Sometimes there are legal decisions that test reality. A recent decision from the Trademark Trial and Appeal Board (the “TTAB”) found that marks using designs of certain quadrupeds are confusingly similar despite the fact that animals depicted are completely different species. In Abercrombie & Fitch Trading Co. v. Isabella Elisabeth Shnittger, Opposition No. 91218738 (August 12, 2019), the TTAB compared the bull moose design marks of opposer Abercrombie & Fitch against that mark of applicant Isabella Schnittger showing a bugling bull elk which also included the word mark “RED DEAR”:
The TTAB found that the Abercrombie’s Moose trademarks, while not famous, are nonetheless “’renowned’ in the clothing market, and commercially quite strong.” Applicant’s goods and opposer’s goods — i.e., clothing items — are essentially identical and therefore would be present together in the same channels of trade. Applicant conceded that both her mark and Abercrombie’s marks depict four-legged animals with antlers and are depicted in full-bodied profiles. However, the judge acknowledged that there are differences:
To be sure, there are also differences between the animals, as their antlers are not the same and their heads are shaped differently and in somewhat different positions. The mouth in Applicant’s deer is open, perhaps because it is calling out or consuming something
Nonetheless, the judge concluded that clothing consumers would likely be confused by the marks because “the recollection of the average purchaser … normally retains a general rather than a specific impression.” In other words, the “average purchaser,” whoever that may be, somehow cannot to see the difference between a moose (Abercrombie’s mark) and an elk (Schnittger’s mark). Given the “renowned” nature of Abercrombie’s marks and the identity of the parties goods, the overall general visual impression of the marks, there was sufficient basis for a likelihood of confusion. Accordingly, the TTAB sustained Abercrombie’s opposition.
Perhaps the judge spends too much time in the urban swamp environs of Washington D.C. and should get out to the forests and hills. But in fairness to the judge, the applicant may be confused about the nature of her own mark. The word mark “RED DEAR,” in Ms. Schnittger’s mark, is an apparent play on the homonym “deer,” but her design is the silhouette of an elk. Even though different critters are, well, different, it would appear that the average person may get confused after all between image of a moose and an elk, or a deer for that matter.
In any case, the take-away here is that businesses will need to make sure that the “general impression” of their visual design marks are sufficiently different from design marks of others in their field to avoid confusion, and not rely on any specific details in their marks that may be different.
When two idiots go to battle only a fool can win. But which one? R&R Games, Inc. produces and sells a board game with the title and brand name “YOU MUST BE AN IDIOT!” In 2006, the US Patent & Trademark Office (the “USPTO”) granted trademark registration for the mark, reg. no. 3137118.
Late comer TwoPointOh Games produces and sells a card game and cards for games under the title and brand name “YOU’RE AN IDIOT” and obtained a trademark registration in 2018, reg. no. 5524635. However, R&R Games was not amused. Instead of taking its marbles and going home, R&R Games filed a cancellation proceeding with the USPTO’s Trademark Trial and Appeal Board (the “TTAB”) seeking to cancel TwoPointOh’s registration. On May 23, 2022, the TTAB decided the battle between:
The TTAB took note that the respective products are strongly related, the channels of trade identical, both advertised via the same methods, and sold through the same outlets. Further, both products could be sold to and used by the same type of consumers, who are considered of ordinary sophistication. The latter point can be important because highly sophisticated consumers of sophisticated, expensive products tend to be more discerning of what they are purchasing. Conversely, consumers of ordinary sophistication would tend to be less discerning, especially with much less expensive consumer products.
The TTAB then analyzed the respective marks. The Board found the marks to be “extremely similar in appearance and sound” because of the dominant use of the word “IDIOT” in both. Furthermore, the Board found that the meaning and impression of both marks “constitute essentially the same insult,” i.e., calling someone a fool. From the perspective of the average purchaser, both marks are nearly the same. Of course, it doesn’t help that the packaging of both products have a similar look as well. Accordingly, the TTAB found in favor of R&R Games’ “YOU MUST BE AN IDIOT,” granting the petition to cancel “YOU’RE AN IDIOT.”
