Hot Issues in IP Protection

Hot Issues in IP Protection

G R E E N B E R G T R A U R I G , L L P | A T T O R N E Y S A T L A W | W W W . G T L A W . C O M

Presented by:Steve Wadyka

September 11, 2018 Stockholm, Sweden

© 2018 Greenberg Traurig, LLP

Love Made LLC, v. Victoria’s Secret Stores, Inc.

• Love Made, “an all-female fashion and lifestyle brand” that “has achieved success and acclaim,” alleges in its trademark and copyright infringement suit that it has been using the Love Made Me Do It “trademarks since 2013.” It has a trademark registration for “Love Made Me Do It” for use on “Baby bodysuits; Baby bottoms; Baby tops; Hats; Bottoms; Hoods; Jackets; Jerseys; Sports caps and hats; Stocking hats; Tops” since December 2016.

• Victoria’s Secret allegedly uses “Love Made Me Do It” on “tote bags and promotional items … as a source identifier in promotional efforts for a new fragrance.” Love Made claims this is a source identifier.

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Love Made LLC, v. Victoria’s Secret Stores, Inc.

• The use of big, bold letters on the front of a shirt is considered merely ornamental use, rather than use as a trademark. But there's a fairly easy workaround for this: the producer can also print the phrase on a tag inside the shirt, and that qualifies as trademark use, as Love Made has done.

• VS Defense: Since it would be difficult for Love Made to establish strong trademark rights if it is using the trademark in a decorative way, VS claims it is also using it as an ornamental use, therefore arguing that it is making fair descriptive use of the term.

• TO BE DECIDED

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© 2018 Greenberg Traurig, LLP 4

Can Celebrities Post Photos ofThemselves on Instagram?


• A London-based celebrity photo firm sued KhloeKardashian for copyright infringement for posting photo ofherself without licensing the photo from Xposure, the copyright holder

• Photo was licensed for limited use to The Daily Mail and displayed copyright notice

• Khloe posted photo on her Instagram account and removed the copyright notice

• The photo was highly valuable due in part to Khloe’scelebrity status

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Maybe not! It Could Be Copyright Infringement.


• It is not sufficient simply to give credit to the photographeror copyright holder

• Khloe now licenses the photos of herself that she posts on Instagram

• Fan accounts are being disabled by Instagram due to copyright violations

• Can fan accounts claim fair use? Probably not.

• Applies to criticism, comment, news reporting, teaching, scholarship, and research

• Non-profit educational and non-commercial uses

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Unless You Own the Copyright, You Can’tUse the Photo Without Permission


• A person (does not need to be a celebrity) owns the right to commercially exploit his or her name and likeness

• Gives individuals the ability to prevent others from exploitng their name and/or likeness withoutpermission

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The Right of Publicity


The Best Defense is a Good Offense!


• Beckham sued Splash News and photographer for violating his right of publicity – exploiting his image for financial gain

• Claims they attempted to ”extort” him to pay USD 40,000 after he posted photo of himself on his Instagram account

• ”The only reason that the photos have any value is becausethey depict Beckham”

• Suit is pending

• Outcome uncertain due to newsworthiness and public interest, and that Beckham benefits from paparazzi coverage

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Odell Beckham v. Splash News and Picture Agency


Lululemon case

• Lululemon applied to register its yoga mat shape

as a trademark

• Lululemon argued that its single rounded corner was distinctive of its

brand of yoga mat.

• Lululemon submitted evidence of tremendous sales, high product

ratings, and substantial advertising expenditures.

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❖ The TTAB (Trademark Trial and Appeal Board) said

there was inadequate evidence that the single

rounded corner was distinctive


Lululemon case

• TTAB found that such evidence was more indicative

of the mats popularity than the customer association

of the one rounded corner with the Lululemon brand

• The comment was that the company did not use “look for” advertising

• “Look for” advertising which directs the consumer in no uncertain

terms to look for a certain feature to know that it is from that

source.

• This will created a level of consumer recognition of the product

feature with the brand.

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Hot Issues in IP Protection