Posted On: October 27, 2011

Power Rangers Halloween Costumes Morph Into Copyright And Trademark Infringement Suit

halloween-costumes-copyrightable-copyright-trademark-lawsuit-power-rangers-pink.jpgSaban Entertainment originally created the “Power Rangers” live action children’s television series in 1993, where several teenagers would morph from ordinary people into powerful superhero characters wearing color-coded battle suits. The colors also served as each character’s name, e.g. the Pink or Blue Rangers. Plaintiff alleges that the “television series has been immensely popular with young audiences all around the world. To date, it has been broadcast over 19 seasons, spawned two theatrical films, and become a highly valuable merchandising franchise.”

To protect its intellectual property, Plaintiff has copyrighted the artwork and design of the Power Rangers uniforms (“Uniform Copyrights”) and also owns the copyrights in the television series where they are depicted. In addition, Plaintiff has copyrighted the characters in a style guide that is provides to authorized licensees. Further, Plaintiff is the owner of numerous USPTO trademark registrations incorporating the “Power Rangers” word mark and several USPTO registered trademarks for the Power Rangers character images.

Plaintiff accuses Underdog Endeavors, Inc. of advertising and selling Halloween costumes (one image shown here) on its site that infringe Plaintiff’s “intellectual property rights relating to the popular ‘Power Rangers’ television series, brand, and related products.” In addition to the copyright and trademark infringement claims, Plaintiff brings causes of action for trademark dilution and unfair competition under Section 43(a) of the Lanham Act.

As a side note, Underdog’s placement of the allegedly infringing products on its website should constitute sufficiently widespread advertising activity to trigger coverage under its Commercial General Liability Insurance (“CGLI”) policy, which policy was hopefully in place before the alleged infringement began. Hyundai Motor Am. v. Nat'l Union Fire Ins. Co., 600 F.3d 1092 (9th Cir. 2010). Most CGLI policies have an advertising injury provision under which copyright, trade dress, and sometimes trademark infringement claims are covered and the insurance company has a duty to pay attorneys’ fees and costs to defend the insured against such claims.

Are Halloween costumes copyrightable because they are garments, you ask? Although a broad category of creative works are eligible for copyright protection, the Copyright Act, however, excludes any “useful article” (e.g. clothing) – defined as “an article having an intrinsic utilitarian function that is not merely to portray the appearance of the article or to convey information” – from copyright protection. Thus although garments as a whole are not eligible for copyright protection, the individual design elements – for example a floral graphic applied to the fabric – may be copyrightable. In Chosun, the Second Circuit held that Halloween costumes may be copyrightable if the design elements are separable from the overall function of the costume as clothing. Chosun Int’l, Inc. v. Chrisha Creations, Ltd., 413 F.3d 324 (2d Cir. 2005).

The case is SCG Power Rangers, LLC v. Underdog Endeavors, Inc., CV11-08485 JHN (C.D. Cal. 2011).

Posted On: October 10, 2011

Village People Musical Group Wins TTAB Cancellation Summary Judgment Against Wife Of Former Member Willis

ttab-trademark-cancellation-village-people-uspto.jpgThe wife and manager of Victor Willis, a former member of the disco group the Village People (yes, you read “wife” correctly, the Village People had at least one straight “macho man”), filed three petitions for cancellation of Can’t Stop Productions, Inc.’s (“CSP”) three trademark registrations, two for the word mark VILLAGE PEOPLE and one for the design mark shown to the right. CSP filed motions for summary judgment on Willis’ pleaded grounds of fraud, abandonment and genericness in each of the three cancellation proceedings, which the Trademark Trial & Appeal Board (“TTAB”) consolidate in its order because of the sufficient commonality of the factual and legal issues.

CSP had the initial burden to show with sufficient evidence, if unopposed, that there is no genuine dispute of material fact on the fraud, abandonment and genericness cancellation claims. The burden would then shift to Willis to show that there are material facts in dispute to be resolved at trial. The TTAB summarized Willis’ abandonment claims:

Petitioner makes similar allegations regarding abandonment of all three of the registered marks, namely that since the 1980’s the marks have only been licensed for live performances and no new recordings have been made since 1985; that the mark is for a “concept group,” not a musical group; and that changes have been made to the design mark because of changes to certain of the characters depicted in the mark. Petitioner alleges that these changes amount to abandonment of all three marks without an intent to resume use.

