Intellectual Property Bulletin - Fall 2020

Fenwick & West LLP

In This Issue

The Evolving Relationship Between Brands and Athletes: What Comes Next

The dominance of social media allows individuals, including athletes and other influencers, to build their personal brand within the confines of a social media account and outside the umbrella of a large sports or lifestyle brand, music label, art gallery or fashion house. The relationship between athletes looking to increase goodwill in their personal brands and likenesses, and companies’ desire to leverage athletes as true ambassadors on their platform, raises a host of key questions—including who owns the intellectual property created as a result of the company-athlete relationship. — Vejay Lalla and Albert Tawil

Federal Circuit Confirms That “Magnetic Fuzz” Is Too Fuzzy for a Patent Claim

In IQASR v. Wendt, the Federal Circuit recently found that a district court did not err in its scrutiny of the extrinsic and intrinsic evidence presented to find a recycling patent invalid for indefiniteness. The circuit court didn’t perceive any clear error in the district court’s finding that the disputed term “magnetic fuzz” lacked a readily understood definition in its relevant field, as understood by a person of ordinary skill in the art as of the effective date of the patent application. It also reinforced a previous landmark Supreme Court ruling that “indefiniteness involves consideration of primarily the intrinsic evidence.” — Peiyao Zhang

Quick Updates

Protecting Trade Secrets in the Era of Virtual Meetings — Janie Yoo Miller

Rescinding a Specification Disclaimer Introduces New Matter — Eugene Prokopenko

When Trademarks Get Messi: Likelihood of Confusion and Leo Messi’s Big European Trademark Win — Joshua Michelangelo Stein

Nicki Minaj Safeguards the Right for Artists to Experiment with Unlicensed Work — Aylin Kuzucan

The Evolving Relationship Between Brands and Athletes: What Comes Next?

By Vejay Lalla and Albert Tawil

The dominance of social media allows individuals, including athletes, musicians, artists, designers and other influencers to build their personal brand within the confines of a social media account and outside the umbrella of a large sports or lifestyle brand, music label, art gallery or fashion house. Especially in the current social and political climate, as athletes and other individuals realize their voices matter on and off the field more than ever before, turning to personal social media platforms to speak out has become commonplace and encouraged. Similarly, companies seek athletes who cannot only market their brand, but also empower their brand’s position on social, political or other societal concerns that are critical to consumers and potential consumers—as Nike’s relationship with Colin Kaepernick shows.

Who Owns the Intellectual Property?

The relationship between athletes looking to build up goodwill in their personal brands and likeness, and companies’ desire to leverage athletes as true ambassadors on their platform, raises a host of issues. One question that continues to evolve, particularly as athletes leverage their own personal brands, is who in fact owns the intellectual property created as a result of the company-athlete relationship?

When a marketer approaches an individual athlete with significant social media influence for a collaboration or endorsement, it is likely that the athlete may have already built up strong goodwill in their personal brand, including with respect to name, image and likeness, and, possibly, trademarks, logos or designs. (See, for example, discussion of Leo Messi’s recent success in securing trademark rights, included in this issue’s Quick Updates section.)

Traditionally, the ownership question could be answered by which party was driving the overall financial commitment. In today’s market, financial investment is no longer the only driving factor in determining ownership rights, but instead just one piece of the puzzle. One key question is whether the company is designing (or redesigning) the individual’s logo or developing a logo based on an athlete’s “idea” or “concept,” in which case the company may have a strong preference to own the logo—or, whether the company is simply providing a platform for the individual’s preexisting brand and product line, in which case the athlete would want to continue to exert ownership rights. Some of the important questions companies and athletes need to consider include: How much will the parties collaborate on building goodwill for the brand? Is the company launching the individual’s brand for the first time, creating the branding elements from scratch and designing the product line? How much of the individual’s name and/or likeness is reflected in the brand’s logo design or trademarks? How does the brand’s financial or marketing investment play into these questions including the level of ongoing brand commitment?

Kawhi Leonard v. Nike

The high-profile case between NBA star Kawhi Leonard and Nike this past April serves as a good case study for exploring some of these questions and the pitfalls that can occur in the athlete-company relationship. After Leonard’s time as part of Nike’s Jordan brand came to an end, he soon realized that the “KLAW” logo, which is associated with his signature large hands and bears his initials, could potentially stay behind.

