Natasha vs. Nikita: Elton John finally vindicated in case of copyright claim brought by unlucky lover and lonely lyricist

Back in 1982, Guy Hobbs, a photographer working on a Russian cruise ship, enjoyed a brief, shipboard courtship with a Russian waitress.  Alas, it was not to be for Hobbs, and, as artists often do, Hobbs wrote a song about the sad romance.  He named it “Natasha,” registered the copyright in the U.K., and sent it to several music publishers, hoping, no doubt, to turn the experience to some profit, at least.

Unlucky in love, unlucky in life, Hobbs could apparently find no takers for his wistful song.  However, the publishing company Big Pig Music, Ltd., one of the companies that had earlier declined Hobbs’ song, several years later registered a copyright for the Elton John and Bernie Taupin song “Nikita,” which went on to become a huge hit for Elton John in 1985 (See Elton John singing Nikita here).  Hobbs claims he first saw the written lyrics of “Nikita” in 2001.  He contacted John and Taupin to demand payment for what he alleged was copyright infringement; but again, not surprisingly, he was rebuffed.

Hobbs sued Sir Elton Hercules John, et. al in District Court, lost, and, apparently undaunted, appealed to the Seventh Circuit.  Interestingly, even though the action was brought 27 years after the alleged infringement, John did not raise the three-year statute of limitations for copyright infringement as part of his defense.  Perhaps it was a matter of artistic pride for John to show outright that “Nikita” did not infringe on Hobbs’ “Natasha” rather than to win on what some might think of as a legal technicality.

The United States Court of Appeals for the Seventh Circuit, in its July 17, 2013 opinion (you can read the full opinion here), looked at the lyrics in detail.  Hobbs had argued that the two songs shared a unique combination of the following elements:

1. A theme of impossible love between a Western man and a Communist woman during the Cold War;
2. References to events that never happened;
3. Descriptions of the beloved’s light eyes;
4. References to written correspondence to the beloved;
5. Repetition of the beloved’s name, the word “never,” the phrase “I need you,” and some form of the phrase “you will never know;” and
6. A title which is a one-word, phonetically-similar title consisting of a three-syllable female Russian name, both beginning with the letter “N” and ending with the letter “A.”

The Court, however, pointed out that the Copyright Act does not protect general ideas but only the particular expression of an idea; and even at the level of the particular expression, the Copyright Act does not protect “incidents, characters or settings which are as a practical matter indispensable, or at least standard, in the treatment of a given topic.”  In other words, while a writer can certainly copyright a specific expression of a particular story, nobody can be allowed a monopoly on all stories about impossible romances, where the lovers are separated by the Cold War, and the Russian woman has pale eyes and a name beginning with “N” and ending with “A.”

In fact, the court found that the two stories in this case were substantially different in many other ways, one telling the story of two lovers forced to part ways, the other a story of a man who briefly sees and desires a woman he can never meet as they are separated by “guns and gates.”  And because the two stories were substantially different, Hobbs’ copyright infringement claim failed as a matter of law.

“Oh, Nikita you will never know….”

Do Trademark Lawyers Matter?

This is not an existential question, but the title of a new research study by Deborah Gerhardt and Jon McClanahan, soon to be published in the Stanford Technology Law Review, 2013.

It is no secret that non-lawyers can file federal trademark applications, just as individuals can incorporate companies and perform any number of legal tasks for themselves.  The question is, is it really smart for them to do so?  Lawyers are often asked, if the online, self-help sites file all the documents you need for a whole range of legal services, all at what seem like reasonable prices, what do you gain by hiring a lawyer to do these things for you?

Gerhardt and McClanahan provide empirical evidence that may help to make the decision simpler.  On average, they discovered, only 42% of trademark applications filed by pro se (i.e., “do-it-yourself”) applicants were ultimately successful in registering.  When they looked at marks that got at least as far as the publication stage of the application process, 62% of non-lawyer applications made it that far, while 82% of lawyer applications were published.

