Commodores take further action against founder member’s continued use of their name
Artists , Trade Mark / May 2018
USA

TRADE MARK Artistes   Commodores Entertainment Corp, the corporate body behind the current incarnation of The Commodores, has asked a court in Florida to consider sanctioning a founder member of the group, Thomas McClary, as part of a long-running trademark dispute citing McClary’s continued use of Commodores Trade Marks despite a court order that should prevent him from doing this. The band formed in 1968 when two other bands mergeed: oLionel Richie, Thomas McClary, and William King jopined from the Mystics, and Andre Callahan, Michael Gilbert, and Milan Williams were from the Jays. Renowned for the R&B hits which include “Just to Be Close to You,” “Easy,” and “Brickhouse” the group is credited with seven number one songs and a host of other Top Ten hits on the Billboard charts, and their vast catalogue includes more than 50 albums. King, a founder member who chose the band’s name, is part of the current line-up of The Commodores and McClary is accused of infringing the group’s trademark and violating a 2016 court order by staging shows under the name ‘The Commodores Experience featuring Thomas McClary’. In fact the case goes back to 2014 when CEC first took legak action against McClary over his use of the Commodores brand for his…

Kid Rock’s tour NOT the Greatest Show on Earth
Live Events , Trade Mark / February 2018
USA

TRADE MARK Live events sector   Feld Entertainment, the owner of circus company Ringling Bros, has forced Kid Rock and promoter Live Nation to change the name of a tour. It’s all over an alleged trademark infringement with the Kid Rock tour due to start on the 19th January and billed as the Greatest Show on Earth tour. Feld claims the tour, dilutes and infringes on its “famous trademark”, ‘The Greatest Show on Earth’.  Feld Entertainment, Inc. et al v. Ritchie et al, was filed in the US District Court for Middle Florida and seeks to force Kid Rock (Robert James Richie) and promoter Live Nation to change the name of the tour and turn over any revenue from merchandise featuring the disputed slogan, as well as additional unspecified damages. The name change has now happened – the tour was re-branded the American Rock ’n Roll tour According to Feld’s general counsel, Lisa Joiner, the company took the decision to go to the courts after “repeatedly contact[ing] defendants to obtain their cooperation to stop the infringement and [being] ignored”. “We have authorised licensees for Ringling Bros and The Greatest Show On Earth, but Kid Rock is not one of them,” she adds. “This historic…

Goldenvoice wins another ‘Chella’ battle
Live Events , Trade Mark / November 2017
USA

TRADE MARK Live events sector    A court in California has upheld a complaint made by Coachella organiser Goldenvoice against the organisers of the Filmchella film festival in the same state, granting a preliminary injunction against the latter holding that name is liable to cause “consumer confusion” with the well established music festival.    The complaint, filed by Coachella Music Festival LLC in the US District Court for Central California, argued that Filmchella founder Robert Trevor Simms and twenty other defendants were using the similar-sounding name to their name and trade mark for their multiday outdoor film festival. To add to this, the complaint says that both events feature numerous forms of entertainment and camping, are held in Southern California and that Simms has pitched his planned festival as “Coachella for movies”.    Coachella Music Festival LLC owns several trademarks and servicemarks associated with the festival, including the Coachella servicemark and “Chella” for use on shirts and T-shirts; However the trademark for use of “Chella” in “musical” and “cultural and arts events”, “campground facilities”, “hotel accommodation services”, drinks, transportation and other clothing has not as yet been registered.   The suit said “Trading on the goodwill of plaintiffs’ famous ‘Coachella’ festival, defendants…

Manowar and Womanowar are in a trade mark war
Artists , Trade Mark / November 2017
EU
USA

TRADE MARK Artistes   Manowar is a heavy metal band from New York, Womanowar are a “feminist tribute band” to…you guessed it: Manowar.  Manowar’s bassist, Joey Demaio, is the proprietor of US trade mark registration numbers: 75645524 and 85065290. The first registration is for a word device (logo) mark and the second is for a word only mark ‘Manowar’. The bassist is also the proprietor of EU registration number: 0011118041 for a word device (logo) mark. The three trade marks, amongst others, are all registered for use in class 41 entertainment services, namely, live performances rendered by a vocal and/or instrumental group.  But it appears that Manowar and not fans of their feminist tribute band ‘Womanowar’, it has been reported that Demaio’s legal representative has sent a cease and desist letter to the tribute band. The letter alleges that Womanowar’s logo is likely to “cause confusion among the consuming public”. In practice, coincidences at the beginning of marks will increase the similarity as opposed to the middle or the end.  If I were, Womanowar’s lawyer, I would certainly be arguing that the fact that one mark starts with ‘Man’ and the other ‘Woman’ means that the marks might not be…

Yoko Ono forces a John Lemon re-brand
Artists , Trade Mark / October 2017
Netherlands
UK

TRADE MARK Artists   John Lennon’s widow, Yoko Ono, has pushed  a Polish beverage company into changing the name of its new lemondade drink which had been called “John Lemon”. The singer-artist’s legal team alleged that the product infringed on Ono’s ‘John Lennon’ trademark and his personality rights. With a Dutch action pending, Mr Lemonade Alternative Drinks agreed to change the name to “On Lemon” after Ono wrote to the company and its distributors across Europe, warning that continued infringement could result in substantial damages which were reported as 5000 euros per day that the drink was on sale, and 500 euros for every bottle sold.    Ono’s attorney, Joris Van Manen, told the East London Advertiser that the lemonade sellers “were abusing and misusing the legacy of John Lennon to sell their soda”. In addition the lawyer cited various promotional efforts by the drinks company that also alluded to the one time Beatle.   The legal action referenced a Facebook post by John Lemon Ireland showing a large wall mural of Lennon holding lemons with the brand’s logo underneath. Other advertising depicted a pair of round glasses, closely linked with the famous Beatle, next to the words “Let It Be.”  …

ZAPPA vs ZAPPA and ZAPPA PLAYS ZAPPA
Artists , Trade Mark / October 2017
USA

TRADE MARK Artistes   What essentially is a trademark dispute has taken on dinosaur proportions due to the participants involved – the children of the late US musician, Frank Zappa, who died on the 4th December 1993.   Zappa Plays Zappa was a tribute band formed in 2006 by Dweezil Zappa, the eldest son of the late Frank; and as the name implies, performs the music of his father.  The Zappa Family Trust (ZFT) managed the late musican’s estate, with his widow Gail Zappa as its Trustee.  On July 26th, 2006 the ZFT filed a trademark registration application with the United Sates Patents and Trademark Office (USPTO) for the name ZAPPA PLAYS ZAPPA and was granted an unopposed registration on May 15, 2007. For nearly a decade, Dweezil Zappa performed under the monicker of Zappa Plays Zappa, playing the music of his late father to audiences worldwide and winning one Grammy in 2009.  So far so good.    In October 2015, Gail Zappa died leaving two of her four children – Ahmet and Diva, the younger siblings, as the Trustees of the ZFT with a share of 30% each, thereby handing control of the Trust over to them.  All four children are beneficiaries,…