Leonard’s continued use of the logo resulted in a dispute with Nike over its ownership, culminating in a lawsuit filed by Leonard against Nike during the 2019 NBA finals. In the suit, Leonard claimed rights to the logo based on an initial rough logo design and concept he had previously created and presented to the Nike team.

Nike successfully argued that, from an intellectual property law perspective, Nike’s team designed the KLAW logo itself, and that it was sufficiently distinct from Leonard’s rough sketch to be considered a separate work. Therefore, the KLAW logo was considered an original work of authorship entitling Nike to copyright ownership. In addition, from a contractual perspective, Leonard’s endorsement contract granted ownership to Nike of any “logos, trademarks… or other forms of intellectual property” created by either Nike or Leonard in connection with the agreement.

Of course, it is natural, and consistent with general principles underlying intellectual property law, that a company’s investment and expenditure of resources to make the logo or brand valuable would result in the company’s ownership of rights in that logo or brand. Regardless of the parties’ respective arguments, and the differences between Leonard’s rough draft and the final KLAW logo, this dispute teaches athletes and companies a valuable lesson: Make sure to understand the intellectual property ownership at play and consider the expectation of the arrangement up front.

What’s in a Name?

While athletes expect to continue to own their name or any version of their name (such as initials), this is not always the case (as Leonard’s case shows). Logos can certainly be distinguished from the athlete and become a famous or recognizable brand on their own. What the contract says and who created and developed the logo or brand is the key, not whether it incorporates an individual’s initials, name or likeness. This is true in other cases as well, inside and outside of basketball. When NBA star Steph Curry inked a blockbuster endorsement deal with Under Armour, Under Armour was tasked with designing and developing Curry’s brand. Now, as shown through U.S. trademark registrations, Under Armour owns the trademark rights to Curry’s “SC” brand, including a recent logo redesign in 2019. Another example of this is the well-known “RF” logo associated with Roger Federer. Nike created the “RF” symbol and built the brand to one of the most recognizable in the world—accordingly, after Federer’s relationship with Nike ended, although his initials were his, the logo was not. Federer then purchased the logo from Nike.

What Can Be Learned Here?

On one hand, companies can consider other revenue streams outside of simply developing and owning an athlete’s brand—for example, structuring a deal with an athlete who has more leverage, or whose existing brand can be lucrative for the company, as a licensing arrangement with a revenue share. One example is Tom Brady’s TB12 fitness and nutrition brand. Brady had developed the TB12 brand on his own, with a trademark registration in the name of his personal company, but his current endorsement deal with Under Armour includes Under Armour selling certain TB12-branded apparel. Under Armour is tapping into the goodwill underlying Brady’s name and likeness as well as his personal brand, not the other way around. This business model is becoming more common not only in sports but also in the consumer world where many celebrities are partnering with larger brands to launch new lines of products.

Companies can also consider alternative intellectual property ownership arrangements that still achieve the goals of both parties. If a company is spearheading the development of an athlete’s brand (such as Nike for Leonard or Federer, or Under Armour for Curry), but an athlete seeks to retain ownership in the brand from the outset, the company can obtain the necessary rights through an exclusive license from the athlete for the duration of the endorsement deal, plus a possible tail period after the deal expires, for example. This way, the company reaps the benefit of its hard work in designing and building the brand, with exclusivity for perhaps five, 10, or 15 years. With this type of arrangement, the company also avoids the awkward scenario where, after the endorsement deal is over, the company sells merchandise with an athlete’s name or initials, while the individual athlete endorses a different company. This can lead to consumer confusion and reduced interest in the brand—for example, Nike’s KLAW brand is less exciting to buy now that Leonard is endorsing New Balance. Although the brand and the athlete can be separated from a legal perspective, it may not be prudent from a branding perspective.

On the other hand, athletes should be aware of the intellectual property rights at play and work with their attorneys to make sure the expectations for ownership rights in the athlete’s brand, including name and likeness, are clearly communicated. Although signing a major endorsement deal is an exciting milestone for a young athlete, the athlete should weigh the short-term considerations of signing a deal with the long-term considerations of permanently relinquishing ownership in the brand. This is especially important in cases where the brand is heavily tied to the athlete’s individual self, by prominently incorporating the athlete’s name, initials, likeness or jersey number. And, of course, this is important in cases where the athlete participates in the development of the brand concept, logo or other features, including by contributing ideas that came about before the deal started, such as Leonard’s.

