IP Top 10 – August: Baby Shark Bears it’s Teeth…

Ohio State University attempt to trade mark “The”

A few weeks ago, Ohio State University filed a trade mark application with the US Patent and Trademark Office (USPTO), to register the word “The”.

The University wants to use the mark for a brand of clothing, which will include t-shirts, baseball caps and hats.

The University is of the belief that the application will be successful because as from 1878 the school has been named as “The Ohio State University”, as a means to differentiate it from others in the province.

This branding quirk has many detractors (including rival universities!) but it remains to be seen if the unlikely mark will pass muster with the USPTO…

Above The Law have an interesting take on this strange application.

Guns N’ Rosé… Settles.

Colorado brewery Oskar Blues has created a beer named after the American hard rock band Guns N’ Roses. The only issue being the homage has left a bitter taste in the rock band’s mouth…

A fracas started earlier this year when Guns N’ Roses sued the brewery for trademark infringement as they found unauthorised use of their brand, with the brewery not only selling not only beers, but also hats, t-shirts and stickers.

In addition to this, Oskar Blues had applied for a trade mark for the same – alerting the aging rockers to their intention.

The latest in this tussle is that the parties have settled, with terms remaining confidential. As such it remains to be seen whether the beer will be available to the quaffing masses.

Billboard have a good overview of the nuts and bolts of this case.

A “David vs Goliath” Patent Battle between a Small Startup and L’Oreal

A start-up from California has conquered their own “Goliath” (in the form of L’Oreal) in a fierce confidentiality and patent battle.

This story began in May 2015, when representatives from the two companies met in a restaurant to discuss the acquisition of the start-up – which at the time had only been operating for a year.

In this time however, the start-up Olaplex, had developed a proprietary process for “bonding“, a process that strengthens and protects hair. The fledgling company also had begun the process of registering this innovation as a patent.

Throughout the discussion, Olaplex shared with L’Oreal confidential information in “good faith” and with a confidentiality agreement in place, sharing details of the unpublished patent under these premises.

However, negotiations broke down over valuation of Olaplex, with their CEO valuing the business at $1 billion.

Then, after the release by L’Oreal of three of its own products utilising a similar “bonding” innovation, Olaplex sued L’Oreal for trade secret misappropriation, patent infringement, and breach of contrac. This was on the basis that two of its patents had been infringed and the confidentiality agreement breached by L’Oreal.

A federal jury in Delaware found that L’Oreal had “wilfully” stolen trade secrets from Olaplex, infringed the two patents and breached the confidentiality agreement. Further to this, as the patents were at the core of Olaplex’s business, the awards of damages would be significant. As a result, L’Oreal were ordered to pay the Olaplex $91.3 million in total.

L’Oreal have since released a statement expressing their intention to appeal.

Regardless, for the time being it appears that David has, once again, bested Goliath…

The Fashion Law have a good overview of this case, with additional details here.

Baby Shark doo-doo, doo-doo-doo-doo!

The holiday season could not draw to a close without one of the most popular summer hits (the infamous “Baby Shark Song”) being the subject of a copyright infringement claim.

Made famous by South Korean band Pinkfong – the origin of the song has been brought into contention by musician Johnny Only, who alleges ownership, having uploaded a version of the song to his own YouTube channel in 2011.

He says that he has been performing the song for around 20 years, and that the South Korean band has directly copied and popularised his version.

In a further twist to the tale however, the song appears to precede Only’s version, and has no true known author.

This will be an interesting one to see play out in the courts.

Rolling Stone have a good overview of this story here.

Eminem, Spotify and Copyright Infringement

On the other end of the copyright in music spectrum is this one…

The music publisher representing Marshall Bruce Mathers III (aka Eminem), has sued Spotify for copyright infringement.

The complaint claims that Spotify didn’t acquire proper licences for to host “Lose Yourself” as well as 242 more of his songs.

As such the claim alleges that these tracks have been unlawfully distributed to the public for some time.

If you consider how popular Eminem’s music is, this may be one of the biggest copyright claims ever brought in the music sector.

As such, it is no surprise that the quantum sought in damages is in the realms of millions of dollars. To be specific, damages are being sought for $150,000 per each of the 243 songs mentioned in the claim.

In a further twist, the claim made also seeks to question the constitutional basis of the Music Modernization Act (MMA) upon which the acquisition of music licenses by streaming giants such as Spotify has been predicated.

Variety have a good overview of the issues at hand here.

After long Mexican Stand-Off, Ennio Morricone May Have Reclaimed Rights in his Film Scores…

After a long-standing battle against Bixio Music Group, the US Court of Appeals for the 2nd Circuit has reversed a prior New York Federal Court decision, which denied Ennio Morricone the ability to reclaim the rights to his movie scores.

