Earlier this year, fashion brand Steven Madden, Ltd. filed a declaratory judgment action against Jasmin Larian, LLC in a trademark dispute involving the latter’s Cult Gaia “Ark” bag, a structured handbag made of interlocking rigid strips arranged in a half-moon shape. The dispute arose after Larian’s counsel had sent a cease and desist correspondence to Madden requesting that it cease and desist from the marketing and sale of Madden’s virtually identical “BShipper” bag. In its papers, Madden seeks a declaration that the “Ark” design is generic and not protectable because it “slavishly copies the traditional Japanese bamboo picnic bag design… from the 1940s.” Read more here, or direct message me for a PDF copy.
Dunnington Featured as Gold Sponsor at the Federal Bar Association’s Annual Meeting in New York City
Dunnington is the Gold Sponsor of the Federal Bar Association’s Annual Meeting, September 13-15, 2018, at the New York Marriott Downtown. The convention draws federal practitioners and judges from all over the country. The program features a reception at the Tribeca Rooftop hosted by the Southern District of New York Chapter of the FBA, presided by Dunnington partner Donna F. Frosco. We encourage you to join us in the festivities at the Tribeca Rooftop, and attend the top-notch CLE sessions scheduled throughout the day. Register for convention here.
Dunnington Partners to Present on Trademark Licensing at Federal Bar Association Annual Meeting and Convention on September 14, 2018
Dunnington partners Olivera Medenica and Donna Frosco will present on a trademark licensing panel along with Rita M. Odin, VP and Senior Trademark Counsel at Estee Lauder Companies, Inc., and Viviana Mura, Head of Global Trademark Practice at Luxottica Group. The panel will be moderated by incoming Federal Bar Association President Maria Z. Vathis, of Bryan Cave Leighton Paisner LLP. Register for convention here.
Top Ten Trademark Tips for Restaurant Owners to Protect the Brand
With competition in the restaurant industry at an all-time high, a restaurant’s positive image in the minds of the consuming public is more important than ever. Restaurateurs can take basic steps to protect and maintain rights in the restaurant’s marks that will save the business time and money in the future. Registering the restaurant’s trademark with the USPTO and policing others’ use of the mark are just the first steps to protect the mark. Other issues such as whether or not to use a surname or a geographic location in the name of the restaurant, and issues relating to licensing the mark are among the other considerations restaurant owners should note when ensuring that the brand’s image is protected. See the complete top-ten list of trademark tips for restaurants here.
Lucky Brand’s Defense Barred by Claim Preclusion Under Res Judicata in Infringement Action
After nearly 20 years of trademark litigation between the jean maker Lucky Brand and Marcel Fashions Group, a small apparel company operating under the name “Get Lucky”, the Second Circuit ruled that it was too late for Lucky Brand to assert its defense that Marcel’s claims were barred by a 2003 settlement agreement that released Lucky Brand from liability. On August 2, Judge John M. Walker wrote for the three-judge panel, “under certain conditions, parties may be barred by claim preclusion from litigating defenses that they could have asserted in an earlier action, and that the conditions in this case warrant application of that defense preclusion principle.” This is the first time the doctrine of res judicata has been used in this way. The Court vacated the district court’s judgement and remanded for further proceedings in which Lucky Brand could not assert the defense.
The Shape of Kit Kat Bars May Not be Recognizable Enough for TM in the EU
In 2006, the EUIPO granted Nestlé a trademark for the three-dimensional, four-fingered shape of its Kit Kat candy bar. On July 25, 2018, the Court of Justice of the European Union ruled that the registration had been improperly granted because Nestlé had not shown that consumers “throughout the member states of the EU” – particularly, Belgium, Ireland, Greece and Portugal – recognized the candy bar as the company’s trademark. This dispute began in 2007 when the company that owns rival candy brand, Cadbury, challenged Nestlé’s EU registration. The Court sent the case back to the EUIPO to reconsider the registration.
Read more here.
