Kid Rock renames tour following Feld lawsuit
Kid Rock has rebranded his upcoming Greatest Show on Earth tour under legal pressure from Feld Entertainment.
Feld, which owns the trademark ‘The Greatest Show on Earth’, sued Kid Rock (real name Robert James Richie) and the tour’s promoter, Live Nation, just before Christmas, alleging the name of the tour dilutes and infringes on its “famous trademark”.
As first spotted by Amplify, the tour, which kicks off on 19 January, has since been quietly renamed – one of Feld’s demands – to the American Rock ’n Roll tour, although the question of damages and legal fees has yet to be resolved. Both ‘Greatest Show on Earth’ and ‘American Rock ’n Roll’ are songs from Richie’s latest album, Sweet Southern Sugar.
“While I firmly believe that I am entitled under the First Amendment to name my tour after my song, I have changed the tour name because I do not want this lawsuit to distract me or my fans from focusing on what is important in my upcoming tour – my music,” Richie (pictured) wrote in a declaration to the US district court for middle Florida.
Despite the name change, a spokesperson for Feld – which also demanded Richie/Live Nation turn over any revenue from merchandise featuring the disputed slogan, as well as additional unspecified damages – says the company is still planning to pursue the lawsuit, whose initial hearing is set for 9.30am on 16 January.
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Feld sues over Kid Rock’s ‘Greatest Show on Earth’
Feld Entertainment, the owner of circus company Ringling Bros, is suing Kid Rock and promoter Live Nation for trademark infringement over the name of the upcoming Greatest Show on Earth tour.
Feld claims the tour, announced in October and due to kick off at Bridgestone Arena (20,000-cap.) in Nashville on 19 January, dilutes and infringes on its “famous trademark”, ‘The Greatest Show on Earth’.
Its lawsuit, Feld Entertainment, Inc. et al v. Ritchie et al, was filed in the US district court for middle Florida before Christmas, and seeks to force Kid Rock – real name Robert James Richie – and Live Nation to change the name of the tour and turn over any revenue from merchandise featuring the disputed slogan, as well as additional unspecified damages.
According to Feld’s general counsel, Lisa Joiner, the company took the decision to go to the courts after “repeatedly contact[ing] defendants to obtain their cooperation to stop the infringement and [being] ignored”.
“We have authorised licensees for Ringling Bros and The Greatest Show On Earth, but Kid Rock is not one of them”
“We have authorised licensees for Ringling Bros and The Greatest Show On Earth, but Kid Rock is not one of them,” she adds.
“This historic trademark has been an important part of Ringling Bros for the past century, and it is recognised as a trusted and iconic brand of family-friendly entertainment,” says Kenneth Feld, Feld Entertainment’s chairman and CEO. “The Greatest Show on Earth continues to live on and will do so well into the future. We have no intention of surrendering the trademark or allowing it to be tarnished.”
An initial hearing is set for 9.30am on 16 January – three days before the start of the tour – with judge Mary S. Scriven presiding.
IQ celebrated Feld’s 50 years in the family entertainment spotlight with an anniversary feature in issue 70.
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Court sides with Coachella in Filmchella dispute
A California court has ruled in favour of Coachella Music Festival in its trademark spat with film festival Filmchella, granting a preliminary injunction against the latter after finding its name is liable to cause “consumer confusion” with the long-running Indio event.
In a complaint filed with the district court of central California in August, lawyers representing Coachella and its promoter, Goldenvoice, accused Filmchella founder Robert Trevor Simms and up to 20 other “John Doe” defendants of servicemark infringement, false designation of origin, brand dilution, cybersquatting and unfair competition over “attempts to operate a directly competitive festival” close to the Coachella festival site in Indio, California.
Law firm Tucker Ellis alleged the new event of “trading on the goodwill of [the] plaintiffs’ famous Coachella festival” by describing its event as the “Coachella for movies” and “the rock’n’roll festival for filmmakers and fans” and registering the web address filmcoachella.com (which redirects to the Filmchella website).