Filmchella faces Coachella complaint
Live Events , Trade Mark / September 2017
USA

TRADE MARK Live events sector   Goldenvoice, the organizers of the Coachella Valley Music and Arts Festival, one of the world’s leading music festivals, have filed a trademark infringement lawsuit over the planned “Flmchella” film festival, arguing that the new event has refused repeated requests to change its name.  The complaint, filed by Coachella Music Festival LLC in the US District Court for Central California, says that Filmchella founder Robert Trevor Simms and twenty other defendants are using the similar-sounding name to their name and trade mark for their multiday outdoor film festival. To add to this, the complaint says that both events feature numerous forms of entertainment and camping, are held in Southern California and that Simms has pitched his planned festival as “Coachella for movies”. The film festival is scheduled to run from the 29th September to the 1st October in Joshua Tree, California. Coachella Music Festival LLC owns several trademarks and servicemarks associated with the festival, including the Coachella servicemark and “Chella” for use on shirts and T-shirts; However the trademark for use of “Chella” in “musical” and “cultural and arts events”, “campground facilities”, “hotel accommodation services”, drinks, transportation and other clothing has not as yet been…

Gene in the horns of a dilemma
Artists , Trade Mark / July 2017
USA

TRADE MARK Artistes   Gene Simmons (yes, he of rock band Kiss) attempts to register a trade mark for the widely used heavy metal ‘devil horns gesture always looked doomed to fail, and sure enough, they have.   The Hollywood Reporter reported that Simmons had applied to the U.S. Patent and Trademark Office (USPTO) for protection of the gesture in class 41. Simmons claims he first used it in commerce in 1974, although it’s fellow rocker Ronnie James Dio (Rainbow, Black Sabbath) who generally is credited with popularising the gesture, and has said he learned it from his Italian grandmother as a way to ward off the evil eye. In the application, the sign is described as “a hand gesture with the index and small fingers extended upwards and the thumb extended perpendicular”. The registration covered “services having the basic aim of the entertainment, amusement or recreation of people” and the “presentation of works of visual art or literature to the public for cultural or educational purposes”. The application further identified the types of services for which registration was sought as “entertainment, namely, live performances by a musical artist; personal appearances by a musical artist”.    Simmons said that “the mark was…

New lawsuits over Jefferson Starship name, the Hotel California name and …. a cat
Artists , Trade Mark / June 2017
Canada
USA

TRADE MARK Artistes     A founding member of Jefferson Starship has filed a legal action in a move designed to prevent the current version of the legendary band from using the name Jefferson Starship. The band evolved out of the group Jefferson Airplane in 1974 and also produced the ‘spin off’ band Starship (itself a name change after a legal dispute). Craig Chaquico,  who was member of the Jefferson Starship line-up, and subsequently played with Starship, has brougt the action: The Jefferson Starship name was retired in the mid-1980s after a little legal battle between members. In the 1990s, Paul Kantner, a founder member of both Jefferson Airplane and Jefferson Starship and the first member of Jefferson Airplane to use the Jefferson Starship name, began to use the Jefferson Starship name again. Chaquico, who had also played on  three of Kantner and Grace Slick’s solo albums, now says that he gave permission for Kantner’s later use of the band’s Jefferson Starship brand, but his agreement and consent was for Kantner personally and again came after litigation and arbitration in 1993 (Kantner died in 2016), and that previous inter-band agreeements and settlements mean the current band members do not have his permission to continue using the name,…

ARTICLE LINK  – Trade Marks and Google Adwords
Trade Mark / April 2017
EU
UK
USA

TRADE MARK All areas     This week LA Weekly broke the news that Coachella’s  parent company, Goldenvoice,  is suing Urban Outfitters for trademark infringement, alleging the unauthorised use of the word “Coachella”. The lawsuit relates to Urban Outfitters subsidiary Free People, who have allegedly been selling various items that use the Coachella name: “Coachella Valley Tunic” and  “Bella Coachella” accessories being two examples. According to the LA Weekly report, Goldenvoice had sent a cease-and-desist letter along with several other demands that Urban Outfitters stop using the “Coachella” name, to no avail. Now Laura Harper, a partner at Shoosmiths LLP, has written a very good article on this in the context of UK and European law, with a particular nod towards the onlIne sphere, Google and ‘adwords’.  https://www.iq-mag.net/2017/03/trademarks-fair-game-use-google-adwords-laura-harper-shoosmiths/#.WNPgdTuLSM9

Hendrix siblings back in court
Trade Mark / April 2017
USA

TRADE MARK Merchandise   Experience Hendrix LLC, the company run by the late guitarist’s adopted sister Janie, and which is the entity that that manages the estate and legacy of Jimi Hendrix, is in another dispute with Jimi Hendrix’s brother Leon, who is accused of involvement in a business venture that seeks exploit Jimi Hendrix trademarks without Experience Hendrix’s permission. The new lawsuit, filed in U.S. District Court for the Southern District of New York, is against Leon Hendrix and associate Andrew Pitsicalis. A a press release from Expedience Hendrix begins by noting the past disputes over unofficial Hendrix-branded products that he has been involved in and  states: “Over the past ten years, defendants Andrew Pitsicalis and Leon Hendrix, and a variety of individuals and entities with which they have been associated, have attempted to hijack plaintiffs’ trademarks and copyrights for their own personal gain. Federal courts have repeatedly prohibited those unlawful activities” and goes on: “Ignoring those prohibitions, defendants recently have renewed and expanded their infringements of plaintiffs’ trademarks and copyrights through the creation, development, licensing, manufacturing, promotion, advertising and sale of cannabis, edibles, food, wine, alcohol, ‘medicines’, electronic products, and other goods”. The law suit continues: “Undaunted by their previously…

Kylie (M) stops Kylie (J) taking the name
Artists , Trade Mark / March 2017
USA

TRADE MARK Artistes   Kylie Minogue has reportedly won – or at least settled – an important legal battle with Kylie Jenner over the latter’s application to trade mark their shared first name. The reality TV star filed paperwork at the U.S. Patent and Trademark Office in 2015, aiming to register ‘Kylie’ as a trademark for “advertising services” and “endorsement services”. Minogue objected in February 2016, stating in her opposition that Jenner’s trademark application would “bring on confusion for both the celebrities and their brands.” In her opposition, Minogue representatives KBD stated that she was an “internationally renowned performing artist, humanitarian and breast cancer activist” who already owns Kylie related trademarks in the US in, as well as the website www.kylie.com (since 1996), and referred to Jenner as a “secondary reality television personality” and also raised concerns about Jenner’s social media activity stating “Ms. Jenner is active on social media where her photographic exhibitionism and controversial posts have drawn criticism from Disability Rights and African-American communities.”  It now appears the matter has been settled. Minogue owns trademark registrations for “Kylie Minogue Darling,” “Lucky – the Kylie Minogue musical,” and her full name, “Kylie Minogue”. Her registered protection extends to perfumes and toiletries, music and sound recordings, live entertainment,…