The controversy started when the legendary Italian composer initiated proceedings in 2016 to reclaim rights in six of his film scores. Under the Copyright Act of 1976, authors can cancel a copyright agreement after 35 years have passed from first publication – and retrieve the rights as the author of the works.

Having lost this bid initially in 2017, the US Court of Appeals decision overturned the prior decision, granting Morricone the ability to reclaim copyright over his work.

The Hollywood Reporter have more detail on this decision here, as well as a copy of the opinion.

adidas’ Stripes Strike Back (Again)

adidas’ “three stripes” may be one of the most iconic and infamous trade marks in existence.

Whilst many argue that the mark is too broad in scope, especially in its application on sports shoes (wherein use of stripes as a design element may be argued as commonplace…), adidas remain assertive in their enforcement of their rights surrounding the mark.

In the firing line this time is, J. Crew who has made an application to trademark a design that contains five stripes Although to an untrained eye one might see these as three stripes… (See below.)

As a response, to this application adidas filed opposition to the US Patent and Trademark Office to shut down J. Crew’s application, alleging that this trade mark infringes on its own famous “three stripes” trade mark.

According to adidas, J. Crew’s mark “incorporates three stripes in a manner that is confusingly similar to [their] three-stripe mark in appearance and overall commercial impression.”

As is stands the footwear companies have been invited to settle the dispute before the case is then decided by the Trademark Trials and Appeal board.

Needless to say, other sports apparel companies have to tread carefully when it comes to showing their stripes in their designs.

The Fashion Law have the full story here.

If You’re Reading This Copyright Infringement Letter Then It’s Too Late

The Canadian rapper Aubrey Graham (better known as “Drake”) has been accused of copyright infringement, for using samples without permission in two of his songs: “My Feelings” and “Nice For What”.

Sam Skully has alleged that the rapper acquired a sample from his 2000 cut “Roll Call” in both of the above songs, and he was never asked permission nor paid for its use.

The producer noted this after watching a documentary which featured what he recognised as his original sample being integrated into two of Drake’s songs.

Whether you’re a fan or not – Drake’s music is incredibly popular, and as such enforcing copyright on an unauthorised sample could potentially prove highly lucrative.

It remains to be seen how this case will resolve – though one might imagine that out of court settlement is highly likely.

Digital Music News has the scoop on this one here.

Waymo v Uber Case results in Federal Charges for Levandowski

On 15 August 2019, Anthony Levandowski was charged by the Grand Jury in California with 33 counts of theft and attempted theft of trade secrets.

These charges form part of the criminal fallout from the Waymo v. Uber case relating to trade secrets and self-driving automobiles.

In 2009, Anthony Levandowski worked in Google Inc. and was involved in a self-driving car project within the company as “Project Chauffeur” (which, after a while, became Waymo).

As you can imagine, Levandowski’s employment agreement contained a Confidential Information paragraph, which obligated him to hold Google Inc’s confidential information, including trade secrets, in strict confidence.

The engineer left Google about 2016 and founded Otto (a self-driving truck start-up) which was quickly acquired by Uber.

Levandowski was accused by Google in a 2018 lawsuit, of stealing 14,000 documents from the Waymo Project containing proprietary information about its self-driving cars and downloading them on to his personal laptop.

These documents were then seen as crucial to the establishment of “Otto” and its rapid acquisition by ride-sharing giant Uber.

Whilst the civil case settled before any trial had the opportunity to air the dirty laundry – it remained that (as a consequence of US Trade Secrets legislation) that Levandowski could be found guilty of criminal charges in a federal suit that would follow.

Levandowski has now been charged with 33 counts of theft (or attempted theft) of trade secrets on this basis and could face 10 years in prison plus a $250,000 fine (plus restitution) for each count.

The Verge have an accessible write up on this one.

HTC Smartphones Off UK Shelves Because of Patent Dispute

Taiwanese smartphone producer HTC has seen its handsets pulled from UK shelves on account of an ongoing patent row.

As it stands, HTC’s entire range of smartphones are currently listed as “out of stock” whist the dispute rumbles on.

German-based company Ipcom have been in a dispute with HTC over wireless technology. To get around this issue HTC stated that UK models would work around use of the Ipcom technology.

But Ipcom identified through testing HTC handsets that no such circumvention of the disputed technology was in place.

As such, HTC removed the handsets from sale. This comes as a serious blow for HTC who had previously made some serious inroads into the UK market.

BBC have a good round up on this.

IP Top 10 August: That’s It!

And that is it for August’s IP Top 10!

It goes without saying that IP is perhaps one of the most interesting areas of law, and each top ten that we write comes with its own set of surprises.

A special thanks to our intern Marina Forment who has produced some excellent research and write-ups for the past 3 months’ editions.

Until next month!​