Google, Jay-Z, McDonald’s, Blurred Lines, Innocence of Muslims, House of Cards – the week in IP

September 20, 2014

Google winning a trade mark dispute, Jay-Z being sued for a one-word sample, McDonald’s seeking a McBrunch trade mark, Robin Thicke distancing himself from a copyright dispute, and a second Innocence of Muslims actor suing Google were among the intellectual property stories hitting the headlines this week

google20search.jpg A good Google result

An attempt to have the “Google” trade mark deemed generic has been rejected by an Arizona court.

The plaintiff David Elliott, an intended third-party beneficiary of the registration of some domain names containing the term “Google”, sought cancellation of Google’s registered trade marks, arguing that they are generic.

Elliott alleged: “The term ‘GOOGLE’ is, or has become, a generic term universally used to describe the action of internet searching with any search engine, which cannot serve as a trade mark to the exclusion of others.”

Elliott’s lawyer conducted a consumer survey that the court rejected as unscientific. In contrast, Google’s lawyer introduced a consumer survey that found 94% of consumers identify Google as a brand name while 5% identify it as a common word.

The court said that even if Elliott proved that Google is a verb that can refer to the act of searching on any search engine, the fact that more than 90% of customers understand it as a trade mark designating the Google search engine means it still functions as a source designator.

The court said the “undisputed evidence is that the consuming public overwhelmingly understands the word google to identify a particular search engine, not to describe search engines in general.”

Forbes estimated the Google trade mark’s value at $44 billion in 2011.

You “oh” us

Jay-Z is being sued for a one syllable sample of a 1969 track, according to Techdirt. The rapper’s 2009 hit Run This Town includes a single use of the word “oh” from Hook and Sling – Part 1 by Eddie Bo.

Bo died in 2009 but TufAmerica bought the rights to the song in 1996. The label had previously sued rapper Kanye West – who co-produced Run This Town – for sampling Hook and Sling – Part 1 on a different track.

Jay-Z (real name Shawn Carter) and co-defendants WB Music, Warner-Tamerlane Publishing, Roc Nation, Atlantic Recording Corporation and Roc-A-Fella Records argued in court documents: “First, it is black letter law that words and short phrases are simply not protectable under the Copyright Act. Thus, Plaintiff cannot state a claim based on the alleged infringement of a generic lyric such as, 'oh,' or the sound recording thereof, and Plaintiffs claims should be dismissed as a matter of law. Second, even if the word 'oh' or the miniscule portion of Plaintiffs Recording featuring the single word was somehow original enough to warrant copyright protection, the alleged copying here of a sound lasting a fraction of a second in Plaintiffs Works is de minimis and thus not actionable.”

egg-mcmuffin.jpg Let’s do McBrunch?

McDonald’s is seeking to register a trade mark for “McBrunch”, according to MSN NZ.

The move may be part of an effort to revive flagging revenues. The company reported a 3.7% dip in sales in August. It gets about 25% of its sales from breakfast.

McDonald’s applied for the McBrunch trade mark in July. 'We routinely file intent to use trade mark applications as a regular course of business,” MSN NZ quoted McDonald’s spokeswoman Lisa McComb as saying. The firm first tried to register McBrunch as a trade mark in 2001 but abandoned the effort.

Slurred lines

The copyright dispute over the 2013 hit song Blurred Lines has taken a turn for the bizarre, with the singer seeming to be attempting to distance himself from blame.

Singer Robin Thicke has claimed in sworn testimony that he was high on Vicodin and alcohol when he made Blurred Lines with producer Pharrell. The two are being sued by the estate of Marvin Gaye for the similarly of the rhythm track of Blurred Lines to Gaye’s 1977 song “Got to Give It Up”.

The Hollywood Reporter has revealed that when Thicke was asked in his deposition in April whether he was present, he replied: “To be honest, that's the only part where — I was high on Vicodin and alcohol when I showed up at the studio. So my recollection is when we made the song, I thought I wanted — I — I wanted to be more involved than I actually was by the time, nine months later, it became a huge hit and I wanted credit. So I started kind of convincing myself that I was a little more part of it than I was and I — because I didn't want him — I wanted some credit for this big hit. But the reality is, is that Pharrell had the beat and he wrote almost every single part of the song."

Despite having a co-writing credit on the song that entitles him to about 18%-22% of the publishing royalties, Thicke appears to have had limited involvement other than singing it.

"This is what happens every day in our industry," said Williams during his deposition. "You know, people are made to look like they have much more authorship in the situation than they actually do. So that's where the embellishment comes in."

google20takedown20notice.jpg A new Innocence of Muslims suit

A second actor has sued Google over the controversial Innocence of Muslims film. According to the Hollywood Reporter, Gaylord Flynn has sued film maker Mark Basseley Youssef and Google for reproducing his performance without authorisation.

Flynn’s complaint says he never agreed to “place his likeness, image, persona, or dramatic performance into a hateful production, nor did he agree to be associated with hate speech in any form or fashion.”

The new complaint echoes a previous one by actress Cindy Garcia, who also featured in Innocence of Muslims and sued Google for copyright violation. Garcia had been told she was acting in an adventure film set in Arabia but the film turned out to be an inflammatory anti-Islamic film, for which Garcia received death threats. Garcia sued for copyright infringement after Google-owned YouTube refused to take the film down. She argued that she retained copyright in her contribution.

In February the Ninth Circuit agreed with Garcia, in a controversial ruling that ordered Google to remove the film from YouTube.

house20of20cards.jpg Patent reform on the Cards?

It is not only real life where patent reform is considered and then dropped. The show runner for the popular political drama House of Cards has revealed that a storyline involving patent reform was being considered for its second season, which was released on Netflix earlier this year.

“[I] was like we’re going to do a story on patent reform because I think patent reform is fascinating,” said Beau Willimon at an appearance with documentary maker Ken Burns this week, according to The Hill. “I truly do. And I want the rest of America to think patent reform is fascinating.

“If anybody’s going to make it sexy, it’s Francis [Underwood, the main character in the show, played by Kevin Spacey]. But you can’t always achieve miracles so we dispensed with that story.”

Also on the blog this week:

Join the debate about IP and innovation in our first Twitter Q&A

Is the B word now less of a curse?

Guest blog: Gwilym Roberts on the IPO’s mission to China

And in our news and analysis:

US Congressional Trademark Caucus established

WIPO launches multilingual database

Stokke suffers CJEU blow over shape marks

WIPO announces proposed appointments

Vermont AG confident as MPHJ tries to block case

Federal Circuit overturns $368m damage award in Apple case

NY AG sues Actavis over Alzheimer’s drug