Court Revives TM Infringement Case Involving Viral Video of Honey Badger
On July 30, the Ninth Circuit revived a trademark infringement lawsuit in which the owner of the mark for “Honey Badger Don’t Care” originating from his viral YouTube video, sued Drape Creative Inc. (owner of Papyrus-Recycled Greetings Inc.) and its subsidiaries for their use of variations of the Honey Badger mark on greeting cards. The lower court held that the trademark owner did not satisfy the Rogers v. Grimaldi standard that only allows infringement claims involving expressive works to proceed when “the public interest in avoiding consumer confusion outweighs the public interest in free expression.” The Court ruled that the issues in the case are not so clear-cut, and that the lower court erred in its decision that the case did not need to go to a jury.
Read more here.
“Copper 88” TM Registration Refused as Merely Descriptive of Clothing Made with Copper
On July 30, the TTAB affirmed the USPTO’s refusal to register the mark “Copper 88” for "clothing made of fabric containing copper, namely, athletic sleeves, sweatshirts, pants, scarves, scrubs not for medical purposes, shorts, socks, T-shirts and underwear, shoes, gloves, hats." The applicant argued that "no reasonable consumer would expect that clothing would be 88% metal” and that the mark is "too remote from any specific technical feature of the product" to "provide meaning to the consumer.” The Board disagreed. By including the word “copper” in its filed description, the Board wrote that the applicant conceded the descriptiveness of the mark. The Board also noted that the applicant's website and third-party websites state that the goods contain 88 percent embedded copper.
TTAB Decides Beer and Fruit Juice Not Closely Related as Trademarks
On August 2, the TTAB ruled that a brewing company could register its mark “Superpower” for beer, despite opposition from the company that owns POM Wonderful that consumers would confuse the mark with its registered “Antioxidant Superpower” mark for fruit juice. Although, in the past, the Board has said that consumers would consider wine and spirits to be closely related for trademark purposes, in this case, it said that POM failed to show that pomegranate juice shared that same connection.
Steve McQueen’s Son Sues Ferrari in $2M TM Infringement Lawsuit
Son of the late actor Steve McQueen sued Ferrari on July 30 for injunctive relief and $2M in damages for marketing a special edition “McQueen” Ferrari without authorization or compensation. Plaintiff Chadwick McQueen stated in the complaint that in 2011, he met with Ferrari, toured the factory, and expressed an interest in collaborating on a “McQueen” edition, but the parties never entered into a deal. The complaint alleges that the unauthorized use of McQueen’s image and trademarks increase the value of the special edition vehicles because of the “Steve McQueen effect.” The case is pending in Los Angeles Superior Court.
SDNY Denies Plaintiff Romance Author’s Request for Injunctive Relief Against Competing Use of TM “COCKY”
On July 5, Judge Alvin Hellerstein issued an order stating that a plaintiff romance author who owns a trademark in the word “cocky” for “a series of books in the field of romance” failed to show irreparable harm and likelihood of confusion if the defendant authors were to proceed with using the word “cocky” in connection with their romance novels. In their opposition to the motion, the defendants argued that the plaintiff could not monopolize “cocky” in connection with romance novels because the word is widely-used in romance novels and it is artistically relevant to the content of romance novels. The case is currently pending in the SDNY.
Read more here.
USPTO Still Considering Whether to Ask U.S. Supreme Court to Re-Ban “Scandalous” Trademarks
On May 24, 2018, the USPTO released Examination Guide 2-18, which states that trademark applications that are refused under 2(a) of the Lanham Act because they contain “scandalous or immoral” matter will be suspended until the final resolution of In re Brunetti, which was decided in December 2017. In Brunetti, the applicant attempted to register the word “FUCT” in connection with clothing. The U.S. Court of Appeals for the Federal Circuit ruled that refusing to register marks for this reason violates the First Amendment because it impermissibly restricts free speech. After being granted an extension to file a petition for a writ of certiorari, the USPTO has until August 10 to request that the U.S. Supreme Court weigh in on the matter.
