Benjamin Appelbaum, Attorney at Law

Morris County Intellectual Propery Law Blog

Chooseco sues Netflix for trademark violation

Choose Your Own Adventure books from Chooseco enjoy a wide audience in New Jersey and around the world. The publisher of the popular book series that printed over 620,000 books last year alone and licensed translation rights in 27 countries has filed a lawsuit against Netflix and wants $25 million in damages. The book publisher claims that the streaming video service's show "Black Mirror: Bandersnatch" infringes upon Chooseco's trademarked phrase "choose your own adventure".

In "Black Mirror: Bandersnatch", the lead character is adapting a fictional book based on choosing adventures into a video game. The content of the show is dark, and the book publisher asserts in its lawsuit that many concerned people and parents have contacted it under the belief that it was involved in the Netflix production. The company believes that the disturbing content in the Netflix show has tarnished the reputation of its books for young people.

Supreme Court will hear FUCT trademark appeal

People in New Jersey might be interested in learning about an upcoming trademark case that will appear on the docket of the Supreme Court of the United States. The case involves the owner of a clothing line who is fighting to register the name of his line with its name, which is FUCT.

The U.S. Patent and Trademark Office originally denied the man's trademark application in 2011. The office ruled that the man's proposed trademark could not be registered because it represents a vulgar word and is thus scandalous. Under trademark law, proposed trademarks may be denied if they are immoral, contain material that is scandalous, or are deceptive.

YouTube copyright system may aid false claimants

YouTube has become home to many content creators in New Jersey and across the country who have released videos and amassed millions of fans. Still, some YouTubers have expressed concerns about how the platform addresses copyright complaints. One creator, known as TheFatRat, said that he has experienced frequent problems after other people and companies have tried to remove his original work after they attempted to claim it as their own. This means that the remaining video owners could receive thousands of dollars in advertising revenue as a result of fraudulent copyright claims.

TheFatRat has over 3.2 million subscribers on the channel where he creates original electronic dance music. One of his songs, "The Calling," was widely viewed until nine months after its original posting, when another musician posted a remix of the song. Then a Colombian company filed a copyright claim against the original song on the basis of the remix, costing TheFatRat around $3,000 each month in lost ad revenue. He said that YouTube's system assumes that a copyright claim is legitimate but some users may deliberately make false allegations in order to hijack ad income.

Controversy over Disney's 'Lion King' trademarks

New Jersey fans of Disney's "The Lion King" franchise may be surprised to learn that the entertainment company trademarked a traditional African phrase as part of its promotion for the associated films. Disney is beginning to promote a live-action remake underway of the classic animated film. "Hakuna matata," a Swahili phrase that can be translated as "no problems," is a significant theme of the family film. However, a Zimbabwean activist is protesting the American company's trademark on the phrase, which is widely used throughout eastern and southern Africa.

The activist has garnered 130,000 signatures on an online petition denouncing the Disney trademark on the phrase. While the petition expresses appreciation for Disney's entertainment media, it denounces the trademark as "an insult" to Swahili people and Africa as a whole, noting that the decision was "predicated purely on greed." Disney registered for the trademark in 1994 at the time of the animated film's release. However, this is not the only trademarking of the phrase; wedding and vitamin companies have also trademarked its use for specific types of products.

Alfonso Ribeiro sues video game maker over trademark dance

Business owners in New Jersey aren't the only ones who can trademark certain attributes unique to their brand. Some actors can do the same thing with characteristics specific to their image. This is exactly what Alfonso Ribeiro is attempting to do with a popular dance he performed while on the hit 1990s TV show "The Fresh Prince of Bel-Air." The actor is suing a video game maker for replicating his famous, over-exaggerated moves. A different manufacturer has also been sued by the actor for doing the same thing.

The trademark law case revolves around a Tom Jones-inspired dance that has enjoyed continued popularity in the age of social media. A video clip of the dance featured on a popular platform has been viewed nearly 20 million times. A side-by-side comparison of the move from the show and in the game reveals that the dance motions of the character in the game are virtually identical to moves Ribeiro is in the middle of attempting to copyright.