Brands for Junior Athletes

These lessons on ownership of intellectual property will be especially key in the sports world over the next few years. The movement to allow collegiate athletes to monetize their name, image and likeness was fueled by California’s Fair Pay to Play Act, signed by California Governor Gavin Newsom in September 2019, requiring the state’s schools to allow collegiate athletes to monetize their name and likeness by 2023. Several other states followed suit, leading to an announcement by the NCAA this past April setting forth a path for collegiate athletes to earn money through their name, image and likeness. Most recently, the U.S. House of Representatives introduced a bipartisan bill in September 2020 that would preempt applicable state law on the topic. This wave opens up an entirely new category of personal athletic brands. High-profile junior athletes, including in high school and college, already have a prominent social media presence among sports fans—look no further than Shareef O’Neal (son of Shaquille O’Neal) or Bronny James (you guessed it).

Young athletes should look to The Greek Freak as a helpful role model in this regard. NBA player Giannis Antetokounmpo obtained trademark rights to the rhyming moniker “The Greek Freak” as a young up-and-coming athlete and continues to actively police infringing use of the trademark by online apparel stores and others selling unlicensed “Greek Freak”-branded goods. Although Antetokounmpo signed a sneaker deal later on in his career, like Tom Brady with TB12, he has built up goodwill in his own brand and kept the rights to “The Greek Freak” all to himself.

Avoiding Disputes

For athletes and other individuals—from a superstar like Kawhi Leonard, Roger Federer or Tom Brady, to an up-and-coming high school athlete with 100,000 Instagram followers and the eye of college recruiters, to companies looking to collaborate with, endorse, market or develop such individuals’ personal brands—understanding and evaluating each contractual arrangement and intellectual property consideration at the outset is essential to protecting each party’s rights and avoiding a dispute down the road.

Federal Circuit Confirms That “Magnetic Fuzz” Is Too Fuzzy for a Patent Claim

By Peiyao Zhang

On September 15, 2020, the U.S. Court of Appeals for the Federal Circuit, in IQASR v. Wendt, found that a district court did not err in its scrutiny of the extrinsic and intrinsic evidence presented to find U.S. Patent No. 9,132,432 invalid for indefiniteness. The Federal Circuit did not perceive any clear error in the court’s finding that the disputed term “magnetic fuzz” lacked a readily understood definition in its relevant field, as understood by a person of ordinary skill in the art as of the effective date of the patent application. The circuit court also reinforced a landmark U.S. Supreme Court ruling that “indefiniteness involves consideration of primarily the intrinsic evidence, viz., the claim language, the specification, and the prosecution history” which allow a person skilled in the art to recognize the scope of the claim term with reasonable certainty.

Reasonable Certainty Standard for Definiteness

In 2014, the Supreme Court, in its landmark ruling in Nautilus v. Biosig Instruments, held unanimously that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Because patents possess a public service function, a patent’s claims must be definite enough to apprise the public at large as to what has or has not been patented. Specifically, the claims must particularly point out and distinctly claim the invention to satisfy this requirement of 35 U.S.C. § 112. Accordingly, the Court declared that the definiteness inquiry is focused upon the understanding of the skilled artisan at the time the patent application is filed and not on the patent’s ability to ascribe at least some meaning to the claim term.

IQASR v. Wendt

In 2016, IQASR sued Wendt Corporation for infringing U.S. Patent No. 9,132,432, which describes a method of sorting recyclable materials from nonrecyclable materials produced during the shredding of scrapped or junked automobiles. The method recited in the ’432 patent allows for an enhanced separation of nonrecyclable materials like “trash and magnetic fuzz” from recyclable materials like “plastics and metals.” After a Markman hearing, the district court found the disputed term “magnetic fuzz” indefinite and invalidated the ’432 patent for indefiniteness.

IQASR appealed the district court’s decision, arguing that the court committed multiple legal errors in applying the law of indefiniteness and in its findings on both the extrinsic and intrinsic evidence presented. The Federal Circuit rejected IQASR’s arguments and affirmed the lower court holding. Specifically, the appellate court did not find any clear error in the district court’s analysis or in its determination that the disputed term “‘magnetic fuzz’ lacks ‘a readily-understood definition in [its] field.’”

