Aonia Masood

My Legal Blog

Sattar Buksh – Parody or the Dilution of Trademark? — November 14, 2016

Sattar Buksh – Parody or the Dilution of Trademark?

“Starbucks and ‘Sattar Buksh’ is no mystery — mainly because it is a deliberate marketing tactic,” a famous newspaper, The Express Tribune – Pakistan, headlined. Well, no doubt, it was massive and pretty bold step towards making their brand shine, however, could this tactic possibly land the owner of brand into legal suit for infringing upon someone else’s right?

“Sattar Buksh” was an impossibly well-planned parody of the renowned trademark “STARBUCKS” which gave it the overnight fame spreading across the world through social media. Trade mark rights are lifeline of businesses and unauthorized use of owner’s trademark by third parties results in un-quantifiable loss and damage to its goodwill and business, which is irreparable in nature. [1] The trademark law provide protection to famous brands against dilution even if there is a clear indication that the goods of copied brands are emanating from different sources and regardless of the presence or absence of competition between owner of the well-known trademark or other parties.[2] Trademark dilution occurs when, because two signifiers are similar, they lessen each other’s differential distinctiveness[3] or lessen their uniqueness. The Canadian court in famous case, Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd.,  has decided that the goodwill can be depreciated through dilution even if there is no actual risk that consumer might be confused between the two marks.[4]

In Pakistan, well-known marks are entitled to protection against the mark which is identical or deceptively similar and where the use of such mark is likely to cause dilution of the distinctive quality of the well-known trademark. However, it is settled principal that highest degree of fame is required under section 86 (3) of Trade Marks Ordinance 2001 to claim the protection under dilution. For instance, although there is no global list of well-known trademark, but Coca-Cola; Google; Apple; McDonalds; Microsoft; IBM; Citibank; Boeing; Toyota are said to qualify such a list.[5] Traditionally, the factors which are measured to determine whether a mark possesses a certain degree of recognition include the period of use, the extent, geographic reach of advertising and publicity of the mark, the amount volume and geographic extent of sales of goods or services offered under the mark.

Speaking of “Sattar buksh”, this is not the first instance where the Starbucks has been parodied as a brand. In 2014, the comedian Nathan Fielder launched a coffee shop under parodied brand name ‘Dumb starbucks’ in Los Angeles after which the public and media went frenzy over it and made the same big hit. However, the shop was closed down later… Oh! No! Not for copying the brand but for operating without license. As far as the copying was concerned the Nathan Fielder apparently had the defense of parody art given under US law which of course ultimately had to be decided in the court of law. Parody usage of trademarks or artistic expression of marks is quite prevalent all over the world which are normally adopted to make fun of or comment on or criticize famous brands. Parody of the marks gives the parodist an advantage of capitalizing at the expense of parodied brand and attracting a huge lot of consumers.

Traditionally, the concept of parody or satire is applied in Copyright Law; however, under Pakistani copyright law there is no specific provision providing defense for parody whereas there is an exception concerning fair dealing under section 57 which applies to the circumstances of criticism, review, research or private study.  In contrast, under US law the defense against copyright or trademark infringement can be claimed as parody other than the defense of fair use. However, in certain cases US courts have rejected the defense of parody and held use of trademarks disguised as parody or satire to be infringement as the US Federal court did in People for Ethical Treatment of Animals v Doughney; the defendant had argued that his website, entitled “People Eating Tasty Animals”, was a parody of the plaintiff’s name “People for the Ethical Treatment of Animals”.

Besides, in EU Countries the parody of trademarks is legal now; regulation (EU) No. 2015/2424 of the European Parliament and of the Council provides in its Recital 21 that:

“Use of a trade mark by third parties for the purpose of artistic expression should be considered as being fair as long as it is at the same time in accordance with honest practices in industrial and commercial matters.

Coming back to Sattar buksh, soon after the launch of parodied brand in Pakistan the Starbucks came to the knowledge of their trademark and copyright violation and served a cease and desist letter to the proprietors which eventually made them change the trademark / artistic expression while releasing a disclaimer on their Facebook page, “We have nothing to do with any foreign franchise nor do we want to categories ourselves as mere coffee experts. We’re ‘Jutts of all trades’ and we cater to everyone!”

The parodist should be expecting a potential dilution claim while making the sale of their products under the parodied trademark as trademark dilution can take place even if the consumers are able to differentiate between the different sources and also because there is no specific jurisprudence to protect parody brands in Pakistan.

[1] 2013 CLD 201 = PLJ 2013 Lah. 65 = PLD 2013 Lah. 10

[2] Section 2 (xiii) of the Trade Marks Ordinance, 2001

[3] Trademark Law and Theory: A Handbook of Contemporary Research (edited by) Graeme B. Dinwoodie, Mak D. Janis

[4] Clairol International Corp. v. Thomas Supply & Equipment Co. Ltd., (1968) 55 C.P.R. 176, [1968] 2 Ex. C.R. 552

[5] 2016 CLD 1864 (Dalda Foods (PVT) Ltd. Vs. M/s Shield Corporation Ltd.)

