Category: Trademark

Trademark news and commentary from Cokato Minnesota lawyer Tom James (also known as Thomas James or Thomas B James)

Smelly Trademarks

If you have a distinctive smell, you might be able to claim trademark rights in it.

If it smells like a trademark and it functions like a trademark, it might be a trademark.

Rose-Scented Tires

Sumitomo Rubber Industries has successfully applied for the registration of an olfactory trademark in India. It is the smell of a rose, as applied to tires. India’s Trademark Registry has now accepted it for advertisement.

This is not the first time Sumitomo has secured trademark protection for its smelly tires. In fact, the company’s rosy tire was the first smell mark registered in the United Kingdom, back in 1996.

It’s a Smell World

Since the U.K.’s venture into scent trademarks, smell trademarks have been approved in several other jurisdictions around the world.

In 1999, the European Union accepted an application to register the smell of freshly cut grass as a trademark for tennis balls. It quickly closed the door to scent marks, however, in 2002. In Sieckmann v. German Patent and Trademark Office, trademark protection was sought for a “balsamically fruity” scent with “a slight hint of cinnamon.” The ECJ ruled that a chemical formula did not represent the odor, the written description was not sufficiently clear, precise and objective, and that a physical deposit of a sample of the scent did not constitute the “graphic representation” the applicable trademark law required. This closed the door to smell marks in the EU for many years.

Scent mark registrations have been issued in the United States, though there are only a little over dozen of them. Examples include Play-Doh, Power Plus fruity-scented vehicle lube, and minty fresh bowling balls.

The non-functionality requirement is the biggest obstacle for scent trademarks in the United States. The scent must be non-functional and serve only as a source identifier. Smells intrinsic to the purpose of a product will not qualify. So no trademark protection for the smell of a perfume or air freshener. And sorry, Burger King, probably no trademark for the smell of charred meat, either.

“Graphical Representation”

India’s statute requires trademark applicants to provide a graphical representation of the mark. This is what has stood in the way of smell claims in India all this time. Sumitomo, however, figured out a way to do it. It created a representation of the odor in “olfactory space.”

It worked.

Will Flavor Be the Next Frontier?

It is unlikely that flavors will join smells as registrable brand identifiers. Although theoretically possible, no flavor has ever been registered as a trademark in the United States. The USPTO has expressed doubt that a flavor could ever function as a trademark because it is functional. (TMEP 1202.13). Also, although a dog might do it, consumers normally do not taste a product to determine its origin before deciding whether to buy it. Merchants probably would frown on the practice, as would other customers in the store. Hopefully, stores do not allow dogs to sample products intended for human consumption, either.

Need help registering a non-traditional trademark? Contact attorney Tom James.

Excuse Me While I KIST the Sky

Sunkist is a trademark of Sunkist, Inc. This image is used for illustrative purposes only. No endorsement, sponsorship or affiliation with any company, product or brand is intended or implied.

The Jimi Hendrix song, “Purple Haze” contains one of the most famous misheard lyrics of all time. Ever fixated on sex and sexuality, many people insist that when he sings, “Excuse me while I kiss the sky,” he is saying, “Excuse me while I kiss this guy.” Kiss the sky and kiss this guy are near-homophones, that is to say, they are phrases that nearly sound alike. In the trademark world, homophones and near-homophones can create or contribute to a likelihood of confusion which, in turn, can result in a denial of registration to one of the marks and/or infringement liability.

Jimi Hendrix also wrote a song called Love or Confusion, but that is a story for a different day. See In re Peace and Love World Live, LLC.

Sunkist Growers v. Intrastate Distributors

Intrastate Distributors, Inc. applied to register KIST, both as a standard character mark and as a stylized mark, for soft drinks. Sunkist, Inc. filed an opposition to registration with the Trademark Trials and Appeals Board (TTAB), arguing that KIST is confusingly similar to SUNKIST, when used in connection with beverages. The TTAB dismissed the opposition, finding no likelihood of confusion.

On July 23, 2025, the U.S. Federal Circuit Court of Appeals reversed.

The DuPont Factors

Likelihood of confusion is a question of law that requires weighing of findings of fact on the DuPont factors. This list of factors comes from E.I. DuPont de Nemours v. Celanese Corp., a 1973 case that identified 13 factors relevant to likelihood-of-confusion analysis:

  1. Similarity of the marks
  2. Nature of the goods and services
  3. Trade channels
  4. Conditions of purchase (e.g., whether buyers of the product or service are likely to carefully consider options before purchasing, or are more likely to make a quick or impulsive purchasing decision.)
  5. Fame
  6. Number of similar trademarks used with similar goods or services
  7. Actual confusion
  8. History of concurrent use, if any
  9. Variety of different products and services with which the trademark is used
  10. Interactions and relationship between the applicant and the trademark owner
  11. Extent of the applicant’s right to prevent others from using the trademark on specific goods or services
  12. Potential confusion
  13. Any other relevant information.

