This season, celebrities Taylor Swift, Simone Biles, and others have worn unique designs based on NFL jerseys and related team-branded gear. These upcycled garments were created by Kristin Juszczyk, the wife of San Francisco 49ers fullback Kyle Juzczyk and an up-and-coming designer in her own right. Juszcyk identified a market need – team-identifiable garments that are more stylish to wear to games than the traditional jersey. It’s no secret that fans are faced with a limited apparel offering from the NFL – often ill-fitting jerseys, sweatshirts, and shirts. Juszczyk’s creations are more flattering to the fan, transforming jerseys into vests, jackets, pants, and other fashion-forward designs like the designs shown here. In this way, fans can support their favorite players and look stylish while doing so. Throughout the season, Juszczyk created NFL upcycled garments, often for friends and family members of other NFL players.

The issue with upcycling is that it is nearly always done without the consent of the owner (or exclusive licensee) of the relevant trademarks. This was the case with the Juszczyk items. This is a potential problem, because such unauthorized trademark use can lead to customer confusion over the source of the goods, particularly where upcyclers “level-up” a shoe or a jacket and reinsert the logo from the original item as part of the process – thus creating a new, sometimes high-quality product bearing an identifiable brand. Upcyclers may also expose themselves to claims of trademark dilution or even counterfeiting, and damages in such cases can be substantial.

This issue of confusion played out in front of a national audience last month. During a freezing playoff game at Arrowhead Stadium, Taylor Swift and Brittney Mahomes wore Kansas City Chiefs jersey puffer jackets designed by Juszcyzk. During the broadcast, NBC announcers speculated that Swift commissioned the custom jacket from Nike. Currently, the NFL and Nike have a partnership where Nike provides all teams with uniforms bearing the Nike brand for games. Swift’s puffer jacket (as with all things Taylor Swift) received national attention on social media and news outlets. Kyle Juszczyk was quick to correct this confusion concerning Nike on social media during the game. Kristin Juszcyzk also took to social media to say that she was not currently selling her designs because she lacked a license.

This past week, Juszczyk received a license from the NFL for the use of team and league logos in her designs, thus side stepping the issue for now. We are not aware of the terms of the license. While that’s all well and good for a high-profile upcycler like Juszczyk with high-profile leverage, it’s important to note that this is not the typical outcome in situations where upcycling crosses into trademark infringement. However, brand owners might look at this situation and consider to what extent less “traditional” licensing arrangements like this – involving upcycling and bespoke garments – might strengthen brands and protect against customer confusion while leveraging the creativity of these upcyclers.

For instance, the NFL (and the other sports leagues) could use these content creators to reach larger and more diverse audiences instead of accepting the limited offerings of the handful of sneaker and apparel companies that leagues currently license. After Taylor Swift wore Juszczyk’s design, the number of Juszczyk’s Instagram followers increased significantly. An Instagram reel showing the evolution of these puffers has over 35 million plays and over 15,000 comments. The NFL even commented on the reel writing “killed it.” The attention and interest in Juszczyk’s designs emphasizes content creators’ power to enhance the NFL brand. Other brand owners should take note.

The post Upcycling at the Super Bowl first appeared on Trademark and Copyright Law.

In addition to the Oscar contenders, the majority of 2023’s highest grossing films, from Across the Spider-Verse to The Super Mario Bros Movie, were based on preexisting IP and adapted for the big screen.

How has this come to be? Likely good business sense. One aspect of copyright law that makes adaptations attractive is derivative works. A derivative work is a work based on one or more existing copyrighted works. Only the original copyright owner has the right to authorize someone else to create an adaptation of his or her work, but licensing arrangements can be a win-win deal for copyright owners and studios alike—for owners, by receiving valuable royalties from such deals, and for studios, by generating buzz and increased profits from properties recognized and beloved by the public.

A derivative work is itself subject to copyright where it incorporates the existing work and adds new, copyrightable material to it, which is almost always the case. In practice, this means that film studios can own the copyrights to their films, while also taking substantial inspiration from other copyrighted sources. The most common “work-to-derivative work” pipeline is from books to films, but Barbie’s toy-to-film pipeline presents an interesting question: if a movie is based on a doll alone, does that make the movie somehow a derivative work of a doll?