Furthermore, the Federal Circuit supported the notion that, as the trier of fact, a lower court is “entitled to weigh the expert’s testimony as it thought appropriate based on the expert’s qualifications and experience.” The court reasoned that an expert’s opinion can be used to provide context for a disputed term as extrinsic evidence, but it alone cannot be used to rebut a party’s evidence that a person of ordinary skill in the art lacks understanding of the claim scope with reasonable certainty. The Federal Circuit went on to state that “[e]ven if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope.” IQASR’s inclusion of multiple layers of definition forced a skilled artisan to “wade through a morass of uncertainty and contradiction” and included a “word salad of inconsistent indirect definitions and examples that [] flummoxed the district court.” IQASR failed to provide sufficient intrinsic evidence in its patent to support a reasonable certainty that those skilled in the art would be informed about the scope of the invention, and their reliance on the subjective opinion of an expert that can change daily, depending on the expert’s qualifications and experience, was insufficient to cure the defects for their patent’s failure to inform a person of ordinary skill in the art about the scope of their invention, as 35 U.S.C. § 112 requires.

Takeaways

Ultimately, as noted above, the ’432 patent’s complex definitions prevented a person of ordinary skill in the art from understanding the claimed scope with reasonable certainty. The equivocation and subjectivity offered in the IQASR expert’s opinion failed to cure the intrinsic ambiguities of the disputed term, “magnetic fuzz,” and led to the district court discounting the importance of the more extensive use of the term “fuzz” prior to the invention date. Although the expert opinion offered context for the term, the context could not provide the precision required to define the boundaries of “magnetic fuzz.” Accordingly, “a claim term does not become reasonably certain simply because a skilled artisan, when pressed, managed to articulate a definition for it.”

Although the court’s opinion in this case is nonprecedential, this decision further illustrates the test that the Supreme Court articulated in Nautilus for indefiniteness. The use of extrinsic evidence, such as an expert opinion, is, by itself, insufficient to resolve intrinsic ambiguities in a patent. As the Federal Circuit stated in Teva Pharmaceuticals USA v. Sandoz, “[a] party cannot transform into a factual matter the internal coherence and context assessment of the patent simply by having an expert offer an opinion on it.” The determination of whether a disputed term is defined with reasonable certainty is a question of law. Expert opinions can be used to establish some context for the meaning of the term, but the expert opinion cannot be used to rebut evidence that the disputed term lacks ordinary meaning at the time the patent was filed. Accordingly, ambiguity within a patent cannot be cured just by a years-later opinion of someone with a technical degree or industry experience.

Quick Updates

Protecting Trade Secrets in the Era of Virtual Meetings

By Janie Yoo Miller

In Smash Franchise Partners v. Kanda Holdings, the Chancery Court of Delaware declined to grant a preliminary injunction related to allegations of trade secret misappropriation, finding that the plaintiff, the founder of Smash, did not take reasonable steps on Zoom to protect the claimed trade secrets. Although the court noted that the defendants’ acts were indeed deceptive, the record didn’t warrant the application of broad injunctive relief. Companies beware: the existence of a nondisclosure agreement in this case was insufficient to establish reasonable measures to maintain confidentiality.

Smash operates a franchise of mobile trash compaction businesses, selling franchises to entrepreneurs in protected territories. A Smash franchisee would service its customers by compacting the customers’ dumpsters on site in order to save on fees paid to the customers’ waste management companies. The defendant in this case, Todd Perri, expressed an interest in learning more about becoming a franchisee and signed an NDA to move forward in the process. Shortly thereafter, Perri joined a “Founder Call” on Zoom, the video-conferencing application that would by March 2020 replace the function of conference rooms for companies everywhere as a result of this year’s stay-in-place orders. Perri was provided a meeting ID for the Zoom call, but Smash did not require a password for the meeting or use Zoom’s waiting room function. (The waiting room feature places participants into a virtual lobby upon signing in, where the host verifies a participant’s identity before admitting the participant into the meeting.) Perri joined a Founder Call using the meeting ID, which could be used to join any of the weekly Founder Calls, as well as Smash’s “Franchisee Forum Calls.” During these calls, franchisees could discuss any topic of their choice. Perri attended one of each type of meeting and determined that he had the engineering background to start his own trash compaction company. Thereafter, Perri and his co-defendant started to gather information from the Smash-sponsored calls, feigning interest in the franchise only to collect information secretly for their plans to launch a competitor company.