The analysis may focus on dispositive factors, such as similarity of the marks and relatedness of the goods. Also, as a general rule, the more related the goods or services are, the less similar the marks need to be to support a finding of likelihood of confusion.

In this case, the Board found four factors supported a finding of likelihood of confusion, but determined that KIST and SUNKIST were dissimilar. The Board believed they had different commercial impressions. KIST, the Board believed, referenced a kiss, while SUNKIST referenced the sun.

The Board relied on some of IDI’s marketing materials that depict a pair of lips adjacent to the word KIST. The Court of Appeals, however, noted that lips do not appear next to the word in all of the marketing materials. Nor was the image of lips claimed as part of the trademark. Therefore, the Court held that the Board’s finding that KIST references a kiss was not supported by substantial evidence.

The Court also determined that Sunkist did not always depict an image of a sun adjacent to its mark SUNKIST.

In short, when considered as standard character marks, not as design marks, SUNKIST and KIST are substantially similar and consumers are likely to confusedly believe that beverages using either of these marks come from the same source.

Confusing Similarity

Two marks may be confusingly similar if they are similar as to appearance, sound, meaning, or commercial impression. (TMEP 1207.01(b).) The test is not whether the two marks are linguistically distinguishable, but whether they are likely to give a consumer the impression that there is a commercial connection between them.

When assessing the likelihood of confusion between compound words, courts may appropriately identify a part of the term as the dominant part and other parts as peripheral. If the dominant part is distinctive, then greater weight may be assigned to the similarity between the dominant parts of two marks than to the peripheral parts. Thus, for example, regarding CYNERGIE and SYNERGY PEEL, the TTAB determined that SYNERGY was the dominant part of both marks, and that CYNERGIE and SYNERGY were sound-alikes. Consequently, they were confusingly similar.  (TEMP 1207.01(b)(viii).)

Although the Court of Appeals did not invoke this particular rationale in its KIST decision, it seems to me that this doctrine also would support a determination that KIST and SUNKIST are confusingly similar. KIST is the dominant part of both marks and it is distinctive.

Conclusion

Changing the spelling of, or adding or subtracting peripheral parts from, an existing trademark is not often likely to solve a likelihood of confusion problem, particularly when the goods or services are identical, similar, or related. A standard character trademark search should look not only for identical matches but also for words and phrases which, although not identical, might look or sound similar, in whole or in part, or have meanings similar to the one you are trying to clear.

Voice Cloning

Painting of Nipper by Francis Barraud (1898-99); subsequently used as a trademark with “HIs Master’s Voice.”

Lehrman v. Lovo, Inc.

On July 10, 2025, the federal district court for the Southern District of New York issued an Order granting in part and denying in part a motion to dismiss a putative class action lawsuit that Paul Lehrman and Linnea Sage commenced against Lovo, Inc. The lawsuit, Lehrman v. Lovo, Inc., alleges that Lovo used artificial intelligence to make and sell unauthorized “clones” of their voices.

Specifically, the complaint alleges that the plaintiffs are voice-over actors. For a fee, they read and record scripts for their clients. Lovo allegedly sells a text-to-speech subscription service that allows clients to generate voice-over narrations. The service is described as one that uses “AI-driven software known as ‘Generator’ or ‘Genny,'” which was “created using ‘1000s of voices.'” Genny allegedly creates voice clones, i.e., copies of real people’s voices. Lovo allegedly granted its customers “commercial rights for all content generated,” including “any monetized, business-related uses such as videos, audio books, advertising promotion, web page vlogging, or product integration.” (Lovo terms of service.) The complaint alleges that Lovo hired the plaintiffs to provide voice recordings for “research purposes only,” but that Lovo proceeded to exploit them commercially by licensing their use to Lovo subscribers.

This lawsuit ensued.

The complaint sets out claims for:

  • Copyright infringement
  • Trademark infringement
  • Breach of contract
  • Fraud
  • Conversion
  • Unjust enrichment
  • Unfair competition
  • New York civil rights laws
  • New York consumer protection laws.

The defendant moved to dismiss the complaint for failure to state a claim.

The copyright claims

Sage alleged that Lovo infringed the copyright in one of her voice recordings by reproducing it in presentations and YouTube videos. The court allowed this claim to proceed.

Plaintiffs also claimed that Lovo’s unauthorized use of their voice recordings in training its generative-AI product infringed their copyrights in the sound recordings. The court ruled that the complaint did not contain enough factual detail about how the training process infringed one of the exclusive rights of copyright ownership. Therefore, it dismissed this claim with leave to amend.

The court dismissed the plaintiffs’ claims of output infringement, i.e., claims that the “cloned” voices the AI tool generated infringed copyrights in the original sound recordings.

Copyright protection in a sound recording extends only to the actual recording itself. Fixation of sounds that imitate or simulate the ones captured in the original recording does not infringe the copyright in the sound recording.

