Intellectual Property

Kylie Minogue: “Used under Creative Commons License via Daniel Krucynski. Some rights reserved.”

Everyone needs to calm down.

At least everyone in the entertainment world.

Various major news outlets have been reporting that “Kylie Minogue successfully blocked Kylie Jenner from trademarking the name ‘Kylie!’”—but Kylie Minogue had nothing to do with it. Yahoo, the Huffington Post, and the Today Show were just several news providers I saw touting the trademark-war-turned-cat-fight, when in reality the Kylie v. Kylie throwdown was settled amicably last month by the parties. Minogue originally filed an opposition against Jenner’s application for the “Kylie” mark, claiming it would dilute her own similar marks. In light of successful settlement negotiations, Minogue withdrew her opposition to Jenner’s application for serial nos. 86584742, 86584756, and 86755582 on January 19, 2017.

So what is actually happening? And why the ruckus?

The news should be focusing on Jenner’s appeal of the USPTO’s July 22, 2016 final refusal of mark serial no. 86810719, which was filed in November of 2015—and has nothing to do with Minogue.

Kylie Jenner: “Used under Creative Commons License via Disney ABC Television Group. Some rights reserved.”

Originally the subject of an Office Action in December of 2015, the USPTO most recently rejected registration of the “Kylie Jenner” for likelihood of confusion with mark Reg. No. 4166624, “Kylee.” Both marks claimed International Class 025, which includes clothing and accessories. The “Kylee” mark, belonging to Mimo Clothing Corporation, asserts first use in April 2011 and covers “Belts; Blouses; Bras; Capris; Cardigans; Coats; Corsets; Coveralls; Denims; Dresses; Footwear; Gauchos; Gloves; Gowns; Hats; Jackets; Jerseys; Jumpers; Leggings; Lingerie; Overalls; Panties; Pants; Ponchos; Scarves; Shirts; Shoes; Shorts; Skirts; Socks; Suits; Sweaters; T-shirts; Tank-tops; Tights; Tops; Uniforms; Vests; [and] Wrist bands.” Registered July of 2012, the “Kylee” mark is up for Sections 8 and 15 filings in 2017.

Jenner filed her application for “Kylie Jenner” in 2015, long after the “Kylee” mark’s registration. Upon review, the USPTO determined that “Kylee” and “Kylie Jenner” were 1) too similar, 2) in related categories, and 3) would create a likelihood of confusion with consumers. The final refusal, preceded by a non-final Office Action, issued last July. Jenner’s team filed an appeal to the Trademark Trial and Appeal Board (TTAB) on January 23, 2017 to fight the rejection. A full-fledged TTAB proceeding will follow. Apparently, the appeal got the attention of media outlets across the globe, (as any Kardashian news tends to do) resulting in incorrect blame-placing on Australian-based Minogue from halfway around the world.

As of the writing of this article, Minogue has not issued a statement.

The moral of the story — don’t trust everything you see on the news. Especially if it’s about a Kardashian.

Presidential Candidate Donald Trump has found himself in hot water over the unauthorized use of a UK-based photographer’s photograph in his campaign advertisements.

In September, Donald Trump Jr. sent out the following tweet and the attached image:

Photographer David Kittos, a former refugee himself, immediately recognized his photograph, which had been published to media-sharing site Flickr with the rights designation, “All rights reserved.” Kittos says he never gave Trump or his campaign permission to use the photograph.
So he did what any miffed copyright holder would do: he filed a lawsuit against the Republican Party’s presidential nominee.

For those abiding by U.S. Copyright Law, here’s how it usually works: a campaign contacts a copyright holder to license the image for commercial use, usually in exchange for some sort of fee. In this case, however, Kittos claims he would not have provided a license for use of the image, given the advertisement’s text and Kittos’ own background.

The plaintiff also alleges secondary infringement, claiming the campaign strategically used the image on social media platforms to incite “an epidemic of third-party infringement of the photograph.” Use of social media reflected the intention of the Trump campaign that the photo would be widely shared through re-tweets which would reproduce the image and accompanying text on Twitter and other social media platforms like Facebook and Pinterest, and indeed the plaintiff alleges that “thousands of individuals” re-published the advertisement without authorization from the copyright holder. “The effect of this iterated unauthorized reproduction and redistribution is the rampant viral infringement of Plaintiff’s exclusive rights in his Photograph,” the complaint reads.

Kittos now asks for unspecified damages–monetary damages totaling actual damages and any profits relating to the unauthorized use– and, seemingly more importantly on a personal level, seeks an injunction for further use of the photo, according to the complaint filed October 18.

What makes matters worse is that in June Trump’s camp settled a suit over the unauthorized use of a photograph of a Bald Eagle with two Denver-based photographers.  The settlement terms have not been disclosed.

The moral of the story is this: If you value your work, file a copyright so you can protect it.  Make sure ALL members of your marketing team, from directors down to interns, know the do’s- and don’ts of copyright law.  And if you need help explaining it, come see us here at The Creekmore Law Firm.

If you have been through the drawn-out process of registering a trademark, you realize it is not a quick and easy process.  Between backlog at the USPTO, office actions from Examiners, and oppositions from the public, there are many hoops to clear before registration.  But did you know that a mark owner’s responsibilities do not end there?  A mark often becomes the most valuable association with a brand.  The tips below will help mark holders ensure the time, energy, and money put into their mark and brand will be protectable and valuable for years to come.
Continue reading “Adding Brand Value through Protecting Trademarks” »

Starting up takes a lot.  A lot of time. A lot of energy. Perhaps a lot of money.  And definitely a lot of planning.  At the very beginning, a business owner is looking for revenue, low costs, and maximum upside, in an understandable effort to build a foundation for an economically sustainable enterprise. Having an economically sustainable enterprise–especially one that may eventually be sold–requires sufficient planning to document the assets of the firm and to ensure the firm legally owns those assets.  With assets often come certain liabilities, completing the picture and value proposition of the business for owners, investors, and potential purchasers.  As tempting as it can be to pass on early legal planning for a business in light of other demands that feel more immediate, that planning will show its value for a business of any size or type when avoiding headaches, heading off informal disputes and even full-on litigation.  Learn the core legal considerations for a business in its inception stages, along with the pitfalls you can plan around as you build your business.

Continue reading “What Makes Up Your Business?” »