Peter Sloane tells us how to fight against trademark renewal scams. Taylor Swift has protected her lyrics as trademarks to be able to fight T-Shirts with her lyrics. Is it possible to copyright cooking recipies? Find out in this episode! Also, we invite all listeners to our IP Fridays Meetup during the INTA Meeting in San Diego. Find Details at http://www.ipfridays.com/inta
Rolf Claessen and Kenneth Suzan
Episode 23 – March 6, 2015
RC = Rolf Claessen
KS = Kenneth Suzan
PS = Peter Sloane
PS: I am Peter Sloane, a partner at Leason Ellis in White Plains, New York and you’re listening to IP Fridays.
KS: Hello and welcome to this episode of IP Fridays. Our names are Ken Suzan and Rolf Claessen and this is THE podcast dedicated to Intellectual Property. It does not matter where you are from, in-house or private practice, novice or expert, we will help you stay up-to-date with current topics in the fields of trademarks, patents, design and copyright, discover useful tools and much more.
RC: Welcome to the 23rd episode of IP Fridays. We have now hit over 2,000 monthly downloads of our MP3 files (audio files), and a total of more than 13,000 downloads and we are very proud of that. Another thing we want to mention is that we will host a small gathering for our listeners during the INTA meeting in San Diego. If you want to learn about this gathering and want to attend the gathering, please visit www.ipfridays.com/inta. In this episode we will tell you about Taylor Swift trademarking her lyrics. We will also tell you about how not to copyright recipes, and our very special guest today is Peter Sloane of the firm Leason Ellis and he will tell us about a recent case he won against one of these scam renewal notices companies. You might all know these companies that are sending out these scam letters asking you to pay money to be entered into a database. But first, Ken has a story about Taylor Swift and trademarking lyrics.
KS: Popular songwriter Taylor Swift has made a smooth and successful transition from being a country artist, to a pop artist. Her new album, “1989” has broken sales records within the first week, but Taylor Swift has also decided not to have her album available on the popular music sharing service, Spotify. Swift’s music is hot and has attracted the attention of many people seeking to make profits off of her stardom.
Multiple websites sell handmade and vintage products that often have music lyrics written on them. Popular lyrics from Swift’s songs have been featured on many products sold through such Websites. Her lyrics are printed onto merchandise such t-shirts, mugs, cell phone cases, guitars, and much more, without Swift’s approval or authorization. How to solve such a situation? File trademarks.
From now on, if you want to use Taylor’s lyrics on your products however, you’ll need to be one of her licensees. Lyrics such as “This Sick Beat,” and “Nice to Meet You. Where You Been?” are the subject of pending trademark applications at the United States Patent and Trademark Office. Taylor Swift may indeed have the world’s first trademarked lyrics. The lyrics that Swift writes have become catchphrases, and many others have seen the dollar potentials of Ms. Swift’s artistic talent. A quick search of the USPTO data for applications filed by Ms. Swift revealed dozens upon dozens of pending trademark applications covering goods such as toys, bean bags, and Christmas stockings to napkin rings, candle holders, and coasters.
Taylor Swift joins other celebrities that have been in IP tug of wars with people trying to capitalize off of their fame. Such stars include Rihanna, who learned that a clothing company was selling a shirt with her face printed on it, without her permission. Also, pop legend Beyoncé has had products sold with her lyrics on them, but she did not pursue filing trademarks on the lyrics. Other celebrities may begin to follow in the steps on Taylor Swift and are likely to be watching the possible success of her intellectual property endeavors.
RC: Thank you Ken. So, if you are an attorney or lawyer you might get calls from your clients that they say they got these scam renewal notices or letters from companies that pretend they somehow are registering your trademark, but in fact they are just asking for money to enter information into their own databases. You know these scam letters. So, Peter Sloane of Leason Ellis took a bold step, in my opinion, and filed a lawsuit against one of these companies as a law firm. So, here is what he has to say.