This issue often comes up in connection with copyrights in music recordings. If Chuck Berry writes a song called “Johnny B. Goode” and records himself performing it, he will own two copyrights – one in the musical composition and one in the sound recording. If a second person then records himself performing the same song, and he doesn’t have a license (compulsory or otherwise) to do so, that person would be infringing the copyright in the music but not the copyright in the sound recording. This is true even if he is very good at imitating Berry’s voice and guitar work. For a claim of sound recording infringement to succeed, it must be shown that the actual recording itself was copied.

Plaintiffs did not allege that Lovo used Genny to output AI-generated reproductions of their original recordings. Rather, they alleged that Genny is able to create new recordings that mimic attributes of their voices.

The court added that the sound of a voice is not copyrightable expression, and even if it were, the plaintiffs had registered claims of copyright in their recordings, not in their voices.

The trademark claims

In addition to infringement, the Lanham Act creates two other potential bases of trademark liability: (1) false association; and (2) false advertising. 15 U.S.C. sec. 1125(a)(1)(A) and (B). Plaintiffs asserted both kinds of claims. The judge dismissed these claims.

False association

The Second Circuit court of appeals recently held, in Electra v. 59 Murray Enter., Inc. and Souza v. Exotic Island Enters., Inc., that using a person’s likeness to create an endorsement without the person’s permission can constitute a “false association” violation. In other words, a federally-protected, trademark-like interest in one’s image, likeness, personality and identity exists. (See, e.g., Jackson v. Odenat.)

Although acknowledging that this right extends to one’s voice, the judge ruled that the voices in this case did not function as trademarks. They did not identify the source of a product or service. Rather, they were themselves the product or service. For this reason, the judge ruled that the plaintiffs had failed to show that their voices, as such, are protectable trademarks under Section 43(a)(1)(A) of the Lanham Act.

False Advertising

Section 43(a)(1)(B) of the Lanham Act (codified at 15 U.S.C. sec. 1125(a)(1)(B)) prohibits misrepresentations about “the nature, characteristics, qualities, or geographic origin of . . . goods, services, or commercial activities.” The plaintiffs claimed that Lovo marketed their voices under different names (“Kyle Snow” and “Sally Coleman.”) The court determined that this was not fraudulent, however, because Lovo marketed them as what they were, namely, synthetic clones of the actors’ voices, not as their actual voices.

Plaintiffs also claimed that Lovo’s marketing materials falsely stated that the cloned voices “came with all commercial rights.” They asserted that they had not granted those rights to Lovo. The court ruled, however, that even if Lovo was guilty of misrepresentation, it was not the kind of misrepresentation that comes within Section 43(a)(1)(B), as it did not concern the nature, characteristics, qualities, or geographic origin of the voices.

State law claims

Although the court dismissed the copyright and trademark claims, it allowed some state law claims to proceed. Specifically, the court denied the motion to dismiss claims for breach of contract, violations of sections 50 and 51 of the New York Civil Rights Law, and violations of New York consumer protection law.

Both the common law and the New York Civil Rights Law prohibit the commercial use of a living person’s name, likeness or voice without consent. Known as “misappropriation of personality” or violation of publicity or privacy rights, this is emerging as one of the leading issues in AI law.

The court also allowed state law claims of false advertising and deceptive trade practices to proceed. The New York laws are not subject to the “nature, characteristics, qualities, or geographic origin” limitation set out in Section 43(a) of the Lanham Act.

Conclusion

I expect this case will come to be cited for the rule that copyright cannot be claimed in a voice. Copyright law protects only expression, not a person’s corporeal attributes. The lack of copyright protection for a person’s voice, however, does not mean that voice cloning is “legal.” Depending on the particular facts and circumstances, it may violate one or more other laws.

It also should be noted that after the Joe Biden voice-cloning incident of 2024, states have been enacting statutes regulating the creation and distribution of voice clones. Even where a specific statute is not applicable, though, a broader statute (such as the FTC Act or a similar state law) might cover the situation.

Images and references in this blog post are for illustrative purposes only. No endorsement, sponsorship or affiliation with any person, organization, company, brand, product or service is intended, implied, or exists.

Official portrait of Vice President Joe Biden in his West Wing Office at the White House, Jan. 10, 2013. (Official White House Photo by David Lienemann)

New Trademark Fees Coming

The USPTO has announced that trademark fees in the United States will be undergoing significant increases on January 18, 2025. Here is a summary of the changes.

Application Fees

You will no longer enjoy a discounted fee for filing a TEAS-Plus application instead of a TEAS-Standard application. All applications. other than applications filed under the Madrid Protocol, will require a fee of $350 per class. For Madrid applications, the fee is $600 per class.

Additional fees must be paid in the following situations:

  • Insufficient information in the application: $100
  • Use of a custom-made identification of goods or services (as distinguished from using one of the pre-approved descriptions appearing in the Trademark ID Manual): $100
  • Each additional group of 1,000 characters over the first 1,000 characters in an identification: $200.

