image by bravo213
The beautifully-appointed, and newly opened, World Chess Hall of Fame, in our very own Central West End of St. Louis, is making trademark news. The World Chess Hall of Fame may be new to St. Louis, but it has been offering services under the US CHESS HALL OF FAME AND MUSEUM mark since 1986, and providing retail and exhibition services under the WORLD CHESS HALL OF FAME mark since 2001.
Shortly before the World Chess Hall of Fame’s move to St. Louis in 2011, the WORLD CHESS FEDERATION HALL OF FAME began exhibiting in Las Vegas. The crux of the matter is the World Chess Hall of Fame alleges that the public is likely to be confused by the similar service marks. According to the complaint, World Chess Hall of Fame (Plaintiff) contacted World Chess Federation (Defendant) in order to resolve the dispute. Defendant claimed that it, not Plaintiff, was the senior user of the mark, having used it since 1992, and following this statement, via its website threatened criminal action. (Interesting.)
In support of its claims of seniority, the WCF, offered the scanned cover of a book written by Defendant but not in circulation, two videos – one that does not use the WORLD CHESS FEDERATION HALL OF FAME mark, and the other is unable to be located, and a partial copy of a 1993 issue of American Chess Monthly. World Chess Hall of Fame holds a registration for its mark, applied for in August 1999 and issued in March 2002. Use of the WORLD CHESS HALL OF FAME mark in commerce began mid-2001. Though World Chess Federation Hall of Fame has not provided clear evidence of prior use, it has raised the possibility.
As the situation could not be resolved amicably through informal means, or through the criminal justice system, World Chess Hall of Fame filed a complaint yesterday, in the Eastern District of the 8th Circuit. The counts include trademark infringement, unfair competition and false designation of origin, state and common law trademark infringement and unfair competition, trademark dilution, and a request for a declaratory judgment that World Chess Hall of Fame is the senior user.
While awaiting updates on this case, it may be a good time to visit the World Chess Hall of Fame, located at 4652 Maryland Avenue in St. Louis.
World Chess Museum, Inc. and World Chess Hall of Fame v. World Chess Federation, Inc. and Stan Vaughan; Case: 4:12-cv-00089
Litigation St. Louis Trademark by .
Join us for an afternoon of intellectual property education, updates and networking for entrepreneurs!
Elizabeth will be presenting with Harley Blosser, of Blosser Leinauer, on “The ‘Other’ IP – Trademarks, Copyrights, and Trade Secrets.”
When: Wednesday, October 19, 2011, 2 pm – 5 pm (Happy Hour 5-6 pm)
Where: Center for Emerging Technologies, 4041 Forest Park Parkway, St. Louis, Missouri
Cost: $30 to attend, $50 to attend for CLE credit (cash or check only)
Registration: By phone – 314.615.6915 or email – CET_programs@emergingtech.org
You’re putting the finishing touches on your new website – Congratulations! I know how much thought, time, and energy went into it. Just one more thing…
Have you made sure that you are not treading on others’ IP rights?
Because the posting and sharing of content on the internet happens so quickly, sometimes it is easy to forget that copyright and trademark laws still apply. However, it is also (almost as) easy to double-check the sources of the material before giving the green light to the grand opening. This post is the first in a series on how to avoid infringing others’ intellectual property rights on the internet, or otherwise titled: How to Stay Out of Hot Water While Launching a Website.
Photos
To bring a website to live, imagery is essential. It is also essential to know the provenance of the photographs or designs you have posted. If the image is protected by copyright, you need a license, or permission from the copyright holder, to reproduce it. Places to look for easy-to-license images are Getty Images and iStockphoto.
The last few years have seen the advent and growth in popularity of Creative Commons, an alternative licensing scheme, which allows a photographer or creator to choose how others may reuse the material. The licenses ranged from requiring attribution only, to requiring attribution in addition to disallowing commercial reuse or modifications. You can search Google by license type using the advanced image search. When doing so, you should you make sure to look for the appropriate CC license in conjunction with the image.
Don’t assume that photographs scanned and posted from originals in your possession are ok, either. Most professional photographers retain their copyrights. Make sure you are allowed to reproduce the photos in a digital media.
Of course, if you took the picture, you don’t have to worry about infringing on copyright. However, you may need to consider the subject(s) of the photo. If there are individuals, especially children, visible, you will probably want to get their permission through signing a simple release form.
When embellishing your website with images, just remember, Get Permission!
For Missouri lawyers, or attorneys needing last minute Missouri CLE credit, there is an all day event sponsored by the Solo and Small Firm Section of the Bar Association of Metropolitan St. Louis. The 2011 CLE Potpourri features 8 different courses, which counts as 9 MCLE hours, including 2 hours of ethics. The subject matter covers immigration, family law, mediation, e-discovery, and many others.
I mention this here, as I will be an instructor for an hour with a colleague, Harley Blosser, of the Blosser Law Firm. Harley and I will go over ‘Ten Things a General Practitioner Needs to Know About Trademark & Copyright Law.’
To register or find out more information, navigate to BAMSL here.
By this time, almost everyone is aware of the conflict that arose between Jeff Koons and the makers (imm Living)/retailers (Park Life) of balloon dog bookends. As the artist behind the huge balloon dog statutes, Mr. Koons took umbrance with others selling bookends in the shape of balloon dogs. From his point of view, as I imagine it to be, the makers of the bookends are imitating his design and infringing on his copyrights. From the point of view of the bookend creators, they are reproducing, in bookend form, a subject in the public domain. As my previous post [link] was on the basics of the public domain, this would be the appropriate time to look at the incorporation of public domain material into a subsequent work.
Like hearts on Valentines, long balloons are just meant to be twisted into dogs. Though he exercised a skill, and one I don’t possess, the clown who turned the balloon into the familiar dog shape does not have a copyright in the result. Anyone may reuse the element of the traditional balloon dog – it is not protected by copyright, and it is part of the public domain. Jeff Koons sampled the public domain and reused the balloon dog concept. However, Koons did not blow up a balloon and manipulate it to look like a dog. He did what no one else had done before; he took the element of the balloon puppy, and he made it out of metal and made it enormous. Jeff Koons created an original work entitled to copyright protection using a subject from the public domain.
Case in point, incorporating public domain material is possible, but as here, your work may not receive the copyright protection you are looking for. Because the balloon dog is a concept from the public domain, it may be freely used. Jeff Koons used it to make a mesmerizing sculpture (up close in LACMA, I couldn’t stop looking at it), and imm Living used it to make kitschy bookends. It is unsurprising that Koons would balk a bit at others selling what to him seems to be Koons memorabilia without a license. Likewise, it is interesting to note that the bookends followed the statute, though not as miniature, bookend-shaped reproductions. Thankfully, this is how copyright works. By keeping public domain material in the public domain, we are free to inspire each other. Creativity would be significantly stifled if every time an element is reused it is secured by copyright, which is also why the fashion world is fiercely divided on whether to extend copyright protection to designs. However, that is a saga for another day.
As is appropriate, copyright protects originality. Jeff Koons borrowed the balloon dog theme from the public domain when creating his statutes. Imm Living borrowed from the public domain in creating its bookends. Had Mr. Koons made a dog statue of original design instead of in the familiar balloon dog shape, he would be afforded much more protection. Every element of his work would be protected, the size, design, etc., as he contributed all of it. In that case, making bookends would not be a re-imagination of a public domain concept, but a derivative work.