Jay-Z agrees to arbitration in trademark infringement case

New Jersey music fans may be interested to learn that Jay-Z has agreed to proceed with arbitration in his legal fight with Iconix Brand Group. The brand management company filed a lawsuit against the iconic rap artist and entrepreneur for trademark infringement after the "Roc Nation" logo was used on Major League Baseball apparel.

Initially, Jay-Z declined to undergo arbitration before the American Arbitration Association because the organization lacked an appropriate number of African-American or minority arbitrators. However, AAA indicated that it is willing to undergo an arbitrator selection process for the case and that the selection process will include "meaningful consideration" of African-American arbitrators. It further agreed to take measures to improve the diversity of its available arbitrators for future arbitration cases. As a result, Jay-Z and his legal team agreed to end the temporary restraining order on the case that was granted in November and undergo arbitration.

Policing trademarks requires diligence

For many business owners and entrepreneurs in New Jersey, intellectual property is among the business's most valuable assets. Trademark law requires the owner of the mark to take steps to protect it, even after it's been legally registered. If the trademark is not protected, the business is at risk of losing it. To effectively protect a brand that the business has spent time and effort establishing, the business needs a comprehensive strategy, the development of which may begin long before the mark is even in use.

Savvy businesses address the issue of trademark protection before the trademark is ever used in commerce. All too often, business owners focus on the immediate obstacles standing in the way of registration without thinking about the long-term impacts of policing the mark and using it. When a threat to intellectual property arises, it's important to take action as quickly as possible; delaying protective action can actually jeopardize the owner's rights to the mark. Strategies for the protection of trademarks should address when action is taken as well as how.

Court says brewery can trademark Schlafly name

A federal court has ruled that a brewery can trademark the word Schlafly despite the protestations of the family whose name it is. New Jersey readers might be familiar with the late Phyllis Schlafly, who was a conservative activist. Some members of her family have opposed the trademarking of their name by a company called Saint Louis Brewery LLC. One of the company's co-founders is Thomas Schlafly, a nephew of Phyllis.

The brewery has been selling beers carrying the Schlafly logo since 1991, and it sold 74.8 million servings of the beer through 2014. According to Andrew Schlafly, the lawyer who argued against registration and one of Phyllis's sons, trademark law says words that are primarily surnames should not receive trademark registration or protection.

Fair use and transformative use in copyright litigation

The information age has created a raft of new challenges for copyright holders and content creators in New Jersey and around the country. Digital infringers often defend their actions by claiming that their use of copyrighted materials was permitted under the fair use doctrine or was exempted from copyright law because the original work was substantially transformed. These issues were recently argued in a case filed by a photographer against a New York media company.

The case was brought over a portrait photograph of a bond trader that was commissioned by a financial magazine for use in a profile piece. Litigation was initiated when another financial journal used the same photograph without payment or consent in their story about the trader. The judge hearing the case ruled that the fair use doctrine did not apply because the allegedly infringing publication used the copyrighted material in the exact same way and for the same purpose as its original publisher.

Girl Scouts taking Boy Scouts to court over trademark issues

For decades, boys and girls in New Jersey have participated in programs operated by the Boy Scouts and Girl Scouts. The Boy Scouts of America's decision in 2017 to include girls has prompted the Girl Scouts of the United States of America to file a lawsuit alleging that BSA has confused consumers and infringed on trademarks held by the GSUSA.

The lawsuit calls for BSA to cease using trademarks held by Girl Scouts in their communications and recruitment. The Girl Scouts leadership wants BSA to apply distinguishing terms when using words like scout, scouts, scouting or Scouts BSA. Court filings cite examples such as Google ads for BSA organizations appearing when people search for "Girl Scouts" or recruiters telling parents that BSA and GSUSA have merged. The lawsuit adds that the confusion has undermined opportunities for GSUSA to collect membership dues. Concerns about becoming associated with sexual abuse allegations directed at the Boy Scouts were also mentioned in the lawsuit.

Benjamin Appelbaum, Attorney at Law - Intellectual Property

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