ROLF CLAESSEN’S INTERVIEW WITH PETER SLOANE:
RC: I am very excited to be joined today by Peter Sloane. He is known to me as a fellow trademark attorney and blogger. He recently had a really interesting case for you so I invited him for an interview. He is listed in Super Lawyers, in the World Trademark Review 1000, and the Who’s Who Legal so he is a really cool trademark professional. So, thank you to be on the show Peter.
PS: It is a pleasure Rolf. Thank you for having me.
RC: Can you tell our listeners a little more about you?
PS: Sure. I am a partner at Leason Ellis. We are an intellectual property law firm. We have 23 attorneys and about 50 people in total. Our office is located in White Plains, New York, in Westchester County, which is just north of Manhattan. I am the head of the trademark and copyright practice at the firm. My own personal practice involves all aspects of trademark and copyright law, including prosecution and litigation in the U.S. and internationally.
RC: You told me that you just won a pretty important case for IP lawyers, in general. Can you tell us about the background of this case?
PS: Sure. We obtained a Consent Judgment against a business named Patent and Trademark Agency LLC (“PTA”). They were a company handling trademark renewals in the U.S. only they weren’t lawyers. Patent and Trademark Agency deceived consumers by sending out renewal notices disguised as invoices and customers often paid these invoices without thinking twice. In fact, the very name Patent and Trademark Agency is itself deceptive. People thought that they were dealing with the Patent and Trademark Office or some other governmental agency. To make matters worse, PTA made all kinds of mistakes in the process of handling renewals and trademark registrations. For example, if you look closely at their terms and conditions in small letters, it stated that they renewed trademark registrations as is without change and as we all know in the U.S. you can’t claim use of a mark for goods which are not currently sold or distributed in the U.S. and that would have rendered registrations vulnerable to attack based on fraud. So some of our clients were confused so we sued PTA for false advertising here and in Federal Court in White Plains.
RC: That’s really interesting as a strategy because we have the exact same problem in Germany and in Europe as well and I guess these kinds of companies are all over the world. So did PTA put up a fight with you?
PS: Indeed they did. They moved to dismiss our complaint on the ground that we lacked standing. We filed an opposition, it was fully briefed, and the Judge ended up agreeing with our position. He found that we had sufficiently alleged damage in order to support out complaint of false advertising. So, interestingly, our position was helped by the Lexmark case which was decided by the Supreme Court while the Motion was pending. In that case, the Court took a relatively liberal view of the standing requirements in false advertising cases and I think that case is going to be helpful to others going on in the future. So, after the Motion was denied, PTA essentially gave up the fight and took a Consent Judgment and under that Judgment, PTA is barred from providing IP-related services again.
RC: So that is really good news in this particular case. So why would this case be particularly important?
PS: Well, because PTA put up a defense on the ground of standing and the standing was found by the Court, it can really be used by other law firms who are in a similar predicament to bring a case like ours against other trademark or patent scammers. We know that every IP lawyer receives these notices and hears about them from their clients so there is no reason why others can’t do what we did and take action against scammers.
RC: What is your strategy that you would propose?
PS: Well, this wasn’t the first time that we had done it. We actually put another trademark scamming company out of business. Two years ago we filed suit against a company named U.S.A. Trademark Enterprises and they put out a so-called catalog of trademark registrations because there are all kinds of varieties of trademark scams and this catalog was interesting because for hundreds of dollars trademark owners could have their registration listed into what amounted to a worthless book. So after we filed a Complaint there, U.S.A. Trademark Enterprises agreed to take a Consent Judgment which put them out of business too. We can certainly file a third case, but ultimately we are hoping that our actions draw the attention of State Attorney Generals who could pursue these trademark scammers or patent scammers for that matter for criminal fraud. The problem is that Attorney Generals around the U.S. have a lot on their plates and only very limited budgets. We would also like the Patent and Trademark Office in the U.S. to prevent these scammer from the unauthorized practice of law before the Office. The scammers are mining publicly available data from the PTO, sending unsolicited notices to trademark owners, and often representing them before the Office even though they are not licensed attorneys.