That might be debatable if indeed the film were based on a single doll, but that’s not the case here.  Rather, the Barbie movie may constitute a derivative work of numerous of Mattel’s copyrights, including the dolls, product packaging, books, promotional materials, and countless other prior works featuring the titular doll and her friends. It is, in any event, a licensed blend of various types of IP—not only copyrights, but also many of Mattel’s well-known trademarks, the foremost of which is the long-registered trademark “BARBIE®” itself.

Studios will usually work through licensing deals to smooth out the creation of adaptations. Indeed, established studios typically wouldn’t proceed without one: consider, for example, how Barbie did not appear as a character in the beloved Toy Story series until Toy Story 3, after a licensing deal was struck between Disney/Pixar and Mattel. And it’s hard to imagine a world where Greta Gerwig would have risked making Barbie without getting the green light first, unless, perhaps, she pushed it hard enough to tread into parody territory for both copyright and trademark fair use purposes. That would have been a very different film! But if Aqua could make it work with “Barbie Girl”…

For those that choose to forgo the traditional licensing route, an adaptation can become a tricky matter. Even into late 2023, a 2022 Best Picture contender, Top Gun: Maverick, remained embroiled in a dispute involving derivative works. In Yonay v. Paramount Pictures, filed in June 2022, Plaintiffs alleged that Top Gun: Maverick infringed Ehud Yonay’s article “Top Guns,” which was an account of the real-life U.S. Navy Strike Fighter Tactics Instructor program, colloquially known as “Top Gun.”

Paramount was unsuccessful on its motion to dismiss, failing to convince the California Central District Court that there was no case for the film’s substantial similarity to the article. (It likely didn’t help that the studio had once had an exclusive licensing deal with Yonay before the copyright was reclaimed by his heirs shortly prior to Maverick.)

This past November, Paramount filed its motion for summary judgment, arguing that the aspects of Yonay’s article at issue were mere facts derived from research and consultation with the Navy—uncopyrightable material under Feist v. Rural. The Yonays, in their own summary judgment motion, assert that Maverick constitutes an unauthorized derivative work. They argue that the “Top Guns” article is not a mere collection of facts, but rather a “cinematic portrayal” of the navy base’s activities, directly inspiring several events of the film.

It remains up to the court to decide whether Maverick is sufficiently distinguishable from other sources of inspiration. But at least for us viewers, the Oscars are a great way to see how movies can use this simple copyright concept to create films that shine.

The post How Original! The Oscars and the Craft of Derivative Works first appeared on Trademark and Copyright Law.

It is crucial to consider key takeaways from the most important IP cases in 2023 when planning for 2024. Foley Hoag presented a 60-minute webinar on Wednesday, January 24, 2024, offering guidance on what we learned last year and what to prepare for in the new year. Our speakers focused on developments in trademark, copyright, patent and trade secret law.

The post WEBINAR: Top IP Cases in 2023 first appeared on Trademark and Copyright Law.

As we ring in 2024, sip some champagne and make a resolution to check in on your trademark portfolio more often.  It misses you!

Here are a few productive questions to ask:

