Cruz Law, PLLC

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“Mean Green” gets stern with ESPN, Michigan State

The North Texas Mean Green is protective of its nickname and was willing to send a cease and desist to ESPN and Michigan State when it referred to the Michigan State Spartans as the Mean Green in a recent commercial promoting its matchup with Michigan.

North Texas has a trademark on its nickname and it aimed to protect it when it let ESPN and Michigan State know. However, instead of a prolonged standoff, the cable network backed down and the Athletic Director for Michigan State reached out to North Texas administration.

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This incident shows what a simple notification to an alleged infringer can do to save on legal fees.  It’s clear that ESPN was in the wrong and it was likely a simple oversight.  North Texas was professional in pointing out the infringement.  For its part, MSU and ESPN acknowledged the issue instead of attempting to argue otherwise. Sometimes being straightforward may be the best cure for an alleged infringer.

Are tattoo depictions in video games protected by copyright or Fair Use?

Tattoos and video games are back in court. “Fair use” may be the key.

Slightly over a year ago, the Second Circuit dismissed a portion of a lawsuit brought by Solid Oak Sketches against 2K Games and Take-Two Interactive.

Solid Oak alleges copyright infringement stemming from makers of the NBA 2K video game using images of tattoos of NBA players in the video game. The video game maker claims the defense of Fair Use.

The elements of Fair Use are described in this post.

The 4 factors to show Fair Use are:

1. The purpose and character of the use, including whether such use is a commercial nature or is for nonprofit educational purposes;
2. The nature of the copyrighted work;
3. The amount and substantiality of the portion used in relation to the copyrighted work as a whole; and
4. The effect of the use upon the potential market for or value of the copyrighted work.

Essentially, the argument is that the copying of the copyrighted material is “de minimis” since Solid Oak is not suing over all the tattoos in the case.

Notably, the Plaintiff in this case filed copyright registrations for the exclusive license of tattoos of certain players within the video game which makes the lawsuit and claims a little curious. One might see this as a forward-thinking strategy to protect those tattoo artists. Others might see it as a form of trolling to induce these types of lawsuits.

Solid Oak notes that it is not asking for those NBA players with tattoos to seek permission every time to go into public but when “corporate entities that purposefully seek to commercially benefit from the use of the Tattoos be held accountable for their actions and pay a royalty to the rightful owner of the intellectual property.”

It dismisses the video game maker’s argument for Fair Use since it claims that the players depicted are prominently featured, used in its entirety, the purpose for the use for the tattoo images is commercial in nature and affects the market for the copyrighted work. Solid Oak also argues against the de minimis argument of 2K Games as well.

Since this case is at the initial pleadings stage, Solid Oak is requesting further discovery prior to a decision on the pleadings. We will continue to follow this interesting case as the decision will address issues of the Fair Use defense.

Cal rebuffs Chicago Bears on ‘Go Bears’ trademark

Go Bears belongs to Cal.  This, after the NFL’s Chicago Bears attempted to use the trademarked phrase as part of its twitter hashtag this season.

NFL teams have rolled out team hashtags.  When typed in, it would show a little logo of the team.

However, Cal had the phrase trademark in 2014.  It appears that the Chicago Bears are backing down from a potential legal fight with the Bay Area school.

This is not the first time that the Chicago football team has fallen to a college trademark.  Last year, it attempted to use the #BearDown mark.  Of course, that is trademarked by the University of Arizona.  The football team has the Bear Down moniker on its field at has been a long-time phrase.

The issue reflects a good cause for due diligence in having researched the phrase or mark you use in a marketing campaign.  Proper review will help eliminate potential PR faux pas like this.

The Midwest pro team is now 0-2 to Pac 12 teams.

In-n-Out sues over name of burgers

Two fast-food burger restaurants are embroiled in a trademark infringement lawsuit in the Central District of California as In N Out has sued Smashburger over the name of its new Triple Double burger.

In N Out claims that the new burger infringes with its Double Double and Triple Triple Burgers.  In N Out’s Double Double mark was approved by the USPTO in October 2014.  Triple Triple was awarded a registration in 1990.

Smashburger filed a trademark application for Smashburger Triple Double and Triple Triple and that mark is being opposed by In N Out.

It will be interesting to see how this litigation plays out as well as the opposition filed by In N Out.

From a trademark perspective, there is an argument that these trademarks are descriptive as each is merely describing the burger (i.e., double double has two patties, a triple triple has three patties, in the case of the triple double it has two burgers and three levels of cheese).  Descriptive marks tend to be on the weaker end of mark which allows for some flexibility from competitors to register similar marks and avoid infringement.  Based on the descriptiveness issue, we will see if Smashburger attempts to file a counterclaim and perhaps seek to cancel In N Out’s current trademarks.  We will see if that is what happens here.

Baseball Bat Makers Swing in Court in Trademark dispute

A battle of bats took place in the Eastern District of Missouri featuring two of the biggest makers of baseball bats in the industry.  Rawlings Sporting Goods Company sued Easton Diamond Sports alleging that Easton was infringing Rawlings 5150 model bats with an S150 model it was rolling out for 2018.

A day before Easton’s release of its bats, the Court denied a Temporary Restraining Order filed by Rawlings to halt the rollout of the S150 models.

Rawlings claimed that the S150 designation would likely cause confusion with the 5150 model.  In its opinion, the Court held there to be little likelihood of confusion between the two models.  Notably, the Court indicated that both brands used the name in addition to the model designations.  Also, in its marketing and point of sale materials, both used the “Rawlings” or “Easton” name to avoid any confusion with other brands.  Thus, the “sub-marks” on the baseball bats take on a “subservient role to the house brand.”

The Court also conducted a visual analysis of the marks and the “S”150 was not deemed confusing to the 5150 model.  It also did not believe an “untoward purpose” in the use of the S150 mark since other models used by Easton included an “S” before the model.  Thus, there was no belief of an intent to cause confusion.

In its order, the Court noted that Easton’s S150 was meant to be a “low-end” model while Rawlings’ 5150 was a “high-end” bat.

The ruling by the Court on the TRO does not mean that the lawsuit is over but Rawlings swung and missed at its first opportunity to halt its rival from selling its new models.

Rawlings v Easton by JASONCRUZ206 on Scribd