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How can I copyright the name of a online newspaper I want to create? — October 18, 2016

How can I copyright the name of a online newspaper I want to create?

How can I copyright the name of a online newspaper I want to create? by Aonia Masood

Answer by Aonia Masood:

If you’re interested in getting the name of your newspaper registered, then it can only be done through laws related to trademark while copyright law has no role to play in the same. Trademark is a word, phrase, symbol, and/or design that identifies and distinguishes the source of the goods or services of one entity from those of others. Registration of trademark  may last forever if the same is renewed after intervals as prescribed under the provisions of law. The best and easiest way to get the trademark for your newspaper registered is to consult an attorney.

Hope this helps.

If you have any confusion or question, you can always contact me!

Regards,

Aonia Masood

How can I copyright the name of a online newspaper I want to create?

YSL Logoed Heels – One of its own kind! — October 15, 2016

YSL Logoed Heels – One of its own kind!

Anthony Vaccarello, in last week of September, debuted his first collection at Paris Fashion Week Spring 2017 while relaunching “Yves” into Saint Laurent which was previously omitted by the Former Creative Director Hedi Slimane. The interlocked YSL logo (trademark) has been incorporated in an exceptional way into stiletto heels and his other creations. Ergo, providing the protection against counterfeiting of brand’s latest creation. Besides, the uniqueness of the YSL logoed heels may also not  be knocked-off in a confusingly similar way ‘cos that is one of its own kind!

Can Fashion Designers Lose Right to Use Their Own Name? — October 14, 2016

Can Fashion Designers Lose Right to Use Their Own Name?

Trademarks and the associated reputation, synonymously known as brand names, are considered an important asset of any business entity; consumer’s decisions to purchase is normally influenced by the brand reputation. In fashion world, aspiring designer while starting their career with established brands often attempt to launch their designs with their personal name labels (trademark). However, using personal name while launching their designs under someone else’s corporate umbrella can also be disadvantageous with regards to their future prospects as their name may become knotted with the goodwill associated with the brand itself rather than with the designer. Susan Scafidi, fashion law professor at Fordham University while being interviewed by Fashionista, said “When you put your name on a label, that is a corporation and no longer belongs to you.”

Earlier this year, the famous designer, Kate Spade, who previously owned the brand Kate Spade New York, after taking fashion break of nearly a decade made her comeback in fashion industry and swapped her surname to Kate Valentine. Kate Valentine, in 1993, along with her husband Andy Spade launched a fashion a company Kate Spade LLC. However, in 2007, Liz Claiborne acquired the company – now a public company called Kate Spade & Co – for $125 million while intellectual property rights including the well-established trademark ‘Kate Spade’ was made part of the deal and consequently Kate Valentine lost the rights to use her name for commercial purposes and thus to make her comeback she was bound to re-brand herself and she did.

In another instance, a renowned British fashion designer, Karen Millen, was barred from using her own name for commercial purposes this year as she had previously sold her majority shares in Karen Millen Holdings to Baugar Group for 95 million pounds. Karen Millen is considered an integral intellectual asset of the company which is driving in huge profits.

Fashion designers (aspiring or established) should stay vigilant with regards to future prospects while attempting to use or license or sell away their trademark or personal names regardless how the profitable offer seems to be. One of such example is when Tom Ford, while working as a Creative Director, never allowed to use his personal name for any designs being launched by Gucci or Yves Saint Laurent which later enabled him to launch his own brand using his own name. Ergo, if the caution is not taken the designer may suffer a great loss as when the right time would come to reap benefits he will have to begin from scratch while the castle of his name will be standing in someone else’s corporate land!

Is it possible to patent a website? — September 27, 2016

Is it possible to patent a website?

Is it possible to patent a website? by Aonia Masood

Answer by Aonia Masood:

Website as a mere idea or concept is not patentable in the United States as patentable subject matter is limited to concrete applications of ideas such as processes and machines (i.e. systems). However, some aspects of wesbite such as: uses for data extracted from website for example, can be patented. In other words, the concept of a wesbite per se can’t be patented but the implementation via hardware could be patented if the claims comply with the new requirements established by the USPTO.

In addition, the source code and the Graphical User Interface (GUI) of a site can also be protected with a Copyright. Moreover, several aesthetics aspects of the site or the (GUI) could also be protected with a Design patent. Apart from GUI and source code, the trademark of a site can also be protected under US law.

NOTE: Under no circumstances should you disclose your idea or even the basics of it without the recipient signing a well drafted non-disclosure agreement. However, conversations with an attorney whom you formally retain is privileged and subject to even stricter rules of confidentiality.

Is it possible to patent a website?