As a result, Smash filed suit seeking a preliminary injunction to shut down the defendants’ Dumpster Devil business. In order to grant relief, the court had to find that the defendants obtained and used highly confidential and valuable information from Smash. The court concluded that all the information that the defendants received was freely shared by Smash’s franchisees on the Franchisee Forum Calls or provided by Smash without adequate precautions to protect confidentiality.

This case serves as a cautionary tale. In the era of virtual meetings, it’s important to use available security features, as specified by the Chancery Court of Delaware: (1) provide unique meeting IDs for each call, (2) require a password for access and (3) place participants in a waiting room so the host can admit them only after verifying their identity. Implementing these simple tools will help support a showing to the courts that your company is taking reasonable steps to protect the confidential nature of its trade secrets.

Rescinding a Specification Disclaimer Introduces New Matter

By Eugene Prokopenko

A recent case before the U.S. Court of Appeals for the Federal Circuit serves as an important reminder of the distinction between a disclaimer introduced in the specification of a patent and a disclaimer introduced during prosecution.

In its nonprecedential ruling in Akeva v. Nike, the Federal Circuit affirmed a district court’s holding that the asserted patents were invalid under 35 U.S.C. § 102 because the patents could not benefit from an earlier priority date. The Federal Circuit reasoned that a chain of priority was broken by a specification disclaimer, preventing an earlier priority date from applying and thus allowing new prior art to invalidate the patents.

The plaintiff, Akeva, asserted four patents that claimed priority to U.S. Patent No. 5,560,126 through a chain of continuations that included U.S. Patent No. 6,604,300. The accused products were shoes with “conventional” rear soles. In a previous appeal in 2006, the Federal Circuit held that the ’300 patent specification was directed to unconventional rear soles, which were detachable or rotatable rear soles. It held that the ’300 patent specification had language that disclaimed conventional rear soles, and so did not encompass shoes with such soles.

In the recent case, Akeva argued that in contrast to the ’300 patent, the asserted patents did encompass shoes with conventional rear soles, and therefore covered the accused products.

During prosecution of a child case, which became U.S. Patent No. 7,114,269, Akeva filed an Information Disclosure Statement. The IDS disclosed the decision of the 2006 appeal and explained that Akeva intended to rescind the disclaimer language relied on by the Federal Circuit in the 2006 appeal decision. Because the ’269 patent was one of the asserted patents, and the rest of the asserted patents were continuations of the ’269 patent, the rescission applied to all asserted patents.

In response to Akeva’s arguments, the Federal Circuit stated that the disclaimer language in the ’300 patent excluded conventional soles, breaking continuity for that embodiment with subsequent child applications. Without continuity with the ’300 patent, the asserted patents could not “reach through the ’300 patent to claim an earlier priority date” to the ’126 patent. Rescission of the disclaimer in the ’269 patent introduced an “entirely new embodiment” into the asserted patents and was “classical new matter” unable to claim the benefit of either patent. The Federal Circuit further explained that case law presented by Akeva in support of its arguments involved rescission of a prosecution disclaimer, not rescission of a specification disclaimer. Akeva presented no case law supporting the proposition that “a disclaimer in the specification can be later rescinded… without this new, expanded scope of the disclosure constituting new matter.” The court then held that without the benefit of an earlier priority date to the ’126 patent, the asserted patents were invalid under 35 U.S.C. § 102 in view of prior art.

Again, Akeva is a reminder that a disclaimer introduced in the specification of a patent and a disclaimer introduced during prosecution are not the same. A prosecution disclaimer can be later rescinded to reclaim disclaimed scope. To do so, the applicant must clearly inform the examiner of the rescission. On the other hand, a specification disclaimer “specifically excludes subject matter from the invention possessed by the patentee,” as the Federal Circuit explained in this case. An applicant cannot “reclaim” scope disclaimed in the specification, because the applicant did not possess that scope at the time of filing. An attempt to do so results in introduction of new matter, potentially breaking continuity with parent applications. Here, Akeva traded an earlier priority date for an embodiment that included conventional rear soles, but in so doing, invalidated the patents.