The study also showed a substantial difference between applications filed by inexperienced trademark attorneys (for example, a solo practitioner who files just a few trademarks a year) and those attorneys who make trademark and intellectual property work a substantial part of their practice.  Applications filed by experienced trademark attorneys, the study found, were more than 50% more likely to register successfully than those applications submitted by pro se applicants.

And even that is not the whole story.  Let’s not forget that not all pro se applicants are alike—in fact, this group includes all the large companies that file marks for themselves using in-house counsel rather than hiring a trademark lawyer from outside the firm.  For example, the top so-called pro se applicants include American Greetings, Twentieth Century Fox, Hasbro, Avon, American Express, Nestle, Hershey, Victoria’s Secret, XEROX, McDonalds, and others.  If you take these applicants out of the mix (since they are really not true do-it yourselfers), the average entrepreneur who files his or her own trademark has a far better chance of having his or her mark rejected than ever seeing it register.

Since US federal trademark applications, even those that pass through the system without a hitch, take approximately nine months to complete, the marketing and lost opportunity costs of an unsuccessful application can make the actual application fees look like a drop in the ocean.  The question then becomes not can you afford to have an attorney prosecute your trademark application… but can you afford not to?

The $95,000 Tweet — a not-so-gentle reminder that what happens online stays online

While social media has had many positive impacts, it can also come with some costly consequences.  For Omiesha Daniels, these consequences totaled $95,000.00.

In 2011, Ms. Daniels suffered a concussion and a broken right arm as a result of a car accident with a refrigeration company van. Ms. Daniels sued the refrigeration company claiming, among other things, that her injured arm prevented her from doing her job as a hair stylist, and asked for damages between $1.1 million and $1.3 million arising from the accident, including $800,000.00 for pain and suffering and $300,000.00 for diminished earning capacity.

During trial, the refrigeration company showed the jury several messages and pictures Ms. Daniels posted on Twittter. These tweets included a comment that she was “starting to love [her] scar” and a picture of Ms. Daniels carrying a handbag with her injured arm.

Although the jury originally awarded her $237,000.00 in damages, the jury reduced the amount to $142,000.00 – allegedly because of the infamous tweets.

At the end of the day, Ms. Daniels’ seemingly harmless tweets cost her $95,000.00: a not-so-gentle reminder that what happens online stays online.

While this lawsuit involved an individual, it also serves to remind businesses everywhere why it is smart to have a good social media policy in place for employees. For more information regarding employment policies or handbooks, including social media policies, please contact the attorneys at Briskin, Cross & Sanford, LLC.

The $3.13 Million Background Check. EEOC finds that Pepsi’s former use of criminal background checks discriminated based on race

Pepsi Beverages, like many companies, performed background checks on its employment applicants. Pepsi continued performing those criminal background checks until January 2012, when the U.S. Equal Employment Opportunity Commission fined Pepsi $3.13 million for those background checks.

The Equal Employment Opportunity Commission (the “E.E.O.C.”) investigated Pepsi’s background check policy and found that Pepsi failed to hire job applicants who had simply been arrested, but not convicted. The E.E.O.C.’s investigation also revealed that Pepsi’s policy denied employment opportunities to job applicants who had been arrested or convicted of certain minor offenses. Overall, the E.E.O.C. found that the effect of Pepsi’s background check policy unlawfully affected African Americans, and that at least 300 African Americans were excluded from permanent employment with Pepsi because of this background check policy.

The far-reaching implication of this multi-million dollar judgment is that employers cannot maintain a policy of blanket exclusion from employment based on the results of a criminal background check. In fact, the E.E.O.C. has specifically recommended that employers avoid these blanket exclusions. The E.E.O.C. has also taken the position that arrests alone, without convictions, are not probative of criminal conduct.

Employers can still perform criminal background checks on job applicants, but in making a decision whether or not to hire an employee, the employer must analyze (1) the nature of the offense; (2) the time elapsed between the conviction and the application; and (3) the nature of the job. This process should be implemented for every job application in which a criminal background check is conducted and should also be included in every company’s employee handbook or written employment or hiring policies.