MoMA Sues NoHo Café and Gallery MOMACHA for Trademark Infringement
In April, The Museum of Modern Art filed a complaint alleging that MOMACHA, a new trendy matcha tea and gallery space, is willfully infringing on its registered trademark “MOMA” and diluting its famous brand. MoMA brought the action after MOMACHA refused to comply with MoMA’s cease and desist letter and abandon its trademark applications for MOMA and MOMACHA. MOMACHA claims that it created its name by combining “more” and “matcha.” MoMA says that the marks share the same visual elements – both using black and white block letters. MoMA filed a motion for injunctive relief against MOMACHA, and MOMACHA filed a motion to dismiss the dilution claim. Rulings on these motions are currently pending in the SDNY.
Read more here.
TTAB Sustains Gucci’s Oppositions Against Great-Grandson’s TM Application for UBERTO GUCCI
In 2014, a descendant of Guccio Gucci filed two intent-to-use trademark applications for logos using the words “UBERTO GUCCI” in connection with electronic cigarettes. Gucci America, Inc. opposed the registrations. On July 13, the TTAB ruled that there would be a likelihood of confusion with the “exceedingly famous” Gucci brand even though Gucci does not offer electronic cigarettes under its mark. In the opinion, Judge Michael B. Adlin stated that “it would not be a stretch” for consumers to believe that Gucci offers e-cigarettes under the GUCCI mark because it offers an “atypically wide range of products and services.”
Trade Dress Infringement Battle Over Welch’s Fruit Snacks and Sunkist Gummies
On July 16, Promotion In Motion Inc., the company that makes Welch’s fruit snacks, sued Kervan USA LLC, a competitor candy maker that produces Sunkist’s fruit gummies. The complaint alleges that the packaging for the Sunkist gummies “imitate(s) the distinctive trade dress features” of the Welch’s packaging and that packaging designs “are carefully calculated to siphon off the good will” of the Welch’s brand. The case is currently pending in the U.S. District Court for the District of New Jersey.
Hard Rock Café Required Repay Legal Bills of RockStar Hotels to Drop Failed Trademark Lawsuit
In June 2018, a judge in Florida ruled that Hard Rock Café Inc. was unlikely to win a trademark infringement lawsuit against RockStar, a line of luxury hotels, and refused to provide injunctive relief. In an order on Hard Rock’s motion to voluntarily dismiss without prejudice, Judge Beth Bloom stated that “this lawsuit has forced defendant to expend considerable resources” and that it would be “appropriate to condition plaintiffs’ voluntary dismissal without prejudice on its payment of defendant’s litigation-related expenses.” On July 19, Hard Rock subsequently filed a second motion to voluntarily dismiss, this time with prejudice, arguing that there should be no award of attorneys’ fees and costs because discovery had revealed new information about the nature of RockStar’s services. The case is pending in the U.S. District Court for the Southern District of Florida.
Dunnington Partners to Present on Trademark Licensing at Federal Bar Association Annual Meeting and Convention on September 14, 2018
Dunnington partners Olivera Medenica and Donna Frosco will present on a trademark licensing panel along with Rita M. Odin, VP and Senior Trademark Counsel at Estee Lauder Companies, Inc., and Viviana Mura, Head of Global Trademark Practice at Luxottica Group. The panel will be moderated by incoming Federal Bar Association President Maria Z. Vathis, of Bryan Cave Leighton Paisner LLP. Register for the convention here.
A common mistake that brand owners do is naming their business by their last name. For example, Smith Fashions for a clothing brand, or Smith Widgets for selling widgets. The problem arises when a brand owner has expanded significant advertising revenues to develop the brand, and decides to register it with the United States Patent and Trademark Office (USPTO). The application ultimately results in a denial, to the great surprise and deception of the applicant.
