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Victory for Baltimore Ravens over “Flying B” Trademark/Logo

A battle lasting longer than fifteen years over the Baltimore Ravens’ “Flying B” logo has finally come to an end, after multiple lawsuits by the owner of the copyrighted work, Frederick Bouchat.  Affirming the lower court’s decision, the United States Court of Appeals for the Fourth Circuit ruled that the NFL’s use of the logo in three videos and in certain historical displays in the team’s stadium was Fair Use.  The three videos Bouchat challenged were produced by the NFL for display on the NFL network, and were also featured on websites including NFL.com and Hulu.com. Two of the videos were part of the film series Top Ten, each episode of which features a countdown of ten memorable players, coaches, or events in NFL history. The third video is part of the Sound FX series, which provides viewers with an inside look at the sights and sounds of the NFL through players who wear microphones.  The historical displays Bouchat challenged were a timeline, a highlight reel, and a significant plays exhibit, all of which were located on the Club Level section of the Ravens’ stadium.

The Court analyzed each alleged infringing use using each of the four Fair Use factors. With regard to the three videos, the Court found that the first factor, whether the use was transformative, was met.  Rather than the initial use of serving as the brand symbol for the team, the Flying B is now used in the videos as part of the team’s historical record.  The infrequent appearance of the logo supports the finding of transformative use, as the logos appear only for a few seconds.  Also part of the analysis under this factor was the commercial nature of the use.  Indeed, the NFL’s use of the logo is largely commercial, but the Court found that this was outweighed by the highly transformative and limited nature of the uses.

The second factor, the nature of the copyrighted work, was found to be neutral. Citing its own decision in a prior Bouchat case, the Court stated that the second factor may be of limited usefulness where the creative work of art is being used for a transformative purpose.

The third factor, the amount and substantiality of the portion used in relation to the copyrighted work as a whole, was also found to be neutral.  Here, the NFL had no choice but to film the whole logo in order to fulfill its “legitimate transformative purpose” of creating the historical videos at issue, so the factor has limited influence.

The fourth factor is the effect of the use upon the potential market for or value of the copyrighted work.  This involves assessing whether the NFL’s use of the logo would materially impair the marketability of the work and whether it would act as a market substitute for it. A transformative use renders market substitution less likely and market harm more difficult to infer. Due to the transient and fleeting use of the Flying B logo, as well as the factual (as opposed to expressive) content, the Court concluded that the logos served a different purpose in the videos than they do standing alone.

Bouchat also challenged the incidental use of the Flying B logo in certain historical displays located on the Club Level of the Baltimore Ravens’ stadium – a timeline, a highlight reel, and a significant plays exhibit.  The Court undertook a similar analysis as that above and again concluded Fair Use, stating: “It would force those wishing to create videos and documentaries to receive approval and endorsement from their subjects, who could ‘simply choose to prohibit unflattering or disfavored depictions’…This regime…would chill the very artistic creation that copyright law attempts to nurture.”

David M. Lilenfeld

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Avoiding Trademark Disputes: Actively Manage Existing Trademark Registrations (Part 3 of 5)

In our last blog we discussed the importance of registering your trademarks as a means for avoiding trademark disputes. We continue here by explaining why and how to tend to those registrations once acquired. This tending to is referred to as “portfolio management” or “portfolio maintenance.”

1.         This first point seems obvious but it is often overlooked. Ensure that the ownership information in the registration is up-to-date. If there have been any changes to key information since the original registration, the registration needs to be updated. Company name, address, contact email are examples of information that often change and need updating. Otherwise, correspondence from the trademark or someone trying to reach you about your trademark might be missed by you.

2.         Periodically, the trademark owner must prove that it is still using the trademark. For federal registrations, renewals are under “Section 9” and proof of your continued use of a mark is made through a Declaration of Continued Use under “Section 8.”

3          Registrations should be reviewed to determine the availability of the mark for incontestability status.  Incontestable status shields the trademark from certain (but not all) challenges – making your trademark somewhat bulletproof.  Similarly, a mark registered on the Supplemental Register may be appropriate for transfer to the Principal Register, which also strengthens the registration.

4.         Registrations should be reviewed to make sure that the goods or services listed in the registration are consistent with your actual use of that trademark. For example, if you began using the mark in connection with plumbing services, that will be reflected in your trademark registration.  If you later expand your services to HVAC equipment, you may need to apply to add that new service to your registration.

5.         Existing registrations might also not cover all geographic areas where you use your mark. For example, if you registered the mark with the State of California because you only used the mark there, you might need to register the mark elsewhere if you are now using the mark outside California. Another example, perhaps a more common situation, is a mark being initially registered in the United States with the mark later also being used outside the United States. A foreign registration may be appropriate in such circumstances.

6.         Also, I’ve seen disclaimers in trademark registrations that may have been appropriate at the time of the initial registration, but are no longer appropriate.  (A disclaimer is a declaration from the Trademark Office that the trademark owner does not have the exclusive right to the disclaimed portion of a registered trademark.)  For example, in its registration for Google PLACES, Google was required to disclaim “places.” Removal of a disclaimer can strengthen the registration.