RC: Yes, this is really important to see. So do you consider yourself the “White Knight” of the IP attorneys and the applicants?
PS: Maybe. I received one e-mail from someone calling us “IP Heroes” and that was very nice to receive. But ultimately we would be happy if these scammers went away. They really are a terrible blot on the industry. They are taking time and money away from legitimate law firms like ours and they are also undermining confidence in the trademark system and we know that trademarks are ultimately all about trust.
RC: So do you have plans for future actions? I mean, there are plenty of companies like these left.
PS: Oh sure. If you look at the PTO Website in the U.S. or the WIPO website, they list the various companies that have come to their attention, so we would certainly consider taking action against others but what would really be beneficial is to see international cooperation since many of the scams originate in Eastern Europe, and the victims are located in countries all over the world. At one point, I looked into taking action against a company in the Czech Republic, I believe a complaint was filed with the police. I don’t think it went too far but I would be interested in looking into that again. A big development is that OHIM has recently launched its anti-fraud network and you can find information about it when searching the Internet and I would enjoy an opportunity to help OHIM if possible. I would also encourage the International Trademark Association, known as INTA, to take a more active role. For example, I understand that Marques in Europe has its own anti-fraud taskforce so the INTA may want to consider doing something like that as well.
RC: So Peter you mentioned that most of these companies have their roots in Eastern Europe and you encourage other law firms to also take action. What would be your wish list? What would you really love other law firms to do and do you have any particular law firms in mind?
PS: Good question, Rolf. I don’t have any particular law firms in mind, although I certainly work with many in trademark issues across Europe. But I would love to see our action serve as a template in other countries. I understand the issue is that the laws of unfair competition are different in Europe than they are in the U.S. Perhaps we have a more liberal view of standing here, but if that issue can be looked into and if perhaps it can be discussed on a community-wide basis across organizations like Marques and INTA, maybe we can reach a consensus as to whether or not there really is something that private actors like law firms can do.
RC: Right. Do you think that you could furnish a template for good arguments against these kinds of companies so it would be easier for other law firms to start their actions?
PS: Absolutely. Our Complaints in the U.S. in both the trademark scam cases we brought are publicly available documents. If people want to reach out to me, I would be happy to supply them, as well as the motion papers in connection with the Motion to Dismiss filed by Patent and Trademark Agency.
RC: In Germany, we also have plenty of these companies and our lobby groups let’s say they don’t really take a lot of action so some law firms are quite frustrated with the situation so maybe that could be a new approach. I did not hear so far that law firms actually take action and sue these kinds of companies so that is a really good sign from across the ocean; a nice signal that you are sending to Europe to better start the action yourself.
PS: My theory is that you don’t know unless you try. So one of the things that is really fantastic about being at a relatively young IP boutique like mine is that we can just do it. We didn’t have the institutional bureaucracy or inertia which might inhibit other firms. But, like I said, as long as there is no risk of sanctioning and as long as there is a good faith basis for bringing the action, I would encourage firms in other countries to try it as well. Importantly, it’s not just that the scams themselves are illegal, it’s probably that there is a lot of other illegal activity in connection with them. We don’t know for sure, but we wouldn’t be surprised if the illegal proceeds are channeled into other criminal enterprises. So, just like with counterfeiting in the U.S., how it wasn’t so much the copying of merchandise that caught the attention of authorities in the U.S., it was the fact that there were some real criminal enterprises, including possibly terrorist enterprises, behind the counterfeiting.
RC: Yes, that is good that you mentioned this. Just this morning I went to a police station where they showed me some counterfeit goods and I asked them like who that person was where they found this and yes it was a well-known drug dealer. So very obviously these kinds of things like counterfeit goods and drugs and weapons are always like very much connected.
PS: They are all part and parcel of the same thing and this is a relatively easy way for these criminal enterprises to make money and support other illegal activities. I mean, it doesn’t take much to run a computer program and generate notices to send to people around the world who send in checks in response. And if the authorities are not going to take it seriously, it’s only going to encourage one popping up after another.