You can read the EEOC’s press release here.

Hey, America: Take a vacation!

One of my international clients recently asked me to draft an employment agreement for one of his US companies. “How much paid vacation time am I required to give my employees?” he asked. Surprisingly, the answer is none. The US may be the only advanced nation with no law requiring a certain amount of paid vacation, or any vacation at all, in fact. Countries with the highest number of days off include Austria and Portugal (both with 35), Germany (34), and, of course, France (31). USA Today.

But just because one is allowed all those days at the beach, does this mean that one has to take them? Not at all. In the US, where the typical private sector employee gets 16 paid vacation days and holidays (although it must be said that fully a quarter of Americans get no paid holiday at all), only 57% of workers take their full allotment.  In France, on the other hand, fully 89% of workers use every single day that they are allotted!

Not that less vacation necessarily means better productivity.  Bloomberg Businessweek reports that “former NASA scientists, working on behalf of Air New Zealand and using testing tools normally reserved for astronauts, recently found that vacationers experienced an 82% increase in job performance post-trip.”

As CNN’s Fareed Zakaria says, “Hey America: Take a Vacation!”

A game changer for startups? Invest Georgia Exemption removes barrier to equity crowdfunding in Georgia

If the provisions of the Jumpstart Our Business Startups Act, a/k/a the JOBS Act, that were intended to ease restrictions on crowdfunding for small businesses sparked a rush of excitement nationwide, the Securities and Exchange Commission, ever cautious, has not exactly stoked that fire.  In fact, the SEC has still to grind out rules that will allow the law to go into effect and finally open the throttle of this economic engine nationwide. Rumored finally to be out this fall, many still say it will be 2014 before the SEC is ready to publish its final rules.

Undaunted, Georgia has leapt ahead of the pack with the Invest Georgia Exemption (IGE), allowing non-accredited residents of Georgia to invest in Georgia companies under certain conditions.  Using this exemption, Georgia companies can raise up to $1 million annually from non-accredited as well as accredited investors, and–in what may or may not be the game changer–can solicit investments in Georgia from Georgia-based residents, even if they are non-accredited (up to a limit of $10,000 in each Georgia issuer per investor).  See Equity Crowdfunding: Much Ado About Nothing?

The Secretary of State provides a synopsis of the rules here, and full Rules of the Georgia Commissioner of Securities can be found here.  You may still need an attorney to interpret them, but crowdfunding websites like Kickstarter will undoubtedly make the process easier very soon.  Although the debate continues as to how willing small investors will actually be to fund fledgling enterprise, one thing is certain: with the Invest Georgia Exemption, Georgia has taken another step forward in establishing itself as one of the most startup friendly states in the US and now offers some of the most fertile ground in the nation for investment-seeking tech and non-tech startups alike.

Can I trademark my last name?

The short answer is, “Generally, no.”  People try it all the time, and the United States Patent and Trademark Office politely rejects the applications and keeps the filing fees.  If you disagree with the Trademark Office’s rejection, or if you think someone else is trying to grab your surname for a trademark and you want to file an opposition to their application (or even seek to cancel their mark if it has already registered), you can take it up with the Trademark Trial and Appeal Board, or TTAB.  Trademark litigation is a specialized type of practice that runs a bit like a federal court trial, though most of it happens in writing rather than “live and in person.”  A good illustration of this is the recent (January 7, 2013) case that pitted Mitchell Miller d/b/a The Miller Law Group against Michelle Miller d/b/a, you guessed it, The Miller Law Group.

Michele Ballard Miller, d/b/a Miller Law Group filed an application to register the mark MILLER LAW GROUP (with “LAW GROUP” disclaimed) for “legal services.”  While the examining attorney initially allowed the application, Mitchell Miller, a Professional Corp. d/b/a Miller Law Group, P.C. filed an objection and ultimately won the day, preventing the registration.

