Confronting product counterfeiters can be an expensive, labor intensive and sometimes frustrating task, particularly when undertaken as a solo effort. The panel sponsored and moderated by CK&E will highlight strategies for combining the strength of private enforcement and available public sector resources to combat counterfeiters using all available tools. The panel will assess when and how to use civil resources in partnership with criminal enforcement for the most effective and cost-effective assault on product counterfeiters. The panel will address practical steps to best leverage the strengths and resources of both arms against the scourge of counterfeiters, illustrating points with real world experiences.
Join us and learn how to get the most bang for your brand protection buck in the battle to defeat counterfeiters. CK&E is proud to again sponsor this important brand protection event.
The conference features speakers from leading companies in the technology industry, including Google, Facebook and Twitter, as well as representatives from federal and global regulatory organizations, such as the World Intellectual Property Organization (WIPO), U.S. Department of Commerce and the Internet Corporation for Assigned Names and Numbers (ICANN).
Every business is affected by developments regarding the Internet. CK&E participates in important industry conferences of INTA and others to stay in the forefront of developing issues affecting the firm’s clients. Check back for blog post updates from the conference to stay abreast of innovations and changes in governance and brand protection on the Internet.
These claims seem to be emblematic of a recent upswing in claims of violations of the “right of publicity”. One prominent example is Davis v. Electronic Arts, a case on behalf of some 6,000 retired pro football players who are suing Electronic Arts over use of their identities in the Madden NFL video game series. In arguments pending in the Ninth Circuit Court of Appeal, Electronic Arts claims First Amendment protection for claimed “transformative use” of the players’ images. Even if that argument were successful, it will not likely be of much help to others who simply use a photograph or other unadorned likeness of an individual.
California and most other states recognize that a person has a right to protect his or her name, likeness, signature, voice and other identifying aspects of personae from commercial exploitation without consent. The right of publicity protects not just photographs but all forms of likenesses, including animated versions of people in videogames. The right of publicity is a type of intellectual property – in some ways analogous to (but not the same as) a trademark. An important point to understand is that the right of publicity is not ordinarily precluded simply by ownership or license of the copyright in the image – even if you took a photo of Lindsay Lohan yourself and you own the copyright in that photograph, that in itself generally does not mean you can use it in an advertisement to sell a product without Lindsay Lohan’s consent.
The right of publicity is distinct from rights protecting against slander or defamation – there is no requirement that a person’s reputation has been harmed in any way, or that he or she ever had a positive reputation. Manuel Noriega is probably best known as a former leader of Panama who was deposed, tried and convicted of drug trafficking, racketeering and money laundering. Nonetheless, Manuel Noriega has the same right to prevent others from commercially exploiting his name and likeness as anyone.
An important and often overlooked aspect of the right of publicity is that it is a right held by everyone – not just celebrities. While celebrities presumably may command more money for the commercial use of their identities, everyone has the same right to protect his or her name from commercial exploitation without consent, regardless of previous anonymity.
This is a particularly important lesson for businesses that might be inclined to scour the Internet, copy a photograph of some unknown model and use it in advertising or packaging. In addition to the risk that unauthorized copying and use might violate a copyright in the photo, such unauthorized use for commercial promotion runs a strong risk of violating the model’s right of publicity and giving rise to a claim for damages. Even a business that has ordered a photo of a professional model specifically for use in advertising or packaging would do well to check whether the model signed a release that covers the particular use, because model releases can differ in scope, duration and effect.
Conkle, Kremer & Engel has been involved on both sides of the right of publicity – defending actions by models against companies who thought they had sufficient releases of the models’ rights of publicity, and asserting models’ rights to be compensated for the commercial value of their likenesses. CK&E attorneys stay current on the developing law of the right of publicity, which is a quickly expanding area of law affecting everyone from manufacturers and marketers to models, celebrities and ordinary people.
IECSC Las Vegas is the country’s largest spa and wellness conference and expo, with more than 600 exhibitors, including manufacturers, distributors, spas and wellness centers, and thousands of professionals attending from the national and international spa and wellness market. In addition, this year’s IBS Las Vegas, a beauty show focused primarily on salon-only and professional-grade products, featured more than 350 exhibitors. Many of CK&E’s industry clients exhibited at both IECSC Las Vegas and IBS Las Vegas to widespread interest by show attendees. Both IECSC Las Vegas and IBS Las Vegas offer a unique opportunity for CK&E to meet and interact with clients as well as other professionals in the beauty industry, and stay on the inside track about the industry’s latest developments and trends. Kim was pleased to be able to catch up with BonBliss Beauty founders Elissa and Jay Choi.
CK&E’s next trade show attendance will be at Cosmoprof North America, one of the world’s top trade shows for the personal care products industry.