RC: Yes, exactly. That is what we are seeing happening here.
PS: I should mention that World Trademark Review on their blog had a posting not too long ago, I think over the summer, about a survey that the Government of Australia had taken in connection with scams of all different types and trademark scamming, although not particularly mentioned, was included in one of the variety of bilking schemes and it really put a dollar number to the damage and the losses to consumers behind these kinds of illegal activities.
RC: Will you attend the next INTA meeting?
PS: Oh sure. I am all ready for San Diego. In fact I’d love this opportunity to plug the Law Firm Day on Saturday of the INTA Annual Meeting. I am on the Law Firm Committee of the INTA and we have a whole day of programming directed to law firms as opposed to inside counsel so it should be fantastic.
RC: Yes, and together with your partner, Marty Schwimmer, you are actually also running a blog, right?
PS: Well to be fair it is actually Marty’s blog. Even before he came to our firm Marty was well known as the author of The Trademark Blog. But Marty also worked together on both of these trademark scam cases with me.
RC: Actually, you are hosting “Meet the Bloggers” at each of the INTA meetings, right? I have met you a couple of times there.
PS: Yes, it’s funny, since Marty joined our firm I have sort of taken the laboring oar in helping to organize the Meet the Bloggers Event. Last year in Hong Kong being an exception, Marks & Clerk put that event on. But I fully expect to be involved in helping out with San Diego.
RC: Yes, I am looking forward to meeting you guys there at your event.
So, if people would like to get in touch with you, what would be the best way?
PS: I would love to hear from people by e-mail. My e-mail address is Sloane@leasonellis.com. People can also check out my bio on our Website, www.leasonellis.com and I am pretty sure we are the only IP website with a monster on it and even though it’s not a scary looking monster, he is still a monster nonetheless and really that should serve as a warning enough to trademark scammers everywhere.
RC: Very good. Thank you for being on the show.
PS: My pleasure. Thank you for having me Rolf.
RC: If you want to learn more about Peter, go to www.ipfridays.com/petersloane. So now, Ken tells you about a person who tried to copyright cooking recipes, but failed miserably.
KS: Rolf, the fine art of cooking has arrived in an Ohio courtroom. An Ohio restaurateur claims that her recipes were copied and subsequently filed a lawsuit against a local rival. Rosemarie Carroll, the proprietor of Tomaydo-Tomahhdo claims that her rival was serving very similar dishes. After filing a lawsuit in Federal District Court — the Northern District of Ohio Court in Cleveland, she learned that you can’t copyright a recipe. The case is Tomahhdo LLC et al. v. Vozary et al., Case Number 1:14-cv-00469 filed in the Northern District of Ohio.
Ms. Carroll authored a recipe book upon which she obtained a copyright. She claims that business partner Larry Moore committed copyright infringement when he offered similar dishes in a catering business that he owns. After hearing the case, the Court ruled , “Plaintiffs contend that defendants are wrongfully creating menu items by using plaintiffs’ recipes…However, the recipes themselves are not copyrightable and thus, any use of the recipes is not infringement.”
Furthermore, the Court ruled, “To the extent plaintiffs have a valid copyright in the recipe book, the copyright protection extends to the layout and creative expression contained in the book. It does not extend to the recipes themselves.” On this ground, the Judge dismissed the case.
This copyright recipe case also included several state law claims including misappropriation of trade secrets and unfair competition. The plaintiff was not pleased with this result and has since filed a Notice of Appeal with the Sixth Circuit.
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You have been listening to an episode of IP Fridays. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms. None of the content should be considered legal advice. The IP Fridays podcast should not be construed as legal advice or legal opinion on any specific facts or circumstances. The contents of this podcast are intended for general informational purposes only and you are urged to consult your own lawyer on any specific legal questions. As always, consult a lawyer or patent or trademark attorney.
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