The lesson here for businesses is pretty straight-forward: don’t play idiot games and foolishly adopt marks similar to other brands that can hoodwink consumers with confusion.
When Taurus climbs a stairway to heaven, or perhaps the other way around — when Stairway to Heaven climbs on the back of Taurus: the case of the ‘60’s rock band Spirit vs. rock legend Led Zeppelin is one of 2018’s more interesting copyright cases.
Back in 2014, Michael Skidmore — trustee for the estate of Randy Wolfe, deceased guitarist for Spirit — sued Led Zeppelin for copyright infringement over Led Zeppelin’s song “Stairway To Heaven” (“STH”). After a trial the jury concluded that Led Zeppelin’s “Stairway To Heaven” did not infringe Spirit’s song “Taurus.” However, on September 28, 2018, the U.S. 9thCircuit Court of Appeals breathed new life into the case, reversing the trial verdict and ordering a new trial. (See, Skidmore v. Warner/Chappel Music Inc. and Led Zeppelin, et al., 15-cv-3462, US Dist. Court, Central District Calif.; 9thCir. Appellate No. 16-56287.)
While the matter of recognition was important to Randy Wolfe’s family, the Wolfe estate is nonetheless looking for substantial money damages. The Copyright Law has a three-year statute of limitation, which means that the Wolfe estate can recover damages only from 2011 forward. That is still a substantial amount, especially considering royalties for future air play and recording sales.
Led Zeppelin first released STH, the most popular song in Rock ‘n Roll history, in 1971. However, three years earlier in 1968, Spirit recorded and released “Taurus,” written by Randy Wolfe. At issue is the similarity of 4 bars of music in the opening of STH and in the opening of “Taurus.” These four bars form the underlying musical theme in both songs.
So, is that enough to find copyright infringement? Some may argue that a mere four bars of music do not make a song. True enough. But the whole song does not need to be copied for there to be infringement. After all, in 1978 George Harrison’s mega-hit song “My Sweet Lord” was found to have infringed the Ronny Mack song “He’s So Fine” (the 1963 hit performed by girl-group The Chiffons), based on short musical phrases with identical “grace notes” in the “hook” of both songs (a repeated short riff or phrase, often in the chorus, that “hooks” the ear of the listener) falling on, literally: “My sweet lord…”; and “He’s so fine…” In the case of Led Zeppelin’s STH and Spirit’s “Taurus,” the opening four bars could be analogized as the hooks in both songs, especially in the case of STH’s iconic opening guitar arpeggio.
Led Zeppelin has a history of musical “appropriation.” In 2012 they settled a copyright law suit over their song “Dazed And Confused” for allegedly infringing Jake Holmes’ song of the same title. And there have been other infringement claims made on behalf of Howlin’ Wolf, Richie Valens, and others. Skidmore’s Complaint in the STH case shows a chart pointing out 17 instances of infringement claims against Led Zeppelin.
Copyright infringement requires proving three things: (1) the plaintiff owns a valid copyright in the work in question; (2) the defendant had access to the work and copied its protected elements; and (3) the defendant’s work is substantially similar to the plaintiff’s work. If the defendant had access to the original work, the matter of copying can be inferred from circumstantial evidence. In this case, it is clear circumstantially that Led Zeppelin’s Jimmy Page and Robert Plant had access to “Taurus.” The band Spirit was well known to both Page and Plant. Spirit had toured with Led Zeppelin before STH was released. In many of those shows Spirit performed “Taurus.” Jimmy Page even admitted at trial that prior to composing STH he owned a Spirit album that contained “Taurus.” The jury concluded that even though Led Zeppelin did indeed have access to “Taurus,” the two songs were not substantially similar. Therefore, no infringement.