If someone screenshots your tweet with a picture of you in the icon, and uploads it to another site, can you get it taken down for copyri… — September 26, 2016

If someone screenshots your tweet with a picture of you in the icon, and uploads it to another site, can you get it taken down for copyri…

If someone screenshots your tweet with a picture of you in the icon, and uploads it to another site… by Aonia Masood

Answer by Aonia Masood:

According to Twitter’s Terms of Service, the author reserves the exclusive rights to use, reproduce the content on Twitter as Twitter’s TOS states:

“ You represent and warrant that you have all the rights, power and authority necessary to grant the rights granted herein to any Content that you submit.”

“All Content, whether publicly posted or privately transmitted, is the sole responsibility of the person who originated such Content.“

While the third parties are not allowed to tweet author’s content without his express authorization. However, while using the Twitter’s services the author also grants Twitter a license to use, publish and adapt his content and also a license to other Twitter user to retweet the content.

Twitter’s TOS states:

“You agree that this license includes the right for Twitter to provide, promote, and improve the Services and to make Content submitted to or through the Services available to other companies, organizations or individuals who partner with Twitter for the syndication, broadcast, distribution or publication of such Content on other media and services, subject to our terms and conditions for such Content use.”

“Such additional uses by Twitter, or other companies, organizations or individuals who partner with Twitter, may be made with no compensation paid to you with respect to the Content that you submit, post, transmit or otherwise make available through the Services”

“We may modify or adapt your Content in order to transmit, display or distribute it over computer networks and in various media and/or make changes to your Content as are necessary to conform and adapt that Content to any requirements or limitations of any networks, devices, services or media.”

Consequently, the rights to re-use the content also extend to Twitter’s official partners or anyone pulling tweet data through the Twitter API. However, if someone snapshots your tweet and picture posted on Twitter’s platform and posts the same on some other site that may be counted as infringement of your rights since nor the third parties may be considered as Twitter’s official partner neither snapshotting the tweet falls under the ambit of retweeting. Therefore, as suggested by Mr. Mathew Lodge in the comment above, file a take DMCA take down request.

If you need more information, please comment below.

If someone screenshots your tweet with a picture of you in the icon, and uploads it to another site, can you get it taken down for copyri…

Is it a violation of copyright to sell photos of the Statue of Liberty? —

Is it a violation of copyright to sell photos of the Statue of Liberty?

Is it a violation of copyright to sell photos of the Statue of Liberty? by Aonia Masood

Answer by Aonia Masood:

Statue of Liberty was originally sculpted by Fredric August Bartholdi and copyright registration number 9939-G was issued to it in year 1876. Currently in US, the default term of copyright is life of the author plus 70 years while the sculptor died in year 1904, therefore, according to my understanding, the Statue of Liberty is in public domain. Besides, work published or registered before year 1923 is in public domain due to copyright expiration.

Note: In US, it’s a copyright infringement if someone engages in capturing photographs of copyrighted art work displayed in public places for commercial use without having express authorization from the author.

Is it a violation of copyright to sell photos of the Statue of Liberty?

Is it illegal to copy the sub-categories like writing & translation from another website? — September 22, 2016

Is it illegal to copy the sub-categories like writing & translation from another website?

Is it illegal to copy the sub-categories like writing & translation from another website? by Aonia Masood

Answer by Aonia Masood:

The copyright law protects the creativity in the choice and arrangement of words, musical notes, colors and shapes so if you’re intending to copy some specific arrangement of categories then of course you are at risk of infringing upon the copyrights reserved by the original author.

Is it illegal to copy the sub-categories like writing & translation from another website?

How can I avoid copyright infringement when using images from the Internet? — September 21, 2016

How can I avoid copyright infringement when using images from the Internet?

How can I avoid copyright infringement when using images from the Internet? by Aonia Masood

Answer by Aonia Masood:

It is a general rule that no one is allowed to use a copyrighted work without having express authorization from the owner of the copyrighted work. However, the law gives an exception to the general rule i.e., fair use of the copyrighted work.

Fair use of the copyrighted image is using the image for personal, non-profit, educational, research or scholarly purposes and / or only for limited purposes; or transforming or re-purposing the image so that it is not recognizable from the original; or publishing the image in a fact-based context or publication that benefits the general public as a whole.

How can I avoid copyright infringement when using images from the Internet?

How can I avoid copyright infringement when using images from the Internet? —

How can I avoid copyright infringement when using images from the Internet?

How can I avoid copyright infringement when using images from the Internet? by Aonia Masood

Answer by Aonia Masood:

It is a general rule that no one is allowed to use a copyrighted work without having express authorization from the owner of the copyrighted work. However, the law gives an exception to the general rule i.e., fair use of the copyrighted work.

Fair use of the copyrighted image is using the image for personal, non-profit, educational, research or scholarly purposes and / or only for limited purposes; or transforming or re-purposing the image so that it is not recognizable from the original; or publishing the image in a fact-based context or publication that benefits the general public as a whole.

How can I avoid copyright infringement when using images from the Internet?