Battle for SOS 4.8 set to run
Contract , Live Events , Trade Mark / March 2017
Spain

TRADE MARK / CONTRACT Live events sector     Legal Music, the promoter of the successful Spanish festival SOS 4.8, has accused the Murcian government of illegally laying claim to the name of the event, and indeed the event itself, which it is says it is “sole and rightful owner” which has featured a host if international artistes over the last nine years including Pulp, Morrissey, The National, PJ Harvey, Franz Ferdinand, The Flaming Lips, Mogwai, The XX, Bloc Party, M83, Pet Shop Boys, Damon Albarn and Phoenix. In December 2016, Legal Music announced the April 2017 edition of SOS 4.8 would not go ahead following the withdrawal of funding from the Autonomous Community of Murcia (Comunidad Autónoma de la Región de Murcia, Carm), and the promoter accused the authority of violating its sponsorship agreement with the festival. It then emerged that Carm had trademarked the SOS 4.8 name in 2008, apparently without informing Legal Music, and Carm then said the festival would go ahead with or without Legal Music’s participation, and that Murcia would “not yield to any kind of threats” from Legal Music”  adding that Carm was “the sponsor of SOS 4.8 and the owner of the brand”. In turn…

Little River Band Trade Mark Dispute
Artists , Trade Mark / February 2017
Australia
UK
USA

TRADE MARK Artistes   Australia’s The New Daily has a well written piece on the trials and tribulations of founding (but former) members of Little River Band, one of the country’s first bands to crack America when their track “Help Is On Its Way” entered the US Top Twenty in November 1977. The song, written by lead singer Glenn Shorrock, peaked at number 14 on the Billboard charts and  Between 1977 and 1983 Little River Band had eleven top 20 hits in the United States, leading the way for an Oz invasion that included success for Air Supply, Men At Work, INXS, Savage Garden, Wolfmother, Tame Impala and many more. But for Shorrock and other LRB founding members, The New Daily says “the anniversary of the band’s breakthrough in America is tinged with bitterness.” And why is that? Well, since 1998, all of the original members, including Shorrock, Graeham Goble, Beeb Birtles and Derek Pellicci have been blocked from performing their hits in the US and Australia under the “Little River Band” banner because they no longer control the band’s trademarks. These are owned by Stephen Housedon, a British-born musician and songwriter, who was invited by the founding members to join LRB as lead guitarist in…

Dweezil faces siblings’ challenge to his use of the Zappa name
Artists , Trade Mark / January 2017
USA

TRADE MARK Artists   Dweezil Zappa has  announced a public campaign to protect his right to use the ‘Zappa’ name. Hosted by Pledge Music, The Others of Intention campaign is offering original music downloads and merchandise – donors are invited to participate in the campaign by purchasing items ranging from a digital access pass to Zappa-inscribed guitar picks to limited edition Zappa artwork and vinyl record albums as well as a select assortment of one-of-a-kind Zappa guitars for sale. Last May, Dweezil published a blog titled “It Can Happen Here” at his website. The open letter to Zappa fans described an upcoming tour and strongly alluded to a pending legal battle to save his right to the surname Zappa where he said: “Beyond that, there have been a few other changes. Mainly name changes. As you may or may not know I now tour under my own name, Dweezil Zappa, instead of Zappa Plays Zappa because my brother Ahmet and my sister Diva who run the Zappa Family Trust (ZFT) claimed ownership of the name Zappa Plays Zappa which my mother trademarked in 2007. The heavily tweezed language appropriating that trademark was designed by my mother to distinguish between the 2 uses of Zappa. One…

Sound marks must be distinctive
Trade Mark / December 2016
EU

TRADE MARK All areas     The General Court (GC) of the Court of Justice of the European Union has confirmed that sound marks need to have a distinctive character to be registered as a European Union Trade Mark (EUTM).   Globo Comunicação e Participações S/A (Globo) applied to register a sound mark (shown above) initially for goods and services in classes 9, 16, 38 and 41. This specification was later limited and covered “DVDs and other digital recording media; computer software; applications for tablets and smartphones” in class 9, “television broadcasting services” in class 38 and a range of educational and entertainment and television programmes in class 41. The sound mark was refused registration by the European Intellectual Property Office (EUIPO) under Article 7(1)(b) of the EUTMR because it consisted of a simple “banal ringing sound” that could not be perceived as an indication of commercial origin. The Board of Appeal who agreed, saying: “the mark applied for consisted of the repetition of a sound that resembled a ringtone which was banal in every respect, notwithstanding the fact that the mark consisted of a stave with a treble clef with a tempo of 147 crotchets per minute, repeating two G…

Ex Deep Purple member rocks up 20 years later to register band name as trade mark
Artists , Live Events , Trade Mark / June 2016
EU
UK

TRADE MARK Artistes, live events sector   By Emma Perot   Purple seems to be a popular colour in the world of trade marks. Recently, this Kat reported on Cadbury’s ill-fated attempt to preserve an existing colour mark. Thanks to Katfriend Plamen Ivanov, this Kat has learned of another purple trade mark dispute, this time concerning the word mark ‘Deep Purple’. Deep Purple is the name of a British rock band, formed in 1968. A former member of the band, Richard Blackmore, applied to register ‘Deep Purple’ as a word mark for certain goods and services in class 9, class 25, and class 41. As this Kat will explain, the attempt to register the mark was largely unsuccessful.   Ian Paice, one of the members of Deep Purple, opposed Blackmore’s application, based on Article 8(4) of the Community Trade Mark Regulation (now EU Trade Mark Regulation). This article provides for a relative ground of refusal for registration where an earlier proprietor of a non-registered mark has a right to prohibit use of the mark under the law of the member state. In the case of the opponent, the relevant law was the English tort of passing off.   On 17 February 2015, the Opposition Division  accepted registration…

Feyoncé – B asks the court to put a stop to it
Artists , Trade Mark / May 2016
USA

TRADE MARK Artistes     Beyoncé  has issued legal proceedings against Texas company, Feyoncé Inc, for “brazenly” selling merchandise that infringes her intellectual property.   A year ago it was reported that Beyoncé’s legal team had complained to online peer2peer marketplace Etsy the sale of “Feyoncé” mugs. Those items were promptly removed, but other products featuring “Feyoncé” remained widely available.   The lawsuit has been filed in Manhattan federal court and includes three defendants from San Antonio. The singer is seeking unspecified damages. The suit claims that Feyoncé has ignored the singer’s requests to stop selling their products, and that their items not only confuse consumers, but have caused the pop star irreparable harm. The Feyoncé site sells a variety of shirts, hoodies, tank tops and other clothing items. However the lawsuit focusses on a mug stamped with the phrase, “Feyoncé: He put a ring on it.” Whilst this could be a pun on “fiancé,” somewhat unsurprsingly the lawsuit claims the mug was specifically designed to make a reference Beyoncé’s 2008 hit, “Single Ladies”, which includes the lyric “Cause if you liked it then you should have put a ring on it”. Beyonce is of course married Jay Z in…