The USPTO has a rule called “primarily merely a surname” which bars the registration of trademarks that consist of a last name. The issue is whether the word itself sounds like a last name. The test for determining whether a mark is “primarily merely a surname” depends on the primary significance of the mark as a whole to the purchasing public. If the primary significance of the word is understood to be a last name, then the bar applies, and the registration will be denied. Hence the name of the rule.
There are several factors that the trademark examiner will evaluate in determining whether the word is “primarily merely a surname”: (1) whether the surname is rare; (2) whether the term is the surname of anyone connected with the applicant; (3) whether the term has any recognized meaning other than as a surname; (4) whether it has the structure and pronunciation of a surname (sounds a whole lot like a surname, but is not a common one); and (5) whether the stylization of lettering is distinctive enough to create a separate commercial impression.
The fact that the last name is combined with another term could potentially take it out of the rule, but that needs to be determined on a case by case basis. For example, consider the examples above that contain a last name, but are combined with a descriptive term. This would be problematic as the USPTO would disregard the descriptive term and only examine the last name.
But there are ways to avoid the rule. For example, by combining the last name with initials, or a first name, or using some significant design elements. You can also overcome the rule by showing that a brand is famous, and that it has acquired secondary meaning. In other words, that the public recognizes the brand as coming from a particular source. This can be challenging and the subject matter deserves another blog entry.
Some examples of the rule and its application are included below. So the next time you are considering using a last name, whether it is yours, or that of someone else, perhaps give it a second thought.
In re Isabella Fiore LLC, 75 USPQ2d 1564 (TTAB 2005) (holding FIORE not primarily merely a surname where it is also the Italian translation of the English word "flower" and the non-surname meaning is not obscure); In re United Distillers plc, 56 USPQ2d 1220 (TTAB 2000) (holding the relatively rare surname HACKLER not primarily merely a surname, in light of dictionary meaning); Fisher Radio Corp. v. Bird Elec. Corp., 162 USPQ 265 (TTAB 1969) (holding BIRD not primarily merely a surname despite surname significance); In re Hunt Elecs. Co., 155 USPQ 606 (TTAB 1967) (holding HUNT not primarily merely a surname despite surname significance); In re Pickett Hotel Co., 229 USPQ 760 (TTAB 1986) (holding PICKETT SUITE HOTEL primarily merely a surname despite applicant’s argument that PICKETT is the phonetic equivalent of the word "picket"); cf. In re Monotype Corp. PLC, 14 USPQ2d 1070, 1071 (TTAB 1989) (holding CALISTO not primarily merely a surname, the Board characterizing the telephone directory evidence of surname significance as "minimal" and in noting the mythological significance of the name "Callisto," stating that it is common knowledge that there are variations in the rendering of mythological names transliterated from the Greek alphabet (distinguishing Pickett Hotel Co., 229 USPQ 760)); In re Joint-Stock Co. "Baik," 84 USPQ2d 1921, 1924 (TTAB 2007) (finding the extreme rarity of BAIK weighed against surname refusal); In re Benthin Mgmt. GmbH, 37 USPQ2d 1332, 1333 (TTAB 1995) (finding the fact that BENTHIN was a rare surname to be a factor weighing against a finding that the term would be perceived as primarily merely a surname); In re Sava Research Corp., 32 USPQ2d 1380, 1381 (TTAB 1994) (finding SAVA not primarily merely a surname, where there was evidence that the term had other meaning, no evidence that the term was the surname of anyone connected with applicant, and the term’s use as a surname was very rare); In re Garan Inc., 3 USPQ2d 1537 (TTAB 1987) (holding GARAN not primarily merely a surname); In re Industrie Pirelli Societa per Azioni, 9 USPQ2d 1564, 1566 (TTAB 1988) (holding PIRELLI primarily merely a surname, the Board stated that "certain rare surnames look like surnames and certain rare surnames do not and . . . ‘PIRELLI’ falls into the former category . . . ."); In re Petrin Corp., 231 USPQ 902 (TTAB 1986) (holding PETRIN primarily merely a surname).