It is noteworthy that the two cases Akeva offered for the proposition that a specification disclaimer can be “successfully rescinded,” which the Federal Circuit subsequently distinguished as discussing prosecution disclaimers instead, may have been unhelpful to Akeva even if its disclaimer in the ’300 patent had been a prosecution disclaimer. The first case, Hakim v. Cannon Avent Group, ruled that an attempted rescission of a prosecution disclaimer was ineffective, and that the continuation was bound by the prosecution disclaimer of the parent. The second case, Luv N’ Care v. Jackel International, required filing a continuation-in-part that introduced new matter into the claims in order to rescind the prosecution disclaimer of the parent. Introduction of new matter into the claims precluded the benefit of an earlier priority date by the continuation-in-part. Therefore, had Akeva’s disclaimer been a prosecution disclaimer, the result may have been the same.

When Trademarks Get Messi: Likelihood of Confusion and Leo Messi’s Big European Trademark Win

By Joshua Michelangelo Stein

On September 17, 2020, legendary footballer Leo Messi achieved an elusive goal that he had been pursuing for years. No, he did not finally win a World Cup championship for the Albiceleste. Rather, after a nearly decade-long struggle, he finally secured the right to market sporting goods and clothing under his eponymous trademark: Messi.

Lionel Andrés Messi Cuccittini had faced off against the European Union Intellectual Property Office. before the European Union’s Court of Justice, the EU’s top court, as the EUIPO appealed a decision that the EU’s General Court handed down on April 26, 2018. That decision in turn reversed a decision by the EUIPO to refuse registration to the trademark Messi had sought to register (in support of what he called “the official premium lifestyle brand of soccer legend Leo Messi”).

Messi had applied for the trademark nearly a decade ago, on August 8, 2011, to be used in categories such as clothing and gym equipment. On November 23, 2011, Jaime Masferrer Coma opposed the registration based on his registration of the trademark for “Massi” for clothing, shoes and sports headgear (registered on September 23, 2007 under 3436607) and for cycling equipment (registered on July 20, 1998 under 414086).

On June 12, 2013, Messi lost in an initial decision before the EUIPO and appealed. In a split decision, the EUIPO affirmed that judgment. Messi, persistent on the pitch and in the courtroom, filed yet another appeal, this time before the EU’s General Court on July 25, 2014, contesting the likelihood of confusion determination.

Messi won that appeal, but in July 2018, the EUIPO and the Massi trademark holder itself appealed to Europe’s highest court, the Court of Justice.

The Court of Justice’s main consideration (similar to a likelihood of confusion determination in the United States) would be whether the public would confuse the conflicting trademark—that is to say, mistake the one for the other, or make a connection between the conflicting trademarks and assume that the goods/services in question are from the same or economically-linked undertakings (likelihood of association). Moreover, under European law (as noted by the Court of Justice in its decision), “in order to conclude that there is such a likelihood of confusion, it is not necessary for that risk to exist for the entire relevant public. It would suffice for the said risk to exist for a not insignificant part of this public.”

The Court of Justice affirmed the General Court, which had rejected the EUIPO’s argument as a misunderstanding of the likelihood of confusion analysis. Rather than ask whether the public at large might confuse the marks, the court stated that the real test was whether consumers in the relevant categories might make that same mistake. The answer was a resounding no: Buyers of sports clothes and gym equipment were not plausibly likely to mistake Messi’s name for any other. The Atomic Flea, as he is sometimes known, was unique and simply too well-known for this type of confusion to occur.

Specifically, the court held, “[w]hile it was possible that a few consumers had never heard of Mr. Messi Cuccittini or remembered him, this would not be the case with the average, normally attentive, informed and savvy consumer who purchases items or sports clothing” (translated).

The bottom line was that the EUIPO failed to consider Messi’s fame among those who bought sporting goods and sports clothes, and that was reversible error. Moreover, even though Messi’s fame was not explored in the record before the court, it was essentially “judicially noticeable” given that it was generally known and uncontestably a fact.