The case, however, had an odd turn — the jury was never allowed to hear the actual Spirit and Led Zeppelin sound recordings. The trial judge had ruled the protectable copyrighted work was not Spirit’s sound recording but the musical composition as transcribed. Therefore, Michael Skidmore essentially had to prove that STH, as transcribed, was substantially similar to “Taurus” based on the rather simplistic lead sheet music deposited with the Copyright Office in 1967. While a witness at trial with a guitar was permitted to play the sheet music, such a “performance” would not have the same impact as hearing the actual sound recordings.
The 9thCircuit reversed the trial verdict, concluding that the judge had made several errors in his jury instructions. On retrial the jury may be able, this time, to hear the actual sound recordings. Since Jimmy Page had stuck to his denial that he had actually heard “Taurus,” the appeal panel directed that the jury should be allowed to hear the sound recordings for the purpose of showing whether Led Zeppelin had access to Spirit’s song. The 9thCircuit panel also found the trial judge incorrectly instructed the jury that “chromatic scales, arpeggios or short sequences of three notes” are not protectable. Since the four bars at issue are fundamentally an arpeggio, the jury instruction ham-strung the plaintiff’s case. As noted above, a short musical phrase was enough to hang George Harrison with copyright infringement.
In comparing the particulars, both songs are in the key of A minor. Both have an A minor chord progression (or arpeggio) with a descending bass line. Both are finger picked. Both are in the same meter. Both have the same tone, a kind of Baroque era, lute-like quality. But while STH has a similar bass line, it also has an ascending counterpoint melody not present in “Taurus.” So, the songs are similar, but are they substantiallysimilar…? Clearly the jury had thought not.
It is also possible that the “Taurus” arpeggio is already in the public domain and, therefore, cannot be protected under copyright. The A minor arpeggio with a descending bass line is not uncommon and, in fact, goes as far back as the Baroque era 400 years ago. The “Taurus” passage is very similar to the opening phrase in “Sonata di Chiattara e Violino, con il suo Basso Continuo,” the 360-year old work of Italian composer Giovanni Battista Granata. But perhaps all that will be sorted out during the new trial — perhaps the estate of Signore Granata might appreciate some official “recognition” for his contribution to STH.
One can do one’s own audio comparison by clicking to following YouTube links:
It is a well-worn expression that small businesses are the backbone of America’s economy. The truth is that most small businesses are started by individuals to give themselves a means of employment. And employment lasts as long as the business is profitable. However, too often entrepreneurs do not put in place the necessary legal mechanisms to deal effectively with the day when the profit ends or when one or more of the business partners want to leave.
Thirty years ago, a good friend informed me that he was forming a business with four other partners in a bucolic New England town. I recommended he make sure that they had a proper shareholders agreement for the new corporation to address disputes among the owners and other matters, e.g. buyout and dissolution. My friend, who had the touch of the iconoclast in him at the time, rejected that advice, saying he did not want to go into any business if they first had to get all wound up with prescriptive legal matters and legal expenses. In other words, he wanted to trust the business to each participant’s word and handshake.
Several years later, internal disputes grew out of control, despite the business being profitable. In the end the business was shuttered in the wake of several bitter law suits among the shareholders. So much for their handshake agreement.
Often times, an internal dispute is a matter of one partner shareholder having had enough of the business, for whatever reason, and wants to close it to cash out his investment, while the other partner shareholder wants to keep the business going. Without a shareholder agreement in place (or an operating agreement for a limited liability company [ an “LLC” company]), disputing shareholders are thrown back on what the law or a court will permit. Under New York’s Business Corporation Law, § 1104(a), a court can grant dissolution of a corporation if the company’s owners are deadlocked and cannot make operational decisions. One might assume that where one shareholder wants to close the company and the other wants to keep it operating creates a deadlocked situation. Well, that’s not necessarily the case, according to the recent decision in: Matter of Ades v. A&E Stores, Inc., New York Supreme Court, New York County, Index No. 650267/2017, decided January 23, 2018.
“Where the offense is, let the great axe fall.” — Claudius in Hamlet.
Here’s a recent situation where a family-owned business failed to do some due diligence, chose to adopt their family name as their brand name and trademark, and in the end created an offense that brought down the axe — a story of two wineries in “The Blair Family vs. The Blair Family.”