Coachella targets Hoodchella
Live Events , Trade Mark / March 2016
USA

TRADE MARK Live events sector     Coachella Music Festival LLC has taken action against the underground music festival Hoodchella, now on its second edition, with a trademark suit in California federal court which claims that Hoodchella deliberately abuses the famous Coachella brand. Coachella and its producer, Goldenvoice LLC, claim that Kamil al-Ahdali, the operator and advertiser of Hoodchella, knowingly infringed and unfairly profited from common law rights and six registered trademarks by advertising a competing music festival called Hoodchella. The complaint alleges that al-Ahdali is harming and confusing both Coachella and the public by promoting a comparable event in the same market, and that the Hoodchella name infringes their trade marks, creates unfair competition and dilutes the Coachella brand.  The lawsuit seeks $100,000 and immediate abandonment of the “Hoodchella” name. http://www.rollingstone.com/music/news/coachella-sues-hoodchella-over-festival-name-20160130

Ticketing URL launches new scheme to counter domain squatting
Live Events , Trade Mark / March 2016
UK

TRADE MARK Live events sector, Internet     IQ magazine reports that Accent Media, the company which owns the .tickets generic top-level domain (gTLD), has unveiled a new initiative which it hopes will prevent ‘cybersquatting’ on .tickets URLs by non-ticketing-related websites. Under the new system, someone wanting to register a .tickets web address will be entered into the public database at domains.watch, where interested parties can then lodge an objection (subject to payment of a fee). “We wanted to gear our registry towards genuine rights holders and felt this was a great way to do it,” Accent Media CEO Gary Fisher told Domain Incite. “We want rights holders around the world, whether they be sports teams, travel companies, entertainers and their agents or stadia, to be aware of when people have applied for their names – hence the need to make it a public website. We’ve already had rights holders including Disney successfully challenge applicants and secure their names. We think it’s a better model than the TMCH [Trademark Clearinghouse], which was massively gamed.”   Registering for a .tickets URL can be done in one of two ways: fast-track and standard. The former, for organisations whose trademarks match their company name, is…

Surely there is only ONE Kylie? And its NOT Kylie Jenner
Artists , Trade Mark / March 2016
Australia

TRADE MARK Artistes     Surely there’s only one Kylie – the Australian pop star Kylie Minogue? Surely not – and Ms Minogue is now mounting a legal bid to prevent Kylie Jenner claiming ownership of the name. Jenner, who appears in the reality TV show Keeping Up With the Kardashians, has applied to trademark the name “Kylie” to the USPTO (US Patent & Trademark Office). KDB, an Australian firm representing Minogue, filed their opposition to the application, claiming that allowing Jenner to take the Kylie name will cause confusion for Minogue fans and dilute her brand. KDB goes on to describe Ms Jenner as a “secondary reality television personality”. In making their case for which Kylie is the “better Kylie, they go on to list criticism Ms Jenner has faced from African-American communities and disability rights groups.   Ms Jenner, a half sister to Kim Kardashian, is just 18 but has a social media following in the tens of millions and has just launched her own make up line. Ms Minogue, a former soap star,  is 47 with over a dozen studio albums to her name. Minogue currently controls trade marks for “Kylie Minogue”, “Kylie Minogue Darling” (the name of her perfume brand)…

Metallica provide practical help to tribute act
Artists , Trade Mark / February 2016
USA

TRADE MARK Artistes     Metallica have overruled their own lawyers, who had issued a cease and desist letter against tribute band Sandman, ordering them to stop using the band’s name and logo to promote their entirely Metallica based act. To ensure that Metallica’s “overzealous attorney” would not start fresh proceedings against Sandman, the band agreed to license their logo to the tribute band for a fee of $1 which Metallica picked up the tab for that themselves. “I just got off the phone with Metallica’s management and they and the band had no idea their lawyers sent us the papers”, Sandman guitarist Joe Di Taranto told the One On One With Mitch Lafon podcast. “Lars [Ulrich, the Metallica drummer] got wind of everything today and was completely pissed that they sent us the papers for something so stupid. They are really sorry about everything and want us to go back to using any logos that we want. They are even going to license us the logo for $1 – which they said we don’t even need to pay. So all in all they were really cool and wanted to make sure we know that they fully support us. Pretty crazy. All…

Taylor Swift Seeks More Trade Marks
Artists , Trade Mark / January 2016
USA

TRADE MARK Artistes, merchandising   Taylor Swift has filed trade mark applications for 20 words and phrases in the U.S including “Blank Space” and “1989” (the name of her last album) as well as “Swiftmas”. Whilst some commented that Swift appeared to be trying to gain trade mark protection for large swathes of the English Language (including Republican Congressman Justin Amash from Michigan), the Tantalizing Trademark blog notes that the reason Swift’s lawyers filed for so many applications is that trademarks only protect specific categories of goods and services. A trademark for a category covering handbags won’t apply to cars, for instance. And in some cases, including Taylor’s “1989,” the application isn’t for the word mark itself, but for a stylized writing of it as a logo.   Swift has also  been accused of wrongfully using an artist’s work to promote 1989. US artist Ally Burguieres complained on Facebook after Swift used a wrongly-credited drawing of a fox identical to one of her watercolour designs. Swift removed the image but the artist claims she took months to compensate her, that it wasn’t enough and she was told she had to give it charity. Swift’s representatives say Ms Burguieres is just…

‘The Slants’ trade mark CAN be registered – for now
Artists , Trade Mark / January 2016
USA

TRADE MARK Artistes   A U.S. appeals court has overturned the legality of refusals of the U.S. Patent and Trademark Office’s to register offensive trade marks. The case, which concerned a band’s name, had been closely watched as the decision could impact on the attempt by the NFL’s Washington Redskins to overturn the cancellation of its trademarks. The NFL team had seven trade marks cancelled on the grounds the mark disparages American Indians. The new decision vacates the U.S. Patent and Trademark Office’s refusal to register the name of the Asian-American rock band The Slants: The Portland, Oregon-based band, which plays “Chinatown dance rock,” appealed because the USPTO had twice rejected its name for a trademark on the grounds it disparages Asians. The Slants’ front man Simon Tam (Simon Young) had argued  that the band adopted the name as a way to reclaim what had become a racial slur. In an interview after this decision he rejected any concern that the ruling would open the floodgates for racism or hate speech. The U.S. Court of Appeals for the Federal Circuit sitting ‘en banc’ said approach taken by the USPTO violates the First Amendment of the U.S. Constitution. The court struck down the…

Hook looks to former bandmates for a revised new order
Artists , Contract , Trade Mark / December 2015
UK

