Archives for October 2014 | Intellectual property and business law blog

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Steve O'Donnell, Ph.D. Registered Patent Attorney

I know you want it (to be sued)

Remember the lazy, carefree days of summer 2013? Edward Snowden disclosed things you weren’t supposed to read, and we mourned the deaths of James Gandolfini, Cory Monteith, and one the greatest horror writers of all time: Richard Matheson. Miley Cyrus taught the world to love again (or something like that), and the song Blurred Lines was everywhere, with it’s slightly rapey lyrics, and a swagger rivaled only by Robin Thicke’s intricate beard trimming.

Ah, good times, good times.

Of course, not everyone liked Blurred Lines, particularly Marvin Gaye’s heirs, who thought it was just a bit too much like his Got to Give it Up. It probably doesn’t help that Robin Thicke said they were trying to write something similar (it now seems that he’s trying to walk that back a bit by saying he was too high on Vicodin and alcohol to have co-written the song). Gaye’s heirs sued and the judge in the case just denied a motion for summary judgment, which has the news services proclaiming that Thicke lost the first round.

While I guess that’s technically true, that denial by itself doesn’t mean particularly much. By fling a motion for summary judgment, Thicke’s lawyers were saying that there’s no questions of fact that need to be decided by a trial and since there’s no questions, and since we’re right, give us the win without having to go through a trial. In other words, the differences are so great between the songs that there’s no question that Blurred Lines doesn’t infringe Got to Give it Up. They also argued that the Gaye family held the copyright to just the sheet music, so that certain elements in the sound recording that weren’t in the sheet music were of no consequence.

The judge just disagreed with that. That doesn’t mean the judge thinks Thicke will, or should lose, just that there’s a question to be resolved.

Here’s a comparison of the songs on YouTube. If it gets taken down, search for it. I’m sure someone will put up something similar.

So, lets say you watch the video and think “wow, that’s blatant copying, how could they even suggest otherwise in this motion?” The answer is, it would probably be malpractice to not at least try everything you can to resolve this in favor of the clients. And, more work means the lawyers get to bill more...but really, it’s probably more about avoiding malpractice.

Flavors aren't trademarks

I had a post about this general issue in one of my earlier blog iterations where I discussed my chili recipe and noted how recipes aren’t usually projectable by patents, trademarks, or copyrights...but that post was lost during the transfer to a new site. I still have the recipe so I might recreate that post later. It’s good chili.

Is a flavor profile a trademark?

A court in the Southern District of Texas (not exactly a place that comes to mind when talking about pizza) recently had a chance to rule on whether a pizza’s flavor can be trademarked (flip to page 10 for the trademark bit). Spoiler Alert: the answer is No.

Off the top of my head I can think of a few national pizza chains. Each is good, if you like pizza by committee, and sometimes that’s exactly what I’m looking for. Each also has certain unique “trademark” pizzas. For example, Little Caesars has a pretzel crust pizza (which scared me at first, but I like it, even if it is a bit salty), and Papa John’s has a few Frito-pie (walking taco) pizza (which I think I’ll try on Friday).

But, are those really Trademark pizzas? Could Little Caesar’s stop someone else from selling a pretzel crust pizza? Could Papa John’s stop someone from putting corn chips on a pizza?


Trademarks let a consumer know the source of the goods they’re thinking about purchasing. If you see a Nike Swoosh on a shoe, you know it’s from Nike and that it has the quality you’ve come to expect from Nike. If you see a Coke can, you know the soda inside the can is of the same quality as other Cokes you’ve had. If that Coke is served to you in a plain cup at a party, you might recognize the taste, but at that point, you’ve already committed to the product so the taste isn’t influencing your decision. If, on the other hand, your host poured root beer into a Coke 2L bottle and served you that you should throw it in their face, because that’s not what you thought you were getting.

Similarly, if someone opens a Little Seesar’s Pizza, that’s a pretty clear trademark infringement because people might go there thinking they were really going to a Little Caesar’s; but if your local pizza place started offering a Frito-pie pizza that tasted just like Papa John’s Fritos Chili pizza that wouldn’t be a trademark infringement because you weren’t misled into buying the pizza thinking it was from Papa John’s.

In other words (and how Judge Costa framed it), the flavor of a dish is a characteristic of the dish and can’t be distinctive enough to be a trademark unless somehow the flavor’s significance becomes to identify the source of the product rather than the actual product itself. I have no idea how that could happen, but I can’t really explain why Dancing with the Stars is still on.

I’ll stop this post here, because it’s time for lunch. A pizza place opened a couple blocks away. They put American cheese on some of their speciality pizzas. It’s unusual, but kinda works. I guess that’s their trademark offering.

Unusual patents

This post from Mother Jones points out 10 “weird gems” from the patent office. Similar articles pop up on occasion. I’m pretty sure everyone has seen the mustache soup-guard patent. I think that was in a Ripley’s Believe it or Not book I had in third grade.

These are strange inventions, and it’s easy to laugh at them, but with a little luck, each could have been a hit.

Consider some of the products you see advertised on TV during non-prime time hours. I don’t want to single out anyone, but some of these things flat out stupid. But you know what, they’re selling. Sometimes, all it takes is an ad budget and the right price point to have a hit. If a product isn’t too expensive, I might buy it for the novelty or to keep my kids quiet for a couple minutes.

If the mustache guard was sold as something “for the man that has everything,” and it was only a couple bucks, I could see it selling. I particularly like the banana phone cover, but even the burrito on a stick could have been something if it was sold as a microwavable snack.

The point is, it’s hard to tell what product is going to be a hit, and what will wind up in a “weird gems” article in 20 years.