In This Issue

Timothy J. Lockhart 

The U.S. District Court for the Southern District of New York recently issued a preliminary injunction against publishing, advertising, or distributing 60 Years Later: Coming Through the Rye, a book based on the famous J.D. Salinger novel The Catcher in the Rye. Although Fredrik Colting claimed his novel was a parody of Catcher and therefore under the doctrine of fair use did not infringe Salinger’s copyright, the court disagreed, saying Colting’s book was actually an unauthorized sequel.

The similarities are numerous and, as Colting admitted, intentional. Holden Caulfield is the depressed and lonely 16-year-old protagonist of Catcher. "Mr. C." is the depressed and lonely 76-year-old protagonist of 60 Years. Both characters are sarcastic, use slang and euphemisms, constantly make digressions, refer to the reader as "you," have siblings named Phoebe and D.B., and had a brother named Allie who died when young. Moreover, as the court noted, "like Holden, Mr. C. is a frequent liar, constantly complains, is out of shape, has trouble maneuvering in the dark, combs his hair with his hand to one side, [and] wears the same red hunting cap."

Although the copyright in a literary work generally protects the expression of the work but not necessarily its characters (especially its minor characters), the court found "the character of Holden Caulfield . . . is sufficiently delineated so that a claim for infringement will lie." Thus, one cannot make unauthorized use of the Caulfield character unless such use falls within the "fair-use" exception to copyright infringement.

One type of "fair use" is to transform a copyrighted work into something new, with a further purpose or different character, altering the first work with new expression, meaning or message. Because it can have that transformative effect, parody is generally regarded as a fair use of the work parodied. For example,the U.S. Supreme Court held that 2 Live Crew’s rap version of "Oh, Pretty Woman" (earlier a hit record for Roy Orbison) was a parody and therefore a fair use of the copyrighted song.

Because a sequel extends but does not transform a work, however, making an unauthorized sequel to a work infringes the copyright in the original. Thus, Colting argued that his novel transformed rather than merely continued Catcher and constituted a parody in the same way that The Wind Done Gone, a retelling of Gone With The Wind from the slaves’ viewpoint, was ruled a parody. The court disagreed, saying that "60 Years . . . contains no reasonably discernable rejoinder or specific criticism of any character or theme of Catcher."

Undoubtedly the publisher’s claim on the original jacket of 60 Years that the novel is "a marvelous sequel to one of our most beloved classics" did not help the defendants’ case. Colting has appealed the trial court's decision.

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Ruby W. Lee 

On April 29, 2009, the U.S. Court of Appeals for the Federal Circuit unanimously ruled that the Trademark Trial and Appeal Board (TTAB) of the U.S. Patent and Trademark Office (USPTO) wrongly upheld the denial of an application to register the mark MOSKOVSKAYA for use with vodka. The TTAB had agreed with the USPTO examining attorney that MOSKOVSKAYA, which in Russian means "of or from Moscow," was geographically misdescriptive.

Spirits International filed an intent-to-use application in 1993 to register the mark MOSKOVSKAYA for vodka that was not "manufactured, produced, or sold in Moscow." In 2006 the USPTO examining attorney issued a final refusal of the application on the grounds of geographic misdescriptiveness. Noting the significance of the mark in Russian as meaning "of or from Moscow," the examining attorney concluded that because (1) many people think Russian vodka is superior to vodkas from other countries and (2) some people would have the mistaken belief that MOSKOVSKAYA vodka comes from Moscow, consumers would be more likely to purchase that brand of vodka.

The Federal Circuit considered whether a substantial number of potential customers would be influenced in their purchasing decision if they believed that MOSKOVSKAYA brand vodka came from Russia. The court said that materiality was the deciding factor and opined that "a prima facie case of materiality [exists if there is] some indication that a substantial portion of the relevant consumers would be materially influenced" to buy a product or service based on the mark’s geographic meaning. The court noted that only one-quarter of one percent of the U.S. population speaks Russian. Such a low percentage, on its own, was not large enough, the court held, to constitute a substantial portion of the population.

However, the court stated that if Russian speakers make up a higher percentage of the vodka-consuming public in the United States and if some number of non-Russian speakers would understand the MOSKOVSKAYA mark as suggesting that the vodka comes from Moscow, those groups together might constitute a substantial portion of the intended audience for purposes of the materiality requirement. The court remanded the case to the USPTO for the TTAB to analyze the mark under the correct legal test for material deception.