Monster Energy drinks filed a complaint against a Virginia distillery over use of an "M" logo which it claims is too similar to Monster's "M". Read here.
A startup that was sued by hospitality giant Hard Rock Cafe argues that Hard Rock should repay defendant's legal fees where plaintiff moved to voluntarily dismiss the lawsuit after losing on a preliminary injunction. Hard Rock Cafe v. RockStar Hotels, Inc. (0:17-cv-62013, S.D. Florida). Read here.
Levi Strauss & Co. cease and desist letter to J. Barbour & Son resulted in declaratory judgment action filed in S.D.N.Y.; Levi moved to dismiss based upon counter lawsuit subsequently filed in N.D. Cal. Barbour Inc. et al v. Levi Strauss & Co. (1:18-cv-05195, S.D.N.Y.). Read here.
Nearly $50 million in fashion industry counterfeit goods seized in Texas. Read here.
Roger Federer in TM dispute over "RF" logo. Read here.
Diesel's parent company OTB group prevails against Zara's parent company in counterfeit case brought in Milan, Italy. More here.
EU politicians reject controversial "link tax" which could have made internet content aggregators pay publishers for sharing links, and platforms liable for users' copyright infringements. More here.
Licensor objects in Delaware bankruptcy court to licensee's transfer of a licensing agreement to third party. More here.
TTAB refuses Wendy Williams trademark to register her namesake clothing line due to prior registered "Wendy O. Williams" by the so-called Queen of Shock Rock and lead singer of the 1980s punk rock band Plasmatics (for t-shirts). More here.
L'Institut National de l'Origine et de la Qualité filed a notice of opposition at the TTAB this week to block a Los Angeles company called TeaStream LLC from registering "Champagne's Sober Cousin" for tea. More here.
On September 14, 2018 I will be speaking on a panel entitled Drafting, Negotiating, and Enforcing Intellectual Property License Agreements: Strategies and Pitfalls, along with Rita M. Odin, VP and Senior Trademark Counsel, Estee Lauder Companies, Inc. and Viviana Mura, Head of Global Trademark Practice, Luxottica Group. The panel will be moderated by incoming President of the Federal Bar Association, Maria Z. Vathis, of Bryan Cave Leighton Paisner LLP.
The panel is part of the Federal Bar Association's Annual Meeting, which will be held in New York City this year, at the New York Marriott Downtown. I am part of the organizing committee and I can tell you that this year's conference will be power packed with amazing speakers and events. If your schedule permits, I would strongly encourage you to attend. You can register here.
The last time the Supreme Court took the fashion industry by storm was in the Star Athletica case. This summer, it did it again with South Dakota v. Wayfair, Inc. While we can all agree that tax law is not as sexy as copyright (at least, to an IP attorney), the holding is by far more impactful on the fashion industry as a whole than a regurgitation of what the Copyright Act stands for.
In South Dakota v. Wayfair, Inc., the Supreme Court ruled that internet retailers can be required to collect sales taxes even in states where they have no physical presence. The decision overturned Quill Corp. v. North Dakota (1992) which held that the Dormant Commerce Clause barred states from compelling retailers to collect sales or use taxes in connection with mail order or Internet sales made to their residents unless those retailers have a physical presence in the taxing state.
In South Dakota, the issue arose because the state government was concerned about the erosion of its sales tax base and corresponding loss of critical funding for state and local services. South Dakota estimated a loss of between $48 to $58 million annually as a result of the State’s inability to collect sales taxes on businesses that have no physical presence in the state.
As a result, the South Dakota legislature enacted a law require out-of-state sellers to collect and remit sales tax “as if the seller had a physical presence in the State.” The Act covers only sellers that, on an annual basis, deliver more than $100,000 of goods or services into the State or engage in 200 or more separate transactions for the delivery of goods or services into the State. Wayfair complained, as it did not have a physical presence in the State. South Dakota filed suit in state court, seeking a declaration that the Act’s requirements are valid and applicable to Wayfair. Both the trial court and the State’s Supreme Court agreed with South Dakota; and so did the Supreme Court.