The Court of Justice affirmed the General Court and handed Messi yet another trophy: his own mark, one that he had sought for nearly a decade and that could put him in that upper echelon of team-sport athletes famous enough to have a global brand (like “Air Jordan” for Michael Jordan and “TB12” for Tom Brady).

Takeaways

Athletes often run into situations where they hope to trademark terms that are inextricably linked to their own names or achievements, such as “Linsanity” for basketball player Jeremy Lin or “Johnny Football” for Johnny Manziel, but enterprising and opportunistic filers tried registering first (but failed).

This situation is a bit different because an apparel brand just happened to have a similar-sounding name to Leo Messi. There was no opportunism to blame, merely a coincidence. That said, Messi won because he was just too famous to be confused with anyone else. The same thing could happen in the U.S.

The moral for today’s athletes who long to have their own lifestyle brands? Run prior art searches and, if your name is close to an already-registered mark, be prepared to duke it out in court. The game plan appears to be: Get famous, and fast. So up the Q-Score (a metric that determines the public’s familiarity with a brand, celebrity, product or company) and you too can have the highest court in the land deem your name sufficiently famous to avoid confusion.

As for companies looking to register a product or service that sounds similar to an already-existing mark in your category: Being world famous and ubiquitous like Messi is a little less likely to win the day for you, to say the least, so be sure to run names to the ground before getting wedded to them. Because even arguably the greatest soccer player of all time had to fight for nine years to win his right to have the brand he deserves. Meanwhile, his quest for the elusive World Cup championship continues…

Nicki Minaj Safeguards the Right for Artists to Experiment with Unlicensed Work

By Aylin Kuzucan

On September 16, 2020, California federal judge Virginia A. Phillips ruled that Nicki Minaj’s use of Tracy Chapman’s copyrighted work in the creation of Minaj’s song “Sorry” was fair use. “Sorry” interpolated Chapman’s composition “Baby Can I Hold You,” and even though Minaj sought a license from Chapman, she never received permission to use Chapman’s song. Minaj released her album without the song “Sorry,” but the song surfaced online after Aston George Taylor (DJ Flex), a New York radio DJ, played the track on his radio show. How the song was distributed to DJ Flex is still under dispute. Chapman’s claim for copyright infringement was based on the creation and distribution of “Sorry” that incorporated “Baby Can I Hold You” without Chapman’s permission. The court granted Minaj’s motion for summary judgment as to the first issue and held that Minaj’s use of Chapman’s song in the creation of “Sorry” did not violate copyright laws. The case will proceed on the issue of whether Minaj had any copyright infringement liability for the distribution of the song.

The Copyright Act provides that the fair use of a copyrighted work “for purposes such as criticism, comment, news reporting, teaching… scholarship, or research, is not an infringement of copyright.” Courts employ a non-exhaustive, four-factor test when evaluating the question of fair use as in Campbell v. Acuff-Rose Music: (1) purpose and character of the use, (2) the nature of the copyrighted work, (3) substantiality of what was copied, and (4) the effect of the use upon the potential market for or value of the copyrighted work. The factors are not intended to be evaluated in isolation but should be weighed in light of the copyright’s purpose.

Judge Phillips focused on the first and fourth factor when evaluating Chapman’s infringement claim. As to the first factor, the court looked to the commercial nature of the use of the work. Here the court found that Minaj’s purpose was not purely commercial, and she did not “exploit the copyright for commercial gain.” The court reasoned that Minaj’s purpose was to experiment and create a final form for licensing approval. Minaj had no intention to release “Sorry” and bring the product to market without a license. As to the fourth factor, no evidence was provided to prove that Minaj’s work would usurp any potential market for Chapman. Chapman’s argument that “Sorry” was created for commercial gain was not enough to establish market harm, the court reasoned that private experimentation with a copyrighted work to later secure a license does not impact the market for the original work. The court reinforced its reasoning by pointing to the public benefit of allowing artists to continue the common practice of experimenting with existing material before obtaining a license. Judge Phillips wrote that “[a] ruling uprooting these common practices would limit creativity and stifle innovation within the music industry… [which] is contrary to Copyright Law’s primary goal of promoting the arts for the public good.”

The court’s conclusion that Minaj's use of Chapman’s song to create new work did not violate copyright laws further protects the creative process most artists undertake when creating their original compositions.

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