It is much easier to address these trademark portfolio issues in advance and not while under time pressure, rather than in response to a crisis created by a third party’s unauthorized use of your trademark or some other external event.

**** Remember, that none of our posts are or can substitute for legal advice. Our posts address general legal matters, while “legal advice,” on the other hand, is tailored by an attorney to fit your particular situation.****

David M. Lilenfeld

 

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Avoiding Trademark Disputes: Register Your Trademarks (2/5)

In almost all cases, trademarks should be registered. They can be registered with the federal government – more specifically, with the United States Patent and Trademark Office – if you, as the trademark owner, use the mark in “interstate” commerce (most marks are used in “interstate” commerce). Most of the 50 states also allow for registration of trademarks if the trademark is used in the state where registration is sought.  State and federal trademark registrations is a service provided by Lilenfeld PC.

Federally registering a trademark gives you national rights to it.  Such a registration preserves your right to expand your use of the mark into geographic regions of the United States where you have not previously used the trademark.  Without a federal registration, you will be hard-pressed to establish trademark rights in states you have not yet used the trademark.

A federal registration will also assist you in the event someone uses your trademark in a domain name, without your permission.  Such a registration will make it easier to persuade the person who registered the infringing domain name to relinquish the domain name registration to you.

A federal registration will also serve as a deterrent to others who might be thinking about using a trademark similar to yours.  A trademark registration shows that you are aware of and active in protected your trademark rights.  And, after five years of continuous use of a trademark your registration may become even stronger, gaining what is called “incontestable” status.

Finally, if a dispute over your trademark does arise, a federal registration entitles you to a presumption from the court that your registration is valid.  Your registration also entitles you to additional damages in the event it is found that your mark was infringed.  And a federal registration makes it easier to work with the United States Customs Service to stop the importation into the United States of unauthorized goods bearing your registered trademark.

As you can see, registering your trademarks greatly strengthens your rights and will likely help you avoid disputes.  We’ll post Part 3 of this 5 part series next week.  Please check back!

David M. Lilenfeld

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Avoiding Trademark Disputes: Only Adopt a New Trademark After it is Cleared (1/5)

Before you adopt a new trademark you should devote resources to making sure, to the greatest extent you can, that using that trademark will not infringe on some other party’s rights. This sounds obvious, but we see many trademark disputes occur because not enough effort was made before a new trademark was adopted.

Once you’ve identified the trademark you would like to use, we generally suggest that you look for the same and similar trademarks in your industry and related industry on the Internet. If you do not find anything that looks problematic, step two is to forward your results to a trademark lawyer and retain that lawyer to conduct a formal search. Most trademark lawyers, including us at Lilenfeld PC, will engage a vendor to conduct what is often called a “trademark availability search.”

The results from the trademark availability search are listed in a report, which consists of trademarks which are the same or similar to the trademark you are considering. The report itself does not offer any opinions about whether it is safe to adopt the trademark or not.  Instead, your trademark lawyer will review the report and provide a legal opinion about the risks, if any, associated with adopting the trademark. Following this process will not guarantee that no one claims that your new trademark creates an issue, but it should greatly lower the risk and give your trademark the best start.

Clearing your trademark is step one in avoiding trademark disputes. We’ll post Part 2 of 5 next week.  Take care.
David M. Lilenfeld
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Tips to Avoid Trademark Disputes – Five Part Series

Every year my law firm realizes considerably more revenue from trademark disputes than from work that will help clients avoid disputes. It’s good for business, but bad for clients, so we want that trend to change. Starting this Wednesday, we’ll be posting a five-part series on steps to take to minimize the risk of being in a trademark dispute.  Part 1 is about what to do before you adopt a new trademark.
David Lilenfeld
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Why Big Companies are Hiring Small Law Firms – David M. Lilenfeld, Lilenfeld PC

More and more, legal departments are moving their work from large, big-name law firms to small, boutique firms like Lilenfeld PC.  While the recession prompted much of this movement, I am now observing that this is a lasting practice for efficiency-minded in-house counsel.

Boutique law firms such as ours are flourishing because clients are turning to different law firms for different tasks.  This practice allows legal departments to match specific tasks to the right lawyers. For example, a new client came to us recently specifically because most of the litigation we handle involves trademark infringement claims.

Legal departments are recognizing the benefits of splitting work between firms with different focuses and using small, boutique firms that offer the right fit for each individual matter.  In-house attorneys also acknowledge that the work produced by small firms is as good as (or better than) what they receive from large, big-name law firms.  Small firms like ours also have far fewer conflicts, can make decisions regarding representation in hours instead of days and are equipped to provide personalized service.

Technology has also made small firms more competitive with large ones.  Software, for example, speeds up document production and review, while, cloud computing makes sharing documents, invoices and case developments fast and efficient.

Lilenfeld PC focuses entirely on intellectual property, and its highest hourly billing rate is $325, a rate 40 to 50 percent lower than that of large-firm counterparts.  Our clients receive the same level of expertise as clients of large firms but at a lower price.  Since we have less overhead, we have lower rates, which helps our clients manage budgets and increases the volume of business we receive.

Consider talking with us about your intellectual property needs.

David M. Lilenfeld

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