Hearing the plaintiffs’ case on Tuesday (10 October), judge Robert G. Klausner sided with Goldenvoice, ruling that while Simms “provided evidence that he relied in good faith on a valid trademark search, conducted by a trademark examiner, that did not return any conflict” – and that Coachella failed to “clearly demonstrate” he had deliberately set out to confuse consumers – the intention is ultimately irrelevant, with “the intent element is merely a proxy for determining likelihood of confusion”.
“Since both Coachella and Filmchella are both designed to be artistic, multi-day festivals in the desert; since Coachella’s marks have become widely known and strong; and since using the suffix ‘chella’ is likely to cause consumers to believe, or at least wonder, if Filmchella is affiliated with or sponsored by Coachella, the Court finds that the Sleekcraft test” – a set of eight guidelines for determining infringement – “falls in plaintiffs’ favour,” said Klausner.
“Given that there is an inherent likelihood of confusion … Filmchella’s success or failure would likely impact Coachella’s reputation as well”
Coachella’s lawyers, he continued, similarly successfully demonstrated “sufficient evidence to show a likelihood of reputational harm. Coachella has a significant reputation to uphold. It has drawn massive crowds and exceptionally popular artists. Filmchella has not. The festivals are different in type, in budget and in ticket price. Coachella tickets are very expensive. Filmchella tickets are very inexpensive.
“Plaintiffs have also raised concerns about whether the event will have adequate security and come forth with evidence suggesting that it may lack appropriate security. Given that there is an inherent likelihood of confusion regarding the extent to which Filmchella is associated with Coachella, Filmchella’s success or failure would be likely to impact Coachella’s reputation as well.
“Finally, Coachella’s loss of control – their inability to control their reputation, and the extreme difficulty of attempting to quantify the monetary value or loss of sales due to such reputational damage – justifies a finding of irreparable injury.”
Concluding that an injunction prohibiting the use of the service/trademark ‘Filmchella’ would not prohibit Simms from hosting a film festival of a different name in future – the inaugural Filmchella, hastily (and incompletely) rebranded to Filmchilla, took place from 29 September to 1 October – Kausner said: “Having weighed the parties’ evidence, the court has found that the ‘Filmchella’ mark may cause consumer confusion. Thus, the court finds that the public interest factor weighs in plaintiffs’ favour.”
Goldenvoice, owned by AEG, is known to be robust in using legal means to defend its copyrights, having sued Hoodchella festival (now called Noise in the Hood), Cannabis grower Lowell Farms (for selling a ‘Coachella blend’) and Urban Outfitters, which allegedly sold clothes marketed under the Coachella name, all in the past 18 months.
Look what you made her do: T-Swift in new TM blitz
Taylor Swift has filed a slew of new trademark registrations ahead of her impending fifth concert tour.
The US superstar, who is selling the first batch of tickets via Ticketmaster’s Verified Fan rewards programme, is expected to hit the road again next year in support of upcoming album Reputation (pictured). Swift’s last tour, the 1989 world tour, grossed more than US$250 million between May and December 2015, according to promoter AEG/Messina Touring Group.
New United States Trademark and Patent Office (USPTO) trademark/servicemark applications by Swift’s Nashville-based TAS Rights Management company include character marks for “LOOK WHAT YOU MADE ME DO” and “THE OLD TAYLOR CAN’T COME TO THE PHONE RIGHT NOW” – both phrases from her record-breaking new single, ‘Look What You Made Me Do’ – and the word “REPUTATION” itself.
All applications apply to a range of tour-ready merchandise, including men’s and women’s clothing, accessories, jewellery, stationery, homewares, beach towels, guitar plectra and more.
Swift embarked on a similar run of new registrations in advance of the 1989 tour, applying for some 37 new marks, in what one trademark lawyer called the singer “marking her territory”.
Kiss frontman Gene Simmons in June abandoned a USPTO application to trademark the devil’s horns gesture – specifically “a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular” – for use in concerts.
Coachella’s next lawsuit: Filmchella
The organiser of a Californian film festival has become the latest target of Goldenvoice’s lawyers over its use of the suffix “-chella”.