Madrid applications are not subject to these additional fees.

Statement of Use Fees

Beginning January 18, 2025, filing a Statement of Use or an Amendment to Allege Use will cost $150 each instead of $100.

Maintenance Fees

The filing fee for a declaration of use under Section 8 or 71 will be $325 per class instead of $225 per class.

The filing fee for an affidavit of incontestability under Section 15 will be $250 per class.

The filing fee for a Section 9 registration will be $350.

In conjunction with the Trademark Office’s new audit program, these fee increases provide a strong incentive to review your registration portfolio to see if there are any registrations, or registration classes, that should be removed.

You can find a full list of the fee changes here.

Suggestive Trademarks

Is that a source identifier in your pocket or are you just being descriptive?

A trademark gives its owner an exclusive right to use it in connection with a particular kind or category of products or services. At the same time, though, trademark law seeks to promote competition. To that end, it generally does not allow people or companies to claim the exclusive right to use generic words or words that are used to describe a feature or quality of a product. If someone could claim an exclusive right to use gasoline or unleaded as a trademark for petroleum products, then nobody else could enter the market.

To qualify for trademark protection, a mark cannot be merely descriptive of the product or service. It must be distinctive, in the sense that consumers see it not merely as a description of the product or service but as an identifier of the source of the product or service, that is to say, an identifier of the producer or sponsor of the product or service.

Sometimes a mark that is merely descriptive at first acquires distinctiveness over time. Through advertising and long usage, consumers come to see it as a source-identifier. International Business Machines (IBM) is an example. It is descriptive of the product or service, but over time consumers have come to associate it with a particular source of business machines. In general, though, words and phrases that are merely descriptive do not qualify for trademark protection.

Inherently Distinctive Trademarks

Some kinds of marks are regarded as inherently distinctive, meaning there is no need to make a showing of acquired distinctiveness before trademark rights may be claimed in them. A mark is inherently distinctive if it is fanciful, arbitrary, or suggestive.

A fanciful mark is something that is completely made up. Xerox is an example.

An arbitrary mark is one which, although a real word, bears no logical relationship to the product or service. Apple, as a trademark for computers, is an example.

A suggestive mark is one that hints at but does not directly describe a quality or feature of a product or service.

Why It Matters

A lot rides on whether a mark is suggestive or merely descriptive. If it is merely descriptive, then its first use in commerce will not be as a trademark. Competitors may freely use the same mark until it acquires distinctiveness. If you try to register it with the USPTO, you might get it on the Supplemental Register, but it won’t make it onto the Principal Register. It will not enjoy the presumptions of validity and ownership that trademarks registered on the Principal Register do. Maybe you will be able to get it there someday, but only if you present persuasive evidence of acquired distinctiveness.

Suggestive trademarks, on the other hand, may qualify for trademark protection upon their first use in commerce. And if registered, they get all the advantages of being included in the Principal Register.

Where Is the Line?

The difference between descriptiveness and suggestiveness is not very intuitive. The classic formulation is that a descriptive term directly describes something, while a suggestive term merely hints at it. If a term directly states what a product or service is or does, or literally describes a feature or quality, then it might be generic or descriptive, but it is not suggestive. If a term does not directly describe the product or service, or a quality or feature of it, that is to say, if some additional thought process is needed to get to the intended description, then it is suggestive.

Jaguar is an example of a suggestive trademark. The product does not literally feature or contain a wild animal. An additional thought process is needed to get to the intended descriptor, which in this case would be fast. Fast would be a merely descriptive mark for a car. Jaguar requires an additional thought process, namely, the idea that jaguars are fast, to reach the intended meaning.

Coppertone is another example. Suntan oil would be a descriptive mark. Coppertone, on the other hand, does not directly describe the product. Instead, it suggests what might happen if someone uses it, i.e., the person may acquire something akin to a copper skin color.

Incidentally, changing the spelling of a descriptive term generally will not bring it into the realm of inherent distinctiveness even if the word, as so spelled, technically is an invented one. Fastt Car, for instance, would almost certainly be treated by the USPTO or a court as a merely descriptive trademark. The relevant question is whether consumers would read or hear it as an adjective, not whether a member of the Spelling and Grammar Police Squad would.

Criticism

Courts and legal scholars have noted that the line between descriptiveness and suggestiveness is not always clear. Professor Jake Linford, for example, has argued that the distinction is “illusory at best,” and that a suggestive mark is “more like a descriptive mark than the law currently recognizes.” (Jake Linford, The False Dichotomy Between Suggestive and Descriptive Trademarks, 76 OHIO ST. L.J. 1367 (2015), available here. )

Nevertheless, the distinction is currently recognized in the law, at least in the United States.

