PUBLISHED BY HEATHER M. MORADO

I am an attorney at Morado Law, PLLC.  I practice in the areas of entertainment and intellectual property law.

Friday
Apr202012

Is LMFAO an immoral and scandalous trademark?

The dance music duo LMFAO, best known for club anthems such as “Sorry for Party Rocking,” and “Sexy and I Know It,” are attempting for the second time to secure trademark registrations with the United States Patent and Trademark Office (USPTO) by filing four applications in March.  LMFAO had previously filed applications in 2008, but they were refused registration by the USPTO on the basis that the acronym LMFAO was shorthand for “Laughing My Fucking Ass Off.”  The USPTO Examining Attorney concluded that the mark LMFAO constituted “immoral and scandalous matter” that was unregistrable under the Trademark Act, 15 U.S.C. §1052(a).   

To be considered scandalous, a mark must be “shocking to the sense of truth, decency or propriety; disgraceful; offensive; disreputable…giving offense to the conscience or moral feelings…or calling out for condemnation, in the context of the marketplace as applied to the goods and/or services described in the application.”  Scandalousness is determined from the standpoint of “not necessarily a majority, but a substantial composite of the general public, and in the context of contemporary attitudes.”  In re Mavety Media Group Ltd., 33 F.3d 1367, 31 USPQ2d 1923 (Fed. Cir. 1994).  Examples of previous trademark applications that were refused registration on this basis include “1-800-JACK-OFF,” “BULLSHIT,” “A-HOLE PATROL,” “SEX ROD,” and “COCAINE.” 

What may have prompted LMFAO’s recent trademark applications is the USPTO’s approval in 2011 of an application for LMFAO, filed by an unrelated third party.  In response to the Examining Attorney’s inquiry regarding the meaning of LMFAO, the applicant responded, “LMFAO appearing in the mark…is a term of art for Laughing My Freaking Ass Off.”  Interestingly, the recent applications filed by the musical group LMFAO contain this same disclaimer as to the meaning of the acronym.

Although the USPTO has allowed a previous application for LMFAO, it likely won’t be relevant to the applications filed by the musical group LMFAO.  USPTO Examining Attorneys are not bound by decisions made by other Examining Attorneys.  Rather, an Examining Attorney’s decision is based solely on the unique facts and evidence of record in connection with a particular application.  TMEP § 1216.01. 

Will the Examining Attorney find that LMFAO is an immoral and scandalous mark, seemingly in contradiction of another recently approved application?  It’s difficult to predict. 

In the meantime, I’m going to LMFAO at this hilarious video…wiggle wiggle wiggle wiggle wiggle, yeah!

Friday
Mar092012

Washington House of Representatives passes ESSHB 5539

Great news to report - late last night, on the last day of the regular session, the Washington state House of Representatives passed the bill to renew the Motion Picture Competitiveness program, ESSHB 5539, by a vote of 92 to 6.  Governor Gregoire now has 20 days to sign the bill into law.  Hat tip to Washington Filmworks and everyone who contacted their legislators in support of the bill. 

Thursday
Mar012012

Justin Bieber sued by makers of "Joustin Beaver" game

RC3, the developers of an app called "Joustin Beaver," have petitioned a Florida district court for a declaratory judgment that the app does not infringe the rights of Justin Bieber.  RC3 filed the lawsuit as a preemptive strike in response to a cease and desist letter from Bieber's lawyers.  In the lawsuit, RC3 claims that the app is protected speech under the First Amendment because it is a parody of Bieber's celebrity persona: 

"The App, a video game, is a parody of the commercial success of the Defendant and any celebrity. The parody app portrays a beaver floating on a log down a river. The beaver presents with bangs, a lance, and a purple sweater. The beaver knocks 'Phot-Hogs' that are attempting to take his photograph into the river with his lance. The beaver also signs 'Otter-graphs.' The beaver also must dodge the 'whirlpool of success,' which will lead beaver out of control, while navigating the river."