In a complaint filed in the US district court for central California on Tuesday, lawyers representing Coachella Music Festival and its promoter, Goldenvoice, accuse Filmchella founder Robert Trevor Simms and up to 20 other defendants (“Does 1–20”) of servicemark infringement, false designation of origin, brand dilution, cybersquatting and unfair competition over “attempts to operate a directly competitive festival” close to the Coachella festival site in Indio.
Filmchella, says law firm Tucker Ellis, is “trading on the goodwill of [the] plaintiffs’ famous Coachella festival” by describing its event as the “Coachella for movies” and “the rock’n’roll festival for filmmakers and fans” and registering the web address filmcoachella.com (which redirects to filmchella.com).
Coachella Music Festival LLC owns several trademarks and servicemarks associated with the festival, including the Coachella servicemark and “Chella” for use on shirts and T-shirts; an trademark for use of “Chella” in “musical” and “cultural and arts events”, “campground facilities”, “hotel accommodation services”, drinks, transportation and other clothing is not not yet registered.
Filmchella’s application for the Filmchella servicemark was originally accepted by the United States Patent and Trademark Office (USPTO) in April 2017.
“Plaintiffs appreciate the enthusiasm shown by defendants but they simply want defendants to use a distinctive name of their own”
Goldenvoice, owned by AEG, is known to be robust in using legal means to defend its copyrights, having sued Hoodchella festival (now called Noise in the Hood), Cannabis grower Lowell Farms (for selling a ‘Coachella blend’) and Urban Outfitters, which allegedly sold clothes marketed under the Coachella name, in the past 18 months.
The latest complaint says Simms has not responded to “repeated requests” to change Filmchella’s name to one which “avoids confusion, conflict and false association with the famous Coachella festival” – although Filmchella has changed “some of their marketing materials” to read Filmchilla, with an “i”, that doesn’t go far enough, say the lawyers – and while Goldenvoice has “no objection to defendants holding a festival of their own”, it “simply want[s] defendants to use a distinctive name of their own”.
The promoter is seeking monetary damages, along with a restraining order that prevents the defendants from, among other things, using or registering any name similar to Coachella or engaging in “unfair competition” with the festival.
The inaugural Filmchella is scheduled for 29 September to 1 October in Joshua Tree, California.
Wembley Stadium wins EU trademark case
Wembley FC, a semiprofessional football team based in Wembley, north-west London, is to lose the European trademark to its club emblem following a complaint by Wembley Stadium.
The club obtained the trademark, which covers a range of goods and services, including clothing, merchandise, toiletries, alcoholic beverages and household items, from the European Union Intellectual Property Office (EUIPO) in 2012 – at which time the 90,000-capacity stadium, owned by the Football Association (FA), missed an opportunity to file an objection.
However, in a cancellation decision dated 12 July, EUIPO ruled that Wembley FC’s trademark infringed on that of Wembley Stadium, which in its former iteration had been named as such since the 1920s (Wembley FC was founded in 1946).
EUIPO noted that the contested trademark, Wembley FC’s logo (“a figurative mark consisting of a red coat of arms, depicting the stylised head of a lion which occupies nearly the entire shield and which is predominantly in white”), makes use of “Wembley” as its distinctive feature, with the letters “FC” and the club’s Latin motto, A posse ad esse, in much smaller, less eye-catching text.
“Consumers generally tend to focus on the first element of a sign when being confronted with a trademark,” it reads.
“As regards the differing verbal elements of the contested sign, they are less visually eye-catching than ‘Wembley’”
“This is justified by the fact that the public reads from left to right, which makes the part placed at the left of the sign (the initial part) the one that first catches the attention of the reader. Likewise, consumers generally tend to read from top to bottom. […]
“As regards the differing verbal elements of the contested sign (‘FC’ and the Latin motto), they are less visually eye-catching than ‘Wembley’, whereas the figurative elements (the coat of arms with the lion and the ball and the ribbon) may have a less strong impact.”
EUIPO’s cancellation division concluded the contested trademark must, therefore, “be declared invalid for all the contested goods and services”.
Wembley FC, as the losing party, must now pay all fees and costs incurred by cancellation process.