European Union

The European Union appears to take a narrower view of suggestiveness. For example, it denied protection for “How Can I Make You Smile Today?” as a trademark for orthodontic and dental supplies. As certain fast food chains and performing artists can attest, slogans and phrases can easily be claimed as trademarks in the United States. This slogan would clearly fall on the “suggestive” side of the suggestive/descriptive line under the classic formulations of the distinction in the United States.



Top IP Developments of 2023

2023 was a big year for U.S. intellectual property law. Major developments occurred in every area. Here are the highlights.

Copyright

Fair Use

Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith et al.

I’ve written about this case before here and here. The Supreme Court issued a ruling in the case in May. The decision is significant because it finally reined in the “transformative use” doctrine that the Court first announced in Campbell v. Acuff-Rose Music back in 1994. In that case, 2 Live Crew had copied key parts of the Roy Orbison song, “Oh, Pretty Women” to make a parody of the song in its own rap style. The Court held that the 2 Live Crew version, although reproducing portions of both the original song and the original recording of it without permission, transformed it into something else. Therefore, even though it infringed the copyright, the 2 Live Crew version was for a transformative purpose and therefore protected as fair use.

In the thirty years since Campbell, lower courts have been applying the “transformative use” principle announced in Campbell in diverse and divergent ways. Some interpretations severely eviscerated the copyright owner’s exclusive right to make derivative works. Their interpretations often conflicted. What one circuit called transformative “fair use” another circuit called actionable infringement. Hence the need for Supreme Court intervention.

In 1984, Vanity Fair licensed one of photographer Lynn Goldsmith’s photographs of Prince to illustrate a magazine article about him. Per the agreement, Andy Warhol made a silkscreen using the photograph for the magazine and Vanity Fair credited the original photograph to Goldsmith. Unknown to her, however, Warhol proceeded to make 15 additional works based on Goldsmith’s photograph withour her permission.. In 2016, the Andy Warhol Foundation for the Arts licensed one of them to Condé Nast as an illustration for one of their magazines. The Foundation received a cool $10,000 for it, with neither payment nor credit given to Goldsmith. The Foundation then filed a lawsuit seeking a declaration that its use of the photograph was a protected fair use under 17 U.S.C. § 107. The district court granted declaratory judgment in favor of the Foundation. The Second Circuit Court of Appeals reversed, ruling that the four-factor “fair use” analysis favored Goldsmith. The Supreme Court sided with the Court of Appeals.

Noting that it was not ruling on whether Warhol’s making of works using the photograph was fair use, the Court limited its analysis to the narrow question whether the Foundation’s licensing of the Warhol work to Condé Nast was fair use. On that point, the Court determined that the use of the photograph to illustrate a story about Prince was identical to the use Goldsmith had made of the photograph (i.e., to illustrate a magazine article about Prince.) Unlike 2 Live Crew’s use of “Oh, Pretty Woman,” the purpose of the use in this case was not to mock or parody the original work.

The case is significant for vindicating the Copyright Act’s promise to copyright owners of an exclusive right to make derivate works. While Warhol put his own artistic spin on the photograph – and that might have been sufficient to sustain a fair use defense if he had been the one being sued – the Warhol Foundation’s and Condé Nast’s purpose was no different from Goldsmith’s, i.e., as an illustration for an article about Prince. Differences in the purpose or character of a use, the Court held, “must be evaluated in the context of the specific use at issue.” Had the Warhol Foundation been sued for displaying Warhol’s modifications of the photograph for purposes of social commentary in its own gallery, the result might have been different.

Although the holding is a seemingly narrow one, the Court did take the opportunity to disapprove the lower court practice of ending a fair use inquiry at the moment an infringer asserted that an unauthorized copy or derivative work was created for a purpose different from the original author’s.

Statute of Limitations and Damages

Warner Chappell Music, Inc. v. Nealy

The U.S. Supreme Court has granted certiorari to review this Eleventh Circuit decision. At issue is whether a copyright plaintiff may recover damages for infringement that occurred outside of the limitations period, that is, infringement occurring more than three years before a lawsuit was filed.

The circuits are split on this question. According to the Second Circuit, damages are recoverable only for acts of infringement that occurred during the 3-year period preceding the filing of the complaint. The Ninth and Eleventh Circuits, on the other hand, have held that as long as the lawsuit is timely filed, damages may be awarded for infringement that occurred more than three years prior to the filing, at least when the discovery rule has been invoked to allow a later filing. In Nealy, the Eleventh Circuit held that damages may be recovered for infringement occurring more than three years before the claim is filed if the plaintiff did not discover the infringement until some time after it first began.

A decision will be coming in 2024.

Artificial Intelligence

Copyrightability

Thaler v. Perlmutter, et. al.