CONTRACT Artistes, Trade Mark   The BBC reports that former New Order bassist Peter Hook is suing his ex-bandmates Bernard Sumner and Stephen and Gillian Morris for millions of pounds in a row over royalties. Hook claims he has lost out on more than £2.3m since the three other band members set up a company without him to handle the band’s income in 2011 and Hook has accused them of “pillaging” the group’s assets. The trio say they have treated Hook fairly and that the guitarist’s stake of the royalties is reasonable. At a High Court hearing, Judge David Cooke ruled that Hook was not acting out of “spite” and cleared the way for him to take his complaints to a full trial.   When record label Factory collapsed in 1992, the original bands members (including Hook) formed a company named Vitalturn to hold all of New Order’s rights. Hook leftr the band in 2007, but the other members carried on without him, and continued to use the New Order name. Hook still owns 25% of Vitalturn but was not involved when the other three – who own 75% – set up a new company, New Order Ltd, in 2011. They granted the new company worldwide…

Deadmau5 looks to trap ‘unauthorised’ remixes
Artists , Copyright , Moral Rights , Trade Mark / November 2015
Canada

COPYRIGHT / TRADE MARK / MORAL RIGHTS Artist, recorded music     Deadmau5 has launched a legal action in Ontario, Canada, against his former business associates over allegations that her company has released remixes of his early work without the required prior written permissions. The Hollywood Reporter says that  a decade ago DeadMau5 (Joel Zimmerman) had worked with Canadian label Play Records at the beginning of his career. Initially he created remixes for the company, and later signed publishing and management agreements with the firm and its co-founder Melleny Brown (also known as Melleny Melody or Melleefresh). After relocating to London in 2007, Zimmerman switched his management contract, and negotiated the ending of his contracts with Brown. That deal saw Zimmerman pay a sum of money to Play Records, and he also assigned ownership of some of his early songs and recordings to the company. However, that deal seemingly provided that any future remixes of those tracks could not be released without his “prior written consent”. Zimmerman now claims that Play has released new remixes of his early work without his OK, and has plans for more releases, breaching his contact rights, as well as infringing his trademarks and moral…

Hendrix feud ends
Artists , Trade Mark / September 2015
USA

TRADE MARK Artistes   The family feud over the estate of guitar legend Jimi Hendrix has been settled – 45 years after it began. Hendrix’s adopted sister Janie Hendrix, and his brother Leon Hendrix, have reportedly reached an out of court agreement and according to The Seattle Times, the settlement includes past and futrure use of Hendrix’s name and image in merchandise such as posters and T-shirts. Experience Hendrix LLC owns the rights to the estate and is controlled by Janie Hendrix. Her company accused HendrixLicensing.com, operated by Leon Hendrix, of infringing their trademarks and other rights. http://news.sky.com/story/1536228/hendrix-estate-feud-settled-after-45-years

Ukunono, The Battle of the Ukulele Orchestras Plays its Last Tune
Artists , Trade Mark / August 2015
UK

TRADE MARK Artistes   From the IP Kat and by this is written Jani Inhalainen   I thoroughly  enjoyed  Jeremy’s wonderful lounge read on the Sofaworks case. The discussion is however far from over, since here comes another case, dealing with something far smaller than sofas: ukuleles .  The Ukulele Orchestra of Great Britain v Clausen & Another (t/a the United Kingdom Ukulele Orchestra) [2015] EWHC 1772 , decided just a mere two days ago, concerned a UK-based ukulele  orchestra, The Ukulele Orchestra of Great Britain (UOGB), who have, since the mid 1980s, garnered some fame due to their unconventional and humorous takes on rock songs through the musical offerings of the ukulele and unusual garb in doing so. They attained  this fame especially within the UK and Germany through their eccentric performances.   And as with any classic music related story, a rival must emerge. Yellow Promotions, a partnership comprising of Erwin Clausen and Dieter Tings, operated another ukulele  outfit called the The United Kingdom Ukulele Orchestra (UKUO), which was created by Mr. Tings and Peter Moss, a professional musician and part-time ukulele  enthusiast. UKUO comprised of British musicians, but was based in Germany. UOGB owns the Community trade mark (CTM) “THE UKULELE ORCHESTRA OF GREAT BRITAIN” (No. 009477341), having registered it for a specific set of services under class 41,…

Mouse wars: Deadmau5 and Disney settle trademark dispute
Trade Mark / July 2015
Canada
USA

TRADE MARK All areas   Canadian DJ Joel Zimmerman, aka Deadmau5, and Disney have “amicably resolved their dispute” over the producer’s attempt to trademark his mouse head logo in the U.S. Disney lodged its opposition to Zimmerman’s trademark application with concerns over the similarity to its own ‘Micky Mouse’ logo saying it was “nearly identical in appearance, connotation and overall commercial impression to Disney’s Mouse Ears” and would confuse people. The producer and his legal team pointed out that he had been using the logo, based on his on-stage headgear, for almost a decade without issue, had registered Trade Marks in over 30 other countries,  and subsequently launched lawsuit against Disney, after finding Disney had put a clip from one of its TV shows featuring his music on YouTube (the music had been licensed for TV broadcast but not for subsequent online use.  Negotiations have now resulted in an amicable settlement. Exact details have not been revealed yet, but Disney will apparently remove its opposition of the application. http://www.bbc.co.uk/newsbeat/article/33235330/deadmau5-settles-trademark-dispute-with-disney-over-mouse-head-logo

US Court upholds Lanham Act violation of Bob Marley’s image
Artists , Competition , Trade Mark / May 2015
USA

COMPETITION / TRADE MARK Artistes     The U.S. Court of Appeals for the Ninth Circuit has addressed the issue the use of whether the use of a deceased celebrity’s likeness or persona in connection with a product constitutes a false endorsement that is actionable under the Lanham Act, and has upheld a District Court’s finding of false endorsement and economic interference against defendants who had been selling T-shirts featuring an image of the late reggae icon, Bob Marley. Fifty-Six Hope Road Music v. A.V.E.L.A., Inc., Case Nos. 12-17502, 12-17519, 12-17595, 13-15407 and 13-15473 (9th Cir., Feb. 20, 2015) (Smith, J.) (Christen, J., concurring-in-part and dissenting-in-part). It wasn’t disputed that in 2004, A.V.E.L.A. acquired the rights to some photographs of Marley from a photographer, Roberto Rabanne.  A.V.E.L.A. then licensed the images to defendants Jem Sportswear (Jem) and Central Mills (Freeze) and Jem and Freeze used the photographs on Marley T-shirts and other merchandise, which were sold at retail outlets. In 2008, Hope Road sued A.V.E.L.A., Jem and Freeze for trademark infringement and false endorsement under the Lanham Act, for common law trademark infringement, as well as for unauthorized commercial use of right to publicity and intentional interference with prospective economic advantage under state…

Perry yet to secure Left Shark Trade Mark
Artists , Trade Mark / May 2015
USA

TRADE MARK Artistes   Do you remember ‘Left Shark’, the slightly out of time dancer who was ‘dancing’ beside Katy Perry during her Super Bowl half time show back in February. After designer Fernando Sosa made a 3D printed figurine called Left Shark available online – Perry’s team quickly began investigating how she could take ownership of intellectual property in the name, the image and the concept of Left Shark. The US Trademark Office has now had its say. Examiner.David Collier wasn’t impressed with an application to register the image of Left Shark. According to The Hollywood Reporter, Collier wrote that the design “identifies only a particular character; it does not function as a service mark to identify and distinguish applicant’s services from those of others and to indicate the source of applicant’s services”. The Examiner also noted that there were inconsistencies between a photo of actual Left Shark and a drawing of Left Shark with the Examiner saying: “Specifically, the [photo] displays the mark as a stylised depiction of a forward leaning shark in nearly a front profile with a portion of a dorsal fin, two pectoral fins and two legs and feet substituted for the caudal fin on the…