From the INTA Bulletin of August 1, 2009

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Trey T. Parker 

The U.S. Court of Appeals for the Second Circuit has ruled selling goods with altered or removed Universal Product Code ("UPC") labels can constitute trademark infringement even if the goods are genuine. On June 19 the court enjoined CVS Corporation from selling genuine COOL WATER fragrances with the UPC labels removed.

Zino Davidoff SA manufactures and distributes high-end fragrances, some under the COOL WATER brand. To protect that brand, Davidoff has a quality assurance and anti-counterfeiting program that includes placing a unique UPC label on every COOL WATER product it manufacturers. The UPC label contains a variety of information about a particular unit, such as the time and place of production, the production line, ingredients used, etc.

That information helps Davidoff control quality by enabling it to trace defective products and implement recalls and other measures. The information also allows Davidoff to discover counterfeit products because counterfeiters either omit the UPC labels from their products or use replicas that do not conform to Davidoff’s program.

In 2005 Davidoff discovered that CVS was selling counterfeit COOL WATER fragrances. Davidoff sent a cease-and-desist letter to CVS, which replied it would review its inventory, remove all counterfeits, and then purchase only from authorized distributors. However, in 2006, Davidoff learned CVS was continuing to sell counterfeit COOL WATER fragrances. Davidoff sued CVS, alleging, among other things, trademark infringement, unfair competition, and trademark dilution.

During discovery, Davidoff found that, in addition to the counterfeits, CVS’s inventory contained 16,600 genuine Davidoff products with the UPC labels removed. CVS argued it should be allowed to sell those products even without UPC labels because there was no question as to their genuineness. In response Davidoff moved for a preliminary injunction forbidding the sale of any of its trademarked goods without a valid UPC label.

The trial court granted Davidoff’s motion. The Second Circuit affirmed, holding the removal of the UPC label alone constituted trademark infringement regardless of whether the goods were genuine.

The Davidoff case is a reminder that trademarks are indicators of quality as well as of origin. Quality-control devices such as UPC labels provide a trademark owner with a way to prevent counterfeit or inferior products from diminishing the value of its mark.

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Timothy J. Lockhart 

"Sky-vertising"? That’s how a U.S. company characterizes its new form of aerial advertising with what are essentially clouds in the shape of letters or designs. Snow Master Evaporative Snow Systems, Inc. has coined the mark FLOGOS to brand the "flying logos" it introduced last year by mixing water, helium and soap compounds to form ads that float from 30 minutes to an hour and travel up to 30 miles at high altitudes.

Aerial advertising is nothing new. Balloons, blimps and aircraft have displayed marks or towed branded banners for years. But FLOGOS ads —clouds as trademarks—are sufficiently different from the older forms of aerial advertising to attract attention, and attention is what advertisers want, especially during a weak economy. Last November, the Attractions Expo of the International Association of Amusement Parks and Attractions named FLOGOS the best new product in equipment and supplies.

Businesses such as Nintendo and the Los Angeles Angels baseball team have already used FLOGOS ads to advertise their goods and services. In addition, FLOGOS ads have taken the shapes of McDonald’s golden arches; the number 207, for the street address of a Hard Rock Hotel in San Diego; and the letter S, for Sheraton.

Advertisers like FLOGOS because the quirky ads attract young people, who are sometimes difficult to reach with more traditional TV, radio and print materials. But, experts warn, the effectiveness of using marks in unusual ways can fade. Steve Hall, editor of the industry website www.adrants.com, says displaying marks on houses, rooftops or even people’s foreheads has not proved effective over time.

Some environmentalists are concerned about the chemicals in FLOGOS ads. However, Snow Master says its "trademark clouds" are environmentally safe, consisting of 99 percent water, with much of the remainder coming from plant materials.

Snow Master has applied to register the marks FLOGO and FLOGOS with the U.S. Patent and Trademark Office for use with "aerator machines for generating foam formulations in various shapes" and "business consultation and advertising services for others in the field of aerial foam formations." The company claims to have million-dollar profits and has experienced rapid growth, expanding from five U.S. offices to 18 worldwide.

Trademark offices around the world have received many unusual specimens of use. But who would have predicted a specimen in the form of a cloud?

From the INTA Bulletin of September 15, 2009

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