Under the Trademark Act, a prima facie case of abandonment is made if a trademark has not been used, without intent to resume, in the U.S. for a period of three consecutive years. 15 U.S.C. § 1127. As the moving party to dismiss the claims of abandonment, CSP provided the declarations of its managing director and of its licensee with evidence of continuous use of its marks for all of the goods and services listed in the registrations. In response, Willis presented evidence that CSP has made no new recordings since the 1980’s, when the songwriter Willis left the band. Therefore, the TTAB found that there was at least a genuine dispute of material fact as to whether the mark is being used in “connection with pre-recorded phonograph records, audio cassettes and audio tapes featuring music and vocals.” Nope, CDs and MP3s don’t count. Thus, summary judgment was denied in Cancellation No. 92051212, but granted as to the other two on the abandonment issue.

Willis argued that the term “village people” is generic because it describes groups of people living in a community or small town. The Board held that the argument cannot apply to the design mark because the words “Village People” do not appear in the mark. As to the word marks, the Board granted summary judgment because Willis “has not, and apparently cannot, raise any genuine dispute of material fact with regard to this ground as [Willis] has submitted no evidence, nor even made allegations, to show that the term VILLAGE PEOPLE is used as a generic term for musical recordings or performances” as opposed to identifying people who live in a village.

The Board also dismissed Willis’ fraud claims, but allowed thirty days to amend the claim of non-use and/or fraud in Cancellation No. 92051212 only, which concerns the phonograph records and audio cassettes.

Karen L. Willis v. Can’t Stop Production, Inc., Cancellation No. 92051212 (September 22, 2011) [not precedential].

Posted On: October 3, 2011

Baseball’s San Francisco Giants’ Lack Of Trademark Registration Results In Trademark Lawsuit

trademark-san-francisco-giants-major-league-mlb-gogo-lawsuit-clothing.jpgThe MLB champion San Francisco Giants not only failed to make the playoffs, but, to add insult to injury, their failure to register their stylized “San Francisco” logo is forcing them to defend a trademark lawsuit filed by a junior user, Gogo Sports. Gogo is an apparel manufacturer that sells customized and private labeled products according to its customer’s orders. Although Gogo is alleged to have adopted its San Francisco logo after the Giants, Gogo filed an application to register the trademark at the U.S. Patent & Trademark Office, whereas the Giants – surprisingly – did not, until only recently. On August 8, 2011, the Trademark Examining Attorney refused registration of the Giants’ later filed application for “clothing, namely, shirts and jackets; headwear” in light of Gogo’s previously registered – although on the Supplemental Register – trademark for “Caps; Hats; Headwear; Jackets; Shirts; Sweat shirts; Tops” because:

Here, the marks are virtually identical. Both share the same large wording SAN FRANCISCO in a stylized cursive font sloping upwards from left to right and with the same underline shape extending from the O under the wording. The only difference is the applicant did not include the geographically descriptive wording CALIFORNIA in small letters in the underline portion of the registrant’s mark.

Less than a month after the refusal, Major League Baseball Properties (“MLBP”) sent Gogo correspondence asserting superior rights in the design mark and demanding Gogo “immediately and expressly abandon the Supplemental Registration for the [mark], and immediately cease and desist from manufacturing, advertising, marketing, distribution, offering for sale and/or selling the Unlicensed Clothing and any other unlicensed product bearing any of the MLB Marks and/or any mark or graphic confusingly similar to and/or dilutive of any of the MLB Marks.”

After several correspondence between counsel, Gogo filed a declaratory judgment lawsuit seeking the Court’s ruling that it “has not infringed any trademark or protectable interest of the Giants and that the Giants have no valid trademark or other protectable interest in any products advertised, marketed, distributed or sold by Gogo Sports." But Gogo doesn’t stop there and inexplicably asks for a finding that “the Giants’ claim is barred and/or waived by the doctrine of laches, estoppel and/or acquiescence for their failure to seek USPTO registration for over 18 years.”

Although trademark rights are established upon use in commerce, this case exemplifies the advantages of early trademark registration that the Giants would have enjoyed, i.e. avoiding a nuisance lawsuit by a junior user. Also, even if a trademark registered on the Supplemental Register is not afforded the same rights as a mark on the Principal Register, one privilege – as here – is the USPTO’s refusal to register a later filed application based on a likelihood of confusion.

The case is Gogo Sports, Inc. v. Major League Baseball Properties, Inc. et al., CV11-7992 JHN (C.D. Cal. 2011).