To be clear, what a trademark registration essentially does is to prevent anyone who comes after you from using an identical or confusingly similar mark in a way that consumers are likely to confuse the newcomer’s goods or services with yours; in other words, to ride on the coattails of your brand identity.  Now, when it comes to surnames, it would be rather unfair to let someone trademark their name (which might also be your name) in connection with their product or service, effectively preventing you from using your name (if it happened to be the same) to advertise your business.  In other words, “Mrs. Jones’ Cake Shop” ought not to be allowed where no future Mrs. Jones can could call her cake shop after herself.

When someone tries to register a mark that looks or sounds like a surname, TTAB essentially tries to put itself in the mind of an average member of the public and asks whether the proposed name sounds like a unique brand name or, well, a common or garden surname.  Typically, this involves asking whether the surname is rare; whether anyone connected with applicant has the trademark as a surname; whether the term has any other recognized meaning; and whether the term has the “look and feel” of a surname.

In the Miller case, the surname is hardly rare; in fact, the court noted that it was the sixth most common US surname in the 2000 census and certainly not an unusual name for attorneys.  Of course, Michele Miller has “Miller” as her surname, so that would tend to lead people to think that “Miller” in “The Miller Law Group” designated a particular person and not merely a “brand.”  True, “Miller” has other recognized meanings (someone who operates a mill, for example), but the Board was not persuaded that other potential meanings of “Miller” spring immediately to mind when you see “Miller Law Group.”  And finally, while the “look and feel” test is somewhat subjective, there was little doubt in this case that “Miller” has the look and feel of a surname.

Incidentally, what surname might not have the “look and feel” of a surname?  Consider, for example, the surname “Miracle.”  There is a trademark “Miracles Fitness,” which, although it is not owned by anyone named “Miracle,” may well have passed the test in not calling to the consumer’s mind the name of the owner if it had, in fact, been owned by a Ms. Miracle.  As one witness noted in the hearings that lead to the Lanham Act (on which modern trademark law is based), almost every word you can think of is somebody’s surname.  And it was certainly not the intent of Congress to prevent registration of all trademarks that could be a surname, merely to keep common names available for their owner’s use and to respect the common-law right of people to use their own name in advertising their own businesses.

One way around a refusal to register your name as a trademark is to make an argument that the use of the name has “acquired distinctiveness” through your substantial and exclusive use if it as a trademark in connection with your products and services.  Michelle Miller couldn’t pass this test (there are, of course, many, many lawyers named Miller providing legal services under that name), but consider, for example, “Kimberly-Clark,” which certainly has the look and feel of a surname but has come to identify that company’s products through its widespread, substantial and exclusive use in connection with such products.

Unlike many courts, TTAB allows a company to represent itself in Board proceedings without hiring a lawyer.  Of course, you can also put on a helmet and jersey and walk onto the field to face the Atlanta Falcons… but is that really such a smart thing to do?  Trademark and intellectual property law is a specialized practice area, and failing to retain an experienced trademark and intellectual property attorney can be an expensive mistake.  Michelle Miller’s case took more than five years to work its way through the process, from her original trademark application to TTAB’s final rejection, so clearly the consequences of a bad decision are not quick or cheap.

Bottom line: Consult an experienced trademark attorney as you develop a name for your product or service… and certainly do so before you attempt to register it as a trademark.

One Year Later: Revisiting Glenn v. Brumby

On December 6, 2011, the United States Court of Appeals for the 11^th Circuit (which includes Georgia), issued the decision in Glenn v. Brumby, which established, for Georgia at least, a controversial precedent. Vandy Beth Glenn began work in the Georgia legislature as a male, and when she was fired from her position in the Georgia legislature, had transitioned to a female. Defendant, the General Assembly’s Legislative Counsel, Sewell Brumby, fired Ms. Glenn in October 2007 after telling her that she was “immoral” and her transition was unacceptable and inappropriate. Both the Georgia District Court and the 11^th Circuit Court of Appeals found that Ms. Glenn’s rights were violated by Defendant Brumby under the Equal Protection Clause of the United States Constitution by terminating Glenn’s employment because of her sex. In the opinion, the Court of Appeals specifically held that “[a]ll persons, whether transgender or not, are protected from discrimination on the basis of gender stereotype.” Glenn v. Brumby, 663 F.3d 1312 (11^th Cir. 2011).

