Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

R&B singer sues former band members over use of group name

The former lead singer of an R&B group that has some New Jersey fans is suing two other band members for trademark infringement over use of the band name. The defendants have used the band name in promotions for their recent tour.

The group, which became popular in the 1990's, had won several Grammy Awards for past hits and had several songs reaching the top 40 hit list. The singer left to begin a solo career in 2008. Subsequently, the band reunited but the members are not currently working together. Two members are attempting to obtain concert dates and are utilizing the name of the former band, according to the lawsuit.

Copyright lawsuits continue to challenge streaming firms

A growing number of people in New Jersey and across the country rely on online streaming sites like Spotify or Netflix for their favorite movies, TV shows, music and other content. The industry is bringing in a significant amount of money and has, over the years, been the subject of a number of copyright disputes. While the passage of laws like the Music Modernization Act has helped to set a standard moving forward for streaming firms to follow, there are still active legal cases pending that address the issue of streaming providers' responsibility for mechanical licensing.

Spotify, one of the largest firms in the streaming world, is facing a copyright lawsuit from Blue Water Music. The suit argues that Spotify owes the artists that it represents millions of dollars because the company failed to obtain mechanical licenses to play the songs that they wrote. Mechanical licenses provide protection for songwriters, and Spotify in the past settled a significant copyright lawsuit brought by a number of songwriters, including singer Melissa Ferrick. The Blue Water lawsuit was filed in 2017, before the passage of the Music Modernization Act and before the settlement of the Ferrick class action lawsuit.

How to resolve a trademark dispute

Individuals and companies in New Jersey are entitled to trademark their intellectual property. This gives them the exclusive right to use a logo, slogan or other mark. If other parties want to use something that has already been trademarked, they must get a license from the owner of that trademark. Those who believe that another party has engaged in trademark infringement may take legal action to put a halt to such activity.

A plaintiff must show that he or she owns a valid mark and has priority rights to it. Registering a trademark generally results in the legal assumption that the first two criteria have been met. However, it is not necessary to register a trademark to obtain at least partial legal protection against infringement. Furthermore, it must be shown that another mark is similar enough that it could cause confusion among customers.

Congress may fix eligibility requirements for patents

A bill in the United States Congress may change the eligibility requirement for patents regulated by Section 101. It would restrict statutory exceptions to only a few categories, including mathematical formulas, mental activities and fundamental scientific principles. The new framework, which could end up affecting IP law in New Jersey and every other state, has support from both Democratic and Republican lawmakers. Public hearings will eventually be held about the issue.

A main goal of this new legislation is to give Congress greater power over the eligibility requirements for patents and to take power away from judges. Advocates of the change argue that eliminating the non-statutory judicial exceptions is a big necessity for stakeholders under intellectual property law. They also want the statutory language to be very limited and narrowly tailored.

Supreme Court case raises issue of profanity in trademarks

Swear words may be a fact of life for many New Jersey residents, but the U.S. Supreme Court is considering whether they can also be a part of a protected trademark. The justices are hearing a case brought by a clothing designer based in Los Angeles who launched a streetwear brand called "FUCT", sounding similar yet spelled differently from a common curse word. His application for a trademark was denied under a provision that allows requests for "immoral" or "scandalous" marks to be turned down.

The designer says that this provision is an illegitimate limit on freedom of expression and has taken his case to the nation's highest court. He earlier won a ruling in 2017 in a federal court, but the Trump administration appealed the result. The administration said that if the law was removed from the books, sexual and graphic imagery and expletives would consume a significant amount of market space. The trademark law has been in place for over 100 years. In 2017, the Supreme Court ruled against another provision of the law that banned trademarks considered "disparaging". At the time, it noted that offensive speech still cannot be banned by the government.

Question of willful infringement headed to U.S. Supreme Court

Trademarks and patents are valuable assets for many New Jersey businesses and creators The award of damages in a case involving the infringement of magnetic fasteners developed by Romag has revolved around the question of whether Fossil, the infringing party, acted willfully. Interpretations of trademark law among various federal appellate courts have produced differing requirements concerning willful action. Romag's petition before the Supreme Court of the United States could lead to clarification on this issue.

Trademark law appears to provide clear guidance on the award of damages from the profits of infringement. However, six U.S. Court of Appeals districts have ruled that the holders of a trademark may collect profits derived from infringement without proving that the defendant willfully used the protected intellectual property. Rulings from five other districts required evidence of willfulness to justify the disgorgement of an infringer's profits. The 1st Circuit developed a mixed approach that required willfulness when opposing parties are not direct competitors.

New Jersey Businesses Must Take Steps to Protect Their Copyrights

In 1984, Jacobus Rentmeester, then a student at the University of North Carolina, took a photograph of Michael Jordan for Time Magazine, which made it appear that Jordan was about to dunk the ball with one hand. Although such photographs are quite common, Rentmeester's photo was unique in several ways. For one thing, Jordan's in-the-air pose resembled a leap in ballet.

At a subsequent time, Nike produced a photo that was similar to Rentmeester's. However, it differed slightly. For one thing, Jordan was wearing his Chicago Bulls uniform in the Nike photo, and the Chicago skyline could be seen in the background. The Nike photo was used to create the famous 'Jumpman" logo, which is one of Nike's most recognizable trademarks.

Copyright applications need approval before filing suit

New Jersey copyright owners may be interested in a recent decision made by the U.S. Supreme Court. The decision will affect when work needs to be registered with the United States Copyright Office if the filer wants to enforce their rights as an owner. A copyright owner has to have their work registered with this office if they want to file litigation. This underscores the importance of filing copyright applications as soon as possible.

When most people imagine trademarks or copyrights, they think of having their paintings, music, films and photography protected. However, copyright protection also includes articles, advertising, computer software and presentations. The decision made by the U.S. Supreme Court in March 2019 mandates that actual approval of an application filed for copyright protection is required before any suit can be filed. This will be a necessary first step when it comes to intellectual property litigation.

How IP law can protect composers

When a composer creates a piece of music, intellectual property laws protect their ability to control when and where their work is performed. This means that a composer has the right to decide if their music can be played, whether the venue is a large stadium in New Jersey or a small concert in New Orleans. This legal standard helps maintain the integrity of creative work.

For many composers, licensing through the American Society of Composers, Authors and Publishers is an attractive option. They provide a large catalog of works that venues can purchase a blanket license for performing. While the ASCAP sometimes pursues legal action against violators, they usually encourage venues to purchase a license, helping artists get paid for their work more quickly.

Protecting New Jersey trademarks

The importance of protecting trademarks was emphasized recently when a lawsuit was filed in federal court regarding ownership of the Craftsman tool line. Sears previously sold Craftsman tools and owned the rights to its iconic name. However, that all changed when Sears began to struggle financially prior to its bankruptcy filing. According to a recent news report, Stanley Black & Decker acquired the Craftsman brand in March 2017, for which it paid Sears approximately $900 million.

As part of a contract between Stanley and Sears, Stanley gave Sears a limited license to market certain Craftsman products. However, the lawsuit alleges that Sears began to sell a new line of tools based on the Craftsman name once Sears emerged from bankruptcy protection. The suit further alleges that Sears marketed the new tools in such a way as to make it appear that the Sears tools were superior to the Stanley tools and casting doubt on the legitimacy of the Stanley line.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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