Cohen IP Law Group will be at The Israel Conference in Los Angeles tomorrow and Friday. The conference show cases some of the best tech companies coming out of Israel. Many are from Fortune 1000 firms like Microsoft, Yahoo, and Google, as well as many early-stage start-ups. For more information go to: http://www.theisraelconference.org/
This past June, Hershey filed a lawsuit in Colorado Federal Court against TinctureBell, LLC and TinctureBelle Marijuanka LLC- two companies that marketed cannabis-laced chocolate bars that were allegedly packaged to look like Hershey products. The causes of action listed in the complaint were: trademark infringement, trademark dilution, false designation of origin, unfair competition, and passing off. The candies included “Hashees” peanut butter cups, and are packaged similar to Reese’s Peanut Butter Cups. The Defendants’ Ganja Joy bars appear to look similar to Almond Joys, and lastly, their HashHeath Bars appear to look identical to Hershey’s Heath Bars.
The lawsuit settled relatively quickly for unknown reasons. If Hershey proceeded with litigation under its trademark infringement claims, it likely had a strong case under 43(a) of the Lanham act. For starters, at the present time, federal trademark law does not yet protect any marks for cannabis products under the Controlled Substance Act (CSA), and further cannabis is still classified as a schedule 1 drug. Additionally, the Defendants products at issue like “Hashees” very much resembled the look of Reese’s. Accordingly, it’s not far-fetched to conclude that a Court may hold that the Defendants were diluting Hershey’s marks by associating a child-friendly and world-wide brand with getting high.
According to The Denver Business Journal, “[t]he settlement between Hershey and TinctureBelle requires the Colorado retailer to ‘destroy all remaining specimens of each product, including without limitation cartons, containers, packaging, wrappers, labels, displays and any other materials …’ TinctureBelle is also prevented from ‘making any false or disparaging statements about Hershey and its products.'” However, the settlement will not have any impact on TinctureBelle’s current products, as the owner of TinctureBell, Char Mayes claimed to have “changed our entire label line approximately six months ago, long before these allegations surfaced.”
The future of trademark protection for cannabis goods is fluid and changing, but even if it is given full trademark protection one day, “canni-preneurs” will not be protected if their packaging confuses the public and dilutes existing brands. Every startup company should strive to create their own, unique, and identifiable brand. As the memorable marketing campaign by Apple once said, “Think Different.”
Here is an article about trademarks based off of my interview with McMurry/TMG for their hospitals clients.
Design patents are a critical form of intellectual property for businesses to protect their product designs. The prior term for design patents were fourteen (14) years from the issuance date. Now, pursuant to the changes made in the Patent Law Treaties Implementation Act of 2012 (PLTIA), design patents filed on or after Dec.18, 2013 have a term of fifteen (15) years from the issuance date.
The XPrize Foundation, Inc. in association with Disney’s new movie “Big Hero 6” has created it’s own contest for young innovators. The challenge is for kids 8-17 to describe how they would S.T.E.A.M. (science, technology, engineering, arts, or mathematics) to solve problems out there in the world. The big winners get to walk the red carpet in Hollywood at the premiere of Big Hero 6. https://www.xprizechallenge.org/. The United States Patent and Trademark Office is also a sponsor of Xprize.
MGM , the film company that owns the rights to ROCKY sent a cease and desist letter to Philadelphia resident, Rebecca Shaefer who planned to launch a “Rocky 50K Fat-Ass Run” inspired by Rocky’s iconic jogging route through the streets of Philadelphia. Philadelphia Magazine columnist Dan McQuade‘s figured out that the boxer ran 30.61 miles by analyzing running montages in the films. MGM, which owns rights to the film objected on trademark grounds because they sponsor a Rocky themed 5k/10k run to take place in the city of Philadelphia in November. The “Rocky 50K Fat Ass Run” sparked concern of consumers being confused about source of sponsorship. The letter states the following:
MGM demands that you and your affiliates immediately remove the Rockyname and any references, images or promotions related to Rocky from any… materials you may be disseminating in connection with the Unauthorized Rocky Event…Please be advised that failure to comply with these demands will cause MGM to take appropriate legal action to protect its rights and interests to seek all injunctions, damages, fees and costs to which it is entitled under law.
It may appear that MGM has a legitimate claim based on the similarity of the events- in which both involve running, and the “Rocky” name. However, Ms. Schaffer may also have an argument based on fair use, and the first amendment. Such that, the “Rocky 50K Fat-Ass Run” is satirical in nature, in that no one is actually expected to take it seriously or run 50 kilometers.
In 2011, wildlife photographer David Slater set up a camera on Sulawesi, a small island in Indonesia. Mr. Slater received an unanticipated gift, a monkey picked up his camera and took hundreds of pictures, including self portraits or “selfies” that have gone viral on the web this past year. Recently, controversy has erupted over who owns the copyright to the photos. David Slater has claimed ownership, along with thousands of dollars in unpaid royalties from the photos that went viral. As reported by the BBC and The Los Angeles Times, “Wikimedia, the nonprofit behind Wikipedia, says the pictures taken by the monkey belong to the public domain and has refused to take them down. Slater has said that he is missing out on thousands of dollars in royalties and that he played a bigger role in the photos’ creation than he’s receiving credit for. “You could look at it like this: The monkey was my assistant,” he told the BBC.
The U.S. Copyright office addressed this issue recently in a public draft of the Compendium of U.S. Copyright Office Practices, Third Edition — which was released Tuesday. It says the office will register only works that were created by human beings. “Works produced by nature, animals or plants” or “purportedly created by divine or supernatural beings” don’t count, it says. The first example in that category is “a photograph taken by a monkey.” Similarly, the Office will not register works produced by a machine or mere mechanical process that operates randomly or automatically without any creative input or intervention from a human author.”
With some sound legal advice -Mr. Slater could have obtained copyright ownership if he digitally altered the images enough -where his creative choices would have given him ownership of the image under 102a of the US Copyright Act, which states “Copyright protection subsists, in accordance with this title, in original works of authorship fixed in any tangible medium of expression, now known or later developed, from which they can be perceived, reproduced, or otherwise communicated, either directly or with the aid of a machine or device;” however this was not done. Since the photos were all release unaltered, or without any significant alterations, the photos are in the public domain according to the U.S. Copyright office.
For anyone in the food and beverage industry or involved in business marketing, Michael Cohen will be moderating a seminar on July 14, 2014 at 1PM entitled LANHAM ACT: ISSUES AFTER LEXMARK AND POM WONDERFUL.