Writing for the majority, in a a 5-to-4 ruling, Justice Anthony M. Kennedy wrote that “Quill puts both local businesses and many interstate businesses with physical presence at a competitive disadvantage relative to remote sellers . . . Remote sellers can avoid the regulatory burdens of tax collection and can offer de facto lower prices caused by the widespread failure of consumers to pay the tax on their own.”
Ecommerce has changed since 1992, and the South Dakota decision seems to level the playing field between main street and online sales platforms. The question remains whether this will overwhelmingly impact new ecommerce market entrants, rather than the online behemoths the Supreme Court had in mind. When the decision came out Amazon’s stock price dropped, more here.
I recently gave a lecture on the topic of trademark prosecution before the USPTO for non-IP practitioner. The presentation is geared towards attorneys who do not practice before the USPTO. The idea is to educate as to the process, and issue spot trademarks that might be problematic even before conducting a search, or making a filing. I would not recommend a non-IP practitioner to handle a trademark filing, but would recommend that they be educated about the process. This can help their clients understand the process prior to retaining IP counsel. You can access the slides here.
Why include a picture of Play-doh, you ask? Because it recently trademarked the "scent of a sweet, slightly musky, vanilla fragrance, with slight overtones of cherry, combined with the smell of a salted, wheat-based dough" (a scent? trademarked? why, yes, it's possible). And if you have kids, you know what I am talking about - you either love it or hate it.
Grab your suitcase, pack your best outfits, and get those red heels (or loafers) on: it's time to head to Paris to get your dose of Fashion Law. This year we have the privilege of being hosted by La Sorbonne. We have amazing speakers lined up, and will cover a wide range of topics, from fashion tech, to labor laws, #MeToo, piracy, and trademark infringement. The conference is held in English, 3 CLE. Registration to open soon here.
So honored to be covered by Law360 on me joining Dunnington. Check it out below.
As of April 9th, I joined Dunnington Bartholow & Miller LLP as a partner, and launched their Fashion Law practice. So thankful to all my colleagues, friends and family who came out to support me at the cocktail party celebrating me joining the firm, along with two associates Betsy Dale and Lily Belhadia. Thrilled to be here, and looking forward to developing my trademark practice for the many years to come.
Looking forward to moderating a breakfast panel featuring Justices of the New York Appellate Division on May 29, 2018. The program will endeavor to identify best practices and commonly encountered pitfalls when appealing a case. To register click here.
So looking forward to speaking about art and copyright law at ArtsWestchester on May 1, with Jana S. Farmer (Wilson Elser), Jill A. Ellman (M. Ross & Associates LLC), and Nisa Ojalvo (VP, Legal Affairs, LVMH). Come join us for the panel and drinks from 4-6:30pm. Space is limited. RSVP to Beth Gould at Bgould@nysba.org. ArtsWestchester, 31 Mamaroneck av., 9th floor, White Plains, NY.
For those of you who attended, the materials that I referenced during my presentation can be found here: Copyright Basics Copyright Registration Copyright Office Fees Multiple Works and Copyright Registration of Pictorial, Graphic and Sculptural Works
My slides are available here.
In a case that has captured the public’s attention and lawyers’ imagination, the Ninth Circuit ruled that a monkey cannot own a copyright (opinion can be read here). The case is not frankly interesting for what it is, but rather for what it could have been, and the legal ramifications of non-humans owning a copyright.
We know that non-humans can, in limited circumstances, own a copyright; we see it in the work-for- hire doctrine where the employer is a corporate entity. But corporations, while not human, are run by humans, and a human created the work owned by the corporation.
Naruto was a seven year old Indonesian rested macaque monkey who grabbed the camera of an unwitting photographer and took a number of selfies while bearing an infectiously wide grin. The pictures are striking and amusing for a wide variety of reasons, not the least of which is their reflection of our own vanity and cultural obsession over selfies and self-promotion – a vice prevalent in the animal kingdom, apparently.