Bieber's camp objected to the game on the grounds that it implied a false endorsement by Bieber, and infringed on his rights of publicity (i.e., his image and likeness).  If the lawsuit moves forward, the outcome will likely depend on whether Bieber can show that consumers would be confused as to affiliation, sponsorship, or endorsement by Bieber.  However, if RC3's parody accomplishes its purpose, consumers will not be confused because they will recognize that "Joustin Beaver" is merely making fun of Justin Bieber.  Judge for yourself: 

 

 

Monday
Feb202012

Roscoe's House of Chicken and Waffles slammed for failing to obtain ASCAP license

Under the Copyright Act, public venues such as bars, restaurants, nightclubs, gyms, and the like (as well as terrestrial and online radio stations) must obtain public performance licenses from music copyright owners in order to play music.  The three performing rights societies - ASCAP, BMI, and SESAC - represent music copyright owners and collect blanket licenses from the various venues where music is played in public.  The performing rights organizations then distribute the income collected to the copyright owners.  ASCAP has reported revenues at record high levels, totaling $935 million in 2010 alone.  The reputation of the performing rights societies has been that they generally focus more on compliance rather than enforcement.  However, the following case should be a cautionary tale for those who refuse to obtain the proper licenses from performing rights societies.

East Coast Foods, Inc., owner of the chain of restaurants known as "Roscoe's House of Chicken and Waffles," has lost an appeal of a judgment awarding damages, attorney's fees and costs arising out of the restaurant's failure to obtain a license from ASCAP to play music in the restaurant.  The district court granted summary judgment to the Plaintiffs (consisting of various songwriters and music publishers, represented by ASCAP), based primarily on the testimony of an ASCAP representative that visited Roscoe's and heard numerous recognizable songs played by both a DJ and a live band in the restaurant.  East Coast Foods challenged the testimony as expert testimony by a lay witness that should have been excluded from evidence by the district court.  The Court of Appeals disagreed:

"[I]dentifying popular songs does not require scientific, technical, or other specialized knowledge...On the contrary, identifying music is a reflexive daily process for millions of radio listeners, amateur karaoke singers, and fans of Name That Tune reruns...Clearly, the district court correctly determined that [the representative's] testimony was admissible."

The Court of Appeals concluded that the district court correctly determined that there was no issue of material fact that the Defendant committed copyright infringement.  The Court of Appeals affirmed the award of statutory damages against the Defendant in the amount of $36,000, as well as the far greater award of $162,728.22 against the Defendant for the Plaintiffs' attorney's fees and costs.  Although the fee award was discretionary, the Court of Appeals showed little empathy, finding that the Defendant could have avoided liability by purchasing a valid license at any point during the seven years in which ASCAP made repeated requests for Defendant to do so. 

Moral of the story: don't ignore a request by a performing rights society to obtain a proper license to play music at your venue.  The case is Range Road Music, Inc. et. al. v. East Coast Foods, Inc., et. al., Docket No. 10-55691, U.S. Ninth Circuit Court of Appeals, filed February 16, 2012.  A copy of the full opinion can be found here.

Wednesday
Feb152012

Washington Senate passes SB 5539 (Motion Picture Competitiveness Program)

The Senate has passed SB 5539, the bill to renew Washington's Motion Picture Competitiveness Program.  The program offers funding assistance of up to 30% for movies, television shows and commercials filmed in Washington that meet certain spending thresholds ($500,000 for feature films; $300,000 for television productions; and $150,000 for commercials); use local businesses and workers; and offer health and pension benefits.  The renewal of Washington's film incentive is vital to the local film industry, as investors will simply not allow productions to be filmed here when there are 40 states that currently provide inventive programs. 

Renewal of the program makes economic sense: according to a Washington State Joint Legislative Audit and Review Commission review, for the $20 million the state put into the incentive program since 2007, film companies spent about $137 million. In other words, the state and its workers got an almost sevenfold return on their investment.

The bill will now be referred to the House of Representatives for consideration.  Stay tuned.