did not confer a public benefit. 

The plaintiff's litigation sought to invalidate permit conditions affecting residential improvements on his privately owned oceanfront property.  Proving the Coastal Commission had not followed the law, which the court acknowledged was an important right, did not justify an award of attorney fees.  Because the plaintiff’s lawsuit concerned only the plaintiff’s property, the court ruled a significant benefit had not been conferred on the public at large.  In addition, the Norberg court found the financial burden of filing the lawsuit was not out of proportion to the plaintiff’s individual stake in the matter and therefore it was reasonable for the plaintiff to assume the financial burden of pursuing the case.

The case does not really break new ground but instead serves as a reminder that shifting the cost of litigation as a "private attorney general" can prove to be a difficult task.

A complete copy of the Norberg opinion can be obtained at www.courts.ca.gov/opinions/documents/G047522.PDF.

Authentic Brands Group Buys Elvis Presley (Well, his IP rights anyway)

As reported earlier today by Adrian Sainz of the Associated Press, "The money-making enterprise called Elvis Presley has been sold."

No purchase price was disclosed, but Authentic Brands Group ("ABG") announced it has bought all of Elvis Presley's intellectual property from CORE Media Group.  It also announced that it is partnering to operate the Graceland tourist attraction.  This gives ABG control of Elvis Presley Enterprises, which manages the licensing and merchandising rights to Presley's image, name and likeness, as well as all of the King's "massive collection of music, photos, movies, television appearances and performance specials." 

As countless dead celebrities like Marilyn Monroe, Albert Einstein, and Michael Jackson would tell you (if they could speak to you from beyond the grave), it pays to be dead (if you're famous).

For the rest of Sainz' story, see http://www.komonews.com/news/entertainment/Elvis-Presleys-intellectual-property-rights-sold-232587551.html.

Teacher's Aide Claims 'Elysium' Director Stole Idea for Film

Have you ever had a great idea for a movie but lacked the expertise (as well as the significant financial means) to make it a reality, only to see that idea turned into an actual movie by someone else?  Not surprisingly, this happens quite often in Hollywood.  And, when it does happen and the movie is a financial success, it often spawns lawsuits by those aspiring filmmakers who believe they have been cheated out of their share of the millions generated by the movie.

But, what happens when the movie is not a blockbuster or even fails to break even?  Does it still lead to litigation?  You bet it does.

In the case of the movie "Elysium," a movie written and directed by Neill Blomkamp (of "District 9" fame), a teacher's aide at Sequoia High School in Redwood City, California, Steve W. Briggs, is convinced that Mr. Blomkamp stole the idea for his movie and his screenplay titled "Butterfly Driver." Briggs is so convinced that he filed a lawsuit in California Northern District Court (Case Number: 4:13-cv-04679-PJH) naming Blomkamp, Sony Pictures Ent., Inc., Tristar Pictures, Inc., Media Rights Capital and QED International.

So, how did Blomkamp allegedly get ahold of Butterfly Driver?  Briggs claims he registered his script with the WGA-West in December of 2005 and then in February 2007 he posted a copy of it in its entirety to the screenwriting website TriggerStreet.com.  Bad idea?  Maybe.  Briggs is convinced that Blomkamp accessed his script on TriggerStreet and used it as the basis for his own. According to Briggs' complaint, there are numerous similarities between his script and Mr. Blomkamp's movie.  If he's right on both counts and he can prove that (a) the defendants had access to his script, and (b) there are substantial similarities between the script and the movie, then he may have a valid claim to a share of the movie's profits.

However, Elysium cost $115 million to make and was only moderately successful in the United States, bringing in roughly $92 million in revenue.  Why sue for copyright infringement on a losing venture?  Well, overseas ticket sales brought in an additional $272 million and, if you're a high school teacher's aide in a small, California town, this may be your only chance at a big break in Hollywood.

China Adopts New Trademark Law - Do We Care?

China has never been known as a paragon of intellectual property protection.  In fact, quite the opposite. However, in a stated effort to modernize and to try and take a more proactive leadership role on the world stage, China has decided to bring its IP laws into alignment with Western laws.  Well, some of them anyway.

After discussions and consultations for nearly 10 years, China’s National People’s Congress finally passed the “Decision on Revising the Trademark Law of the People’s Republic of China (hereinafter referred to as ‘Decision’)” on August 30, which adopts the third amendment to the country’s Trademark Law. The Decision is scheduled take effect on May 1, 2014, and has brought significant changes to the country’s current Trademark Law.

The Decision has made 53 revisions to the current Trademark Law in the following five areas:

• Adding provisions regarding the trademark review period;
• Improving the opposition system for trademark registration;
• Regulating the protection system for well-known trademarks;
• Strengthening the exclusive rights protection of trademarks; and
• Regulating the activities of trademark agencies.

Of course, only time will tell if these revisions will have any practical effort, especially for extraterritorial companies and individuals trying to enforce their IP rights against Chinese companies and Chinese nationals.

For additional information, check out a very detailed article on the subject by Jason Wang and Yan Zhang of the Beijing East IP Law Firm which can be found at http://ipchina.ip4all.com/?p=288.

 

#China #Trademarks #ChinaTrademarkLaw #HKC #HartKing&Coldren #IntellectualProperty

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