The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Wednesday, 7 June 2006


Supreme Court refuses to string ‘em up

The Supreme Court has refused to hear Gibson’s appeal against a Sixth Circuit decision holding that rival guitar-maker did not infringe its trade mark in the Les Paul guitar. Gibson had argued that Paul Reed Smith had, in producing a lookalike guitar, created post-sale confusion, although it admitted that, at the time of sale, no consumers were confused.

You can read more on this here.

The IPKat idly wonders if there’s an analogy to be made between this case and the ECJ’s comments on post-sale confusion in Picasso v OHIM (on which, see the Kat's post here).

Use your loaf

US songster Meat Loaf is having a spot of trade mark trouble AXcess News reports. Jim Steinman, writer of lyrics on Meat Loaf’s ‘Bat Out of Hell’ and ‘Bat Out of Hell II’ albums has registered BAT OUT OF HELL as a trade mark in the US. Steinman and Meat Loaf have fallen out, and now Meat Loaf has brought an action concerning the trade mark in the Los Angeles District Court.

The IPKat notes that trade marks for song titles are really rather tricky. Even if you manage to get one, it’s unclear whether you’ll be making use of it in a way that can stop the mark from being revoked (in the EU at least) and it’s unclear whether use in third-party song lyrics would be use of a kind that would infringe.

1 comment:

Tea Bag Ladies said...

For a quick lesson in trademark law, the case of the singer Meatloaf aka Michael Aday versus his former partner Jim Steinman and once mutual manager David Sonenberg points out the value of being first to register for a trademark.

Meatloaf claims in a recently filed lawsuit that the phrase “Bat Out of Hell” has been “publicly associated” with him and therefore Steinman and Sonenberg are not entitled to their approved trademark of the phrase.

Meatloaf has filed two cancellation proceedings against the registered trademarks Serial Number: 74687603 (IC 009, Active series of pre-recorded sound recordings in the form of vinyl records, audio-tapes and compact discs) and Serial Number: 75424862 (IC 025, Active apparel, namely T-shirts, hats, sweatshirts and jackets).

Meatloaf has also filed an opposition to Steinman and Sonenberg’s trademark applications Serial Numbers 76615728, 76615729, 76615730, and 76615731 (see below).

In turn, Meatloaf has filed his own trademark application Serial Number 78657886 (IC 009, Pre-recorded CD’s DVD’s and video tapes featuring musical works) on June 24, 2005. The trademark office wrote him a letter in return stating that his “Registration of the proposed mark is refused because of a likelihood of confusion with the mark in U.S. Registration Nos. 1971464 and 2588724.” These two Registration numbers refer respectively to Serial numbers 74687603 and 75424862 mentioned above.

What appears to have set this dispute off is the fact that Meatloaf wants to release a third “Bat Out of Hell” CD. Steinman and Sonenberg have sought to stop him by claiming trademark infringement, since they own the trademark in International Class 009 category, which includes “pre-recorded sound recordings in the form of vinyl records, audio-tapes and compact discs.” Since Steinman and Sonenberg have been continuously using the “Bat Out of Hell” trademark since 1978, and have filed the required Section 8 paperwork that gives them lifetime protection of the mark, it’s hard to see how they don’t deserve ownership of the trademark.

Meatloaf’s claim that his name has been “publicly associated” with the phrase “Bat Out of Hell” does not automatically entitle him to Federal trademark protection. If Steinman as the lyricist came up with the title phrase “Bat Out of Hell,” does that allow him to claim ownership of the trademark? Or does the fact that Meatloaf and Steinman are associated with the phrase based on the two previous CD releases under the name “Bat Out of Hell” confer a mutual right to the trademark?

A trademark’s purpose is to identify a source of goods or services. If you took a poll and asked people to name the source associated with the phrase “Bat Out of Hell,” I suspect most people would immediately say Meatloaf, not Jim Steinman or David Sonenberg. But again, Meatloaf never filed for the trademark.

Meatloaf’s current application does do something important, though. Meatloaf is claiming a First Use and First Use in Commerce date of 1977! This is one year prior to Steinman’s 1978 date. It’s unclear how this date of use will be proved or disproved. Meatloaf filed an Intent-to-Use application, so until he submits the specimen artwork, it won’t be clear what allows him to claim prior use to trump Steinman and Sonenberg.

The speciman art above was submitted by Steinman for this trademark. Interestingly, it prominently features the word “Meatloaf” in addition to the phrase “Bat Out of Hell.” Whether this pairing influences the trademark examiner’s opinion on whether protection for the phrase stands apart from the word “Meatloaf” would appear to be one of the key questions for the opposition and cancellation proceedings. I mean, it is a recording in which both men have a mutual financial stake. The specimen artwork is not wholly generated by Jim Steinman separate from Meatloaf as far as I can tell.

What makes this case even more fascinating is the fact that Steinman and Sonenberg have filed four new tradmarks for the phrase “Bat Out of Hell” that demonstrates an aggressive marketing push into how this iconic phrase might be used in the future (see below).

One answer to this dilemma may lie in the language of the recording contracts. Was there some form of partnership between these men that infers a mutual ownership of the underlying intellectual property and value created by introducing the original music.

The Trademark Office will soon decide.

C’mon, guys, it’s pretty obvious that artistic differences have produced a strained business relationship. It’s also obvious that Steinman and Sonenberg have a better money making sense by registering the trademark “Bat Out of Hell.” But what’s the phrase worth without Meatloaf’s involvement? I would say more than less if he’s involved, but grown men can be kids and fight over whose toy it is. Where’s the love?

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