Swift grabs domain names
Artists , Internet , Trade Mark / April 2015
USA

TRADE MARK Artists, internet   Taylor Swift has bought the web domain names TaylorSwift.porn and TaylorSwift.adult. The addresses were part of a public sale by the Internet Corporation for Assigned Names and Numbers (ICANN) of new domains. The non-profit group has expanded the number of generic top-level domains, or gTLDs, such as .com and .net in 2011. There were 22 four years ago but now there are nearly 550 with new ones released every month. ICANN is clearly aware of the negative repercussions of adding these domains and allowed trade mark owners and public figures to take advantage of the so-called “Sunrise Period” and register the domains before they become open to public purchase on June 1. The Trademark Clearinghouse,  “a global repository for trade mark data” will verify trade mark data from multiple global regions and maintain a database with the verified trade mark records.  This verified data can be used to support ‘Trademark Claims’ and ‘Sunrise Services’, both of which are required for the new gTLDs.  The Trademark Clearinghouses’ ‘Sunrise Services’ allow trade mark holders an advance opportunity to register domain names which correspond to their marks before domain names are generally available to the public. The Trademark Clearinghouse service…

Kraftwerk trade mark claim powers up
Artists , Trade Mark / April 2015
USA

TRADE MARK Artistes   Kraftwerk co-founder Ralf Hutter has launched a trademark infringement lawsuit against a German company called eZelleron who plan to manufacture a portable phone charger which they plan to call … Kraftwerk. Hutter, who owns trademarks to the Kraftwerk name in multiple territories in various classes, is claiming that eZelleron’s chosen name for its product suggests at least an endorsement on his part. However, the meaning of the band’s name is ‘Power Station’ in German which in the circumstances might prove a burden for the musician. The Hollywood Reporter says that Hutter is launching his legal actions in Delaware in the U.S. rather than Europe, demanding that US internet service providers and crowdfunding platforms be barred from displaying references to eZelleron’s “Kraftwerk” in order to avoid confusion amongst consumers. Hütter said that the sale and distribution of the portable phone charger would contribute to the dilution of the band’s trademarks, which are “widely recognised by the general consuming public” of the US and that  eZelleron’s portable charger infringes three US ‘Kraftwerk’ trademarks. eZelleron raised $1.5 million from a successful Kickstarter campaign,   http://www.worldipreview.com/news/kraftwerk-founder-says-phone-charger-infringes-band-s-trademark-8028

Peppa Pig cracker roasted by global media giant
Trade Mark / March 2015
UK

TRADE MARK Television, sound recordings   Joshua Lima – aged 10 – and his brother Noah (8), who perform as ‘Magician’s Nephew’, have reportedly received a legal letter from Peppa Pig’s owners Entertainment One saying their song Peppa Pig, which describes how the St Albans’s based boys and their band have fallen out of love with the global children’s brand, needed to be taken off iTunes. Why? Well, because the artwork they used infringes Trade Marks associated with Peppa Pig – and possibly copyrights too in artwork,. The song itself is not the issue (although undoubtedly very annoying for the owners of a brand which brings in £600 million a year). The songs itself looks pretty damn original and it begins with “My friends have lost their faith, they will scream it in your face, In the playground of our school, Peppa Pig is no longer cool!” and ends with “I know this must be hard, and I mean no disregard, Let’s go our separate ways, me and you were just a phase“. But the boys have been told to remove a recording from iTunes because they used a picture of the animated pig in their video for the song…

Appeals court upholds ruling on unofficial Bob Marley T-shirts
Trade Mark / March 2015
USA

TRADE MARK Merchandise   The Bob Marley estate has successfully persuaded an appeals court in the US to uphold a ruling in their favour over unofficial t-shirts that featured the late reggae star. The Marley Estate, and their merchandising company Fifty-Six Hope Road Music, first sued clothing makers AVELA over unofficial Bob Marley t-shirts it was selling in Walmart and Target back in 2008, winning the case three years later. AVELA was ordered to pay the Marley estate $750,000 in profits generated by the t-shirts, as well as $300,000 in damages and $1.5 million to cover legal costs. The clothing firm appealed. The case was based on the false endorsement elements of American trademark law. Although not as narrowly defined as passing off, those US laws are much narrower than publicity rights. According to The Hollywood Reporter, one of the appeal judges hearing the case noted that: “This case presents a question that is familiar in our circuit. When does the use of a celebrity’s likeness or persona in connection with a product constitute false endorsement that is actionable under the Lanham Act?” Consumer confusion need to be proven and lawyers for the Marley estate presented a survey in which…

Black Crowes split over band structure
Artists , Contract , Trade Mark / February 2015
USA

CONTRACT / TRADE MARK Artistes   It seems that the Black Crowes have split after frontman Chris Robinson attempted to restructure the band. His brother, the band’s guitarist Rich Robinson said in a statement last week: “It is with great disappointment and regret that after having the privilege of writing and performing the music of The Black Crowes over the last 24 years, I find myself in the position of saying that the band has broken up. I hold my time with the Black Crowes with the utmost respect and sincerest appreciation. It is a huge swath of my life’s body of work. I couldn’t be more proud of what we accomplished and deeply moved by the relationships people created and maintained with my music. That alone is the greatest honour of being a musician,” Robinson continued: “I love my brother [Robinson] and respect his talent but his present demand that I must give up my equal share of the band and that our drummer for 28 years and original partner, Steve Gorman, relinquish 100% of his share, reducing him to a salaried employee, is not something I could agree to”.  The band slit in 2002 when Gorman quit. They…

Van Halen dispute settled
Artists , Trade Mark / February 2015
USA

TRADE MARK Artistes   ELVH Inc, the company that represents the intellectual property interests of rock band Van Halen has reached a settlement with Kelly Van Halen, the ex-wife of the band’s co-founder and drummer, following a legal dispute over her continued use of her married name in a design business after  Kelly Van Halen attempted to register trademarks for her business, which has continued to operate under her married name despite her divorcing Alex Van Halen in the mid-1990s. ELVH Inc claimed that Kelly’s proposed trademarks would violate and dilute the band’s own Van Halen marks and should therefore be blocked. It also argued that Alex’s ex’s continued use of the Van Halen name constituted passing off and unfair competition. ELVH have now said that the matter has been “amicably resolved”. Kelly Van Halen’s attorney told The Hollywood Reporter that his client had agreed to not provide any music-related products or services, and to only use her name as part of a wider brand identity, such as ‘Designer Originals by Kelly Van Halen’. http://www.hollywoodreporter.com/thr-esq/van-halen-settles-lawsuit-drummers-762281

ID&T fires back at Disney in the ‘Tomorrow’ trademark dispute
Live Events , Trade Mark / February 2015
EU
USA

TRADE MARK Live events sector, film & TV   When EDM festival franchise Tomorrowland launched in the US in 2013. Disney pointed out that the film compay owned the trademark in the name and wouldn’t let the EDM festival use it. Its promoters, SFX-owned ID&T, then opted for TomorrowWorld. Now the tables have turned: Disney is shopping a movie called ‘Tomorrowland: A World Beyond’ around the world but now it appears that ID&T just owns the Tomorrowland trademark in Belgium, The Netherlands and Luxembourg. So the dance music event makers are returning the favour and causing the Disney studios all kinds of issues regarding using that name for the film’s release in those markets.