So why not protect a container design through copyright? Because a container design that is functional is not copyrightable.
According to the Ninth Circuit Court of Appeals in its recent decision of Inhale, Inc. v. Starbuzz Tobacco, Inc., a case about a copyright claim on a hookah water pipe, copyright protection is not available for functional features of a useful article like a bottle or a chair. As a “useful article,” the shape of a container (including a hookah pipe) is copyrightable “only if, and only to the extent that, [it] incorporates . . . sculptural features that can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the container.” 17 U.S.C. § 101.
Courts have said that the non-functional, sculptural features must be “conceptually” or “physically” separable from the container in order to be protected by copyright. “Physically separable” is an easy concept – a printed label or a fancy emblem that is applied to the container can usually be protected by copyright, because it can exist separately from the container. “Conceptually separate” is more esoteric. The Ninth Circuit held that “the shape of a container is not independent of the container’s utilitarian function – to hold the contents within its shape – because the shape accomplishes the function.” In other words, as long as the shape of the container merely holds the container’s contents, the shape is not subject to copyright.
The Ninth Circuit left unanswered whether a “ring shape” that is molded into the bottle but does not conform to the interior container might be copyrightable as “conceptually separate” from the functional container. In any event, the Court’s lesson seems to be that, for copyright protection for a container, the copyrighted feature should serve no purpose in holding the contents. Conkle, Kremer & Engel attorneys regularly work with clients to most effectively secure and protect their valuable intellectual property, regardless of whether it’s a traditional trademark, artwork, a fragrance or a container.
The attached article includes links to topical blog posts and websites referenced in the interview. CK&E wishes to thank BIR’s Mike Nave for taking the initiative to disseminate information about these important industry issues. BIR proved again that working in the beauty industry without reading BIR is like working in finance without reading The Wall Street Journal.
Scent can evoke strong emotional reactions and create long-lasting memories, so a signature scent can be a critical element of an overall brand identity. As recently reported in The Los Angeles Times, retail clothing stores and hotels are beginning to use scent diffusers to greet consumers with their custom-made fragrances. Signature scents can also be introduced with products, such as Brazilian designer Melissa’s bubblegum scented plastic shoes or GM’s use of semisweet scented leather in Cadillac automobiles.
While brand owners often focus on traditional trademarks like brand names (word marks and stylized word marks) and logos (design marks), nontraditional trademarks like scent, sound and color may also be eligible for protection. In the United States, a scent mark can be registered as a trademark if it is used as a brand identifier, but only if it is neither functional nor naturally occurring in the goods or services. For example, the scent of elderflower cannot be protected as a trademark for use with perfume, as it would be functional, or for use with elderflower cordial, as it is naturally occurring. However, the scent of elderflower could be used as a trademark with stationery.
The next hurdle to registration on the Principal Register is secondary meaning. A brand owner must show that consumers associate the scent with the source of goods or services through evidence such as extensive use of the scent in commerce, advertising expenditure, affidavits from consumers, or surveys. In order to establish a signature scent as a registrable trademark, it is especially useful to provide evidence of advertising that specifically identifies the scent in connection with the goods or services (e.g., “stationery distinguished by its unique elderflower scent” or “always with our signature fragrance”).
As noted in Gilson on Trademarks, CK&E presented the USPTO with strong evidence that its client’s fragrance mark was not functional when used with hair care products, and CK&E submitted substantial, well-focused evidence of secondary meaning. As signature scents continue to develop as key elements of brand identities, more brand owners will seek trademark protection for their chosen fragrances. Brand owners should consider methods of protecting and enforcing their rights in nontraditional trademarks such as fragrance, color and sound.
As developed in discussions at Cosmoprof, a critical issue for many U.S. exhibitors entering the EU market is the July 2013 Cosmetics Regulation (EU Reg. 1223/2009) that overhauled the European Union’s regulatory landscape for personal care products. The Regulations introduced a number of new requirements, including labeling for nanomaterials such as titanium dioxide, claim verification standards and an EU-wide ban on animal testing. As a brief introduction to the new requirements, the EU distilled the July 2013 Cosmetics Regulation into the simplified infographic shown here.
Under the new Regulation, each manufacturer selling cosmetic products into the EU must designate a person or business entity physically located in the EU that will serve as the manufacturer’s designated “responsible person” for compliance with the Regulation. CK&E has strong working relationships and regularly works with such “responsible persons” who can be engaged to assist businesses seeking to expand into the EU. CK&E is pleased to participate in industry events such as Cosmoprof Bologna and programs such as BIMA, to help U.S. entrepreneurs expand into the EU and to assist foreign manufacturers develop and secure markets for their products in California and throughout the United States.