Ninth Circuit Denies Rehearing of Decision Holding that an “Idea Theft” Claim is Not Subject to an Anti-SLAPP Motion
For over 50 years, California has protected a writer’s ideas and concepts embodied in scripts under the so called “Desny-claim.” On November 17, 2017, the United States Court of Appeals for the Ninth Circuit took a significant step in ensuring that Desny-claims remain a viable option for artists suing studios for “idea theft” by denying Universal Studios’ Petition For Rehearing in the Jordan-Benel v. Universal City Studios, Inc., 859 F.3d 1184 (9th Cir. 2017).
Jordan-Benel is the first published decision of any court in the United States on the issue, and it represents a major victory for artists in California who were threatened with having to pay the studios’ exorbitant attorney’s fees in connection with an anti-SLAPP motion.
KGSW represents the writer, Douglas Jordan-Benel, who filed suit in 2014, alleging that the horror hit film, “The Purge,” incorporated ideas and concepts embodied in his script entitled “Settler’s Day.” Universal Studios and other defendants responded by filing an anti-SLAPP motion arguing that Jordan-Benel’s idea theft claim challenged their right of free speech of creating and distributing a film. The District Court denied the anti-SLAPP Motion on the grounds that Jordan-Benel was seeking payment for his ideas, not trying to interfere with defendants’ right to create and distribute movies.
On June 20, 2017, the Ninth Circuit affirmed the lower court’s decision. After the studio filed a Petition for Rehearing, the Ninth Circuit ordered attorneys for Jordan-Benel to file a response, signaling the Court’s intention to reconsider its prior ruling.
Today, the Ninth Circuit issued an Order denying the Petition for Rehearing and conclusively established that an artist’s idea theft claim – the so called “Desny-claim” — is not subject to the anti-SLAPP statute because it is based on a studio’s alleged failure to pay the artist for his or her ideas. In sum, the Ninth Circuit squarely held that an artist’s most significant state-law protection for his/her literary or artistic ideas remains an available option under California law, and there is no need to fear the threat of having to pay the studios’ exorbitant attorney’s fees and enduring endless appeals in connection with an anti-SLAPP motion.
BY: DAVID BERNARDONI
Love him or hate him, President Trump dominates the news headlines and provokes passionate discussions taking place in the country today. Thus, it’s no surprise that in the last two years entrepreneurs have increasingly sought to capitalize on the Trump name in connection with goods and services they seek to bring to the market. Since August 2015, there have been 228 trademark applications submitted to the United States Patent and Trademark Office (“USPTO”) which include the “Trump” name. Only 21 have been approved for registration. Of the 21 trademark applications which were approved, Donald Trump or Ivanka Trump provided their personal written consent for 19 of those applications. What about the other two approved trademark applications which included the Trump name? They were logos for The Buffalo Soldier Motorcycle Club of Chicago, in which the phrase “7th Trump” appears in a very small portion of the crest logo. Neither of the logos contain any apparent reference to an individual with the Trump name.
So why has the USPTO refused to register any trademark with the Trump name, without Donald or Ivanka Trump’s personal written consent? It’s because the Trademark Act and numerous decisions by the USPTO’s Trademark Trial and Appeal Board have consistently held that a trademark registration will be refused if the mark consists of a name, portrait or signature identifying a particular living individual, unless that individual provides his or her written consent.
Using an individual’s name in a witty or clever manner will not avoid a refusal by the USPTO to register. Thus, the USPTO has refused to approve applications for marks such as “Just Trump It” (a clothing line), “Trump The Board Game” (a board game), and “Trumptainment” (hats and t-shirts).
In short, it doesn’t matter if the name is Donald Trump, Barack Obama, Kate Middleton, Kim Kardashian or any other person known to the general public. So long as the name is so well known that the public would reasonably assume a connection between the person and the “good and services” that are being trademarked, it will be denied unless the individual’s written consent is provided.
BY: DAVID BERNARDONI
There’s more than one “Kylie” in town, but Kylie Minogue isn’t giving up her “Kylie” trademark protection without a fight.
Long before “Keeping Up With the Kardashians” became a television sensation, singer Kylie Minogue had hit sings such as “The Locomotion” and “Come Into My World.” She has even owned the website “www.kylie.com” since 1996. In 2006, Minogue trademarked “Kylie” in conjunction with the sale of certain types of goods (such as jewelry and dolls) and printed materials. However, when the Twitter and Instagram generation hear “Kylie” they are more likely to think of Kylie Jenner, the half-sister of Kim, Khloe and Kourtney Kardashian (the “Kardashians”).
In April 2015, Kylie Jenner filed a trademark application to register “Kylie” in connection with providing “advertising services.” After the United States Trademark and Patent Office (“USPTO”) allowed Jenner’s application to be published, in February 2016, attorney’s representing Minogue filed an opposition. In the opposition (click here for a copy), Minogue not only argued that she had priority over Jenner, but that there would be a likelihood of confusion if Jenner’s mark was registered. Minogue further argued that Jenner’s target customer and consumer base overlapped with Minogue’s customers and consumer base. The idea is that those persons familiar Minogue’s “Kylie” trademark would likely be confused, mistaken or deceived by Jenner’s use of “Kylie.” The dispute had all of the hallmarks of a big trial before the USPTO, but that day never came.
Despite news reports this week that the USPTO had issued a decision in favor of Minogue, the dispute was resolved. On January 26, 2017, Minogue’s opposition to Jenner’s application was dismissed, without prejudice. We may never know the terms of the settlement, but the “Kylie” trademark dispute is an excellent example of the need to complete a thorough trademark search prior to submitting an application to the USPTO. A thorough search can identify “confusingly similar” marks. If an application is filed, the applicant should be very careful to distinguish the goods and services being offered from those being offered by the owner of the similar mark.