T for two?
Live Events , Trade Mark / February 2015
UK

TRADE MARK Live Events sector   Drinks company Tennents is locked in a legal battle with a small music promotions company over the use of the letter T in the title of the  new event, due to be staged at Strathclyde Park this year. And The brewers, who are “founding partners” of T in the Park, say the logo for tribute band festival Tfest infringes their trademarks. In response, Tfest promoters Bookaband Ltd have said it would cost them £50,000 to alter their logo and website. Festival director John Ure said: “We don’t understand why a huge company like Tennent’s can feel we threaten them. Tennent’s don’t own the letter T. “We contacted them months ago to show them our logo and didn’t get any objection at the time. But now our website is live, we’re hit with lawyers’ letters.” Tennent’s have alleged that the Tfest mark “bear[s] a close similarity” to T in the Park and will “inevitably” mislead fans into thinking the two festivals are linked saying “To call another event Tfest is confusing at best and misleading at worst.” adding “The T in the Park name, frequently shortened to T, took a great deal of time and…

Taylor Swift looks for Trade Marks in her lyrics
Artists , Music Publishing , Trade Mark / February 2015
USA

TRADE MARK Artistes, music publishing   Taylor Swift has applied to Trade Mark some of her most individual lyrics, notably “this sick beat” from Shake it Off as well as “nice to meet you, where you been?” and “party like it’s 1989”. Alexander Ross, a partner at law firm Wiggin, explained to the Guardian newspaper “What she is trying to do is to protect individual phrases within her lyrics where those lyrics have become catchphrases. “Once you have a trademarked phrase you have the right to stop someone else using it on things like merchandising” although the article also points to Apple’s Beats by Dre mark which may prove a partially obstacle to Swift’s ambitions.   http://www.theguardian.com/music/musicblog/2015/jan/29/taylor-swift-this-sick-beat-worlds-first-trademarked-lyric

Universal flexes Motown muscle
Live Events , Trade Mark / December 2014
USA

TRADE MARK Live events sector   At least two Motown tribute acts who perform songs that originated with the legendary label and which use the record company’s name as part of their stage name have been threatened with legal action by Mowtown’s owner, Universal Music, According to The Stage, The Magic Of Motown and Motown Magic have both been told that they must change their names, hand over web domains and meet legal costs, or face legal action. Universal lsay that the acts are infringing trademarks by using the ‘Motown’ word while operating “in the same field as our client and hence there is a commercial conflict”. It is thought that the action has been prompted by the launch of ‘Motown The Musical’ – created by Motown founder Berry Gordy Jr and featuring songs made famous by his now Universal-owned label (and with official show merchandising sold by Universal’s Bravado) – which will arrive in London next year. Ashley Blake of Motown Magic told The Stage: “They have never complained before, but then a musical about Motown is announced and suddenly they are clamping down”. He also claimed that, under the major’s terms, once they’d changed their name the band…

NFL bans Beats on the box
Trade Mark / November 2014
USA

TRADE MARK Branding   In the USA the NFL has announced that it is banning football players from wearing Beats headphones on camera during broadcasts of its American football games. The announcement follows a new sponsorship deal with rival hi-fi equipment manufacturer Bose. A NFL spokesperson told Re/code: “The NFL has longstanding policies that prohibit branded exposure on-field or during interviews unless authorised by the league. These policies date back to the early 1990s and continue today. They are the NFL’s policies – not one of the league’s sponsors, Bose in this case. Bose is not involved in the enforcement of our policies. This is true for others on-field” although the NFL confirmed that under terms of its agreement with the league, Bose received a broad set of rights that entitle it to prevent players (or coaches) from wearing any other manufacturer’s headphones during televised interviews. The first fine has been handed out:  49ers quarterback Colin Kaepernick, who is paid to endeorse Beats by Dre, wore his Beats headphones during a postgame press conference, and the league punished him with a $10,000 fine.   http://recode.net/2014/10/04/nfl-bans-beats-headphones-on-camera/ http://www.kgw.com/story/sports/nfl/2014/10/13/nfl-fines-beats-headphones/17191587/

Is This Henley a Shirt or a Musician?
Artists , Trade Mark / November 2014
UK
USA

TRADE MARK Artistes, merchandise By Marie-Andree Weiss writing on the IPKat   Don Henley, a member of the Eagles music band and also a solo musician, is suing clothing retailer Duluth Holdings in the CentralDistrict Court of California, alleging that an advertisement created by Defendant is an infringement of his trade marks and right of publicity and is also false advertising. The advertisement at stake shows a drawing of two tee-shirts known as “henley,” side-to-side, with the phrase “Don A Henley AND Take it Easy” printed on the left of the ad. A henley tee-shirt is a tee-shirt which does not have a collar but has a front placket closing with several buttons, generally three. I read on the Web that the term “henley” originates from the town of Henley-on-Thames, as rowers practicing there in the 19th century sported such shirts, but I cannot assert that this really is the origin of the term. “Take It Easy” is a colloquial expression, often used in the U.S. as a way to say good bye and is also the title of the Eagles’ first hit single. It is featured on the Eagles album Their Greatest Hits 1971-1975, which is, according to the Complaint, the bestselling album of all time in…

Deadmau5 v Disney – the Mousequitears Dual On
Artists , Copyright , Internet , Trade Mark / October 2014
USA

TRADE MARK / COPYRIGHT Artistes, broadcasting, internet   Disney is going after Deadmau5 (Joel Zimmerman) and his logo, opposing a trademark application he submitted in the US last year. The company made a move to block Zimmerman from trademarking his familiar Mau5 head in the U.S., claiming the image is too similar to its iconic mascot Mickey Mouse, who first appeared in the 1928 animated short Steamboat Willie. In a statement earlier this week, the producer’s lawyer Dina LaPolt pointed out that Deadmau5 has been using his logo, based on his on-stage headgear, for almost a decade and that he’s already managed to secure the trademark in 30 other countries, and she added that her client “will not be bullied by Disney and is prepared to fight to protect his rights to his property”. Zimmerman himself said ““Disney thinks you might confuse an established electronic musician/performer with a cartoon mouse. That’s how stupid they think you are” and Deadmau5 tweeted “Lawyer up, Mickey,” to his three million followers. But in a twist to this tale, Zimmerman found another way to fight back: he and his lawyer discovered that between 2009 and 2012, the Disney Channel ran a series called ‘Have…