Although decided under the Equal Protection Clause, which only applies to public employers (like the government), the Court of Appeals in Brumby relied heavily on precedent decided under Title VII of the Civil Rights Act of 1964 (“Title VII”), which applies to all employers that employ 15 or more employees and prohibits discrimination based on the employee’s race, color, national origin, sex, or religion. While not conclusive, the implication is that the Brumby decision may continue expanding the definition of “sex” from meaning simply “male and female equality” (its historic meaning) to include protection against gender stereotyping, including gender stereotyping against transsexual individuals.

Practically, this means that any policies adopted by employers with 15 or more employees that simply prohibit discrimination (including harassment) based on sex alone may not be enough under Title VII. Even more practically, this means that all employers with 15 or more employees may need to review their employment practices, manuals, or policies to ensure those practices do not discriminate against or improperly impact employees based on that employee’s gender stereotypes and not just on that employee’s sex alone.

Who Owns Your Tattoo?

It is not only in our copyright, trademark, and intellectual property practice but also in our general business practice that we regularly have to deal with who actually owns (or will own) the copyright of a particular piece of graphic art, a photograph, a video, a design, a set of presentation slides, a piece of software code, and so on.  Copyright protects a work of original authorship (including literary, dramatic, musical, artistic, and certain other intellectual works) once it is created in a “fixed form.”  There is no doubt that a drawing, a piece of writing or sculpture, even a piece of computer code meets this definition… but a tattoo?

The Pugh Research Center reports that while 14% of Americans have at least one tattoo, among US adults aged 26-40, the figure is now 40%, and tattoos are now a $1.65 Billion dollar industry in the US. www.statisticbrain.com/tattoo-statistics/.  And, while the courts have not yet definitively inked in the principle, if a work of art on paper is copyrightable, why not a work of art on skin?

The interesting wrinkle here, of course, is that unless your tattoo artist was your employee, or unless he or she signed a “work made for hire” agreement with you, the tattoo artist probably owns the copyright to the original design now permanently displayed on your chest.  Arguably, in purchasing the tattoo, you have purchased a license to display it (although that is part of the bundle of rights normally reserved to the copyright holder), but this right may not be unlimited, and it may be that a company using the tattooed image of an athlete endorsing a product or captured in a video game and identified by his or her distinctive tattoos will find itself owing a royalty to the tattoo artist.  Darren Heitner for Forbes writes here about San Francisco 49ers quarterback Colin Kaepernick sitting in a tattoo artist’s chair holding a tablet featuring the Yahoo! Fantasy Football app while getting inked up: Questions Concerning Copyright Of Athlete Tattoos Has Companies Scrambling – Forbes.

As you might expect, the lawsuits have already started: in Whitmill vs. Warner Brothers, the tattoo artist that inked Mike Tyson’s distinctive facial art sued W.B. for allegedly copying the Tyson tat and placing it on the face of an actor in The Hangover 2.  You can read the complaint here.  While that case may have settled out of court, penalties for copyright infringement can be high, so whether you are protecting that one-of-a-kind body-portrait or a more mundane work of authorship, you may wish to run it past your attorney before, rather than after, the ink is dry.

15 of the most expensive domains of all time – The Next Web

A number of my clients in recent months have bought or sold internet real estate in sought-after neighborhoods of the world wide web, where value is determined, just as in the real world, by location, location, location!  I am often asked, “what do you think I should sell it for,” or “do you think I am paying too much for this domain?”  The first step is often to explore the available trademark rights associated with a domain purchase–there is not much point in purchasing a catchy domain for a lot of cash if you can’t use it to brand your product or service.

Here are fifteen of the most desirable www addresses, which recently sold for prices ranging from $5m to $35m.

15 of the most expensive domains of all time – The Next Web.

Hat tip to Ben Woods of TNW