The photographer, upon discovering them, presumably thought so as well and included them in a self-published book. PETA, however, did not like it, and decided to sue the photographer as a “next friend” of Naruto (i.e. on Naruto’s behalf) for copyright infringement. Coalition of Clergy v. Bush, 310 F.3d 1153, 1159-60 (9th Cir. 2002) (“[i]n order to establish next-friend standing, the putative next friend mush show: (1) that the petitioner is unable to litigate his own cause due to mental incapacity, lack of access to court, or other similar disability; and (2) the next friend has some significant relationship with, and is truly dedicated to the best interests of, the petitioner”).
Last week, in a scathing and lengthy opinion, the Ninth Circuit ruled against PETA. Not only did the Court find that PETA could not have “next friend” status because Naruto is an animal, but it also found that Naruto lacked statutory standing under the Copyright Act because it is, an animal.
On both issues, the Court relied upon Cetacean Cmty. v. Bush, 386 F.3d 1169, 1175 (9th Circuit), where the Ninth Circuit crafted a simple rule of statutory interpretation: if an Act of Congress plainly states that animals have statutory standing, then animals have statutory standing. Since the Copyright Act does not expressly grant such standing, there is no such standing.
The ruling is unremarkable, but the debate preceding and surrounding the Court’s decision is remarkable. Indeed, there are an increasing number of creative works that are created, not by animals, but rather robots. Artificial intelligence (AI) is being driven at the highest corporate levels, and can, and already has, resulted in significant artistic creations.
A panel at the 2017 World Economic Forum in Davos, Switzerland, focused on AI as a disruptive technology that will drive productivity as it continues to make its way into enterprise systems and computing platforms. According to Forbes, the AI market will grow from $8 billion in 2016 to more than $47 billion in 2020. Market adoption is predicted to grow to 62 percent by 2018.
AI has pragmatic, immediate, and very real, implications for authorship. Google started funding an AI program by the Press Association that will write local news articles. In 2016, a group of museums and researchers in the Netherlands unveiled a portrait entitled The Next Rembrandt, a new artwork generated by a computer that had analyzed thousands of works by the 17th century artist. A short novel written by a Japanese computer program in 2016 reached the second round of a national literary prize.
Creating works using AI could have very important implications for copyright laws. In the United States, the Copyright Office has declared that it will “register an original work of authorship, provided that the work was created by a human being.” This stance flows from established case law (e.g. Feist Publications v. Rural Telephone Service Company, Inc., 499 U.S. 340 (1991)) which specifies that copyright law only protects “the fruits of intellectual labor” that “are founded in the creative powers of the mind.”
If AI creates a work, such as a painting or novel, does it not deserve the same level of protection as if created by a human? Query whether funding in AI can be impacted by the current statutory framework which does not grant such protection. Indeed, it could result in a chilling effect on investment in automated systems, as any incentives to do so could be reduced due to lack of protection.
These are interesting questions raised by the issues in the Naruto case, and that will certainly continue to be debated in the future. For now, we know that there is no copyright protection, but the question is whether this will change as our markets recognize the value of such creations.
My associate, Betsy Dale, will be a guest speaker at the New York City Bar on a panel entitled Legal Issues for Artists, May 3, 2018 from 6-8pm. The panel will cover legal basics for artists and those working in the art world. Panelists will cover basic copyright law and provisions of the New York Cultural Affairs Law, as well as speak about artist-gallery and non-profit relationships and agreements, artist estate planning and collection management.
Don't miss out! The issues covered are important for anyone in the creative industry. More information here.
Looking forward to joining Viviana Mura (Luxottica), Maria Vathis (Bryan Cave), Ashlee Froese (Froese Law) on a panel discussing the latest in Trademark Licensing on April 23, 2018 at the Cardozo Fashion Law Alumni Group. While this program is not open to the public, we would be happy to take this show on the road and bring it to you as a CLE program. It is a repeat performance from the FBA's Fashion Law program earlier this year. Just thought I should mention it!