Wembley Stadium, the UK’s largest stadium, posted record revenues in 2015–16, driven in part by a busy live events calendar, including Bruce Springsteen, Rihanna and, most famously, Ed Sheeran. Despite this, as IQ revealed in January, the venue is to scale back its music programming in future following the departure of former business development chief Jim Frayling.
Simmons abandons devil’s horns trademark bid
To the surprise of absolutely no one, Gene Simmons has dropped his bid to trademark the ‘devil’s horns’ gesture for use on stage.
Simmons (pictured) filed an application with the US Patent and Trademark Office (USPTO) earlier this month to register “a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular” for “entertainment, namely live, performances by a musical artist.”
The Kiss frontman claimed he was the first to use the sign of the horns – which is also “I love you” in American sign language – as far back as November 1974.
However, the application has now been withdrawn after USPTO received a “letter of express abandonment” on 20 June.
Most legal experts considered his bid to trademark the gesture to have little chance of success, with the gesture most associated with the late Ronnie James Dio.
Simmons’ Gene Simmons Company has owned a total of 173 trademarks, including the ‘money bag’ symbol with a dollar sign and the phrases “$#it girls say” and “I want to marry a millionaire” for use on clothing.
Gene Simmons tries to trademark devil’s horns
It’s a hand gesture familiar to metalheads across the world – but if Gene Simmons has his way, the sign of the horns could soon his trademark.
In a new application to the United States Patent and Trademark Office (USPTO), the Kiss frontman is seeking to register “a hand gesture with the index and small fingers extended upward and the thumb extended perpendicular” for “entertainment, namely live, performances by a musical artist.”
The would-be trademark is pictured below:
The trademark application, serial number 87482739, was filed on 9 June and accepted on Tuesday. It is expected to be assigned to an examiner within three months of filing.
The application says Simmons (real name Chaim Witz) has been throwing the horns since “at least as early as 14 November 1974” – a date that corresponds with Kiss’s Hotter than Hell tour – although use of the gesture by figures as diverse as John Lennon (on the Yellow Submarine cover), Black Sabbath’s Geezer Butler, Frank Zappa, George Clinton and Gautama Buddha all predate Simmons’s claim (the Buddha’s by quite some time).
Trademarks: fair game for use as Google AdWords?
Goldenvoice’s Coachella Music Festival last week filed a trademark lawsuit against Urban Outfitters, accusing the clothing retailer of trademark infringement, tortious interference and unfair competition for driving traffic to its website by purchasing Coachella-themed Google Adwords and using the term in its website metadata.
Here, Laura Harper, a partner at British law firm Shoosmiths, comments from a UK perspective on the legal issues surrounding the purchase of such keywords by rival brands.
Expenditure on internet advertising in the UK rose by over 15% in the second half of 2016 and is set to increase further this year. With the appetite for online and mobile advertising growing amongst brand owners, the role of Google AdWords appears to be increasing in significance.
What are AdWords?
Google AdWords is an advertising service which allows advertisers to have accessible advertisements appear in Google’s search results. Advertisers that use AdWords can purchase one or more keywords relevant to their business so that when potential customers type the keyword into Google’s search engine, the advertiser’s advertisement will appear above or next to the search results, the benefit being that the advertisement is displayed above the ‘natural’ results. If more than one advertiser purchases a particular keyword, advertisers can bid on the order of the display; the highest bidder achieves the highest position in the results.
Google does not prevent advertisers from using third-party trademarks as keywords in its AdWords service. It is this permitted use of a competitor’s trademark that has led to a number of high-profile brands attempting to assert their intellectual property rights through the courts, with varying degrees of success. The cases are few and far between, but they do provide interesting guidance on what may and may not amount to trademark infringement. In recent years, the courts’ view on such cases has tipped in favour of promoting competition over protecting the rights of trademark owners.
Can advertisers use third-party trademarks as ‘keywords’ without infringing the rights of the trademark owner?
The short answer is: yes.
Provided that the advertiser makes it clear that the goods and services it is selling originate from the advertiser and not the trademark owner, then the use of a keyword which is a registered trademark is unlikely to be infringing. Conversely, if it is unclear or confusing to customers whether there is some economic link between the advertiser and the trademark owner, then there is a likelihood of infringement.