This was an APA proceeding initiated in the federal district court of the District of Columbia for review of the United State Copyright Office’s refusal to register a copyright in an AI-generated work. In August, the district court upheld the Copyright Office’s decision that an AI-generated work is not protected by copyright, asserting that “human creativity is the sine qua non at the core of copyrightability….” For purposes of the Copyright Act, only human beings can be “authors.” Machines, non-human animals, spirits and natural forces do not get copyright protection for their creations.

An appeal of the decision is pending in the D.C. Circuit Court of Appeals.

Infringement

Many cases that were filed or are still pending in 2023 allege that using copyrighted works to train AI, or creating derivative works using AI, infringes the copyrights in the works so used. Most of these cases make additional claims as well, such as claims of unfair competition, trademark infringement, or violations of publicity and DMCA rights.

 I have been blogging about these cases throughout the year. Significant rulings on the issues raised in them are expected to be made in 2024.

Trademark

Parody Goods

Jack Daniels’s Properties Inc. v. VIP Products LLC

For more information about this case, read my blog post about it here.

This is the “parody goods” case. VIP Products used the “Bad Spaniels” name to market its dog toys, which were patterned on the distinctive shape of a Jack Daniel’s whiskey bottle. VIP filed a lawsuit seeking a declaratory judgment that its product did not infringe the Jack Daniel’s brand. Jack Daniel’s counterclaimed for trademark infringement and dilution. Regarding infringement, VIP claimed First Amendment protection. Regarding dilution, VIP claimed the use was a parody of a famous mark and therefore qualified for protection as trademark fair use. The district court granted summary judgment to VIP.

The Supreme Court reversed. The Court held that when an alleged infringer uses the trademark of another (or something confusingly similar to it) as a designation of source for the infringer’s own goods, it is a commercial, not an expressive, use. Accordingly, the First Amendment is not a consideration in such cases.

Rogers v. Grimaldi had held that when the title of a creative work (in that case, a film) makes reference to a trademark for an artistic or expressive purposes (in that case, Fred Astaire and Ginger Rogers), the First Amendment shields the creator from trademark liability. In the Jack Daniel’s case, the Court distinguished Rogers, holding that it does not insulate the use of trademarks as trademarks (i.e. as indicators of the source or origin of a product or service) from ordinary trademark scrutiny. Even through the dog toys may have had an expressive purpose, VIP admitted it used Bad Spaniels as a source identifier. Therefore, the First Amendment does not apply.

The Court held that the same rule applies to dilution claims. The First Amendment does not shield parody goods from a dilution claim when the alleged diluter uses a mark (or something confusingly similar to it) as a designation of source for its own products or services.

International Law

Abitron Austria v. Hetronic International

Here, the Supreme Court held that the Lanham Act does not have extraterritorial reach. Specifically, the Court held that Sections 1114(1)(a) and 1125 (a)(1) extend only to those claims where the infringing use in commerce occurs in the United States. They do not extend to infringement occurring solely outside of the United States, even if consumer confusion occurs in the United States.

The decision is a reminder to trademark owners that if they want to protect their trademark rights in other countries, they should take steps to protect their rights in those countries, such as by registering their trademarks there.

Patents

Patents are beyond the scope of this blog. Even so, a couple of developments are worth noting.

Enablement

Amgen v. Sanofi

In this case, the Supreme Court considered the validity of certain patents on antibodies used to lower cholesterol under the Patent Act’s enablement requirement (35 U.S.C. 112(a)).  At issue was whether Amgen could patent an entire genus of antibodies without disclosing sufficient information to enable a person skilled in the art to create the potentially millions of antibodies in it. The Court basically said no.

If a patent claims an entire class of processes, machines, manufactures, or compositions of matter, the patent’s specification must enable a person skilled in the art to make and use the entire class. In other words, the specification must enable the full scope of the invention as defined by its claims.

Amgen v. Sanofi, 598 U.S. ____ (2023)

Executive Power

In December, the Biden administration asserted that it can cite “excessive prices” to justify the exercise of Bayh-Dole march-in rights. The Biden Administration also has continued to support a World Trade Organization TRIPS patent waiver for COVID-19 medicines. These developments are obviously of some concern to pharmaceutical companies and members of the patent bar.

Conclusion

My vote for the most the significant IP case of 2023 is Andy Warhol Foundation v. Goldsmith. Lower courts had all but allowed the transofrmative use defense to swallow up the exclusive right of a copyright owner to create derivative works. The Supreme Court provided much-needed correction. I predict that in 2024, the most significant decisions will also be in the copyright realm, but they will have to do with AI.

Sham Books: The latest generative-AI scam

Copyright issues raised by generative-AI (artificial intelligence) have been receiving extensive coverage and discussion lately. Generative-AI has given rise to another kind of problem, too, though. People are generating books “in the style of” books by well-known authors and marketing them to the public as if they were written by those authors when in fact they were not.

Fake books

Jane Friedman was one of the first to report the problem of AI-generated fake books.