1. Do your registrations cover your reality?  You may have launched new brands or drastically redesigned your logo since you last interacted with the USPTO.  Or perhaps your business has expanded or evolved, and the scope of your registrations ignores some now-crucial products or services.  Maybe your filings are all in the US, but the EU and Brazil have become major markets for you.  If any of this sounds like you, it’s time to plug some holes.
2. Are you prepared to meet deadlines?  Make sure the right people know what’s due when, and whom to contact.  If you acquired a trademark as part of a business transaction, let your attorney and the USPTO know that you’re the owner now.  If the employee responsible for trademarks retired three years ago, have a new contact get in touch with your attorney so reminders don’t get lost in bounce-backs or an unmonitored inbox.
3. What’s in the pipeline?  If a new product line is coming soon, or you’re contemplating a rebrand, loop in your trademark attorney sooner rather than later.  We can help you vet your options when it’s still early enough to change course easily, and lock in an early “priority” date by filing an intent-to-use application.  Similarly, if you expect to launch in new markets, lay the groundwork with a trademark application. In most places outside the US, the first to file typically owns a trademark, so it is even more crucial to get formal protection in place in a timely manner.
4. Are you lugging around a bunch of deadwood?  If a former employee was overzealous, or some brands have been sunset, you may have a stack of applications and registrations in the US or around the world that you just don’t need.  Get a jump on spring cleaning by reviewing your portfolio and letting your trademark attorney know what to jettison, rather than be plagued by reminders of deadlines for marks that the company barely recalls.
5. Are you monitoring your trademarks in their natural habitat?  Your trademarks are much more than words or images on a registration certificate; the most important part of their existence is out in the world, where they represent you.  If it’s been a while since you discussed best practices for use with your trademark attorney, or you’ve hired a slew of new marketing folks, check in on how your trademarks appear on your website and your products.  Are your licensees and partners using them appropriately?  Branding guidelines – high-res logos, company-approved color schemes, etc. – should include best practices from a trademark law perspective, to make sure you’re not inadvertently harming your marks.  Your trademark attorney can help you flesh out those guidelines and double-check your real world use.  (Bonus tip: Discuss with your attorney how to monitor other people’s trademarks.  If another company in your space picks a trademark that’s too similar to yours, or a straight-up copycat starts using exactly your mark, you’ll want to know about that as soon as possible so you can take appropriate action.)

Trademarks aren’t always top of mind, but they’re valuable assets – in 2024 and into the future for as long as you properly tend to them.  So spend a little time and help your trademarks kick off the New Year in style.

And, in the meantime, I’ll resolve to write blog posts more regularly.  Stay tuned!

The post Five Trademark Questions to Ask in the New Year first appeared on Trademark and Copyright Law.

Entirely separate from their mythical doctor-repelling properties, apples and I have enjoyed a lifelong friendship. One of my formative memories is of my grandfather, a produce distributor in St. Joe, MO, bringing me an apple – a Granny Smith, as far as I recall – almost as big as my head. My mom, herself an apple aficionado, made and continues to make all manner of apple-based snacks and desserts (there’s an unfortunate (for some) event in my past, spoken of only in hushed tones, referred to simply as “the apple strudel incident”). My mission, as soon as I step onto in any manner of fairground – even before braving the rickety, hastily assembled carnival rides! – is to locate and devour a caramel apple. The list goes on, and I won’t bore you further, but I especially love trying new apples, and it will perhaps not surprise those who know me that I keep a secret (yes, secret!) apple spreadsheet where I list their various characteristics and cultivar origins, along with a highly scientific rating system ranging from 1 (bad: e.g., poor, tasteless, modern Red Delicious) to 10 (wonderful: e.g., crisp, fresh Cortland).

But let’s talk trademarks. Did you know that some of the apple varieties you know and love aren’t generic names but instead are protected, registered, and frequently licensed brand names?  Here are a few brands associated with apples that have Josh’s Seal of Apple Approval, all of which score at least an 8 on my secret spreadsheet:

• PINK LADY^®: this is the registered trademark for the Cripps Pink apple cultivar, owned by Brandt’s Fruit Trees, a Yakima, WA-based company also responsible for some other apple brands you may have encountered, including COSMIC CRISP^® and LUCY^®.  Cripps Pink apples date back to 1973, bred by John Cripps and resulting from a cross between a Lady Williams and a Golden Delicious.  My highly scientific tasting notes: “tart + sweet, super-crisp, but flavor rapidly declines as they ripen – an inconsistent 9/10.”

• JAZZ^®: a registered trademark of VentureFruit, a “variety management” company based in New Zealand, this is the brand name for the decidedly less cool cultivar name Scifresh (technically Scifresh T-273), a cross between the Braeburn and Royal Gala cultivars.  My highly scientific tasting notes: “tart but balanced flavor, unique shape, weirdly dense and crisp to the point that those with dental issues should not bite directly – 9/10.”