On February 9, 2018 the Federal Bar Association will host its 5th Annual Fashion Law Conference in New York City. The conference includes an impressive lineup of attorneys and industry insiders who will discuss the advancement of fashion law in today's globalizing world. Join us on February 9 at the Theresa Lang Center at The New School for this exciting conference. CLE credit will be available and attendees will benefit from networking opportunities throughout the day. Registrants will have access to an exclusive networking event honoring conference speakers the evening prior to the conference. Get your CLEs in style during New York's Fashion Week! Register here.
February 9, 2018 - 8:30am-5:00pm - 6 CLE
The New School, Theresa Lang Conference Center, Room 1202, 55 West 13th Street
Opening Remarks: 8:30am - Olivera Medenica, Medenica Law PLLC
Panel I - 9:00-10:00 am - The Future of Fashion: Blockchain, Artificial Intelligence, and Wearable Technology
Examine the latest fashion technology trends and products, and discuss the legal implications from a U.S. and E.U. perspective.
Panel II - 10:15-11:15 am -Trump's NAFTA Renegotiation: Potential Changes and Impacts to Brands, Apparel, and Textiles
Explore the impact of the Trump administration's renegotiation of NAFTA on the fashion industry, and how counsel should advise clients in navigating this potential new landscape.
Panel III - 11:30-12:30 pm - Trademark Licensing: Latest Litigation and Best Practices
Examine the latest decisions in the United States and abroad relating to trademark licensing. Panelists will provide best practices in negotiating trademark licensing deals.
Luncheon Keynote - 12:30-1:30 pm - Marie P. Anderson
Panel IV - 1:30-2:30 pm - Financial Crimes and Fashion
Examine the risk of economic sanctions and money laundering liability in the fashion industry as well as whistle blower litigation pursuant to the False Claims Act.
Panel V - 2:45-3:45 pm - Tackling the Workforce : Best Practices from Industry Insiders
Examine the latest developments from an employment law perspective relevant to the fashion industry. From sexual harassment scandals to preventive practices to avoid such pitfalls at work; the right way to engage independent contractors in a fashion-related workplace; and, achieving innovation through a successful diversity program, our diverse pool of experienced panelists will address best practices and key guidance on trending issues.
Speakers: Katherine Gonzalez, Capital Member, Ferraiuoli LLC; Sweet Joy Hachuela, Principal, The Medici Group LLC; Kevin Kahn, Associate Counsel, IMG New York; Sara Ziff, Founder and Executive Director, The Model Alliance.
Panel VI - 4:00-5:00 pm - Bankruptcy: Purchasing Distressed Assets in the Fashion Industry
Learn the ins and outs of purchasing distressed assets in the fashion industry. Panelists will cover best practices and due diligence considerations.
On October 14, 2017 Olivera Medenica will discuss how to register, monitor and license trademarks as well as how to define and protect trade secrets at the Industry Expert Series at Rutgers Business School.
The class is a part of the Master of Science in Business of Fashion curriculum, and is designed to develop students’ practical knowledge about the fashion business by meeting industry professionals.
Thank you to everyone who attended the sold out FBA/FABA Fashion Law and Innovation Conference. Special thanks to Céline Bondard (Cabinet Bondard), Noémie Balmat (www.futur404.com), Sofia Bernardin (www.RESEE.com), Hugo Garcia-Cotte (www.cypheme.com), Maria Vathis (Bryan Cave), Marie Eger (Maus Frères), Paola Gelato (Jacobacci Law), Laurence Baylocq (IMG Paris) and Caroline-Sarah Ellenberg (Réunion des Musées Nationaux). Thank you as well to our host Lafayette Plug and Play (www.lafayetteplugandplay.com), our media crew from Creative Valley (www.creative-valley.fr), and our caterer Otium Cold Press (www.otiumcoldpress.com). Looking forward to next year - if you are in Paris for Fashion Week next September, please join us!