I Would Rather See My Books Get Pirated Than This (Or: Why Goodreads and Amazon Are Becoming Dumpster Fires)

The way it works is this: A person asks a generative-AI tool to write a book in the style of a particular named author. Usually it is a well-known author and/or one whose books sell well. The person then creates a listing on Amazon or another online marketplace for the book, misrepresenting it to be the work of the named author rather than AI-generated. Proceeds from sales of these unauthorized knock-offs are then shared between the marketplace provider (Amazon, eBay, etc.) and the fraudster.

Removal difficulties

It can be difficult for an author to get these knock-offs removed. Of course, if you are able to prove that one of these sham books infringes the copyright in one of your works, that should provide a basis for removal. In many cases, however, it can be difficult to prove that an AI-generated book actually copied from any particular book. A book “in the style of” so-and-so might have a completely different setting, plot, characters and so on. Generative-AI tools can generate a book on a theme that a named author commonly writes about, but copyright cannot be claimed in themes.

Trademark law is not necessarily of much help, either. Publishing under a name under which someone else is already publishing is not illegal. In fact, it is quite common. For example, five different people named Scott Adams publish under that name.

The sham books not being pirated or counterfeit copies of any existing work, and an author not having secured a trademark registration in his or her name (not always possible), can be obstacles to getting a title removed on the basis of copyright or trademark infringement.

The Lanham Act

The Lanham Act, sometimes called the Trademark Act, is a federal law that prohibits a wider range of activity than merely trademark infringement. It prohibits false and misleading designations of origin (false advertising), as well, including attempts to pass off a product as somebody else’s. No trademark registration is necessary for these kinds of Lanham Act claims.

These provisions offer a small glimmer of hope. Unfortunately, these kinds of claims are not as easy for marketplace providers like Amazon to sort out, as compared with a claim that someone is using a trademark that is confusingly similar to one that has been registered.

Other legal remedies

The Copyright Act and Lanham Act are not the only possible sources of legal recourse. Book authorship fraud is likely unlawful under state unfair competition and deceptive trade practices laws. In many jurisdictions, a claim for damages for misappropriation of name or likeness, or of exclusive publicity rights, may be viable.

As a practical matter, though, these rights may be difficult to enforce. Marketplace providers are equipped to handle claims where someone is able to produce a trademark or copyright registration certificate to support their claims, but they are not courts. They are not equipped to decide the kinds of fact issues that typically need to be decided in order to resolve competing claims to rights in a work, or likelihood of confusion and so on.

This seems to me to be yet another aspect of generative-AI that is ripe for legislation.

Photograph by Martin Vorel, https://creativecommons.org/licenses/by-sa/4.0, via Wikimedia Commons. The image has not been modified. No suggestion is made that the licensor endorses this author or this use.

Balancing the First Amendment on Whiskey and Dog Toys

The US Supreme Court has heard oral arguments and will soon decide the fate of the “Bad Spaniels” dog toy.

The United States Supreme Court has weighed First Amendment rights in the balance against many things: privacy, national security, the desire to protect children from hearing a bad word on the radio, to name a few. Now the Court will need to balance them against trademark interests. The Court heard oral arguments in Jack Daniel’s Props. v. VIP Prods., No. 22-148, on March 22, 2023.

I’ve written about this case before. To summarize, it is a dispute between whiskey manufacturer Jack Daniel’s and dog-toy maker VIP Products. The dog toy in question is shaped like a bottle of Jack Daniel’s whiskey and has a label that looks like the famous whiskey label. Instead of “Jack Daniel’s,” though, the dog toy is called “Bad Spaniels.” Instead of “Old No. 7 Brand Tennessee sour mash whiskey,” the dog toy label reads, “Old No. 2 on your Tennessee carpet.”

VIP sued for a declaratory judgment to the effect that this does not amount to trademark infringement or dilution. Jack Daniel’s filed a counterclaim alleging that it does. The trial court ruled in favor of the whiskey maker, finding a likelihood of consumer confusion existed. The Ninth Circuit Court of Appeals, however, reversed. The appeals court held that the dog toys came within the “noncommercial use” exception to dilution liability. Regarding the infringement claim, the court held, basically, that the First Amendment trumps private trademark interests. A petition for U.S. Supreme Court review followed.

Rogers v. Grimaldi

Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989) is a leading case on collisions of trademark and First Amendment rights. In that case, Ginger Rogers, Fred Astaire’s famous dance partner, brought suit against the makers of a movie called “Ginger and Fred.” She claimed that the title created the false impression that the movie was about her or that she sponsored, endorsed or was affiliated with it in some way. The Second Circuit affirmed the trial court’s ruling against her, on the basis that the title of the movie was artistic expression, protected by the First Amendment as such.

When the medium is the message

Some commentators have suggested that the balance struck in favor of the First Amendment in Rogers v. Grimaldi should only apply in cases involving traditional conveyors of expressive content, i.e., books, movies, drawings, and the like. They would say that when the product involved has a primarily non-expressive purpose (such as an object for a dog to chew), traditional trademark analysis focused on likelihood of confusion should apply sans a First Amendment override.