The European Court of Justice confirmed that the use by an advertiser of a keyword that is identical to a third-party trademark constitutes ‘use in the course of trade’ (a prerequisite to establish trademark infringement), but that such use shall not be infringing where it is clear that there is no commercial connection between the advertiser and the trademark owner.
‘The reasonably well-informed and observant internet user’
In the 2014 case of Interflora Inc. v Marks and Spencer plc, the court established the principle of the ‘reasonably well-informed and observant internet user’. If such a user would be able to tell that the advertisement that appeared as a result of inputting a particular keyword was not the advertisement of the trademark owner, but that of a competitor, then there would be no harm to the distinctiveness of the trademark and, therefore, no infringement.
In this case the court also said that the use of a third-party trademark as a keyword is lawful as long as it is done with ‘due cause’. Exercising ‘due cause’ would be engaging in fair commercial competition with a trademark proprietor, offering goods and services as an alternative to the trademark owner’s goods and services. Therefore, in such circumstances, when a competitor uses a third party registered trademark in its AdWords campaign by purchasing and bidding on keywords that are third party registered trademarks, such use can be fair.
Honesty is the best policy
Honest use of a trademark is a defence to trademark infringement. The use must be in accordance with honest practices in industrial or commercial matters. For example, a trademark may be used to describe the contents of a website or to identify the goods or services sold on the website or as part of a legitimate comparative advertising campaign. However, it’s unlikely that the use of a keyword (which is invisible on the website and to the consumer) for comparative advertising purposes would be held to be honest use.
The case of Victoria Plum Ltd (t/a VictoriaPlum.com) v Victorian Plumbing Ltd & Ors (2016) concerned the purchase by Victorian Plumbing Ltd (Victoria Plumbing) of the keywords ‘Victoria Plumb’ and ‘Victoria Plumbing’. VictoriaPlum.com owns several EU and UK trademark registrations for the mark VICTORIA PLUMB. Victoria Plum Ltd (previously, Victoria Plumb Ltd) (VictoriaPlum.com) sued Victorian Plumbing for trademark infringement. The court decided that Victorian Plumbing’s advertisements would not enable a reasonably well-informed and observant internet user to ascertain whether the goods or services originated from VictoriaPlum.com or from a business commercially connected to it. In the circumstances, Victorian Plumbing had infringed Victoria Plum’s trademark by using it in Victoria Plumbing’s Google AdWords campaign.
In the context of honest use, the court said that, where two entities have co-existed for a long period of time which have the same or similar names, it is inevitable that confusion will arise. To an extent, this confusion will have to be tolerated. However, one of the entities must not take steps to exacerbate the level of confusion beyond what is inevitable. In the case of VictoriaPlum.com, it was difficult for customers to be certain of the origin of the goods and so the use of the keywords was dishonest.
What can trademark owners do?
- If infringement is suspected, a trademark owner can submit a complaint to Google – Google will undertake a ‘limited investigation’ if a trademark used as a keyword in combination with text in an advertisement is confusing as to the origin of the advertised goods and/or services. If Google decides that it is confusing, it will prevent the advertisement from running
- Conduct regular checks – search for the trademark on a number of search engine providers. This will reveal hidden uses of the trademark as keywords (as with AdWords or metatags), as well as visible uses
- Beware of making unjustified threats of trademark infringement proceedings – this can give rise to a cause of action for the advertiser who may bring a claim against the trademark owner
- Consider taking legal advice on how best to protect your brand from unauthorised online use
What can advertisers do?
Transparency is key. Transparency in the advertisement is necessary to protect the consumer; also, the more transparent the advertisement, the less likelihood of confusion in the minds of the public and, therefore, of trademark infringement. Advertisers should bear in mind that customers searching for a particular brand may be confused when presented with a different brand offering the same or similar goods and/or services. Provided that the advertiser ensures that customers can ascertain where the goods and/or services originate from, purchasing and bidding on third-party trademarked keywords is fair game in the online world.
Laura Harper is a partner at Shoosmiths LLP.