• SweeTango^®: a registered trademark of the Regents of the University of Minnesota, this is the brand name for the Minneiska cultivar, developed by university research breeders as a cross between Honeycrisp and Zestar (itself a trademark for the Minnewashta cultivar) apples, both of which were also developed by the university. My highly scientific tasting notes: “complex, more sweet than tart, includes clear notes of parent cultivars; 85% of flavor attributable to surprisingly snappy skin, with notes of tropical fruits; mildly unsettling – 8/10.”

It’s particularly interesting (to this trademark lawyer, at least) the extent to which some of these brand owners seem to go out of their way to not regularly use the generic cultivar name alongside the brand name, a bold strategy given the ever-present possibility of trademark misuse, or even a loss of valuable brands to dreaded genericide (we hardly knew ye, Escalator^® brand moving stairway!). The current JAZZ® apple website, for instance, doesn’t appear to even mention the Scifresh cultivar name.

That said, there’s a bit more here than meets the eye. Most of the newer apple cultivars (including all of those featured above) tend to be protected by patents and/or are “managed varieties” sold through tightly regulated grower cooperatives and clubs (here’s one overview of such cultivars), such that use the apple brands – along with access to trees themselves – is tightly controlled by various agreements. However, it seems to me that, even in the relative safety of an apple club, using brand names as generic terms is tempting fate, and could eventually result in fatal consequences for certain apple brands.  Particularly once a cultivar patent expires, it could be only a matter of time before growers outside of a club get their hands on trees and sell their own apples under the same “brands.” At that point, even an apple a day may not be enough to prevent a loss of trademark rights.

The post How Do You Like Them Apple (Trademarks)? Malus Musings on Brand Protection first appeared on Trademark and Copyright Law.

The post WEBINAR: The Metaverse and Beyond: 10 Trademark & Copyright Tips for Consumer Products Companies first appeared on Trademark and Copyright Law.

Our speakers focused on developments in trademark, copyright, patent and trade secret law.

Speakers:

• Paul Downs, Associate, Foley Hoag
• Nicole Kinsley, Counsel, Foley Hoag
• Nathaniel McPherson, Associate, Foley Hoag
• Peter Sullivan, Partner, Foley Hoag

The post WEBINAR: Top IP Cases in 2022 first appeared on Trademark and Copyright Law.

In this 60-minute webinar, designed for in-house counsel, we discussed how to identify and address ethical issues to guard against potentially irreversible consequences.

Topics

• Oaths filed with the Patent and Trademark Office, and who should sign them
• Rules of the road for investigating competitors
• Who, exactly, is “the client”?
• Non-lawyer staff members and their appropriate roles in the company’s legal matters
• Negotiating settlement of advertising-related competitor suits and class actions

We explored these and other important ethical questions to have on your radar the next time a copyright, trademark or advertising issue pops up in your practice.

The post WEBINAR: Legal Ethics for In-House Attorneys Handling Copyright, Trademark & Advertising Matters first appeared on Trademark and Copyright Law.

Foley Hoag presented a webinar covering a range of topics related to cannabis trademark protection and promotion of cannabis-related goods and services, including:

• Maximizing trademark rights at the federal and state level
• Leveraging alternative IP strategies for brands
• Advertising best practices and what not to say
• FDA regulation of cannabis and cannabis-derived products
• CBD, hemp, and the 2018 Farm Bill
• Multi-state regulatory regimes as complicating factors

Speakers

• Joshua S. Jarvis, Partner, Co-Chair, Intellectual Property Department
• Natasha N. Reed, Partner, Co-Chair, Trademark, Copyright & Unfair Competition Practice
• Neil Austin, Partner, Co-Chair, Advertising & Marketing Practice

The post WEBINAR: Trademark and Advertising Basics for Cannabis Companies first appeared on Trademark and Copyright Law.

Our speakers focused on developments in trademark, copyright, patent and trade secret law.

Speakers

• Peter Sullivan, Partner, Foley Hoag LLP
• Scott Pierce, Partner, Foley Hoag LLP
• Francisco Cabrera López, Associate, Foley Hoag LLP

The post WEBINAR: Top IP Cases in 2021 In-House Counsel Need to Know first appeared on Trademark and Copyright Law.