Does this distinction hold water, though? True, commercial speech receives a lower level of protection than artistic or political speech does, but both dog toys and movies are packaged and marketed commercially. Books, movies, music, artwork, video games, software, and many other items containing expressive content are packaged and marketed commercially. Moreover, if a banana taped to a wall is a medium of artistic expression, on what basis can we logically differentiate a case where a dog toy is used as the medium of expression?

A decision is expected in June.

Is Jazz Confusingly Similar to Music?

Is jazz confusingly similar to music? No, that wasn’t the issue in this case. It was a contest between APPLE JAZZ and APPLE MUSIC involving tacking.

Bertini v. Apple Inc., No. 21-2301 (Fed. Cir. 2023). Apple, Inc. attempted to register the trademark APPLE MUSIC for both sound recordings and live musical performances (among other things). Bertini, a professional musician, filed an opposition, claiming to have used the mark APPLE JAZZ in connection with live performances since 1985, and to have started using it in connection with sound recordings in the 1990s. Bertini argued that APPLE MUSIC would likely cause confusion with APPLE JAZZ.

The first question that popped into my head, of course, was whether a consumer would really be likely to confuse jazz with music. I mean, come on.

Sadly, however, that was not the legal issue in this case. The legal issue was whether, and in what circumstances, priority of use can be established by “tacking” a new trademark registration onto an earlier one for a mark in a different category of goods or services.

The Opposition Proceeding

Apple applied to register APPLE MUSIC as a trademark in several categories of services in IC 41, including the production and distribution of sound recordings, and organizing and presenting live musical performances. Bertini, a professional jazz musician, filed a notice of opposition to Apple’s application, on the basis that he has used the mark APPLE JAZZ in connection with live performances since 1985. In the mid-1990s, Bertini began using APPLE JAZZ to issue and distribute sound recordings. Bertini opposed Apple’s registration of APPLE MUSIC on the ground that it would likely cause confusion with Bertini’s common law trademark APPLE JAZZ.

The Trademark Trials and Appeals Board (TTAB) dismissed the opposition. Bertini appealed to the Federal Circuit Court of Appeals.

The Appeal

On appeal, the parties did not dispute that there was a likelihood consumers would confuse Bertini’s use of APPLE JAZZ and Apple’s use of APPLE MUSIC. The only dispute on appeal was priority of use.

Apple, Inc. began using APPLE MUSIC in 2015, when it launched its music streaming service, nearly thirty years after Bertini had begun using APPLE JAZZ. Apple, however, argued that it was entitled to an earlier priority dating back to a 1968 registration of the mark APPLE for “Gramophone records featuring music” and “audio compact discs featuring music.” (The company had purchased the registration from Apple Corps, the Beatles’ record company.)

The TTAB agreed with Apple’s argument, holding that Apple was entitled to tack its 2015 use of APPLE MUSIC onto Apple Corp’s 1968 use of APPLE and therefore had priority over Bertini’s APPLE JAZZ.

The appellate court reversed, holding that Apple cannot tack its use of APPLE MUSIC for live musical performances onto Apple Corps’ use of APPLE for gramophone records, and that its application to register APPLE MUSIC must therefore be denied.

The Court of Appeals construed the tacking doctrine narrowly. Framing the question as “[W]hether a trademark applicant can establish priority for every good or service in its application merely because it has priority through tacking in a single good or service listed in its application,” the Court answered no. While Apple might have been able to use tacking to claim priority in connection with the production and distribution of sound recordings, it could not use that priority to establish priority with respect to other categories of services, such as organizing and presenting live performances.

Contact attorney Thomas James for help with trademark registration.

Getty Images Litigation Update

Getty Images has now filed a lawsuit for copyright infringement in the United States.

In a previous post, I reported on a lawsuit that Getty Images had filed in the United Kingdom against Stability AI. Now the company has filed similar claims against the company in the United States.

The complaint, which has been filed in federal district court in Delaware, alleges claims of copyright infringement; providing false copyright management information; removal or alteration of copyright management information; trademark infringement; trademark dilution; unfair competition; and deceptive trade practices. Both monetary damages and injunctive relief are being sought.

An interesting twist in the Getty litigation is that AI-generated works allegedly have included the Getty Images trademark.

(Reproduction of a portion of the Complaint filed in Getty Images v. Stability AI, Inc. in U.S. district court for the district of Delaware, case no. Case 1:23-cv-00135-UNA (2023). The image has been cropped to avoid reproducing the likenesses of persons appearing in the image and to display only what is needed here for purposes of news reporting and commentary,)

Getty Images, which is in the business of collecting and licensing quality images, alleges (among other things) that affixing its trademark to poor quality AI-generated images tarnishes the company’s reputation. If proven, this could constitute trademark dilution, which is prohibited by the Lanham Act.

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