Trademark Opposition of Deadmou5 vs. Disney

At the end of March, The Trademark Trial and Appeals Board granted Disney a 90 day extension to file an opposition against a pending trademark sought by Ronica Holdings, Limited, on behalf of the popular EDM artist, Joel Zimmerman, known as “Deadmou5” (pronounced “Dead Mouse”).

The pending trademark, shown below (Serial No. 85972976) features a smiling black and white mouse head with big ears, similar to the Mickey Mouse silhouette, also shown below. It is likely that Disney and Zimmerman’s representatives are trying to hash this out during the 90 day period.

In one scenario, Disney may seek to block the trademark outright fearing a black and white mouse logo may lead to a likelihood of confusion with the iconic Mickey Mouse trademark. Moreover, Disney may also fear that a similar mouse logo used in connection with the edgy EDM scene, may tarnish the Mickey Mouse’s family friendly image that Disney has worked to build up for many years.

Alternatively, the parties may reach an agreement where both trademarks may co-exist with certain agreed upon limitations.

Zimmerman’s mark at issue is already used in interstate commerce and around the world. According the Deadmou5 wikipedia page, Joel Zimmerman created his mouse head logo using 3D graphic design software, and has used similar mouse designs on his album artwork dating back to 2005. Moreover, Zimmerman is recognized for performing as Deadmou5 while wearing a giant electronic mouse head.

While on one hand, Zimmerman may argue that there is no likelihood of confusion based on his continued use of the mark without a problem for almost ten years, but on the other hand, Disney’s ability to litigate this to the fullest may give Mr. Zimmerman good reason to avoid a high cost legal battle, and seek a quick compromise.

Top Gun Copyright Infringement on Twitter

Paramount Pictures is not happy about the way a Twitter user is sharing one of its movies. The Twitter user @555hz attempted to show the entire film “Top Gun” on Twitter through tweets of the film as frame-by-frame clips and images.

The Twitter user posted content from the film every half hour, generating over 1,500 tweets in one month. The user has gained a following of over 6,900 other Twitter users. The handle “@555hz” is suggested to reference the number of frames per second at which the film was being “shown” on Twitter. According to this calculation, the film could be tweeted in 7,000 postings at a rate of two tweets posted per hour. At this rate, the entire film would be on Twitter within 145 days.

Paramount obviously caught this well before the 145-day mark. The last frame was posted on Twitter on February 25, 2014, with Paramount threatening legal action. Paramount issued a Digital Millennium and Copyright Act (DMCA) takedown notice on February 21, 2014. The DMCA provides a safe harbor for internet service providers and imposes no liability on providers for transmitting information that may infringe a copyright. However, the DMCA requires that the providers remove material from their users’ websites when they receive proper notice that their users are engaging in acts of copyright infringement. This gives copyright holders an avenue to limit those who are infringing their rights.

Though Twitter has not removed @555hz from its site, the user has not posted any Tweets since February 25, 2014. Many of the tweets showing frames of the movie are still available on the user’s Twitter feed, while a few posts are unable to be seen, with the message, “This image has been removed in response to a report from the copyright holder.”

Generally, infringement of a film through the use of film clips would typically be seen on video-based platforms such as YouTube. Additionally, Twitter ostensibly seems like an unlikely candidate as a platform for viewing copyrighted materials, however we now know otherwise with advancements in social media that can lend to such potential infringements. So this case shows the ease, or maybe we should say creative ways, in which individuals may potentially infringe copyrighted material. It enforces the need for lawyers to be quick in responding to infringement (at two frames uploaded per hour, @555hz got quite far!), and the need for the law to keep up with the ways in which users may interact with developing platforms and technology.

Super Soaker Settlement $73 Million

The power of creating an incredible invention and having good counsel can be seen in a recent arbitration settlement in which the inventor of the Super Soaker, Lonnie Johnson Ph.D, was awarded $72.9 million in royalties against Hasbro. Although Johnson has over 80 patents, many of which we are sure relate to the Super Soaker or variations of it, Johnson was able to obtain this mammoth settlement based on a breach of contract of a more ambiguous nature rather than on any specific intellectual property. Namely, in a 1996 agreement, Hasbro agreed to pay Johnson royalties of 2 percent for “three-dimensional products” based on the appearance of the toy and 1 percent for “two-dimensional visual representations.” Negotiating such broad terms in his agreement opened the doors for Hasbro’s breach which ultimately led to this incredible settlement.

Just to put things in perspective, Johnson founded his company and licensed the Super Soaker for the first time in 1989, which generated more than $200 million in retail sales in the following two years.

USPTO Remains Open During Government Shutdown

While many government agencies have been forced to close shop as a result of the quibbling between the members of congress, there has been one bright bastion of hope for American efficiency; the United States Patent and Trademark Office. Without sounding like I’ve been paid by them, the USPTO appears to be the exemplary son of Uncle Sam compared to its inept siblings. Why? Because it remains open during the shut down, able to stand on its own feet. See their official comment here:

USPTO shutdown
Don’t get me wrong, as an IP firm with a high volume of patent and trademark filings, we have to deal with the USPTO everyday and they are often a pain in the a**. I especially can’t stand their hold music, they haven’t changed it in years… I digress. But from the stand point of operations, I give credit where credit is due.

They estimate that they can keep operations afloat for about 4 weeks, and after that if their reserve funds run out they would still keep a “small staff” going to accept new work. So what’s their secret? Fees. A lot of them. The USPTO is able to exist on their own private budget resulting from the fees collected for a variety of patent and trademark related filings. And these fees are quite expensive. But interestingly back in April of this year when the American Invents Act was put into effect, there was a lot of downward adjustments to those fees. Namely, a “micro entity” category was created for small inventors which reduced fees 50% for many types, but not all, filings. Now if we only had a “micro entity” health care equivalent… Bottom-line, although not perfect, the USPTO has structured their fees well and is profitable, plus they have a healthy philosophy on the significance of IP filings, “[o]ur economy depends upon the work of the employees of the PTO to protect new ideas and investments in innovation and creativity,” says Colleen M. Kelley, President of the National Treasury Employees Union, which represents USPTO employees. “A dramatic increase in the already existing backlog at PTO would harm American investors and entrepreneurs responsible for much of the job growth in our country.”