Lieberberg prevails in Rock am Ring name dispute
Live Events , Trade Mark / October 2014
Germany

TRADE MARK Live events sector   Markek Lieberberg’s MLK has prevailed in his battle with Capricorn Automotive, new owners of the Nürburgring, home of the Rock am Ring festival site since 1985,  overturning the decision of the Koblenz District Court (Landgericht Koblenz) which had said that neither MLK or Capricorn had the right to use the name ‘Rock Am Ring’ without the permission of the other. The appellate court agreed with MLK that MLK and MLK alone owned the name. Ahead of the court hearings, Lieberberg told Der Spiegel that “Rock am Ring is a vision that I had 30 years ago. It’s an idea that I realized – at the Nürburgring and without help from third parties. We invented a brand. We’ve achieved cult status for it. And the brand will remain. It’s not at all tied to the Nürburgring itself.”  Having seen two  new affidavits of the ex – managing director of the Nürburgring GmbH , Friedhelm Demandt , and the concert organizer Matthias Hoffmann  (supported by a statement from music promoter Marcel Avram)  the court (Oberlandesgericht Koblenz ) agreed. The Festival has now relocated to Monchengladbach. Capricorn has left a further appeal a possibility,  with a spokesperson…

Keep the Faith, kill the trade mark application: you can’t monopolise Northern Soul 
Live Events , Trade Mark / October 2014
UK

TRADE MARK Live events sector, fashion   From the IPKat   “Northern Soul” is not everyone’s favourite type of music. Indeed, many ardent music fans may not have experienced its delight at all. There is however a dedicated following for it, consisting of people who express their loyalty by purchasing memorabilia and buying handbags, or so it seems. Here’s a guest post from Katfriend Shalini Bengani to explain all about it: Retro Bag Shop’s application; opposition by Brian Poulton (Case 0/358/14) was decided last month by Hearing Officer Oliver Morris in the UK Intellectual Property Office. It sheds some fascinating light on Northern Soul music, about which more can be learnt through this BBC2 Culture show documentary link as well as the Northern Soul fans’ Facebook page. This case plays out between the Retro Bag Shop and Mr Brian Poulton (part owner of Indie Apparel Limited which trades on eBay as Atom Retro) regarding an application to register a figurative trade mark with the text NORTHERN SOUL KEEP THE FAITH (depicted here), filed on 27 December 2012 for Class 18 goods: imitations of leather, travelling bags, handbags, rucksacks, purses, wallets; flight and shoulder bags. Poulton’s opposition is based on absolute grounds of refusal under…

Iggy Azalea tries trade mark tactic to head of porn tape
Artists , Trade Mark / October 2014
USA

TRADE MARK Artistes   Singer Iggy Azalea’s lawyers have fired off a legal warning to Vivid Entertainment over use of the singer’s name in connection with sex tape which allegedly features Azalea and rapper Hefe Wine – who says the tape does feature the couple. The letter says Vivid are unable to use the name “Iggy” in marketing. According to TMZ, the legal letter warns Vivid that the name “Iggy” is protected by US. Iggy’s lawyers claim that the tape isn’t of her, but that if a tape does exist it was filmed without her knowledge or consent and that she may have been under eighteen but Wine says Iggy was both of legal age and aware of the tape. The pair met when Azalea was 17. Sources close to Iggy say that she feels “betrayed” by Hefe. Azalea has launched separate legal proceedings against the former boyfriend, who, it seems, also released an EP of her early recordings this summer.  According to The Hollywood Reporter, the pair worked on music together, as well as beginning a relationship. At some point during this time, her lawsuit alleges, “Williams downloaded the entire contents of Azalea’s personal computer”. Last month, early Azalea tracks…

Ukulele Orchestra of Great Britain loses trade mark battle
Artists , Trade Mark / October 2014
UK

TRADE MARK Artists   The Ukulele Orchestra of Great Britain (UOGB) has lost round one of a trademark infringement battle against a rival band over the UOGB name, having argued that its reputation could be tarnished by the German-based United Kingdom Ukulele Orchestra (UKUO). The UOGB had sought an injunction against the rival group ahead of the UKUO’s upcoming UK tour but Judge Richard Hacon in the Intellectual Property Enterprise Court ruled in favour of the UKUO, saying it was not in competition and that, as the group had been performing in Germany for some years, the UOGB should have acted sooner. Issuing an injunction would have forced the United Kingdom Ukulele Orchestra to cancel an already booked tour, costing them tens of thousands of pounds. Both orchestras perform their take on contemporary pop songs. The UOGB, whose members dress like a traditional orchestra and sing and tell jokes on stage, have been performing for more than 25 years, released records and have appeared on television. Despite the refusal to grant the injunction, a full trial should follow late 2014 or early 2015. The UOGB (a partnership consisting of George Hinchliffe and Marian Lux) have a Community Trade Mark registered…

s.u.n. trade mark row sets festival against festival in Hungary
Live Events , Trade Mark / September 2014
Hungary

TRADE MARK Live events sector   News has reached Music Law Updates of what seems to be a name spat between the s.u.n psy-trance festival in Hungary, and an entity which appears to have captured their name – after lawyers in Hungary and Cyprus secured a trade mark for the mark s.u.n festival last year. The Hungarian s.u.n festival points out that the registration was filed just a week after their first edition in August 2013 and is in the name of Stapia Limited of Arch. Makariou III, 95 Charitini Court, 1st floor, Office 102, Nicosia, Cyprus, 1071, and for classes 35, 38 and 41. However, they are suspicious that another Hungarian psy-trance festival may be behind the move. The registration (registered on the 13th December 2013) had an important consequence – lawyers acting for the trade mark owner forced the shutdown of the Hungarian s.u.n. festival’s Facebook page with the organisers saying “and the admins were also personally banned from their fb activity. It happened without any prior notice, although the ‘likes’ were over 100.000(!). There was only a short message saying that a copyright violation issue had been going on with us, and they provided a name and…

Venue changes leads to Rock am Ring brand battle
Live Events , Trade Mark / August 2014
Germany

TRADE MARK Live events sector   One of the main impacts of the fall out between German promoters MLK and the new owners of Nurburgring circuit, Capricorn, is that neither has the right to use the name ‘Rock Am Ring’ without the permission of the other. As this year’s Rock am Ring dawned, news broke that new owners Capricorn, who brought the venue from administrators, had broken off talks with MLK for future events. MLK boss Marek Lieberberg had said that Capricorn were asking for a higher profit participation that he felt justified.  Subsequently entered into a new agreement with DEAG to promote a festival show at the legendary racing circuit to be called Grune Holle (Green Hell) Rockfestival am Nürburgring.  After Leiberberg made a number of comments regarding Rock am Ring and the fact he had invented the name and it was not bound to the Nurburgring, the Administrators had filed legal action seeking injunctive relief against any use of the name saying they co-owned it. The District Court in Koblenz agreed that the name was under ‘common ownership’ and that neither party could proceed with an event named Rock am Ring without the agreement of the other. It…